Design can be fundamental to a product’s success or failure in the marketplace. However, in the UK it seems that businesses are not obtaining as many registered designs as might be expected, given the significant value to the economy of design-led businesses. We believe that such design-led businesses ought to be considering filing more applications for registered designs, since a registered design can provide strong, enforceable protection against competitors and would-be imitators, and the cost of obtaining a registered design is generally a small fraction of the cost of designing and bringing a product to market.

Registered design protection covering the UK can be obtained via a UK registered design application at the UK Intellectual Property Office (UK IPO) or by an EU-wide Community design registration granted by the Community Designs Registry, OHIM.

Design is important to the UK economy…

In a 2010 review by the Design Council, the UK’s design industry was estimated to be worth £15 billion to the UK economy. The number of designers working in the UK was estimated at 232,000.

Meanwhile, the Hargreaves Review, in its chapter on designs, cited estimates by Imperial College that design constitutes the largest contribution to intangible investment in the UK economy. According to these estimates, in 2008 investment in design alone amounted to 1.6% of gross domestic product (GDP).

…but registered designs may be under-used…

However, it has been commented that the protection of designs appears to be somewhat neglected and the number of applications for registered designs covering the UK appears to be relatively low, given the value to the economy of design-led businesses.

According to paragraph 7.5 of the Hargreaves Review, “Levels of design registrations are very low, particularly given the size of the design industries and their success. Around 8,000 – 9,000 UK designs are registered annually, split roughly 50/50 between IPO and OHIM registrations.”

This apparently low level of activity suggests that these businesses either are not aware of the protection that registered designs can provide against competitors and would-be imitators or do not consider it worthwhile obtaining such protection. Either way, we believe that design-led businesses should routinely consider filing applications for registered designs to maximise their return on investment in new product design.

…despite being affordable and enforceable

Obtaining registered designs in the UK or the European Union is relatively quick and cost-effective. For instance, the cost of a registered Community design (RCD), when considered on a per country per year basis, is extremely low – less than £10.

Registered designs can be enforced against infringers. The timescale for such an action is generally relatively quick and the costs are relatively low, particularly if the action is brought in the Patents County Court (PCC). In two recent cases (Gimex and Louver-Lite), the PCC found that the claimant’s RCD was valid and infringed.

In the Gimex case, sales of the “ice bag” product to which the RCD relates have run into the millions of Euros since its launch in 2006. The value of these sales would have been far in excess of the cost of obtaining the RCD and enforcing it in the PCC. Moreover, by successfully enforcing the RCD, the claimant was able to maintain its prime position in the marketplace. Who knows, maybe Gimex broke out the bubbly – chilled of course – to celebrate the outcome of the case.

A representation of Gimex’s RCD is shown below, alongside two images of the alleged infringement.

Click here to see images.

Encouragingly, the Gimex and Louver-Lite cases show that owners of registered designs can, if necessary, take action swiftly, decisively and in a cost-effective manner against alleged infringers.

In addition, sometimes the very fact that a party has a registered design may be sufficient to deter a would-be imitator. Therefore there can be value in obtaining design registrations even without needing to take steps to enforce them.

In short, having the right design protection in place can help maintain a business’s competitive advantage.