Guidance on requirements and options to be considered before filing a UK or EU design.

Both the EU and UK provide straightforward and cost-effective systems for protecting designs.  The EU community design system allows a design to be registered for all territories in the EU (including the UK until 31 December 2020). The UK has its own registered design system and the two systems have similar requirements. This article discusses some important considerations when filing a community or UK design application claiming priority from an overseas design registration.

Number of views

The community design has a limit of seven views per application.  If the priority application has more views, this may require either removing some views or splitting the design into two related applications.  This is less of a problem in the UK, which allows for 12 views for online applications (and more for postal applications).

Description

Although the EU community design allows a description, it has no effect on the scope of the design and is not included with the published design registration.  Disclaimers are not allowed in the description and should be apparent from the views. For example, a boundary can be used to indicate features of the design which are being protected; alternatively, features excluded from protection can be indicated with broken lines, blurring or colour shading.  The UK system does allow some disclaimers in the description, for example for colour or surface decoration.

Extra elements in the drawings

The views should include only elements which are part of the design, as any extra information in the design drawings may be considered to form part of the design.  No explanatory text, wording or symbols are allowed. In addition, care should be taken if the drawings in the priority application include shading to show contours; in the EU and UK, this shading may be interpreted as part of the design. 

Classification

The EU and UK both use the Locarno Classification system. This will result in a different classification being chosen for the EU and UK design applications than for the priority application.

Publication

Both EU and UK design applications can be registered very quickly, typically within a few weeks if there are no issues, and publication takes place immediately after registration. Both systems have the option to defer publication by up to 30 months from the priority date; in this case the publication at registration is limited to the bibliographic details.

Grace Period

The EU and UK design systems both have a 12 month grace period, for disclosures by the designer or his successor in title. This grace period has the benefit that it allows both EU and UK design applications to be filed using the grace period, even if the six month priority period has been missed.

Unregistered design right

In addition to registered designs, both the EU and UK have unregistered design right protection, which protects the shape and configuration of an object. We will discuss this in a future article.

This is for guidance only and should not be taken as formal advice. If you require advice on a particular case, please contact any member of our designs team.