Opportunities and headaches for advertisers in new design law

The new EU harmonised registered design law is coming into effect in the UK on Sunday 9 December. The current regime will change in a number of ways and there are significant implications both for advertisers and marketers in general.

Registration of a design provides a useful extra layer of protection on top of copyright. Registration gives you a monopoly in the design as well as evidence of ownership. To succeed in a copyright infringement claim you have to prove copying: independent creation does not infringe copyright but it does infringe a registered design.

The range of things eligible for registration will be greatly increased. A design is defined in essence as the appearance of the whole or a part of a product. “Product” is widely defined as “any industrial or handicraft item other than a computer program”. This includes “packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.”

Marketers have been finding it increasingly difficult to register bottles and other types of packaging as trade marks. The new design law offers an alternative means of protection for new designs which is relatively simple, quick and cheap to obtain.

Advertisers may want to take advantage of the registered design protection for “graphic symbols”. Campaigns involving material of this sort could now have more protection against parodies or abuse by competing advertisers.

The new design rights may give advertisers headaches as well. Under the old law registered designs were not infringed by reproducing articles incorporating the designs in advertising. The design of a product was not infringed if you included the product as a prop in an advertisement. Infringement is now defined much more vaguely in terms of “use” of a design. Acts of “reproduction” for teaching purposes are specifically exempted, suggesting that other acts of reproduction – such as background use in a commercial – will be caught. This could create problems for advertisers and their agencies, given the time and expense involved in carrying out registered design searches.

Designers will have a one year grace period during which they can apply for registration. Previously you could not apply for registration after a design had been publicly disclosed. Applications should nevertheless be made as soon as possible to avoid the risk of a similar design being published or even registered by someone else during the grace period.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.