Summary
- In the UK, design rights protect the appearance of a product, including its shape, colour, texture, and configuration, while trade marks protect brand identifiers such as names, logos, slogans, and sounds; both exist in registered and unregistered forms, but registration provides significantly stronger protection.
- Unregistered design rights arise automatically upon publication and last up to 15 years; unregistered trade mark protection requires the mark to have acquired a public reputation and is enforced through passing off proceedings, which are harder to establish than a registered trade mark infringement claim.
- Registered design rights can be renewed every five years for a maximum of 25 years, while trade marks can be renewed every ten years indefinitely; filing fees start from £60 for design rights and £205 for trade marks, with trade mark applications typically taking around four months to process.
- This article is a plain-English guide to the differences between design rights and trade marks for UK business owners, prepared by LegalVision, a commercial law firm.
- LegalVision specialises in advising clients on intellectual property and brand protection matters.
Tips for Businesses
Assess what you need to protect before choosing between design rights and trade mark registration – many businesses benefit from both. Register your IP rights rather than relying on unregistered protection, as registered rights are significantly easier to enforce. File your trade mark application before making your brand public to establish priority. If your product has both a distinctive appearance and distinctive branding, consider registering both a design right and a trade mark.
As a business owner in the UK, you must know the difference between different types of legal protection, so you can decide the right path to proceed on for protecting your product and brand. For instance, design rights and trade mark protection are types of intellectual property (IP) rights with very different uses. In essence, design rights protect the appearance of a product, whereas trade marks protect elements of your branding. This article will discuss registered and unregistered IP protection to help you decide how best to secure your exclusive rights over your creative work.
What Are Design Rights?
A design right protects the appearance of a product, including the:
- shape;
- colour; and
- configuration.
In contrast, a trade mark is a brand identifier that distinguishes your brand from others. Further, it is not necessarily a direct image of the products that it sells.
Protections Provided by Design Rights and Trade Marks
Both design and trade mark rights exist in both registered and unregistered formats. Concerning design rights, once an unregistered design is made public, its appearance is automatically protected for three years without any form of registration.
Similarly, trade marks can also receive some protection when unregistered. However, rather than an automatic protection, it is usually only an acknowledged protection when the trade mark gains a reputation with the public over several years, where the trade mark is associated with the brand. To make a claim against someone for using your unregistered trade mark, you will file formal proceedings at court. This process is referred to as passing off.
Both design rights and trade marks have the option of registration, which provides much greater protection against other businesses copying designs or brand marks. In addition, IP rights will always be easier to enforce if your concept has been registered and therefore acknowledged as a part of your business.
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What Forms Do Design Rights and Trade Marks Take?
Design rights are focused on protecting the appearance of products. There is an automatic right of protection when a design is made public. Examples of elements eligible for protection include the:
- shape;
- texture;
- material; and
- colours.
Trade marks, however, can take many different forms as they are a concept that relates to a brand. A non-exhaustive list of examples includes:
- sounds;
- slogans;
- words;
- shapes; and
- colours or any combination of each.
Choosing the Right Protection for Your Business
Deciding between design rights and trade mark protection depends on what aspect of your business you want to protect. If you have created a unique product with a distinctive appearance, design rights are likely the appropriate choice. This is particularly relevant for manufacturers, product designers, and businesses where the visual appeal of their products is a key selling point.
Trade mark protection is more suitable when you want to protect elements that identify your brand, such as your company name, logo, or slogan. This is most important for businesses building brand recognition and wanting to prevent competitors from using confusingly similar branding. Almost all businesses should consider the option of trade mark protection, although not every trade mark will be suitable for registration.
What are your business’ priorities? Are you primarily concerned about competitors copying your product’s appearance, or are you focused on protecting your brand identity? In many cases, businesses benefit from both types of protection.
The Registration Process for Design Rights and Trade Marks
To register a design or a trade mark, each must meet a different set of criteria. For example, for successful registration, your trade mark must not be confusingly similar to an earlier registered trade mark. Furthermore, it must not be anything too common and must be distinctive. Similarly, to register a design, it must be new. Therefore, it also requires creativity from the applicant.
A design rights application will usually require eight weeks for consideration by the United Kingdom Intellectual Property Office (UKIPO). However, if there is an objection, the applicant can request a hearing, so this timeframe can vary. For trade mark applications, you should receive the initial examination report from the UKIPO within around four weeks.
On average, the process for trade marks takes around four months. With the renewal of intellectual property, there are stark differences between design rights and trade marks. For example, you can renew a design right every five years, for a maximum protection period of 25 years. In contrast, you can renew a trade mark every ten years.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
As a business owner, you must adopt the correct type of legal protection for your intellectual property. Therefore, consider the protection that registered trade marks and design rights can provide.
A design right focuses specifically on the appearance of a product and protects the aesthetic aspects of this. For instance, a design right focuses on shape and colour. However, a trade mark is a piece of branding and is not necessarily an image of what the business sells or the service it provides. Moreover, a trade mark can take many forms, including:
- sounds;
- slogans;
- colours; and
- a combination of any distinctive mark of the brand.
A trade mark is, therefore, a more diverse type of intellectual property protection. However, you should carefully assess both before determining the best protection for your business.
If you need assistance registering a trade mark or determining the best IP protection for you, LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
What is the difference between trade mark and design registration?
A trade mark registration protects a symbol, word, sound or anything chosen to represent a brand’s identity. In contrast, a design registration focuses on a unique product design which a business will produce.
What can not be protected under design rights?
You can not protect the functional features of a product under design rights. To protect this aspect of a product, it would need to be suitable for patent protection, which is a different form of intellectual property and requires the functionality to be a new invention.
Can a business use both design rights and trade mark protection?
Yes. Many businesses benefit from both types of protection simultaneously. For example, a furniture manufacturer might register design rights for a unique product design while also registering their brand name and logo as trade marks.
How long does unregistered design protection last?
Once an unregistered design is made public, it is automatically protected for three years without any form of registration. Registering your design provides significantly greater and longer-lasting protection.
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