Frequently Asked Questions
(FAQs) (click on a subject and sub-menu)
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1) Patents |
Welcome to our FAQ section covering various aspects of Intellectual Property. These notes serve only as a general guide and are not designed to address any specific issues that you may be concerned with. In consequence, Baron & Warren cannot accept any liability or responsibility for any decisions or actions taken on the basis of these notes. However, we would be happy to discuss any particular matters of interest with you. |
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You are welcome at any time to print these pages and read them at your convenience. However, reproduction of these notes, other than for personal and private use, is strictly prohibited under Copyright law. |
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3) Registered Designs |
Introduction |
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q Why register a design? q Because this procures a legal monopoly giving the owner of a new design with individual character the exclusive right to stop another person from making, selling, importing or otherwise exploiting a product to which the registered design or a design not forming a different overall impression is applied. q The monopoly right given by registration provides protection irrespective of whether the design is copied or created independently by a competitor. q What are the essential criteria for a registrable design? q A design must be new at the date of filing an application for its registration if no identical design or no design whose features differ only in immaterial details has been previously made available to the public anywhere in the world. q The design must have individual character if the overall impression it forms on an informed user differs from the overall impression produced on such a user by any design which has previously been made available to the public. q When should a search be conducted? q In order to determine the registrability of a design or the likelihood of infringing a subsisting registered design. Subject matter searches can be requested from the Designs Registry or conducted online. q In order to obtain design information in respect of a competitor
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q What can be protected? q Protection is granted for the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shapes, texture or materials of the product or its ornamentation. q What design features are excluded from registration? q Features of the appearance of a product, which are dictated solely by the product's technical function. q Features of the appearance of a product which must necessarily be reproduced to permit the product to fit another product so that either product may perform its function. q The fact that certain features of a design may be of the excluded type does not prevent the registration of a design which also has other features qualifying for registration. q A design which is contrary to public policy or accepted principles of morality is excluded from registration. q Who is the owner of a design? q The originator or author of a design is the owner of the design except where:- q the design is created in pursuance of a commission for money or money’s worth, in which event the person commissioning the design is the owner,or q in a case not falling within the paragraph above, the design is created by an employee in the course of his employment, when his employer is the owner of the design. q In the case of a computer generated design where there is no human author, the person by whom the arrangements necessary for the creation of the design are made is the owner. q Does a prior disclosure always render a design non-registrable? q No. Disclosure of the design before the date of filing an application for registration is disregarded if it could not become reasonably known to persons in the European Economic Area (EEA) specialising in the sector concerned or if it was made in a 12 month period preceding the filing date as a consequence of disclosure by the designer or successor in title. It should be noted, however, that disclosure before filing may invalidate later applications for the protection of the designs in foreign countries. q What about registered design protection abroad. q Following the filing
of a
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q What is involved in applying for a registered design? q A single application may contain any number of different designs. q An application for registration is accompanied by representations of the whole or part of a product sufficient to show all aspects of the design to be protected. These are in the form of drawings or photographs illustrating different views of the whole or part of the product. q Only informal representations need be filed in order to secure a filing date and formal representations may be filed subsequently. q After the application is filed, there is only a formal examination of the application and no novelty search is made by the Registry in order to assess the registrability of the design. q Upon acceptance and registration, a Certificate of Registration is issued by the Designs Registry and the details of the design, including a representation, are published by the Registry.
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q How long does a registered design remain in force? q Initially for a term of 5 years from its application date but can be extended for up to a maximum of 25 years, provided extension fees are paid every five years. q What should be recorded in the Register of Designs once a design is registered? q Any transactions involving a registered design, for example, concerned with change of ownership or licensing, should be recorded in the Register to ensure the rights of the new owner or licensee. q What types of licensing are available? q Essentially, there are two types of license; an exclusive license and a non-exclusive license. An exclusive license differs from a non-exclusive license in that it allows the licensee to exclude all others, including the proprietor of the registration, from using the design without the licensee’s authority.
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q How is a registered design infringed? q A registered design is infringed where the following three conditions arise:- q any person without authorisation makes, offers, puts on the market, imports, exports or uses, or stocks for these purposes, a product in which the design is incorporated or too which it has been applied; or q the design does not produce a different overall impression from the registered design; or q the design is the same or not substantially different from the registered design. q However, a registered design is not infringed for the following: q acts done privately for non-commercial purposes; and / or q experimental acts; and / or q reproduction for teaching purposes (provided certain conditions are adhered to). |
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