What is Design Registration?
And, is it worth doing?
What can we ordinary mortals learn from Apple and Samsung’s recent high profile court battle over the Community Registered Design of the iPad?
Apple have got a few international actions pending with Samsung over what they see as the similarity of the Galaxy tablet to their iPad. During the UK High Court case Samsung has been asking for assurances from the court that their Galaxy has not infringed Apple’s Registered Design for the iPad.
Everyone knows that the iPad came out first. And whilst calling the Galaxy “a rip-off” is perhaps a bit strong, Samsung clearly followed closely in Apple’s wake.
The classic infringement test is whether the customer themselves would be confused between the two products, or if they could clearly identify them as separate. But there are other factors to take into account such as the freedom to have a different design. Our more clued up friends at IP Attorneys Chapman Moloney explain in more detail:
“The distinctive parts of the Registered Design that could also be seen in the Samsung Galaxy tablet – such as the thinness, the rectangular slab shape with rounded corners and the substantially flat rear surface curving upwards at the side were discussed. The judge decided that these features were not protected by the registered design as they were the result of the designer being tightly constrained by limited design freedom in the field. The judge granted the declaration of non-infringement resulting in very narrow protection for Apple’s iPad.”
There are lots of cases where companies have successfully defended their registered design, making this a useful tool in an IP portfolio. But this particular Apple Samsung court case highlights how “freedom of design” may narrow the protection and needs to be carefully considered, both when applying for and tailoring your Design Registration and when deciding whether to defend against any infringement.
What are the requirements for Registered Design?
Registered design protects the look of the whole or part of the product. This can include lines, colours shapes, textures, materials ornamentation, packaging and graphics. It can protect complex industrially produced products through to one off handicraft products.
To get valid protection the design must:
- Be new: In the EEC you must apply to register the design before it’s disclosed to the public (e.g. by showing it on a website), and nothing similar must exist already. In the UK you do have a grace period of 12 months (from the first time it is revealed) in which to register the design.
- Have individual Character: This means that “the overall impression” that the product features make on an informed user has to be different from the appearance of other known designs… which is where the amount of “design freedom” will be taken into account. In other words you can’t protect a car because it looks aerodynamic, has four doors and wheels, headlights and bumpers – as these are already known and are also required features that the designer has to include.
If you would like help in developing lovely new product designs to protect – then of course you know where to come… But if you need help in defending your existing IP from competitor then please contact us and we can recommend very good IP attorneys depending on your needs.
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