UK Registered Design Changes

UK IPO updates Registered Design practice to lower cost and speed up registration

The UK IPO has updated its registered designs practice to lower cost and speed up registration for applications filed with a priority claim.  As of 28 July 2009, UK registered design applications filed with a priority claim need not be supported by a certified copy of the earlier priority application.  On filing the UK application a declaration can be made to confirm that the UK application is for the same design as the earlier application.  The UK IPO will accept the declaration without taking steps to check the UK application against the earlier application, and without requiring the applicant to go to the cost of obtaining a certified copy of the earlier application.  The UK IPO notice explaining the detail of the change in practise is available here.

In recent years the UK IPO has seen a substantial drop in the number of registered design applications being received, with many applicants electing to obtain Europe-wide protection under a Registered Community Design.  The changes in UK IPO practice will mostly benefit non-UK applicants, and unless similar steps are taken in other European national patent offices to simplify procedures and reduce costs it seems unlikely that the savings that result from these UK IPO changes will lead to a change in filing strategy for many users of the Registered Community Design system.

Furthermore, applicants that are concerned about infringement of their registered designs in the UK obtain additional benefits with a Registered Community Design.  In addition to offering quick access to protection across the whole European Community, a Registered Community Design gives the owner a stronger position on remedies in the UK courts.  As set out in J Choo (Jersey) Ltd. v Towerstone Ltd. & Ors [2008] EWHC 346 (Ch), the owner of a Registered Community Design that is found to have been infringed in the UK automatically has the right to apply for an award of damages or an account of profits from the infringer.  In contrast with the rights under a UK registration, with a Registered Community Design there is no way for the infringer to avoid financial liability by claiming to have been unaware of the registered rights.

If you require any further information in relation to this matter, please contact your usual Appleyard Lees advisor or your local Appleyard Lees office. We would be happy to help.