Grand designs on success – managing your registered design rights
Your designs are registered – time to put your feet up? Not necessarily. Managing your registered design rights can be just as important as obtaining those rights in the first place.
Registered design protection can last for up to 25 years in the UK and EU. However, protection is only granted in five year periods, so design registrations must be renewed every five years after filing (by paying a renewal fee) to remain in force. If a renewal fee is not paid, the protection expires. The EU renewal fees only go up to €180 for the last five years so the cost per country per year is very low.
Once your registered design rights have been obtained or renewed, there are a number of ways to take advantage of them. You could look to commercialise products protected by the rights yourself. Alternatively, you may prefer that a third party does the heavy lifting in exploiting the rights. In that case, it can be beneficial to assign or licence those rights to third parties.
Assigning your rights to a third party can be a good option if, for example, you wish to raise capital quickly – selling your rights could provide funds to pursue your next project. The downside to an assignment is that the registered design rights no longer belong to you. If you would prefer to retain ownership of the rights whilst allowing a third party to exploit those rights, licensing may be a better fit. The rewards of a licence may be less immediate (typically royalties are paid under a licence) than for an assignment (usually paid as a lump sum). However, a licence allows you to retain more control over your rights. Choosing between assigning and licensing your rights may also be impacted by what stage of development the product protected by the design is at.
If you are commercialising products protected by registered design rights yourself, or have licenced your rights to a third party, you should ensure any protected products are marked to make potential infringers aware that registered design protection exists. Markings must include the design registration number, otherwise infringers may be deemed to have ‘innocently’ infringed (i.e., been unaware of) the registered design rights. Damages are not awarded against innocent infringers, so marking your products correctly can be vital when it comes to asserting your rights. Some countries provide for virtual or webmarking, which is easy to manage and keep up-to-date.
If you would like advice on any aspect of managing registered design rights, please contact Carrie Johnson or Barker Brettell’s dedicated design group for more information.
