In contrast to patents, which protect how products work, or trade marks, which protect the name of a product, a design registration helps protect the appearance of a product, such as its shape, colour, texture or pattern.
Although perhaps less well-known than patents or trade marks, design registrations are a powerful form of IP protection. They give the owner the exclusive right to make, sell, use, import and export any product embodying the design in the UK, and this right can even extend to designs which are not identical, but which do not “produce a substantially different impression on the informed user.” It does not matter if a third party comes up with the same design independently; the owner of a design registration can still prevent this third party from making, selling using, etc. products embodying the design, if they do not have the owner’s permission.
In the UK and the EU, design registrations have other useful qualities. For example, an applicant for a design registration can choose to defer publication of the design for up to 12 months in the UK and up to 30 months in the EU. Also, both jurisdictions provide a 12 month “grace period”, in which the design can be disclosed by the designer without affecting the right to file an application. It is also possible to file “multiple” designs in one application; for example, slightly different versions of the same design could be included in the same filing.
Perhaps the most useful aspect of design registrations is that in the UK and the EU, registration can often take just 2-4 weeks from filing to registration. This makes designs the fastest form of registered IP protection, meaning that owners can obtain protection for their products while waiting for a trade mark or patent covering the same product to be granted. And while patents last for only 20 years, a design registration can be renewed for up to 25 years, with no requirement for the design to be used, and no limitation as to the good and services to which the design may be applied.
However, compared to the 196,639 trade marks filed at the UK Intellectual Property Office (UKIPO) in 2021, only 72,157 registered design applications were filed. This may be because registered designs have traditionally been associated with creative industries, such as fashion and graphics. In 2021, UKIPO data shows that the top 5 design applications by area of classification were: recording/communication (e.g. mobile phones, computers, headphones, smart speakers, graphical user interfaces, icons); graphic symbols, logos and surface decoration; clothing and haberdashery; furnishings; and games, toys and sports goods.
However, there is no restriction on the products that can be protected by a registered design, although features of a design “solely dictated by technical function” or which are required to allow the product to be connected to another product, are not eligible for protection.
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All products eligible for UK and EU design registration protection can be classified into the “Locarno classification”. Under Locarno class 15 (“machines not elsewhere specified”), sub-class 09 (“machine tools, abrading and founding machinery”) we find the term “3D Printers”. According to UKIPO data, registered design applications under class 15 rose from 48 in 2007 to 882 in 2021; even allowing for the effects of Brexit, this is a substantial increase, demonstrating that manufacturers and designers additive manufacturing equipment are catching onto the benefits of registered design protection. Of course, this protection is not only available for 3D printers – the products made by additive manufacturing may also be eligible for a design registration.
Registered designs add up to rapid protection for 3D printers
A review of in-force design registrations at the European Union Intellectual Property Office (EUIPO) using “3D Printers” as the “indication of product” revealed a number of interesting designs in this area, some of which are discussed below.
Example #1
[https://euipo.europa.eu/eSearch/#details/designs/009203573-0002]
This registration, owned by UK company Seraph Technologies Limited, covers a 3D printer in its entirety, including its colour and texture, and user interface. The design of this stylish desktop machine clearly goes far beyond just “technical function”. Design registrations can be based upon photographs, as appears to be the case here.
Example #2
[https://euipo.europa.eu/eSearch/#details/designs/005098001-0001]
Another full colour registration, this one owned by Shanghai Furling Electronic Technology Co., Ltd.
The company also owns so-called design patents in the US for similar devices. In this case, a CAD drawing appears to have been used to represent this highly distinctive colour product.
Example #3
[https://euipo.europa.eu/eSearch/#details/designs/008676928-0001]
Another registration encompassing colour is owned by rapid engineering company Giunchi Molinari srl of Italy. Note that in this registration the background includes a degree of shading, whereas the background in the previous two designs is white.
For the broadest design protection, a white background is usually optimal.
Example #4
[https://euipo.europa.eu/eSearch/#details/designs/015001830-0001]
This registration again appears to be based on a CAD drawing, as indicated by the very slight shadows around the base of the machine. This design is owned by pro-beam GmbH & Co., headquartered in Germany.
Example #5
[https://euipo.europa.eu/eSearch/#details/designs/005293180-0001]
The registration to the left is, in contrast to those above, based upon a black and white line drawing. While at first sight this design may appear “plainer” than those above, it does in fact provide the owner with broader protection, since no colours or textures are specified. Most firms who file design applications on behalf of clients will have access to a draughtsman who can provide line drawings in advance of filing. This registration is owned by Additive Manufacturing Technologies Limited, of Sheffield, UK.
Example #6
[https://euipo.europa.eu/eSearch/#details/designs/003621812-0001]
This registration, owned by bioprinting company CELLINK Bioprinting AB, again provides broad protection by using a black and white line drawing on a plain white background.
Example #7
[https://euipo.europa.eu/eSearch/#details/designs/015002667-0001]
3D printers are not only limited to materials such as polymers and metal, but also encompass food printing, as demonstrated by this registration for LA PÂTISSERIE NUMERIQUE, Paris. This registration also illustrates that protection can be obtained for part of a 3D printer, and not only the machine as a whole.
Example #8
[https://euipo.europa.eu/eSearch/#details/designs/008670517-0002]
Another registration for a part of a 3D printer, this one owned by E3D-Online Limited, London. As well as being represented using a line drawing, if you look carefully you will see that some of the lines are hashed, or dotted. This indicates that protection for that part of the design is not sought, and allows an applicant to achieve even broader protection by submitting a design in which certain aspects are “disclaimed”, and are therefore effectively interchangeable.
Example #9
[https://euipo.europa.eu/eSearch/#details/designs/006308615-0002]
This series of design registrations – filed as a “multiple application” as discussed above – is owned by SISMA S.P.A. and appears to relate to the EVERES UNO DLP 3D printer, for which SISMA also have a patent pending. By filing multiple version of the design, with the printer in an open and closed position and with certain features disclaimed using hashed lines, SISMA has maximised protection for the appearance of this beautifully designed machine.
Interestingly, of the EU design registrations thrown up by this quick and rough search, the vast majority list the owner country as China, followed by Germany and the US. This suggests that UK manufacturers and designer may be lagging behind when it comes to taking advantage of the IP protection offered by registered designs.
If you have a question about design registrations in the UK and EU, get in touch.
