design assignment ukipo

Designs Laws and Regulations United Kingdom 2024

ICLG - Designs Laws and Regulations - United Kingdom Chapter covers common issues in designs laws and regulations – including legislation, application, grounds for refusal, opposition, registration, invalidity and enforcement.

Chapter Content Free Access

1. relevant authorities and legislation, 2. application for a design, 3. grounds for refusal, 4. opposition, 5. registration, 6. registrable transactions, 7. invalidity, 8. design enforcement, 9. defences to infringement, 12. border control measures, 13. other related rights, 14. current developments.

1.1        What is the relevant Design authority in your jurisdiction?

The relevant design authorities are the UK Intellectual Property Office (the “UKIPO”), the High Court of England & Wales, the Court of Session in Scotland, and the High Court of Northern Ireland.

1.2        What is the relevant Design legislation in your jurisdiction?

In the UK, the main relevant legislation is the Registered Designs Act 1949 (the “RDA”) and the Copyright, Designs and Patents Act 1988 (the “CDPA”).

2.1        What can be registered as a Design?

A UK-registered design protects the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself; and/or its ornamentation can be registered as a design provided that such design is novel and has individual character.

2.2        What cannot be registered as a Design?

A design cannot be registered if it:

• is not novel; and/or
• does not have individual character.

Note that a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Additionally, any aspect of a design that falls within one or more of the following exclusions shall not be protected as a registered design:

• features of appearance of a product that are solely dictated by its technical function; or
• features of appearance of a product that must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

Finally, a design cannot be registered if it is contrary to public policy or to accepted principles of morality.

2.3        What information is needed to register a Design?

The application must contain: representation(s) of the design; a brief description of the nature of the product to which the design relates; and administrative details, such as the name and address of the applicant.  Additional information may include: information about any priority claimed to a filing outside of the UK; an additional description of the design; an illustration disclaimer; and whether the design features a repeated surface pattern.

2.4        What is the general procedure for Design registration?

An application must first be submitted to the UKIPO.  The UKIPO will then assess whether the design satisfies the definition of a design and whether the application is correct in order for registration ( NB. the UKIPO will not carry out any substantive examination of novel or individual character).  If there are objections, the examiner will issue a report detailing the reasons why.  Applicants have a period of two months to resolve any issues raised.  If there are no objections raised or the objections are resolved, the design will then be registered, unless the applicant has opted to defer registration (see question 2.16 below).

2.5        How is a Design adequately represented?

It is possible to represent the design using photographs, line drawings, computer-aided design (“CAD”) or rendered CAD.  The optimum format will likely depend on which aspect of a design the applicant is seeking to protect.  Up to 12 illustrations may be provided in one filing.

2.6        Are Designs registered for specific goods or products?

No, a design registration is not limited to a particular product type, despite the fact that the applicant is asked to identify the nature of the product depicted in its design for the purposes of the Locarno classification.  The Locarno identification enables designs to be classified and searched within the register of designs.

2.7        Is there a “grace period” in your jurisdiction, and if so, how long is it?

In the UK, there is a grace period of 12 months from the date of first public disclosure.

2.8        What territories (including dependents, colonies, etc.) are or can be covered by a Design in your jurisdiction?

UK-registered designs cover England, Wales, Scotland, Northern Ireland, and the Isle of Man.

2.9        Who can own a Design in your jurisdiction?

Any natural or legal person can own a design in the UK.

2.10      How long on average does registration take?

If no objections are raised and the registration is not deferred, then registration can be obtained within two weeks.

2.11      What is the average cost of obtaining a Design in your jurisdiction?

At the UKIPO, a standard online application for registration of one design is £50.  Additional designs can be filed at cheaper prices per design.  This excludes associated professional fees of a law firm/attorney.

2.12      Is there more than one route to obtaining a registration in your jurisdiction?

There are currently two routes: a UK-registered design issued by the UKIPO; or an international registration obtained through the Hague Protocol designating the UK.

2.13      Is a Power of Attorney needed?

No, a Power of Attorney is not required.

2.14      If so, does a Power of Attorney require notarisation and/or legalisation?

This is not applicable.

2.15      How is priority claimed?

Priority is claimed at the application stage.  Priority documents do not need to be submitted to the UKIPO if the applicant declares at the time of filing that the UK application is identical to the application from which priority is claimed.

2.16      Can you defer publication of Design applications in your jurisdiction? If so, for how long?

Publication of a design application can be deferred for up to 12 months from the date registration is applied for.  The choice to defer must be included in the application.

3.1        What are the grounds for refusal of registration?

The examiner can refuse the application if: the administrative requirements for application are not met; the images used are unsuitable; the design sought to be protected does not satisfy the definition of a design (often because the images show multiple designs rather than a single design); or the design is contrary to public morality.

3.2        What are the ways to overcome a grounds objection?

How objections are overcome will depend on the type of objection, but will usually involve remedying a deficiency in the application or amending images.

3.3        What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

Any decision from the UKIPO can be appealed to either the Appointed Person or the High Court of England & Wales, the Court of Session in Scotland, or the High Court of Northern Ireland.

3.4        What is the route of appeal?

There are two routes of appeal: (1) to an Appointed Person; and (2) to the High Court of England & Wales, the Court of Session in Scotland, and the High Court of Northern Ireland.

4.1        Can a Design application be opposed, and if so, on what grounds?

Unlike in a trademark application, there is no possibility for opposition to an application by a third party.

4.2        Who can oppose the registration of a Design in your jurisdiction?

4.3        What is the procedure for opposition?

5.1        What happens when a Design is granted registration?

A registration certificate is issued, and the design is entered onto the register of designs.

5.2        From which date following application do an applicant’s Design rights commence?

Once registered, UK-registered design rights take effect from the date of filing the application.

5.3        What is the term of a registered Design right?

The term of a registered design right is up to 25 years, provided the design is renewed every five years.

5.4        How is a Design renewed?

A design may be renewed online by submitting a DF9A form at the UKIPO up to six months before or six months after the expiry date of the registration (renewals after the expiry date may be subject to additional fees).

6.1        Can an individual register the assignment of a Design?

Yes, an individual can register the assignment of a design.

6.2        Are there different types of assignment?

No, there are no different types of assignment.

6.3        Can an individual register the licensing of a Design?

Yes, an individual can register the licensing of a design.

6.4        Are there different types of licence?

Licences may be exclusive or non-exclusive.  Exclusive licences give the licensee an exclusive right to use the design registration to the exclusion of all others, including the design proprietor.  A non-exclusive licence can be granted to any number of licensees.

6.5        Are there any laws that limit the terms upon which parties may agree a licence?

Licences cannot be anti-competitive.

6.6        Can Designs be the subject of a compulsory licence (or licences of right), and if so, in what circumstances does this arise and how are the terms settled?

In respect of a UK-registered design, no (but note that a person who, before the application date of a design, used a registered design in good faith or made serious and effective preparations to do so may continue to use the design for the purposes for which, before that date, the person had used it or made the preparations to use it).

In respect of a UK-unregistered design, a licence of right is available in the last five years of the term of design protection.

6.7        Can a Design licensee sue for infringement?

Yes, where the licence provides for this, or if the design owner otherwise consents.  In addition, an exclusive UK design licensee can bring infringement proceedings in their own name, although the proprietor must also be joined in the proceedings.

6.8        Are quality control clauses necessary in a licence?

Quality control clauses are not necessary but are desirable to preserve reputation.

6.9        Can an individual register a security interest under a Design?

Yes, an individual can register a security interest under a design.

6.10      Are there different types of security interest?

As designs are considered intangible property, security usually takes the form of a mortgage or charge.

7.1        What are the grounds for invalidity of a Design?

The grounds for invalidating a design are as follows:

• the design did not satisfy the definition of a design;
• the design was not new and/or lacked individual character over cited prior art design(s);
• the design is solely dictated by technical features;
• the design is part of a complex product and is not visible during normal use; or
• there are other reasons for which it could have been refused registration (e.g. the registered proprietor is not the proprietor of the design, or it involves the use of a distinctive sign or copyright work that is subject to objection by the rights holder).

7.2        What is the procedure for invalidation of a Design?

The applicant of the revocation action must submit the DF19A form to the UKIPO.  The UKIPO will serve this on the design owner who will have two months to file a defence and counterstatement, which will in turn be served on the applicant.  Submissions and the filing of evidence will be timetabled subsequently.  Once a hearing has taken place or the submissions have been filed and reviewed, a hearing officer will issue a decision in writing.

Alternatively, invalidity can be pleaded as a counterclaim in an infringement action before the English courts.

7.3        Who can commence invalidation proceedings?

Any legal or natural person can commence invalidation proceedings.

7.4        What grounds of defence can be raised to an invalidation action?

The grounds of defence will depend on the application raised.

7.5        What is the route of appeal from a decision of invalidity?

Appeal may be made either to the Appointed Person or to the High Court.

8.1        How and before what tribunals can a Design be enforced against an infringer?

A UK design may be enforced against: an alleged infringer of the design in the High Court; the Intellectual Property Enterprise Court (the “IPEC”); or in certain county courts.

8.2        Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?

Issues of validity and infringement would be heard in the same proceedings.

8.3        What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

The key pre-trial steps may include:

• exchange of pleadings;
• attending a Case Management Conference (“CMC”) to determine the timetable to trial;
• disclosure; and
• exchange of fact evidence and (if any) expert evidence reports.

The Civil Procedure Rules (“CPR”) Directive on Pre-Action Conduct sets out guidance for the parties, which includes ensuring that they understand each other’s positions, and making reasonable attempts to settle the proceedings.

Proceedings might take approximately 12–18 months to reach trial depending on their complexity and the court’s availability.

8.4        Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case?

Preliminary (or “interim”) and final injunctions are available.

In the UK, preliminary injunctions are only sparingly granted.  The court must be satisfied that there is a serious question to be tried, that the balance of convenience favours the granting of the preliminary injunction, and that the claimant will suffer irreparable harm to their business if the defendant’s activities continue (or commence) pending trial.  The claimant must also act with due urgency.

A court will typically award a final injunction if infringement is established at trial.

8.5        Can a party be compelled to provide disclosure of relevant documents or materials to its adversary, and if so, how?

Yes, assuming those documents/materials fall within the scope of the “disclosure” that the court has directed.  Disclosure varies depending on whether proceedings are issued in the IPEC or the High Court and what form of disclosure the court has ordered.  For example, if the court orders standard disclosure, a party must disclose documents that support or adversely affect its or its opponent’s case and that have been retrieved following a proportionate search.  Issue-based disclosure is becoming increasingly common compared to standard disclosure.  A party may also apply to the court for specific disclosure of particular documents in certain circumstances.

8.6        Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Written submissions are made in the form of a skeleton argument submitted shortly before trial, supplemented by oral submissions during the trial.  Fact and expert evidence are provided to the court in the form of signed witness statements and the witnesses may be cross-examined during the trial.

8.7        Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Where UK-registered design validity proceedings are pending before the UKIPO at the same time as infringement proceedings before the English courts, it is likely that the court proceedings will continue and determine both validity and infringement together.

8.8        Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?

Proceedings in the IPEC are intended to be shorter, simpler, and less expensive than High Court proceedings as certain steps, such as disclosure and evidence, are more limited in scope and trial is limited to two days.  Additionally, damages recovery is limited to £500,000 and costs recovery (as of October 2022) to £60,000 in the IPEC.

As an alternative to the IPEC, the High Court also operates a shorter trial scheme that modifies certain procedural steps (such as disclosure) to shorten the path to trial.  To use the High Court’s shorter trial scheme, the case must, however, be capable of being heard within a four-day trial, and the issues must be relatively straightforward.  In the High Court, damages and costs recovery are uncapped.

8.9        Who is permitted to represent parties to a Design dispute in court?

A solicitor or barrister may represent parties in court proceedings.  Alternatively, although this is generally not advisable, the parties may represent themselves as litigants in person.

8.10      After what period is a claim for Design infringement time-barred?

After the expiry of six years from the date of the last infringement, unless there has been deliberate concealment, fraud, or a procedural mistake.

8.11      Are there criminal liabilities for Design infringement?

Yes, a criminal offence exists for deliberate copying of a registered design, but offences appear to be rarely, if ever, prosecuted.

8.12      If so, who can pursue a criminal prosecution?

Normally, Trading Standards would need to recommend a prosecution to the Crown Prosecution Service.

8.13      What, if any, are the provisions for unauthorised threats of Design infringement?

Any person aggrieved by an unjustified threat of design infringement proceedings may: (a) initiate proceedings seeking a declaration that the threat was unjustified; (b) seek an injunction preventing the threats being continued; or (c) make an application for damages in respect of any losses resulting from the threat.  It is a defence to show that the threat was justified, i.e. that the alleged acts do, in fact, constitute infringement.

A communication contains a “threat” if a reasonable person would understand that a registered design exists and there is an intention to bring infringement proceedings in relation to an act done in the UK.  Threats in respect of primary acts (i.e. making and importing) are not actionable.

9.1        What grounds of defence can be raised by way of non-infringement to a claim of Design infringement? For example, are there “must match” and/or “must fit” defences or equivalent available in the jurisdiction?

Typically, the defendant will argue that the allegedly infringing design does not create the same overall impression on the informed user as the asserted registered design (and hence does not infringe), and that the asserted registered design is in any event invalid for the reasons set out in question 7.1 above.

9.2        What grounds of defence can be raised in addition to non-infringement?

The following are the grounds of defence that can be raised in addition to non-infringement:

• the design was used in good faith (or serious preparations had been made to do so) by the defendant prior to the registration of the design;
• the act of infringement was done privately;
• the use was for experimental purposes or for teaching;
• repair or replacement of spare parts – see question 9.3 below;
• the rights in the design were exhausted; or
• the defendant was not responsible for the acts alleged to infringe.

9.3        How does your jurisdiction deal with Design protection for spare parts?

It is not an infringement of a registered design to make a repair to complex products to restore their original appearance.

10.1      What remedies are available for Design infringement?

The following remedies are available: injunction; declaration; damages or an account of profits; delivery up or destruction of goods; and publication of the judgment and recovery of costs.

10.2      Are damages or an account of profits assessed with the issues of infringement/validity or separately?

The UK operates a split trial system with liability (i.e. validity and infringement) determined at trial.  If liability is established, quantum is dealt with in subsequent proceedings, unless it can be agreed between the parties.

10.3      On what basis are damages or an account of profits assessed?

Damages in the UK are intended to put the claimant in the position they would have been in but for the wrong that occurred, and are calculated by one of three methods:

• lost sales (i.e. the sales the claimant would have made but for the infringer’s activity);
• lost licences (i.e. the royalty the claimant would have made from a licence); or
• the user principle (where the claimant is not in the business of licensing, the licence that would have been charged if the parties had reached a deal).

An account of profits is assessed by reference to the net profits the infringer has made from the activity.  If the profits are mixed up in legitimate activity or material, then the amount of the award can be reduced to take this into account.

Damages cannot be recovered from “innocent infringers” of UK-registered designs.

10.4      Are punitive damages available?

No, punitive damages are not available.

10.5      Are costs recoverable from the losing party, and if so, how are they determined and what proportion of the costs can usually be recovered?

Normally, the unsuccessful party will be ordered to pay a portion of the successful party’s costs.  These costs are usually assessed after the trial and can be subject to a detailed assessment by the court if the parties cannot agree on an amount to be paid.  In High Court proceedings, the successful party might normally expect to recover (on the standard basis) around 70% of its incurred costs from the unsuccessful party.  In the IPEC, the successful party can recover up to £50,000 of its incurred costs from the unsuccessful party.

11.1      What is the right of appeal from a first instance judgment and is it only on a point of law?

Appeals are only permitted on a point of law.  Permission is required from either the first instance judge or Court of Appeal.  Such permission will be given where the court considers that there is a real prospect of success or another compelling reason for the appeal to be heard.

11.2      In what circumstances can new evidence be added at the appeal stage?

The circumstances are very limited, normally to where the evidence could not have reasonably been obtained for use in the lower court, and where the use of such evidence would have had a real impact on the result of the case.

12.1      Is there a mechanism for seizing or preventing the importation of infringing articles, and if so, how quickly are such measures resolved?

Regulation (EU) No 608/2013 (as adopted into UK law following Brexit) provides for a mechanism allowing UK customs (UK Border Force) to detain goods suspected of infringing the IP rights of a rights holder who has filed an “application for action” (i.e. a Customs Notice).  Such detentions provide an opportunity for the rights holder to take legal action to determine whether the goods are infringing if a resolution (normally destruction of the detained goods) cannot be agreed between the parties themselves.

13.1      To what extent are unregistered Design rights enforceable in your jurisdiction?

In addition to registered designs, there may also be protection for designs by way of:

• UK-unregistered design right (under Section 213 of the CDPA);
• two additional UK-unregistered design rights introduced at the end of the Brexit transition period to mirror the protection previously afforded by the Community Unregistered Design right: the Continuing Unregistered Design (“CUD”) right; and the Supplementary Unregistered Design (“SUD”) right (under the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019); and
• copyright in certain artistic works.

13.2      What is the term of unregistered Design rights enforceable in your jurisdiction?

A UK-unregistered design right lasts for:

• 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurred; or
• if articles made to the design are made available for sale or hire within five years from the end of that calendar year, 10 years from the end of the calendar year in which that first occurred.

The SUD right lasts for three years from the date of first publication.

The CUD right lasts for three years from the date of first publication but must have been published before the end of the transition period and so will shortly expire in effect.

Copyright in artistic works last for 70 years from the death of the author.

13.3      What, if any, are the key differences between unregistered and registered Design rights in your jurisdiction?

Whilst unregistered design protection arises automatically if all the relevant criteria are satisfied, the term of protection is shorter, and copying must be proven to establish infringement.

13.4      If unregistered Design protection is available in your jurisdiction, is protection cumulative or mutually exclusive?

Each regime protects different aspects of designs.  It is possible that one or more rights may persist simultaneously or that different aspects of the design are protected by different rights.  It is also possible to have both registered and unregistered rights simultaneously in a given design.

13.5      Is copyright available to protect industrial Designs?

Generally, industrial designs are protected as UK-unregistered designs rather than copyright (although, post the decision in Cofemel , the position may now be more nuanced).  The drawings of such articles may be protected by copyright as graphical works, although copyright will not be infringed in circumstances where a person makes an article to the specifications of a design document (unless the article is an artistic work), so the fact that copyright protection subsists may be of limited benefit.

14.1      What have been the significant developments in relation to Designs in the last year?

Following the end of the Brexit transition period on 1 January 2021, the UK is no longer subject to EU law (including Community Design Regulation No 6/2002) and Community Designs (registered or unregistered) no longer cover the UK.  To address the gap that this would have otherwise created: (i) any registered Community Design existing at the end of the transition period has automatically given rise to an equivalent UK-registered design; and (ii) two additional UK-unregistered design rights, the CUD right and the SUD right, were introduced.  As we now approach the three-year anniversary of the end of the transition period, the CUD right will cease to apply.

14.2      Please list three important judgments in the Designs sphere that have been issued within the last 18 months.

In Marks & Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC), the court assessed whether several registered designs in a Christmas-themed illuminated gin bottle were infringed by a discount supermarket version.  The Judge first had to determine whether or not the claimant’s light design was included in its design registration.  It held that it was in one design with a dark background but not in the other.  The designer’s degree of freedom played a particularly significant role in the court’s finding of infringement.  The defendant’s assertion that the curvature of the bottle and integrated light unit were features dictated by the bottle’s technical function was rejected.  The words on the front of the bottle were not enough to distinguish Aldi’s bottle sufficiently from the claimant’s and accordingly, the court held that Aldi’s bottle design infringed the claimant’s registered designs.

Leighton Vans Limited v Harris and another [2022] EWHC 2386 (Ch) concerned an application for an interim injunction against the manufacture and sale of two versions of a car bumper, in addition to a Norwich Pharmacal order for the identities of those involved in producing the moulds for the infringing bumpers.  The court granted the injunction but found that the wording of the claimant’s draft injunction afforded protection beyond that which the unregistered designs would otherwise attract under Section 226(3) of the CDPA and narrowed its scope accordingly.  The court also found the grant of a Norwich Pharmacal order to be unnecessary, as it appeared that the defendants asked for the moulds to be produced bespoke, and there was no evidence that other infringing moulds were in existence.

Finally, the case of KF Global Brands Limited v Lead Wear Limited and others [2023] EWHC 1303 (IPEC) concerned UK-unregistered rights in the claimant’s cargo pants.  The Judge found that the claimant’s designs only differed in a small way to the prior art and not in a way that was significant in the context of the whole design.  Accordingly, the Judge held that design rights did not subsist.  Even if they had, the Judge held that the defendant’s designs did not infringe.

14.3      Are there any significant developments expected in the next year?

The uncertainty remains as to whether the disclosure of a new design online (e.g. on a website or on social media) will count as a first disclosure of that design in the UK to trigger the unregistered design right in the UK (i.e. the SUD right), or in the EU to trigger a Community Unregistered Design right, and we have yet to have any decisions on this point.  Until these matters come before the courts, the position will remain unclear.

The UK government has not taken action post its consultation on the design right regime in the UK.  However, it has now opened a new consultation on the delivery of online design and trademark services, which includes a proposal to introduce a new digital service that will allow the public to view documents relating to trademark and design applications online for the first time.

14.4      Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

In 2022, 70,098 registrations were registered at the UKIPO, which represented a record number and a 16.9% increase.  It may be no surprise then that there appear to have been an increased number of design cases reaching trial stage, which historically was unusual.  In general, design cases continue to span a wide variety of sectors and industries.

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Louise Sargeant Bird & Bird LLP

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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• Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

• Design Rights in the UK and EU

Designs are perhaps one of the more complex areas of IP due to the different design IP rights that can protect a product or article. Below we highlight the legal principles of design IP in the UK and the EU.

UK Registered Designs (UKRDs)

UKRDs can be obtained by anyone who files an application for a design registration at the UK Intellectual Property Office (UKIPO). The application typically includes drawings displaying the design of the product or article from multiple different angles.

UKRDs protect the appearance of a whole product or part of a product. The “appearance” can include visual features of the design including the lines, edges, contours, colours, shape, texture, materials, ornamentation, and/or surface decoration of the product. A product can include any industrial or handicraft item.

For the appearance of the UKRD to give valid protection, the design must be new and have individual character.

A design is new if no identical or immaterially-different design has been made available to the public before the date of the application for the design.

A design has individual character if the overall impression it produces on a notional ‘informed user’ differs from the overall impression produced on such a user by any design which has been made available to the public before the date of the application for the UKRD.

The ‘informed user’ is a legal tool used to assess whether a design has ‘individual character’. Exactly who the ‘informed user’ may be, and what knowledge they have about a design, varies depending on the product to which a design is applied. Normally, the informed user is considered an end user of the product. The ‘informed user’ could be defined as someone who does not have average attention of the design of a particular product, but is someone who is particularly observant, either because of their personal experience or their extensive knowledge of the sector in question.

An exception in the assessment of novelty and individual character is that disclosures made by the designer of a UKRD are subject to a 12 month grace period prior to the filing of the UKRD. Thus, public disclosure of the design made by the designer up to 12 months from the filing of the design are not considered for the assessment of novelty and individual character of the design. However, many territories do not recognise such a grace period. Thus it is preferable to file a UKRD before publicly disclosing the design.

There are some exceptions to the features that can be protected by a UKRD. They may not protect features of the appearance that are solely dictated by technical function or features of the appearance that must fit with another product so that one or both products may perform their function.

A UKRD gives the owner of the design a monopoly right to prevent others from ‘using’ the design in the UK. Regardless of whether the design has been copied or not, the owner of a UKRD can prevent others from making, offering, selling, importing, exporting or using a product in which the design is incorporated or to which it is applied.

A UKRD gives the owner a monopoly right for a maximum term of 25 years from the date of registration, with renewal fees due every 5 years.

A UKRD application gives rise to a right of priority, so long as it is the first filing of the design. The right of priority lasts six months from the filing date of the UKRD. A UKRD can also claim priority from a design filed in another territory, as long as the UKRD is filed within 6 months of the previous design.

UK Unregistered Design Right (UDR)

A UDR is an automatic right that, much like copyright, can exist upon the making of an article to a particular design or by the creation of a “design document”. A “design document” may take any form, such as a drawing (including those created in software), photograph etc.

In other words, there is no formal registration process required for an unregistered design right to arise.

However, whether a design qualifies for a UK UDR depends on whether the design was created by a “qualifying person”. A “qualifying person” may be an individual resident in a “qualifying country” or a company formed, or with a substantial place of business, in a “qualifying country”. A “qualifying country” includes the UK and a certain list of countries with which the UK has reciprocal agreements, most notably Hong Kong and New Zealand. Importantly, since 1st January 2021, EU member states are no longer included as a “qualifying country”. However, a corresponding EU unregistered design right also exists (see below).

A UK UDR can also belong to a party if the first marketing of an article made to the design is done so in a “qualifying country”. However, such a “first marketer” would only own the UK UDR if the person or company who created the design was not considered a “qualifying person”, as described above.

If a UK UDR arises, then it protects the shape or configuration (whether internal or external) of the whole article or part of an article.

A UK UDR also only provides valid protection if the design is “original”, which means it is not commonplace in a “qualifying country” in the design field in question. Like its registered counterpart, there are exceptions to the features that a UK UDR can protect, such as:

• features of the shape or configuration of an article which fit with another article for either article to form its function;
• features of the shape or configuration of an article which are dependent upon the appearance of another article i.e. that ‘match’ another article; and
• surface decoration.

This differs from UKRDs, which can provide protection for surface decoration.

An important difference between UK UDRs and UKRDs is that in order to infringe a UK UDR, the owner of the UK UDR must show that the design was copied by making an article to the design. An article is considered to infringe a UK UDR if the design of the article was copied and the article is exactly or substantially the same as the UK UDR. A UK UDR is also infringed if a person imports into the UK, has possession of, sells, hires or offers to sell or hire, an infringing article that they know or have reason to believe is an article infringing a UK UDR.

A UK UDR lasts for a maximum of 15 years from the end of the calendar year in which the design was first created, or if an article bearing the design is put on the market, then 10 years from the end of the calendar year that the article was put on the market.

Corresponding EU Design IP Rights

Corresponding registered and unregistered design rights can also exist across the EU. These are termed ‘community’ design rights, which can exist in registered and unregistered form.

Registered community designs (RCD) are a very similar right to UKRDs. Much of the discussion above with regard to UKRDs is also applicable to RCDs. The main differences are that RCDs provide protection across every EU member state and not the UK, and that RCDs are registered with the European Union Intellectual Property Office (EUIPO), rather than the UKIPO.

Unregistered community designs (UCD) are similar in some respects to UK UDRs, such as a UCD can only be infringed if it is copied. Protection provided by a UCD is similar to that of a UKRD in that it protects the appearance of the whole or part of a product (including its inside) and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product, provided that the design is novel and has individual character.

However, there are some key differences to note.

A UCD has a much shorter term than a UK UDR. A UCD last for only 3 years from the date that the design is deemed to have been made available to the public within the EU. This happens when the design is published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to those specialised in the sector concerned and operating within the EU.

A UCD may also become available to any person or company, regardless of their respective nationality or residence, which differs from the complex way in which a UK UDR may arise.

There are thus several ways in which a design may be protected in the UK and EU.

Below is a summary table of some of the key features of the above-discussed design IP rights:

Sources of Further Information and Advice

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact [email protected] or your usual HLK advisor.

A PDF of this information can be accessed here.

• Design Protection for SMEs
• Marking Products Protected by Patents and Registered Designs
• Patents - Prosecution and Procedure
• Patents - Legal Principles

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Patents Court provides guidance on technical experts vs scientific advisers

The Patents Court has provided useful clarity regarding the different roles of technical experts and scientific advisers in English patent actions.

* Update to this article now available here

The Covid-19 pandemic has challenged all our expectations of working life, with many of us in Europe now working remotely for at least the next few weeks/months.  This new way of working will have many knock-on effects, including needing to find work arounds and new approaches for tasks previously carried out in the office or in-person.

In this article we will: (i) clarify the position on digital execution of documents in the UK; (ii) examine the signature requirements for documents to be recorded at the UKIPO or EPO (i.e. when are “wet-ink” signatures required); and (iii) consider the options for obtaining notarised and/or legalised documents for recordals at IP offices (where this is required).

The majority of this article focusses on the position in the UK, but before we do that, a word on digital execution globally.  There is growing acceptance of e-signatures in many jurisdictions, but if you are executing IP assignments or other documents which need to be recorded globally, wet-ink signatures remain the most globally accepted method.  At present, you may wish or need take a dual approach – using e-signatures where you know they are valid and will be accepted, but for documents that need to be used/filed in multiple jurisdictions (where you don’t know if e-signatures will be accepted), using wet-ink signatures may be the safest option.

What is “digital execution”?

There are many different words which can be used to describe the digital execution of documents.  For the purposes of this article, the key distinction to be drawn is between “wet-ink” signatures (i.e. someone signing a physical document using a pen) and “electronic signatures” or “e-signatures” – this is an umbrella term covering all forms of signature by electronic means.

Digital execution in the UK

Case law in England has determined that e-signatures will be accepted in a wide range of situations.  This includes documents where there is a statutory requirement for them to be “signed” in order to be valid (such as in relation to the assignment of IP rights – see below for more on this).  Provided that the signatory inserts the electronic signature in the appropriate place in the document with the intention of authenticating it, the statutory requirement will be satisfied.

In addition, the English Courts have confirmed that an electronic signature has the same status as a wet-ink signature ( Golden Ocean Group Ltd v Salgaocar Mining Industries Pvt Ltd. [2012] EWCA Civ 265) and have accepted a variety of marks as valid signatures.  This includes signing with an “X” or signing with a mark (even where the party executing the mark can write), both of which are likely to be less specific and less certain than the use of an electronic signature.

The English law approach to e-signatures is summarised in the Law Commission’s 2019 report on electronic execution of documents.  The report details a series of propositions based on case law which together form the current legal framework for accepting e-signatures in England, Wales and Northern Ireland (note that the position in Scotland is different).

Assignments of Intellectual Property Rights: Patents, Copyright, Trade Marks, Registered Designs

Under English law, a valid assignment of UK patents, copyright, trade marks (UK and EU) and all forms of design right (UK registered and unregistered and EU registered and unregistered) must be in writing, which may be an electronic document, and be signed by or on behalf of at least the assignor (an assignment of an EU trade mark generally also needs to be signed by the assignee).  Signatures may be in writing (i.e. wet-ink) or an electronic signature.

However, there is one significant exception to the acceptability of e-signatures on IP assignments: assignments of European Patent applications (in our experience, the EPO will not accept assignments where the signatures are e-signatures).

Simple contracts (e.g. NDAs or employment contracts)

A simple contract is an agreement between two or more parties where there is an accepted offer (for example for exchange of goods or services), consideration and an intention to create legal relations.  In practice, this includes most commonly encountered contracts, including non-disclosure agreements and employment contracts.

Under English law, execution of a simple contract by a company or a limited liability partnership must be in accordance with the provisions of the UK Companies Acts and the parties’ own internal rules.  Whilst the use of e-signatures on simple contracts is not prevented by the Companies Acts, the parties may have internal rules which do (in addition to issues such who can sign and if more than one signature is required for a valid execution).  Accordingly, before agreeing to execute a simple contract by e-signature, it would be prudent to confirm that it’s allowed under the signatory’s internal rules on document execution.

Powers of Attorney

IP owners will frequently need to grant powers of attorney in order to authorise third parties to act for them.  We also often see (and use) “further assurance” clauses in IP assignments.  The purpose of a further assurance clause is to ensure that the assignor will sign any further documents and do any further acts as may be required for the assignment to be completed – for example, assisting with any project to record the change of owner owner on IP registers.  Many further assurance clauses also qualify as a power of attorney.

Where the IP owner is a UK company, any power of attorney granted by the company must satisfy the requirements of the Powers of Attorney Act 1971 in order to be valid.  This Act requires that powers of attorney are executed as deeds.  Under English law, the execution formalities required for deeds are more stringent than those required for simple contracts.  These requirements will vary depending on the party executing (e.g. an individual, company, limited partnership), but generally there is a requirement for a deed to be “ signed in the presence of a witness ”.

Whether the signature is applied using “wet-ink” or electronically, the witness must be in the same room as the signatory – it is not possible for a signature to be witnessed virtually, for example, via video call.

Accordingly, if you are executing powers of attorney and English law applies, you will need to execute the document as a deed and ensure that a third party is available (in person) to witness the signature.

Recordal of documents at the UK Intellectual Property Office (UKIPO) European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO)  

Electronic signatures are a valid form of execution of IP assignments under English law.  As a result, they can be used in documentation which is submitted to the UKIPO to record transfers of ownership against the UK IP registers for patents, trade marks and designs.

It is worth noting that where the recordal of a transfer is requested either by the registered IP proprietor or their recorded agent, it will not usually be necessary to file a copy of the transfer document at the UKIPO.  This does not change the position in relation to the underlying validity of the assignment documents, but it can help smooth the recordal process in cases where the underlying documents contain confidential material or the parties would prefer not to file them with the UKIPO.   

As set out above, our experience is that electronic signatures are not accepted by the EPO except in the context of using EPOline to file documents electronically.  Specifically, they are not an accepted form of execution on assignments or powers of attorney filed at the EPO.

However, there are few other requirements for assignments of European Patent (EP) applications.  For example, there is no requirement that they be witnessed or notarised.  If you do need to record assignments of EP applications, the recordal is carried out electronically – by submitting scanned copies of assignments.   Typically, a party’s EPO representative will record the assignment at the EPO by filing a request letter, a copy of the assignment and paying the relevant fee.  Although digital signatures are not permitted, no originals are required and the parties may sign in counterparts.  This ability to use scanned counterparts may be of assistance at the moment when many of us are working remotely and obtaining original signed documents may be difficult.  The signed originals should, however, be retained in case required for evidential purposes in the future.

The EPO’s other requirements about the authority of the individuals executing the assignments and their ability to bind the parties continue to apply.  If you need further guidance on this, please refer to our previous article .

Assignments of EUTMs or Community Designs executed via e-signature are acceptable at the EUIPO.  The EUIPO does not consider whether an assignment is valid when registering it – it merely looks to see if the transfer document matches with the assignment provided, i.e. are the registered proprietor and assignee identical and is the trade mark correctly identified.

In order to ensure that the underlying assignment is valid, parties are advised to include a governing law clause specifying that the assignment is governed by a national law which permits e-signature (e.g. the law of England).

Notarisation and Legalisation

“Notarisation” generally refers to one of two things: (i) a notary witnessing a signature, i.e. a party executing a document in the presence of a notary to which the notary affixes a notarial attestation that the party executed the document in their presence (and may include confirmation that the individual signatory was authorised to bind the party); or (ii) a notary providing a copy of an original document which is certified by the notary to be a true copy of the original document.

There is rarely a requirement under English law, or for recordal at the UKIPO, for a document to be executed in the presence of a notary or for notarised copies of documents to be provided.  Specifically, this is not required for any document mentioned in this article (i.e. assignments of IP, powers of attorney, simple contracts).  However, many IP offices around the world will not accept agreements/assignments filed for recordal purposes unless the signatures have been witnessed by a notary and/or notarised copies of the originals have been provided.

Applying the general English law approach to witnessing of documents set out above, it will not be acceptable for notaries to witness the execution of documents unless they are in the same location as the signatory.  Accordingly, it will be difficult to comply with these formalities during the current pandemic whilst parties are practising social distancing.  In our experience, however, there are only a handful of countries in Europe which require this type of notarisation.  If you receive a request for this type of notarisation, please let us know and we will enquire with our local agents.  It is possible that IP offices will relax their usual requirements under the current circumstances.

We expect that it will remain possible for parties to obtain certified true copies of documents from notaries for the foreseeable future.  That depends, however, on the ability of the parties to obtain and courier original wet-ink signed documents to notaries so that the copies can be made.

There are software programs aimed at offering e-notarisation as a way to enable notaries to have an equivalent to e-signature.  However this is not universally accepted.  If you are considering this option, it is important to consider the local requirements in the country in which the documents will be used – we can work with you and our notary contacts to advise on whether e-notarisation is a possibility for the recipient jurisdiction.

Turning to “legalisation” (the process of authenticating or certifying a document so it will be recognised has having legal effect in the country where it is being used), certain IP registries won’t accept documents unless they have been legalised.  The UK Government’s legalisation service has been suspended during the current pandemic except for “exceptional” documents.  There is no guidance as yet in relation to what “exceptional” documents are, but we would not expect it to include assignments of IP or powers of attorney where they need to be legalised.  This may well be the case in other countries.

Where legalisation is not possible, other options may be available.  For example, some countries will accept a secure notarial seal instead.  Again, caution is recommended here as this will very much depend on the requirements of the destination country.  A further option where the relevant document has been notarised but there is difficulty in obtaining legalisation in time to meet an upcoming IP office deadline, is to email the local agent a scanned copy of the existing notarised document.  This can be filed at the IP office to try and ensure that the deadline is met, at the same time explaining to the office that the hard copy legalised document (bearing the original notarisation and legalisation) will follow by courier as soon as the legalisation formalities are completed, and explaining as necessary the particular issue holding up the legalisation step. From experience, this approach of filing just notarised documents has worked in the past at certain IP offices as a necessary “place holder”. In the current climate even more so, one would imagine that this approach would be acceptable – it should in any case be discussed with the local agent.

If getting documents legalised is something that you are currently working through, we can help by bringing together knowledge from our Transactions team, notaries and local agents to try and find a practical solution.

Practical steps

Documents executed by e-signatures are generally acceptable for use in the UK.  The most significant difficulty we have in using e-signed documents is at the EPO in relation to European Patent applications.  That said, given that only scanned documents need to be filed at the EPO, we would hope that parties will still be able to obtain the necessary signed documentation – even if that means downloading a scanning app!

Here’s a checklist which may be helpful when determining whether to use an electronic signature:

• Are they acceptable under the law governing the agreement?
• If no governing law is specified – are electronic signatures valid under the law of the countries in which the parties are located?
• Is the document a deed or are witnesses for the signatures otherwise required? If so, are there witnesses available who are physically present with the signatories?
• Where the agreement is intended to transfer IP rights – are digital signatures accepted by the IP registry at which the agreement will be recorded?
• Will notarisation and/or legalisation be required? If so consider the countries for which this will be required prior to execution and seek advice from local agents as to the best way to comply with local requirements.

As a final note, the mass remote working event caused by Covid-19 is causing all of us to re-think what we do and how we do it.  We would expect IP offices and governments to continue to review the situation, including acceptance of e-signed documents, over the coming weeks and months.  We will keep you updated on key developments for the UK and Europe as matters progress.  If you do have any specific questions for us, please let us know.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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Design-Build Contractors & Firms in Elektrostal'

Location (1).

• Use My Current Location

Popular Locations

• Albuquerque
• Cedar Rapids
• Grand Rapids
• Indianapolis
• Jacksonville
• Kansas City
• Little Rock
• Los Angeles
• Minneapolis
• New Orleans
• Oklahoma City
• Orange County
• Philadelphia
• Portland Maine
• Salt Lake City
• San Francisco
• San Luis Obispo
• Santa Barbara
• Washington D.C.
• Elektrostal', Moscow Oblast, Russia

Professional Category (1)

• Accessory Dwelling Units (ADU)

Featured Reviews for Design-Build Contractors & Firms in Elektrostal'

• Reach out to the pro(s) you want, then share your vision to get the ball rolling.
• Request and compare quotes, then choose the Design-Build firm, that perfectly fits your project and budget limits.

What is a design-build firm?

Questions to ask a prospective elektrostal' design-builder:.

If you search for Design Build near me you'll be sure to find a business that knows about the latest trends and styles for your bathroom, kitchen, or whole house remodel but also operates within the collaborative framework of the design-build construction delivery method.

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Application to record a change of ownership

Use this form to record changes to the ownership of UK trade marks for full assignment of the rights.

PDF , 353 KB , 6 pages

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All Intellectual Property Office fee bearing forms should be filed with the appropriate fee.

A new end page has been added. This contains a checklist and sending instructions. Supporting text added to questions that required further clarification.

Form TM16 fee sheet updated.

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Fee sheet added to form TM16 and text 'All Intellectual Property Office fee bearing forms should be filed with the appropriate fee' added.

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