Statutory guidance

DPN 1/04: Filing requirements for design applications

Published 3 September 2006

1. Introduction

The registration of designs is provided for by the Registered Designs Act 1949 (as amended). It is therefore a legal process with statutory rules that must be followed. To gain registration, a design must be applied for by completing Form DF2A, and the design itself must be disclosed either in drawings or photographs, or by the supply of a specimen. These drawings, photographs or specimens constitute an essential element of any application.

The purpose of the representations and specimens is to present an accurate and complete picture of the design that is to be registered, and also to identify those features of the design which are novel and for which protection is sought. It is crucial that the representations and/or specimens do this successfully in order to enforce the registration in any legal dispute in the future. It is from the representations and/or specimens of the design that a judgement will be made to decide if another person’s design too closely resembles the registered design in such a way as to constitute infringement. Applicants must therefore satisfy themselves that all design features for which protection is sought are clearly illustrated in the representations. This can best be done by showing the design features on the actual product that is intended to incorporate the design. And if the applicant seeks separate protection for two or more design features, (even where they are incorporated into the same product) the applicant should file two separate design applications, and state clearly on each application the design features for which protection is sought. This is so that, in any infringement proceedings, the court can be clear about the subject matter of each design registration.

2. On paper

Each different view shown should be placed on one side of A4 paper. There should be a sufficient number of different views of the design so as to leave no doubt as to the precise design features for which protection is sought. The figures showing the design should be illustrated in an upright position with each figure designated appropriately (for example, perspective view, front view, side view and so on). On the front sheet, the name of the applicant should be printed in the top left hand corner. Each page should be numbered consecutively and give the total number of pages (for example, 1 of 3, 2 of 3 and 3 of 3). Lined drawings of design features should be made in ink. Measurements or any other technical specifications should not be included in the representations.

3. Photographs

Photographs are acceptable as long as the quality is capable of reproduction by our IT scanning equipment. Tonal contrast is best shown by the filing of photographs. Black and white photographs will serve just as well as colour, unless colour is intended to form a part of the design (see Designs Practice Notice 6/03 for further guidance on colour).

4. Specimens

Any specimen must be mounted in a flat position by means of an adhesive, upon paper of approximately A4 in size. Specimens are especially useful to show samples of textiles or wallpaper. As with representations on paper, it is important that they clearly illustrate all of the design features for which protection is sought in order for the court to determine infringement at any later stage, and the paper to which the specimen is attached should contain the applicant’s name and page numbering in the manner described above. In addition to the specimen, good quality representations of the product incorporating the design should also be provided for scanning onto the image database of the register.

5. Descriptions explaining representations

A description may be placed on the first sheet of the representations, in order to clarify the rights for which protection is sought. This description will form a part of the registration, and could be, for example, to explain that the rear view looks the same as the front view, or that colour is not intended to form any part of the design. A disclaimer of rights in parts of the product shown in the representations may also be entered onto the first sheet to indicate that the design is the appearance of only a part of the product shown, or limiting the scope or extent of protection of the design, for example, ‘the design is limited to the shape and configuration of the whole product. Protection is not sought in the separate parts of the design.’ The parts in the representation which are not intended to form a part of the design may be indicated by such means as dotted lines, blue wash or as circled areas in red ink.

The inclusion of sectional views in representations should only be made if it is absolutely necessary to demonstrate an aspect of the external shape, which would not otherwise be clear from two dimensional drawings or photographs. When a sectional view is included, two things must be made clear - firstly, exactly where on the product the section is taken, and secondly, the direction in which the eye is looking. To do this, it is necessary that a line should be indicated on one of the other views to show the line of cut, and this line should be suitably labelled. Traditionally, the labelling of a cut line is ‘X-X’, but any pair of letters or numerals could be used. With these markings on an accompanying view, the sectional view itself may be very simply designated as, for example, ‘Sectional view along X-X’. The direction in which the eye is looking is best shown by arrows at the end of the cut line.

Articles with moveable parts may need to be shown in a sequence of views from the same angle to reveal the appearance of the product at the different phases of its operation or cycle. The simplest manner in which these views can be distinguished is to add wording to the ordinary designation of the view, for example, ‘perspective view’ becomes ‘perspective view in first alternative position’, ‘perspective view in second alternative position’ and so on.

6. Common problems

Some examples of common problems that are highlighted at the filing stage are:

• more than one design is shown in the representations
• applicant’s name and page numbering is missing from the representations
• representations include dimensions and other technical drawing features which obscure the design
• the examiner is unable to identify the design from the representations given

Three examples of well represented designs are attached at Annexes 1, 2 and 3 for reference purposes. For a complete guide on how to make an application for the registration of a design, applicants should refer to our booklet ‘How to apply to register a design’, or to request a paper copy.

Please address any enquiries about this notice to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom