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How to plan for design costs?

There are a number of options available for protecting designs, each of which may or may not incur costs. In the UK and Europe, one can obtain registered design rights and unregistered design rights for one or more designs of an item, product, packaging, etc. The details of what can and cannot be considered for a design right will not be discussed here but can be found here.

Unlike other Intellectual Property (IP) rights such as Patents, which can be costly and difficult to obtain, the costs involved for obtaining a Design right can be considerably less, i.e. a few £100s compared to a few £1000s. These costs can rise depending on the number of applications filed and the extent of protection needed. Nevertheless, Designs in general are overall cheaper, quicker and easier to obtain than Patents, and are often an option when budgets are tight or if an invention does not have a strong technical character but there is a want for some sort of protection.

In relation to an unregistered design right, there is no need to register or file an application with the corresponding Intellectual Property Office of the country/region that you wish to gain protection for such a design, for example at the UKIPO or EUIPO. Therefore, opting for an unregistered design right will not incur costs for registering and thus is a cheap way to gain some sort of design protection while also adding to an existing or new IP portfolio. Unregistered design rights are a great option for new start-ups or individual designers who lack any sort of funding to register their design(s).

However, there is a precaution that comes with unregistered design rights due to the difficultly in stopping others from copying the unregistered design when lacking funds. For example, costs may arise if there is unauthorised copying of the unregistered design and there is a need to enter into some sort of litigation proceedings in order to stop the unauthorised person from continuing to use the unregistered design right. The cost of any sort of litigation proceedings can be quite high, especially if it is a complex case. Also since Brexit the UK is no longer covered by a Community Unregistered Design Right (CUDR), therefore there could be costs involved for defending both a UK Unregistered Design Right (UKUDR) in the UK and a CUDR in Europe, if both rights exist depending upon where the unauthorised use occurs.

In relation to registered design rights, applications must be filed at the appropriate IP Office. For example, for applying for a UK Registered Design Right (UKRDR) applications must be filed at the UKIPO and for a Community Registered Design Right (CRDR) applications should be filed with the EUIPO. The official fees payable to the UKIPO for applying to register a design is £50 for 1 design. If more designs (i.e. > 1) are required to be registered in the same application it is an additional £20 for up to 10 designs in the application and a further £20 for each subsequent batch of up to 10 designs included in the application (fees updated as of September 2021). Multiple designs in a single application are very useful if there is a need to protect various aspects or different variations of an item or product, and as such the fees can add up, however the official fees per design in the application are still very low. In addition to the official fees, there may also be costs involved in preparing drawings of the design(s) to meet the necessary requirements of the UKIPO, and as well as attorney fees for putting the application in order. It is highly recommended to use an experienced attorney for preparing and filing the design application, as it is imperative to get the sought after protection right from the start. If errors occur in the design registration, it could be costly to resolve further along in the process.

Once the designs are registered payment of renewal fees are required at the UKIPO in order to keep the design registration, and thus keep the UKRDR. Each design in a multiple application is registered independently and must be renewed independently.  The renewal fees are due every 5 years and increase with each subsequent 5 year period up to a total of 25 years. Thus a total of 4 renewal fees would be due for the lifetime of the registered design, with the first being £70 and the last being £140 (fees updated as of August 2021). For more fees related to UK Registered Designs please see the UKIPO website at www.gov.uk/government/publications/design-forms-and-fees/design-forms-and-fees.

The official fees payable to the EUIPO for registering a community registered design are €230 for a single design in an application. For 2-10 designs in a single application the cost is €115 per additional design and for > 11 designs the cost is €50 per additional design (fees correct as of October 2021). Therefore, in comparison to UK costs it is more expensive to register but does favour applications with a large number of designs due to the decrease in cost per design when greater than 11. Unlike the UKIPO, the EUIPO have publication fees (and deferment of publication fees if deferment is needed) which vary with the number of designs registered. For a single design the publication fee is €120, for 2-10 designs the additional publication fee is €60 per design, and for > 11 designs the fee is €30 (fees correct as of October 2021). Again, like with the UKRD, additional costs for the preparation of drawings and attorney fees will also need to be considered when budgeting for registering a community registered design.

Each design in a multiple application is registered independently.  Again, like at the UKIPO, there are renewal fees in order to keep the design registration, and thus keep the CRDR. The renewal fees, like with a UKRDR, are due every 5 years and increase with each subsequent 5 year period up to a total of 25 years. Thus, a total of 4 renewal fees would be due for the lifetime of the registered design, with the first being €90 and the last being €180 (fees correct as of October 2021). For more fees related to Community Registered Designs please see the EUIPO website.

As a general rule, the increase in the number of design registrations will lead to an increase in the overall costs. Therefore, it is sensible to establish what factors are important in the design and what protection is warranted by the design right if cash is limited. For example, factors that often need consideration include: the number of designs in a single application; number of jurisdictions that the design is to be registered (UK, EU, US, etc.); the duration of the registered design right; and the number of products/applications that are required. Depending on the importance of the design and direction of the company or individual, it may be that they opt for more registrations of designs in an application, i.e. cover more aspects of a single product, but just register in the UK to save some money. Or it could be that it is only a single aspect that is important in the design such as shape or texture, and that having protection over more jurisdictions is needed. Thus, it is always recommended to set out a budget and goal when trying to obtain a UKRDR or CRDR or any sort of intellectual property right, as the costs can easily escalate if not acknowledged from the beginning.

Nevertheless, the benefits of both registered and unregistered designs can often outweigh the financial impact to a company or individual, as you get protection quickly and cost effectively while your products are still on the market and they allow you to take action against a competitor very quickly. They are also very agile in that you can review them every 5 years at the renewal date and decide whether to keep them all, drop some, or keep none.

If you would like to discuss filing for a design registration in UK or Europe, such as UKRD or CRD, or other jurisdiction, or are looking for advice on budgeting for design registration, please do not hesitate to contact us at Murgitroyd where our dedicated Designs Team will be able to assist.

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