Just do (not do) it: destroying the novelty of your own design

Tom Griffin, Solicitor

The recent UK IPO decision (O/0589/26), which concerned an application by Nike for a design registration to be invalidated, serves as a cautionary tale for designers who disclose their own designs prior to seeking UK registered design protection.

When does a design qualify for protection?

A design may only be registered if it:

1. is new (i.e. no identical design, or no design whose features only differ in immaterial details, has been disclosed before the relevant date); and
2. has individual character (i.e. no design which produces the same overall impression on the informed user has been disclosed before the relevant date).

The relevant date (as in this matter) is, usually, the application date.

The importance of timing

Certain disclosures are exempt for the purposes of the assessment of novelty and individual character.  For designers, it is important to be aware of the 12-month grace period.  This excludes disclosures made by the designer in the 12 months immediately preceding the relevant date.

In this matter, the relevant date was 12 June 2024.  Fortunately for the Nike, the proprietor – in their counterstatement – said that they had been using the design since 2021.  Slam dunk: the registration was declared invalid.

For designers, the key takeaway is to think before you disclosure your own designs (whether online, in-person, or otherwise). Once novelty has been destroyed, you cannot get it back.

If you have any queries relating to registered design subsistence, infringement, or invalidity, please contact a member of our intellectual property team on 0161 832 3434, or at [email protected].