Designs Practice Notice (DPN) 4/03

Published 24 June 2003

Requirement of novelty and individual character

Section 1B(1) states that, to be registrable, a design must:

• "be "new", and
• "have "individual character".

How is "new" defined?

A design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date. (Section 1B(2)).

How is "individual character" defined?

A design has "individual character" if the overall impression it produces on the 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 relevant date. (Section 1B(3)).

What is "the relevant date"?

The relevant date is the date that the application is made (or is treated as having been made). (Section 1B(7)).

Can the design be published prior to the application for registration?

There is a 12 month grace period before the relevant date, during which time the designer can publish his or her design. (Section 1B(6)(c)).

What if the design is published in another part of the world?

Registered design protection may be lost if the design is published anywhere in the world, where it could reasonably have come to the attention of someone carrying on business in the European Economic Area. (Section 1B(6)(a)).

What if the design is shown to someone else under a confidentiality agreement?

Registered design protection is not lost if the design is disclosed under express or implied conditions of confidentiality. (Section 1B(6)(b)).

What if someone else makes the design public after the designer has shown it to them?

Registered design protection is not lost if the design was made public during the period of 12 months immediately preceding the relevant date by someone acting on information provided by the designer, or by abusing trust placed in them by the designer. (Section 1B(6)(d) and (e)).

How is novelty determined?

There is no requirement to perform an automatic search on novelty grounds at examination stage. See the notice entitled "Cessation of Novelty Search, Section 3(3) of the Registered Designs Act 1949 (as amended)" and published in Designs In View dated 21 April 1999. In practice, Designs Examiners will only raise an objection under Section 1B(2) on the basis that the design is not "new" if they are aware of a prior publication of the same design, and have some documentary evidence on which to base the objection. For example, the exact same design of a well known cartoon character would be subject to objection supported by published material that pre-dates the application. Equally, if the Examiner is aware of an earlier UK or Community application or registration for the exact same (or virtually identical) design, then that earlier case will be cited in support of the objection in the event that it reaches registration.

Any objection may be challenged by the applicant or the legal representative, with an ex parte hearing held, if requested, to determine the outcome.

If the application becomes registered, it may still be challenged at any time in invalidation proceedings made to the Registrar under Section 11ZB of the Registered Designs Act 1949 (as amended), or by application to the court for rectification of the register under Section 20. The possible grounds for invalidity of registration are listed in full under Section 11ZA, and includes the claim that a design was in the public domain before the relevant date. In the case of registered designs, it is the application date or the international priority date that will count as the earliest date to determine novelty.

How is individual character determined?

In considering individual character within the meaning of Section 1B(3), the Examiner must bear in mind the degree of freedom that the designer has in creating the design. Is it a design applied to a "close field" of goods where there is little room for manoeuvre in terms of product design? If so, relatively small differences may be more significant. (Section 1B(4)).

The "individual character" test is a much broader and more difficult test than the simple novelty test under Section 1B(2), which just considers whether or not a design has been published before. The Examiner must consider the two designs (from the point of view of the "informed user") and decide whether or not they would create a different overall impression. So, the earlier design may have several features which are clearly different from the one in the application when viewed side by side. But is the "overall impression" different? For example, a tall narrow drinking mug with a small round handle may be compared with a tall narrow mug with a slightly larger round handle. The differences in the handles may be quite apparent when viewed side by side, but the overall impression of the two mugs (tall, narrow, round handle) may be the same.

As there is no requirement to perform an automatic search on novelty grounds at examination stage, Examiners will only raise an objection on the grounds that the design lacks individual character if they believe to their own knowledge that the design clearly does not differ in its overall impression from a previously published design or designs, and this should be considered from the point of view of the likely "informed user". The Examiner will produce documentary evidence to support such an objection, although clearly in cases such as this, the design will not be identical to the one shown in the application; it is sufficient that it would create the same overall impression on whoever the informed user is considered to be in each individual case.

As with the novelty objection, any "individual character" objection can be challenged by the applicant or the legal representative, with an ex parte hearing held, if requested, to determine the outcome.

Once a design is registered, it may be challenged at any time in invalidation proceedings made to the Registrar under section 11ZB of the Registered Designs Act 1949 (as amended), or by application to the court for rectification of the register under Section 20.

Any enquiries about this notice should be addressed to Janet Folwell:

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

Tel: +44 (0)1633 814191
Fax: +44 (0)1633 811174