Design rights are territorial. Within the EU, a UK designer may seek to register their design in the UK or across the EU. In both the UK and the EU, there is also a limited unregistered right.
What is design?
It is 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 material of the product itself and/or its ornamentation.
Design rights are territorial. Within the EU, a UK designer may seek to register their design in the UK or across the EU. In both the UK and the EU, there is also a limited unregistered right.
Registered designs in the UK
What can be protected?
Using intellectual property laws, a design may be registered in the UK if the design is new and has individual character.
New: 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 date of the application for registration.
Individual character: the overall impression of the design made upon an informed user (a person familiar with the designs used in the sector in question) must differ 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 registration.
The following designs cannot be registered:
- those dictated by their technical function, for example a key – this must fit its lock; and,
- any features which are compelled to be of a certain shape and size in order to be able to fit into, around or up against some other product so that either or both of the products can perform their function. For example, while the design for a new rear view mirror may be capable of protection, the joint connecting the rear view mirror to the vehicle will not be capable of protection.
Procedure for protection
A design may be registered by making an application for registration in the prescribed form to the UK Intellectual Property Office.
Ownership
The owner of the registered design is the party listed as the proprietor on the registration certificate.
In general, the designer or creator of the design will initially be entitled to apply to register the design, subject to the following:
- where the design is created in the course of employment, the designer’s employer will initially be entitled to apply to register the design;
- where the design was created before 1 October 2014 and a third party commissioned (and paid for) the creation of the design, the third party will initially be entitled to apply to register the design.
Owner’s rights
The owner of the registered design has the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
This right extends to manufacturing, dealing in, importing, exporting, stocking and using a product incorporating the design.
Duration
A design may be registered for a maximum of 25 years. The design in initially registered for a period of 5 years and this is renewable on the payment of renewal fees every 5 years.
Infringement
Subject to ‘fair dealing’ exceptions, infringement occurs where a person, without consent, does any of the acts that are the exclusive right of the registered design owner.
Remedies
If a 3rd party infringes a registered design, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
- damages for loss of earnings – such damages are usually based upon a reasonable royalty for the use of the design made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; or,
- an account of the profits made by the infringer arising from the infringing use; and/or,
- delivery up or destruction of the infringing articles
Exploitation
A registered design is a valuable commercial asset. The owner can assign (i.e. transfer) its rights to a 3rd party, or grant a licence to a 3rd party to do any of the above acts.
Assignments must be recorded in writing and signed by or on behalf of the person assigning the right in order to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
Unregistered designs in the UK
What can be protected?
Unregistered design right protects original designs. Original means a design is not original if it is commonplace in the design field at the time of its creation.
The following designs are not protected:
- surface ornamentation;
- those that must fit with other articles so that either may perform their function – this is similar to the must fit exception for registered design (see above); and,
- those whose appearance is dependent upon a larger article of which it is to form an integral part.
Procedure for protection
Unregistered design right automatically arises when an original design is recorded in a document or an article has been made to the design.
Practical tips - it is advisable for the author of the design to:
- sign and date their design documents and also keep records of when the first article of the design is made or marketed.
- retain evidence of the date of first creation of the design. If the author is an employee acting in the course of his employment, it will also be helpful to record details of the author’s employment status.
Ownership
In general, the designer or creator of the design will be the first owner of the design, subject to the following:
- where the design is created in the course of employment, the designer’s employer will be the first owner;
- where the design was created before 1 October 2014 and a third party commissioned (and paid for) the creation of the design, the third party will be the first owner.
Owner’s rights
The unregistered design right owner has the exclusive right to reproduce the design for commercial purposes:
- by making articles to that design; or,
- by making a design recording the design for the purposes of enabling such articles to be made.
Duration
The unregistered design right lasts for 10 years after the first marketing of the design, and up to an overall maximum of 15 years from the date of its creation.
Licences of right: In the last 5 years of unregistered design right, any person is entitled to a licence in respect of anything that would otherwise infringe the right. In default of agreement, the licence terms will be set by the Comptroller at the Designs Registry.
Infringement
Design right infringement occurs where for commercial purposes a 3rd party, without consent, does any of the acts that are the exclusive right of the unregistered design owner or authorises anyone else to do so without the unregistered design right owner’s permission. This is known as primary infringement.
A 3rd party may commit what is known as a secondary infringement when he knows or has reason to believe that an article infringes unregistered design right and, for commercial purposes, either:
- has the articles in his possession;
- sells or hires the article or offers the article for sale or hire; or,
- imports the article into the UK.
Remedies
If 3rd party infringes an unregistered design, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
- damages for loss of earnings – like registered design such damages are usually based upon a reasonable royalty for the use of the design made by the infringer; or,
- an account of the profits made by the infringer arising from the infringing use; and/or,
- delivery up or destruction of the infringing articles.
EU-wide Registered designs
It is possible to make a single application to the Office of Harmonisation in the Internal Market to obtain a registered design which is valid in all EU Member States. This is a very similar system to the registered design right in the UK.
Unregistered designs in the EU
An Unregistered Community Design (UCD) is a limited form of automatic protection for new designs with individual character. UCD protection only lasts for a period of 3 years from the date on which the design was first made available to the public within the Community.
The owner of a UCD only has the right to prevent acts of infringement if the contested use results from the copying of the design. An independent design, without copying, will not therefore be an infringement.
Designs outside the EU
The Paris Convention currently has 175 signatory States (including the UK). The Convention provides an applicant in 1 of the signatory States with a 6 month priority period to make subsequent applications in 1 or more of the other 174 signatory States. Any such applications will take priority over those of others filed in the relevant State(s) in respect of the same design.
Potential implications of Brexit
Registered and unregistered Community designs presently apply across all 28 member states. Once the UK has left the EU, these rights will potentially cease to apply within the UK but they will remain valid across the remaining 27 member states.
Subject to negotiations with the continuing EU members and internal UK policy decisions, transitional arrangements for Registered Community Designs (RCDs) will potentially result in one of the following:
- The UK may remain within the EU designs system (and so nothing would change – but this would require the UK to continue to be subject to the EU Court of Justice at least for this purpose);
- There may be automatic arrangements for UK equivalents of all existing RCDs;
- There may be a transitional regime by which existing RCDs may be converted into a UK equivalent subject to the making of an application and/or payment of fees; or
- RCDs may simply cease to apply in the UK. This will cause difficulty because product design owners would not then be able to apply for replacement UK registered designs without special legislation.
The transitional arrangements for Unregistered Community Designs (UCDs) will be more complex because of more fundamental differences between the scope of UCDs and UK unregistered design rights. In addition, it may be the case that, in the future after Brexit, UK designers or manufacturers who wish to enjoy unregistered protection for a UCD will need to first market their product in the EU and not in UK.
There will be no immediate impact at all in relation to UK registered designs (granted by the UK Intellectual Property Office) and UK unregistered designs. Assuming there is no wholesale change in UK design law upon Brexit, UK registered design law will presumably begin to diverge from EU law over time. UK unregistered design law already differs from EU unregistered design protection.
Applicants for new design registrations may wish to apply for UK registrations now in preference to, or in addition to, applications for RCDs in the EU.
