UK AND EU UNREGISTERED DESIGNS - THE BASICS
In the context of intellectual property, the “design” of a product is generally its shape, or ornamentation applied to it, although the exact definition varies between different types of protection. Essentially, the design of a product relates to its appearance, rather than to technical principles of its construction or operation. There are a number of ways in which designs can be protected, and this information deals with unregistered design right in both the UK and the EU. The issues of UK semiconductor topography right and UK copyright are also covered. There are three other information pages on designs: one addresses how to register your design in the United Kingdom another addresses EU-wide registration and the other addresses International registration.
UK UDR gives its owner the right to prevent unauthorised copying of the design in the UK. In contrast to registered design rights, it is not a monopoly right, in the sense that only if a third party produces an article by copying is design right infringed. The owner may also prevent unauthorised dealing, e.g. by importation, possession, sale, hire, offer to sell or hire, in infringing articles provided the party who does so has knowledge or reason to believe they are dealing in an infringing article. The rights extend to designs which are substantially the same as that which is protected.
No formal registration procedure is required (or possible) to obtain UK UDR: it comes into existence automatically upon creation of the relevant design.
UK UDR protection lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first. If articles made to the design are put on sale within the first five years of that term, then the design right lasts for only 10 years from the date of first sale. During the last five years of the term of design right its effect is reduced. During that period, the proprietor must, if requested by a third party, grant a licence, the terms of which will be settled by the UK Intellectual Property Office if not agreed by the parties concerned. This means, effectively, that design right cannot be used to stop copying during this period, but it can be used to generate royalties.
Any new design of the whole or part of an article, providing it is not commonplace in the relevant technical field, is protectable by design right. However there is no UK UDR in:
A UK UDR automatically comes into being upon the making of an article to a particular design or by the creation of a “design document” by a “qualified person” (or as a result of employment by or a commission from such a person). A qualified person is a national or resident of the EU or of certain non-EU countries (i.e. those which offer reciprocal rights to UK nationals. The main territories giving reciprocal protection are New Zealand and (Hong Kong). A company may count as a “qualified person”. The “design document” must be a record of the design, but it may take any form, e.g. a drawing, photograph, model, prototype, written description, data stored in a computer or on a disc, or even a knitting pattern. The owner of the design right is the designer (or his or her employer or commissioner, if applicable).
A UCD gives its owner the right to prevent unauthorised copying of the design throughout the European Union. It is not a monopoly right, in the sense that only if a third party produces an article by copying is design right infringed. The owner may also prevent unauthorised dealing, e.g. by putting on the market, importation, exportation or possession, in infringing articles. The rights extend to copies which do not produce on the informed user a different overall impression. A UCD cannot be used to control the movement of goods put on the market in the EU by the proprietor of the design, or with their consent.
No formal registration procedure is required (or possible) to obtain a UCD: it comes into existence automatically when the design is first made available to the public within the Community (see below).
A UCD lasts for three years from the commencement date (see below).
They are available to any person, or company, irrespective of nationality.
The protected design may be the appearance of the whole or part of a product (including its inside) and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product. The product may even be a graphic symbol, e.g. a computer icon, or a typographical typeface. The design must meet two criteria. It must:
Both these criteria are judged with reference to designs which have been made available to the public before the commencement of the UCD (prior designs). Designs may be made available by publication, use or any other means.
The right commences when the design is deemed to have been made available to the public within the Community. This happens when the design is published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. This wording is based on that of the “Safeguard Clause” in Registered Design Law and is thought only to not include disclosures which are obscure, due to their extent, location or time of disclosure. Our current understanding of the law in that this disclosure must occur inside the geographical boundaries of the Community.
For a UCD to be Novel, it must differ from prior designs by more than immaterial details.
For a UCD to possess individual character, it must produce a different overall impression on the informed user from prior designs. In many cases, the informed user is likely to be the end user of the product. In fields where the designer has less design freedom, the difference between protectable designs and prior designs will not be as great as where the designer had complete design freedom. This is also reflected in the infringement rights arising from the UCD.
Complex products are defined as products which are composed of two or more replaceable component parts which permit disassembly and reassembly of the product. The UCD in component parts of such products only extends to component parts which remain visible during normal use of the complex product. Further, the repair of a complex product so as to restore it to its original appearance by the use of a component part does not infringe a UCD for the design of that component part. This is aimed at continuing to permit the manufacture and sale of “non-genuine” car parts, for example, even if such parts are protected.
A UCD cannot protect features of a design which are solely dictated by the product’s technical function, or features which are required to permit the product to be connected to or placed in, around or against another product so that either product may perform its function. However, a design which serves the purpose of allowing the assembly of modular products may be protected. Designs may not incorporate protected emblems which include, for example, the Olympic symbols, Royal arms and national flags. Also, they may not incorporate third parties’ trade marks or copyright material.
The owner of the UCD is the designer, or his or her employer if the design is developed by the employee in the execution of their duties or following the instructions of their employer.
Designs which relate to a semiconductor topography (i.e. the layout of a pattern in or on a semiconductor product) are also protected by UK UDR. All of the above comments in relation to UK design right also apply to semiconductor topography right, with the exception that as more overseas countries allow protection, qualifying individuals can come from states including Australia, Canada, Japan and the USA.
Copyright is more usually thought of as applying to books, music, films, etc. However in the area of industry and commerce there is some overlap between design right and copyright. Copyright is an unregistered right that applies to some industrial designs falling outside the scope of UK unregistered design right; these will usually be such creations as logos, patterns to be applied to an article and the design of the surface decoration of an article. As with design right, copyright does not need to be registered and only gives protection against copying of the design. Under present law, copyright lasts for the life of the author plus 70 years. Until recently, if the design was an artistic work which had been industrially applied to articles which had been sold, then the copyright only lasted for 25 years from the end of the calendar year in which such articles were first marketed. However as of July 2016, a change in law means that copyright on such articles now lasts for the full ‘life plus 70 year’ period.. For a comparison of key features of UK unregistered design right and community unregistered designs please see the downloadable pdf file of this page.
This information is simplified and must not be taken as a definitive statement of the law or practice.