Design rights

Design rights

Contents

Design rights

Two different forms of design rights exist. The registered design system is for the visual appearance of designs. The unregistered design system is more for functional aspects of the design.

Registered design rights

In order to obtain a registered design, an application has to be made to the Designs Registry of the Intellectual Property Office. The design right is then subjected to a process of examination, during which the applicant can discuss any objections raised by the examiner. If the objections are overcome, the design right is registered.

In order to be registered, the design must be new, i.e. it has not been registered or published in the UK before the date of your application. The design must have individual character, i.e. must give the impression to the informed user of being different from any other design already available to the public. Lastly, a design will not be registrable if it is excluded from registration. The Registered Designs Act 1949 states the following as excluded from registration:

(1) Where the purported design does not fall within the definition of a design in the 1949 Act, which 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 or materials of the product or its ornamentation'. This definition is therefore concerned with the overall visual appearance of a product. Internal, non-visible component parts of a product will not constitute a design for these purposes.

(2) Where the design contains features or shapes or configuration dictated solely by function. Designs cannot be registered if everything is dictated solely by function. Objects such as furniture, table lamps and dinner plates are normally bought with aesthetic considerations in mind and will be registrable. The difficulty lies with articles which have had a design applied mainly to make them stand out on supermarket shelves.

(3) Where the design is immoral or contrary to public policy

(4) Where the design is in conflict with an earlier application or registration under the 1949 Act

Once registered by the Intellectual Property Office, a registered design right gives the owner the right to make, offer, sell, import or export a product to which a design has been applied, often for their commercial benefit. The owner can also allow third parties to use the design in consideration for payment.

A registered design right gives the owner protection and therefore allows them to take legal action against the third party who uses the design without permission. Under the 1949 Act the test used to determine whether a design has indeed been infringed is whether a person without the permission of the registered proprietor has committed any of the acts which by virtue of Section 7 of the 1949 Act are the exclusive right of the registered proprietor.

Infringement of the right

An infringement of a registered design right is committed by a person who without the licence of the registered proprietor does anything which is the exclusive right of the proprietor namely:

  • When a person incorporates a design not substantially different from the registered design to make it available for commercial purposes
  • To import for commercial purposes
  • To sell
  • To hire
  • To offer, expose for sale or hire

Unlike trade marks, there are no 'classes' of goods for registered design rights. Separate applications are needed for each article to which the design is to be applied unless the articles belong to a set, e.g. a tea-set.

Duration of registered design rights

The maximum duration of a registered design is 25 years. More precisely, it is five 5-year terms with renewable fees payable after each fifth year.

Defences

Like defending a patent action, defences to an action for infringement of a registered design right include an attack on the validity of the registration, e.g. that the design was not new when registered. In addition, although technically not a defence, a party may avoid having to pay damages or an account of profits, where he or she can show that they neither knew nor had reasonable grounds for supposing that the design was registered. Simply marking the goods 'registered design' is not enough to constitute notice, unless accompanied by a registration number.

Remedies

The remedies for infringement include the following:

  • Damages (usually money)
  • An account of profits
  • An injunction against the infringer to get them to stop
  • Order for delivery-up or destruction of the infringing article

Unregistered Design Rights

Unregistered design rights are governed by The Copyright, Designs and Patents Act 1988. These rights arise automatically when an original design has been either recorded in a design document or an article has been made to that design.

'Original' is defined as anything 'not commonplace in the design field in question'. It does not have to be novel to become an unregistered design and there is no need for any eye appeal.

The 1988 Act defines a design right as:

'Any aspect of the shape or configuration (whether internal or external) of the whole or part of an article'.

This is a wide definition and is therefore broad enough to include the functional characteristics of products. This definition also includes aesthetic, non-functional features and so overlaps with registered designs slightly. Furthermore, it allows for the protection of internal components of machines that are not readily visible. To qualify for unregistered protection, the design must:

  • Be original
  • Exist in a tangible form
  • Be the work of a qualifying person (see below under the heading 'Ownership of rights')

Exclusions

There are some items that are specifically excluded from protection as unregistered designs. These include the following:

  • A method or principle of construction
  • Surface decoration, e.g. wallpaper, clothes etc.
  • Features of shape or configuration of an article which:
  • Enable the articles to be connected to, or placed in, around or against, another article so that either article may perform its function
  • Are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part

Ownership of the rights

The creator of the design owns the unregistered design right unless it was produced as a result of accepting a paid commission or during the course of employment. In these circumstances, the commissioner or the employer in question will own the design.

A design right can be transferred by its owner (whether by way of sale or gift) to other people. This must be done in writing and signed by or on behalf of the owner.

A design right only exists in a design if the designer, the commissioner of the design, the designer's employer or the person first marketing products incorporating the design are qualifying persons under the 1988 Act. 'Qualifying persons' are individuals or corporations with legal personality in the UK; member state of the EEC; any country that grants reciprocal rights to the United Kingdom/EEC citizen.

Duration of protection

The period of protection is the shorter of the following two periods:

  • 15 years from the end of the calendar year in which the design was first recorded in a design document or an article made to that design
  • 10 years from the end of the calendar year in which the articles were made available to the public

Infringement of the right

The 1988 Act generally provides that a design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of the Act is the exclusive right of the design owner. Examples of the actions which would constitute design infringement include:

  • Copying the entirety of a design-protected article or a relevant portion of that article
  • Engineering a design-protected article to make another article
  • Engineering a design document for the purposes of making articles from it, etc.
  • Making articles exactly or substantially similar to the design

A secondary infringement occurs when a person who knowing, or reasonably believing, that the article is an infringing article, does any of the following:

  • Imports the article into the UK for commercial purposes
  • Has the article in their possession for commercial purposes
  • Sells the article, lets it for hire or offers the article for sale or hire in the course of business

Remedies

The remedies for infringement include the following:

  • Damages (usually money)
  • An account of profits
  • An injunction (or, in Scotland, interdict) against the infringer to stop them
  • Order for delivery-up or destruction of the infringing article