Unregistered design rights

Two different forms of design rights exist: registered design rights and unregistered design rights. Unregistered design rights protect the appearance of a purely functional product. Examples of items protected by unregistered design right are functional articles with no aesthetic appeal such as agricultural tools. Different parts of the same article may or may not be protected.

Requirements for protection

Design right protection can extend to 'the shape or configuration (whether internal or external) of the whole or part of an article'.

Part only of a design may be protected by design right provided that the relevant part is not commonplace at the time of creation or excluded by any other provision of the Copyright, Designs and Patents Act 1988 Act. By contrast with registered designs, there is no exclusion for designs which serve a purely functional purpose.

A design must be original to qualify for protection. However, although a design could be original in its combination of shape and surface decoration, it could nonetheless fail to attract protection because the 1988 Act treats the separate aspects of shape and decoration differently, the former being subject to design right law and the latter copyright law. A design will not be original if it is 'commonplace' in the design field in question at the time of its creation.

Design right cannot exist until one of the following conditions has been met:

• The design has been recorded in a design document.
• An article has been made to the design.

The term 'design document' covers any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise. What is important is that a record of the design exists and that the design can be easily identified. The term for design right will run from the creation of the record.

Qualification for protection

For a design to be protected, either:

• the designer must be a qualifying person; or
• the employer of the designer must be a qualifying person.

If these tests are not satisfied, a design may still be protected if the first marketing of articles made to the design has been undertaken by a qualifying person in a qualifying country.

A 'qualifying person' means:

• an individual habitually resident in a qualifying country; or
• a body corporate or other body having legal personality which is formed under the law of a part of the United Kingdom or another qualifying country, and has in any qualifying country a place of business at which substantial business activity is carried on.

The definition of 'qualifying country' covers the UK, the Channel Islands, the Isle of Man, Gibraltar and any country designated by the government as qualifying for reciprocal protection, which includes Hong Kong, New Zealand and certain Caribbean islands.

Exclusions

Design right does not exist in a method or principle of construction. It only protects the design as shown rather than the method of achieving it. If the method or principle concerned is an invention, it may well qualify for patent protection, and the exclusion is designed to ensure that there is no overlap between the scope of design right and patents.

Design right does not exist in the features of shape or configuration of an article which:

• enable the article to fit with another article so that either article can perform its intended function (the 'must fit' exception); or
• are dependent on the appearance of another article of which the article is intended by the designer to form an integral part (the 'must match' exception).

Design right does not exist in mere surface decoration. This exclusion covers 2D designs on 3D articles. However, functional surface patterns which have a 3D aspect may qualify for protection.

Ownership

The basic rule is that the designer is the first owner of design right in their work. The 'designer' is the person who creates the design or, in the case of a computer-generated design, the person by whom the arrangements necessary for the creation of the design are undertaken. This rule does not apply to designs created by an employee in the course of their employment, when the employer will be the first owner of the design right.

Duration

Design right lasts for the lesser of:

• 15 years from the end of the calendar year when the design was first recorded in a design document, or (if earlier) from when an article was first made to the design; and
• 10 years from the end of the calendar year when articles made to the design were first made available for sale or hire.

The design right will be subject to the grant of licences of right in the last 5 years of the term.

Rights granted

The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes by making either:

• Articles to that design; or
• A design document recording the design for the purpose of enabling such articles to be made.

Primary infringement occurs when a person, without the licence of the design right owner, does or authorises another to do anything which is the exclusive right of the design right owner. 'Commercial purpose' is defined as an act being done with a view to the article being sold or hired in the course of a business.

'Making articles to the design' means copying the design so as to produce articles exactly or substantially to that design. There will, therefore, be no infringement if an alleged infringer has independently produced, and made articles to, the same or a substantially similar design: as in the case of copyright (and in contrast to the position with registered designs) copying must be established.

With respect to 'Making a design document recording the design for the purposes of enabling articles to be made to the design', the maker of the design document will still be committing an infringing act even if they do not in fact go on to manufacture the articles to which the design relates, provided that they made the drawing for the purpose of reproducing the design for commercial purposes.

Licences of right

In order to prevent owners of design right from abusing monopoly powers over mainly functional articles, the 1988 Act provides for any person to be entitled to a licence in the last five years of the term of the design right to do anything as regards the design right which would otherwise be an infringement of the right. If the parties are unable to agree the terms of the licence, the terms will be settled by the Comptroller of Patents, Designs and Trade Marks.

Design rights and copyright

Unregistered design rights and registered design rights may co-exist; infringement actions may be taken in respect of either or both rights.

Unregistered design rights and copyright may co-exist, but if it is possible to sue for copyright infringement, that action must be pursued: an action for design right infringement may not be brought.

Brexit and Unregistered Community Designs

An Unregistered Community Design (UCD) is enforceable only in EU member states. Brexit means that holders of these designs lost their rights in respect of the designs to the extent they had effect in the UK.

However, the UK-EU withdrawal agreement provides that the holder of a UCD arising before the end of the transition period will become the holder of an unregistered design right in the UK having the same level of protection as the UCD would otherwise have had (continuing UD). The length of protection of the continuing UD must be at least as long as the remaining period of protection of the corresponding UCD.