What is unregistered design right?
Unregistered design right is a right which can be used to prevent unauthorised copying of an original design.
Two forms of unregistered design right exist. The first covers the UK only and has been available since 1989. The second is a relatively new Community unregistered design right, covering the whole of the European Community, which has been available since 2002. The two forms of unregistered design right co-exist, but differ from one another, so some designs may be protected by both rights, or only one, depending upon the circumstances. Advice will need to be sought on a case-by-case basis.
How is unregistered design right obtained?
UK unregistered design right comes into existence automatically when an original design is created, whether on paper, as a model or using a CAD program.
Community unregistered design right comes into existence automatically when a new design is first made available to the public within the European Community. A design is made available to the public when it is disclosed in any way, such as on paper or by demonstration, unless the disclosure could not reasonably have become known to those working in the field concerned within the European Community.
In both cases, it is not necessary to register the right with any authority, but because design disputes can require proof to be given in court, verifiable records should be kept of when, and by whom, designs are created.
Unregistered design right duration
UK unregistered design right lasts for the shorter of:
- 15 years from the end of the calendar year in which the design was first recorded or an article was first made to the design; or
- 10 years from the end of the calendar year in which an article made to the design was first available for sale or hire.
For the last five years of the UK design right term, any person is entitled to a licence as of right to make, sell or import the design in the UK. The form of any licence, which of course can be royalty earning, can be agreed between the design right owner and the applicant for a licence. However, if the parties cannot agree terms either party may apply to the Comptroller of the UK Intellectual Property Office to settle the terms.
Community unregistered design right lasts for 3 years from the date on which the design is first made available to the public within the European Community.
What designs are protected by UK and EC unregistered design right provisions?
UK unregistered design right protects any aspect of the shape or configuration of the whole or part of an article whether aesthetic or functional in nature.
Community unregistered design right protects the appearance of the whole or a part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product or its ornamentation. The product may be any industrial or handicraft item, as well as packaging, get-up, graphic symbols and typefaces.
However, both forms of unregistered design right protect only the appearance of an article and not its technical function. Patent protection should be considered for new functional features that are not dependent on the appearance of the article.
What features are excluded from UK and EC unregistered design right protection?
Certain design features are specifically excluded from UK and from EC unregistered design right protection. These include design features which enable one article to be connected to another, and design features of component parts which are dependent on the appearance of the complete article in which the components are found.
Surface decoration applied to an article is also excluded from UK unregistered design right protection.
Who owns UK or EC unregistered design right?
The creator of an original design owns any UK unregistered design right in it, unless commissioned to create the design or the design was created in the course of employment. Then, the design right passes automatically to the commissioning party or employer. Where designs are created overseas or where the individuals or companies concerned are not nationals or resident in the UK, the rules on ownership become somewhat complex and should be considered on a case-by-case basis.
The creator of a design owns any Community design right in it, unless he created the design in the course of employment, in which case the right passes automatically to the employer.
How are UK and EC unregistered design right enforced?
UK unregistered design right is enforced by legal proceedings in a UK court. Community unregistered design right is also enforced by legal proceedings, normally in a court in the European Community member state in which the infringement is occurring.
If successful, such an action can result in an injunction to stop further infringements as well as an award of damages in respect of past infringements.
It is important to remember that unregistered design right is only infringed by copying. A design created independently, however similar, cannot be an infringement.
How can unregistered design right be used commercially?
These rights are important commercial assets which can be used in a number of ways, including:
- as a means of stopping the copying and counterfeiting of goods;
- as part of a legal framework for the licensing of designs so that the design right owner can earn an income through royalties paid on licensed products;
- the rights can be traded as assets.
Why do you need help from a Patent Attorney?
A patent attorney can advise on what rights exist in a design, on the procedures by which a company can ensure that it owns design rights in all its products (even if designed by a third party) and how those rights can be exploited.
What can Boult Wade Tennant offer?
Boult Wade Tennant is a professional practice specialising in design right and all other aspects of intellectual property law. The firm provides an efficient service and offers sound commercially-orientated advice for companies and individuals. Our patent attorneys have extensive experience of design infringement actions and of anti-counterfeiting measures.
Our London office is located near to the London filing office of the UK Intellectual Property Office and is close to the High Court and the Patents County Court. Boult Wade Tennant also has offices in Reading, Oxford and Cambridge.