Unregistered Design Right: Scope of Protection

The scope of protection afforded by UK unregistered design right (UDR) was considered in May 2008 by the High Court in Rolawn Limited v Turfmech Machinery Limited. The case emphasises the limitations of unregistered design right and the advantages of registered design protection and patents.

Background
In the UK, two parallel forms of unregistered design right exist, the original UK-only form introduced by the Copyright, Designs and Patents Act 1988 and the newer Community Unregistered Design Right introduced by the Community Design Regulation in 2001 and available uniformly across the EU. The two rights are defined in very different terms. This case was concerned only with UK Unregistered Design Right.

UK UDR protects original, non-commonplace designs, where a design is "any aspect of the shape and configuration (whether internal or external) of the whole or part of an article". There are a number of exclusions, for this case the relevant one being that design right does not subsist in "a method or principle of construction". UK UDR is infringed only by copying of the design.

Facts of the case
Rolawn is a turf grower and seller which had designed and built a wide-area mower for its own use. The mower was not made available to others for purchase or inspection, although some publicity photographs had been circulated and the mower could occasionally be seen in use on Rolawn land. A registered design for the mower was also obtained.

At a later date, Turfmech made and sold two wide-area mowers of a similar design.

Rolawn claimed that Turfmech had infringed both its unregistered and registered design rights. Turfmech counterclaimed that no UDR existed because the designs were commonplace or were methods or principles of construction. Turfmech also counterclaimed that the registered design was invalid because the design lacked individual character. The attack was based on a "squeeze argument" that their machine only gave a similar overall impression to the Rolawn machine if it was considered at a high level of generality, but at that high level of generality, the registered design did not produce a different overall impression on the informed user from that produced by the prior art.

Judgement on unregistered design right
The High Court held that there was no infringement of UDR. The Court emphasised that it was important to isolate the design in respect of which protection could be properly claimed and this must fall within the definition of a design. The UDR was confined to what could actually be seen in the article itself or a drawing of it. In other words, the protected design must be a physical manifestation of an idea and one cannot claim design right in some underlying design concept; that would be the field of patents. Furthermore, a design should not be construed so widely as to give the proprietor a monopoly in a method or principle of construction.

In this case, there was no evidence of explicit copying of the design itself although there was copying of general ideas. Thus, what Turfmech had taken essentially were the methods or principles of construction, but the overall visual impact of the two machines was different.

Judgement on registered design right
The Court held the design registration to be valid, but not infringed.It was noted that the perception of the informed user was central to both validity and infringement. When comparing the overall impression of different designs, the higher the level of generality, the less differences there were likely to be between them. In comparing designs, what matters is what the designs actually look like rather than any verbal description or comparison of them.

In this case, at any sensible level of generality, the Rolawn mower did produce a clearly different impression from the prior art and therefore the registration was valid. Equally, however, the Turfmech machine clearly produced a different overall impression from the registered design and therefore there was no infringement.

Conclusions
The case emphasises the key features of unregistered and registered design rights.

There can be UDR in an overall design, even if it is made up of a number of elements which separately are commonplace. Nevertheless, UDR can only subsist in a particular physical manifestation of a design and not in any abstract concept or principle underlying it.In addition, unregistered design right is only infringed by copying.

In contrast, a registered design is a monopoly right which can be enforced against any infringer, whether there is actual copying or not. Registered designs too are concerned with the actual appearance and not an underlying concept, but to protect that appearance a registered design is safer and stronger than reliance on unregistered design right.

Where a design of a product encompasses not just its appearance, but principles or concepts underlying it, then patent protection should always be considered along with design protection.

Boult Wade Tennant

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