In this third of three Bulletins, we consider the key proposals of the Intellectual Property (IP) Bill in relation to UK unregistered design right law. UK unregistered design right provides limited protection to certain designs for up to 15 years. The IP Bill intends to reduce the complexity of the law implementing the right.
Scope of protection
Unregistered design right protection currently extends to any aspect of the shape or configuration of the whole or part of an article. The IP Bill removes the “any aspect of” part, thereby reducing the scope of protection provided. It is expected that trivial or minor features of designs will no longer be protected.
To qualify for unregistered design right, a design needs to be original. A design will be considered to be original if it is not commonplace in the design field in question at the time of its creation. Under current law, it is unclear whether the design field in question relates to that in the UK only or that in the entire world. The IP Bill narrows this requirement such that the design field is only that in the “qualifying countries” (the UK, the EU and several ex-colonies of the UK). This proposal will therefore increase the number of designs which will qualify for UK unregistered design right.
Qualification of a design
At present a design only qualifies for UK unregistered design protection if the designer or the designer’s employer is a “qualifying individual” or a “qualifying person”. Alternatively, if the design does not qualify for protection via the designer or their employer, the design may qualify for protection if the first person to market articles made to the design in the EU is a qualifying person who is exclusively authorised to market the articles in the UK. The law surrounding these qualification criteria is quite complex and the IP Bill has the intention of simplifying it.
The designer or employer will now only need to be a qualifying person, being an individual habitually resident in a qualifying country (see above) or a person, i.e. a legal entity, who has in a qualifying country a place of business at which substantial business activity is carried out. The qualification via first marketing will no longer rely upon the person doing the marketing and will instead simply need to be within the EU. Therefore, a person of any nationality who is the first to market an article made to a design in the EU will qualify for UK unregistered design right.
Ownership following a commission
In a similar manner to UK registered designs, the first owner of UK unregistered design right is the commissioner if the design is created following a commission. As a result, the commissioner owns the UK unregistered design right but the designer owns the EU unregistered design. The IP Bill amends the law such that a designer commissioned to produce a design will own the unregistered design right rather than the commissioner.
Exclusions from infringement
The IP Bill will introduce various exclusions from infringement of UK unregistered design rights that are similar to those in for UK registered designs. In particular, acts which are for private and non-commercial, experimental or teaching purposes will no longer infringe unregistered design right. Acts which relate to using the design on or for repairing ships or aircrafts which are only temporarily in the UK will also no longer infringe.