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16 September, 2014

UK unregistered design law is changing with effect from 1 October 2014 when the Intellectual Property Act 2014 comes into force. The principal changes relate to the definition of a design to which unregistered rights may apply, the ownership of designs and certain exceptions from infringement of unregistered designs. The Act also addresses aspects of the law on registered designs. These are covered in our accompanying Bulletin “Intellectual Property Act 2014: Changes to Registered Design law”.

Definition of a design
The definition of a design to which UK unregistered design right may apply has been slightly narrowed. Previously, for the purposes of UK unregistered designs, a design was defined as “any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The reference to “any aspect” will now be removed.

This means that while unregistered design right may still exist in the design of a whole item, or a particular part of that item, it will no longer exist in a “part of a part”, i.e., some small and trivial detail of that part.

In addition, UK unregistered design right is only available if a design is not “commonplace in the design field in question at the time of its creation”. This definition has been refined and will now refer to “commonplace in a qualifying country”. This will include the UK, EU and certain other countries which have reciprocal arrangements with the UK for protection of UK rights under their own laws.

Ownership of designs: commissioned designs
Previously in UK design law, a newly created design was owned by the designer, unless the designer was either employed or commissioned to produce the design, in which case, the employer or the commissioner became the owner. It is still the case that an employer will own a design produced by its employees as part of their job. However, in the case of commissioned designs, ownership of the design will remain with the designer unless there is a contract in place to transfer ownership to the commissioner.

This will apply to both UK registered and unregistered designs, and brings the UK law in line with that governing EU registered and unregistered designs.

Therefore, a person who commissions an independent designer to produce a design for them must ensure that ownership is discussed at the outset and any transfer of the design to the commissioner is set out in a contract.

Ownership of designs: eligibility for UK unregistered design right
Previously, only certain people and legal entities were eligible for UK unregistered design right. The Act simplifies and extends the eligibility provisions. Under the new law, those who are habitually resident or economically active in the UK, the EU or certain other qualifying countries will be able to claim UK unregistered design right, irrespective of their nationality.

Infringement of UK unregistered design right: exceptions
The Intellectual Property Act introduces some specific activities in which the use of someone else’s design is permitted without infringing the unregistered design right. These exceptions are when a design is used for private, non-commercial purposes, or for experimental or teaching purposes. There is also an exception when equipment is used or repaired on ships or aircraft which are not UK registered but are temporarily in the UK.

These changes harmonise with the EU system and the position on copyright infringement, and will make the system more uniform and easier to understand.

Designs opinion service
The UK Intellectual Property Office already provides an opinion service for patents whereby opinions can be requested on questions of validity of a patent relating to novelty or inventive step, and on questions of infringement of a patent. A similar service is now to be introduced relating to designs, although this may not be available until late in 2015. It will be possible to request opinions on the subsistence, term and infringement of unregistered design right, and issues relating to registered designs. The opinions provided will be non-binding but low cost and impartial. It is hoped that this service will assist in avoiding and resolving disputes concerning designs.

For further information, please contact Sarah Merrifield or your usual Boult Wade Tennant adviser.