UK: The New Registered Designs Regime

A recent EC Directive has led to significant changes in the law of registered designs. This article provides a brief overview of the law relating to protection of designs in the light of these changes.

Many businesses wish to protect the design of a product, which may be an important feature affecting customer choice. Whereas inventions are protected by registering a patent and trade marks protected by registration as a trade mark, designs are governed by 3 separate rights. The law of trade marks and passing off may protect certain product designs, for example a distinctive lemon juice container, however, protection for designs is primarily governed by registered design right, copyright and unregistered design right.

The law in this area has now been changed, although a brief summary of the old regime will serve to illustrate the significance of the new chances. Under the Registered Designs Act 1949, design right was afforded for a maximum of 25 years for designs which consisted of "features of shape, configuration, pattern or ornamentation applied to an article by an industrial process, being features which in the finished article appeal to and are judged by the eye".

Purely functional designs were not registrable and certain designs, such as methods or principles of construction and features of the shape or configuration dictated solely by function were expressly excluded. A key feature of the old registered design regime was protection of industrial designs with "eye appeal". A registered design was deemed to have been "industrially exploited" if 50 or more had been made.

Following the enactment of the new Registered Designs Regulations 2001 (SI2001/3949) the EU Designs Directive was implemented into UK legislation. Changes to the regime include the following;

• There is now no express reference to "eye appeal" in the legislation.
• There is no longer a requirement for the product to be "industrially exploited". Thus items of handicraft, and even single items could be protected by registered design right. The Patent Office has stated that works of art such as sculptures could be registered as designs in order to enable artists to control licenses for replica merchandise.
• The regulations require a design to be new, and a design is stated to be new if " no identical design or no design whose features differ only in material details has been made available before the public before the relevant date." This is a much wider test as disclosure in any country may cause an application for registration to fail on the grounds of lack of novelty. A proviso has been offered by the Patent office which states that "a designer making Tudor style jewellery, seeking a registration, would not have their application refused if it was discovered that, quite by chance, the same jewellery existed in a remote museum". How this is applied in practice remains to be seen.
• The regulations have introduced a new concept of "individual character". A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such user by any design which has been made available to the public before the relevant date.
• The definition of design has been widened to include "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or material of the product or its ornamentation."
• The regulations do not allow for registration of designs which subsist in features of appearance of a product which are solely dictated by the product’s technical functions. However, this does not prevent registered design rights subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system. In other words, protection now applies to parts of products and components.
• There is a grace period of 12 months which applies to the novelty period. Designers are thus allowed to market their products and apply for registration if they become aware that the product has commercial value and should be protected within this timescale.

The above changes have considerably widened the protection afforded to creators of designs, and the changes have generally been welcomed. There are a number of uncertainties relating to the interpretation of certain provisions and it will be interesting to see how some of the new concepts are applied in practice.

Copyright protection for registered designs remains unchanged, and as with copyright for books and music there is no need to take any action to register this right. Design drawings and models are protected automatically by copyright but there is no infringement by making a finished article from a design unless that finished article is entitled to copyright itself. Copyright as relating to designs broadly protects artistic works which are not commercially exploited.

From the 6^th March 2002 there will be two separate unregistered design right regimes in the UK, adding another layer of complexity to this area. UK unregistered design right lasts for a maximum of 15 years from the end of the year the design was first recorded in a design document or a product was first made to the design. If the products manufactured in accordance with the design are put onto the market within 5 years from that date, then the design right will last for 10 years. The design must be "original" and design is specified as not being original if it is "common place in the design field in question at the time of its creation".

The EC unregistered design right will last for 3 years from the date on which the design was first made available to the public in the EU. A key difference between the EC and UK unregistered design right is that the UK right does not protect surface ornamentation.

Counsel Regulation EC number 6/2002 on community designs paved the way for the introduction of a Community Design Right, which will last for up to 25 years. The Community Design Right is unlikely to be introduced before 2003

For further information on this topic, please contact Aron Dindol of this firm.