UK: Imminent Changes To Registered Design Law

Last Updated: 6 June 2001
Article by Astrid Arnold

Important changes to UK registered designs law will be introduced with effect from 28 October 2001. The changes will implement the European Designs Directive (98/71), the aim of which is to harmonise the main features of registered design laws in the EU member states. Unregistered design right and copyright are not affected.

The Patent Office is currently consulting on some of the more minor aspects of the way in which he changes are to be introduced, but the main features of the new law are determined by the Directive and this cannot be changed.

Key points of the new law will be that:

      1. Designs Will No Longer Be Registered In Respect Of Specific Types Of Articles
      2. The protection given to a design will extend to any product in which the design is incorporated. So, for example, a design registered in respect of a teapot could be infringed by being used on a vacuum cleaner. The Patent Office has indicated that applicants will still be required to state on the application form the type of article to which the design will apply. However, this is intended to aid classification and will not affect the scope of protection given to the design.

      3. A Wider Range Of Designs Will Be Capable Of Registration
      4. The definition of what can be registered will be broadened to include all aspects of the appearance of a product including texture and materials. The current requirement that only designs with "eye appeal" can be registered will go, potentially opening the way for the registration of more functional designs.

        However, there will be a specific exclusion for designs dictated solely by technical function. The extent to which functional designs will in practice be registrable under the new regime depends therefore on how this exclusion will be interpreted. Current UK case law (interpreting a slightly differently worded exclusion in the current law) suggests that it should be interpreted as meaning that the designer only had functional concerns in mind when making the design and did not in fact produce something with eye appeal, so excluding the vast majority of functional designs. It remains to be seen, however, whether this approach will be followed by the courts in interpreting the new law, particularly in the absence of a requirement of "eye appeal".

        The current exclusions for items of primarily literary or artistic character and for portraits of living or recently dead people will also go so that, for example, post cards and posters with paintings on them, calendars and sculptures could be protected. Potentially a portrait of a famous person could be registered. It remains to be seen, however, how such an application would be dealt with in practice. Conventional portraits may find it hard to meet the new test of "individual character" (see below).

      5. Stricter Conditions For Registration, But Wider Protection Once Registered
      6. To qualify for registration a design will need to be "new" and to have "individual character". It will be regarded as new if it differs (in more than immaterial details) from existing publicly available product designs. For this purpose a "publicly available" design is one which could reasonably have become known in the normal course of business to the circles specialised in the sector concerned in the EEA. An explanatory memorandum by the European Commission makes clear that this formulation is intended to avoid designs being invalidated by prior designs which are only available in "museums and remote places".

        A design will have "individual character" if the overall impression it produces on the informed user differs from the overall impression produced by any such existing publicly available design. In many cases it seems that the "informed user" will be the consumer, but in some cases it could be somebody else, such as the person repairing the design.

        These requirements are likely to amount to a more stringent test than that under current law, where a design must differ from existing designs published in the UK in more than immaterial details or variants commonly used in the trade, without anything corresponding to the "individual character" test.

        The new registered design right may be infringed by any design that does not create a different overall impression on the informed user. This is likely to give wider protection for many designs than is available under current law where the test for infringement is whether the allegedly infringing design is "substantially different" from the one registered.

      7. Twelve Month Grace Period
      8. Disclosure of the design by the designer within twelve months before the application or priority date will not invalidate the registration. A priority date earlier than the application date arises if priority is claimed (under international conventions) from an earlier design applied for abroad. This is possibly the most important change in practice. Under current law a non-confidential disclosure of the design before the application or priority date invalidates the registration.

        The new law will allow the designer (and anybody promoting the design with his consent) to exhibit and market the design for up to twelve months before application, giving a breathing space in which to test the market before deciding whether to incur the expense of registration. However, the designer is not protected from the possibility that during this grace period a similar, independently created design may be published which could preclude the earlier design from registration. Wherever possible, therefore, it will still be wise to apply for registration before major expenditure is incurred in relation to the product.

      9. Amendment To Rules On Spare Parts
      10. As under the current law, the design of a part of a larger product will be registrable. However, if it is a component part of a complex product - for example a car part - it will not be registrable unless it remains visible during normal use of the complex product. "Normal use" here means use by the end user - eg the driver. It does not include maintenance, servicing or repair work so the fact that it is visible to the repairer will not count. The effect of this provision, therefore, is generally to ensure that "under the bonnet" parts will not be registrable.

        The extent of the protection that should be given to spare parts that are visible, for example car body panels, was a very contentious issue during the passage of the Directive, so much so that the EU Member States could not come to an agreement on it. Eventually, in order to save the rest of the Directive it was decided to leave it out but to allow Member States to retain their existing laws on this issue for the time being subject to a review in three years' time.

        The Department of Trade and Industry has indicated that UK law will retain the existing "must match" exception, which excludes the registration of designs that are dependent on the appearance of a larger article in which they are intended to be incorporated.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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