UK: Unregistered Design Rights At UK And Community Level – Which One Is Best For You?

Last Updated: 2 July 2002
Article by Kerry Lee
Unregistered Design Rights at UK and Community Level – Which One is Best for You?

There are two ways in which designs are given protection in the UK – the Unregistered Design Right and the Unregistered Community Design. In this article, IP expert Kerry Lee of City law firm Field Fisher Waterhouse compares them.

The first of these is the UK’s home grown Unregistered Design Right (the "UDR") which falls under the remit of the Copyright, Designs and Patents Act 1988.

The second, the Unregistered Community Design (the "UCD"), is governed by Council Regulation (EC) No 6/2002 on Community Designs ("the Regulations") which came into force on 6 March 2002. Unlike the UDR, this is a standalone regulation and does not affect the design right laws of individual EU Member States.

How are unregistered design rights obtained?

As with copyright protection, UDR and UCD protection arises automatically whenever an original design is created, whether it appears on paper, as a model or a computer graphic

However, as disputes relating to design rights usually require supporting documentary evidence, it is vital that records of the design process are kept, including relevant dates and the identity of its creator or creators.

Definitions

Designs eligible for UDR protection are defined in Section 213 (2) of the Copyright, Designs and Patents Act as:

"the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article."

An original design includes:

  • an article to a particular design
  • a "design document". This must be a record of the design, but might include anything from a drawing, photograph, model or data stored in a computer or on a disk.

UDRs can be given to the appearance of industrially produced articles, decorative articles or decorative features of an article.

Designs which obtain UCD protection are defined in Article 3 of the Regulation as:

"the appearance of the whole or a part of a product resulting from the specific features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product and/or its ornamentation."

Industrial or handicraft products are eligible for protection, as are packaging, get-up, graphic symbols and typographic typefaces. It is worth noting that computer programs are excluded.

This definition is obviously concerned with the appearance of a product or part of a product and, as such, is similar to the UDR. However, in contrast to UDR, there is no requirement for a design with UCD protection to be recorded in a document, or for an article to be made to design for it to exist.

Furthermore, under the Regulation, the definition of a UCD has a wider scope than that which a UDR can offer under the remit of the CDPA. For example, the UCD right can be applied to specific features of an ornament or a particular colour or texture; the UDR cannot.

Qualification

A UK design must qualify for protection by reference to the designer, commissioner, employee or first marketer. For example, the person or body corporate commissioning the designer must be a "qualified person" by meeting certain nationality or residence requirements. A qualified person is a citizen or subject of, or an individual (or body corporate) habitually resident in the United Kingdom or another member state of the European Union. At present, qualification for a design right extends only to nationals of overseas territories whose laws give reciprocal rights to UK nationals.

In relation to UCD there are no "qualification requirements" by reference to designer commissioner, employee or first marketer. However, a design must be made available to the public within the European Community.

Ownership

The commissioner of an original design owns any UK rights in it. In addition, where a design is created by an employee in the course of his or her employment, the employer is the first owner of any design right in it. There is an exception if the design was not created in the UK, but was first marketed in the UK. In this case, the right would belong to the marketer. Joint first ownership is also possible where more than one designer has been involved in the design process and it is impossible to distinguish between individual contributions.

UCD rights remain with a design’s creator, or his or her successor in title. If the creator is an employee who made the design in the course of his or her employment, then the rights will pass automatically to the employer unless otherwise agreed or specified under national law. If two or more people have jointly developed a design, the UCD will belong to them both.

It is important to note that there are no UCD provisions to cover commissioned designs. Therefore, the commissions of a design will not automatically acquire UCD protection. In contrast, the commissioner would automatically acquire the UDR. Therefore an assignment from the designer is essential if one wishes to obtain UCD for a commissioned design.

Owner’s rights

A UDR owner has the exclusive right to reproduce the design for commercial purposes and has the power to stop unauthorised copying of the design by a third party. He or she may also prevent the unauthorised dealing of infringing articles, for example, by importation, possession, sale or hire, by the third party or any recipient who either knows, or has reason to believe, that they are dealing with an infringing article.

A UCD will give its holder the right to use the design and to prevent copying and making use of copies by third parties. "Use" in this sense includes making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated, or to which it is applied, or stocking such a product. However, any copying by a third party must be in bad faith to be infringing.

The UCD is a qualified right. Therefore, it does not allow its owner to oppose any designs which are the result of independent creation by another designer who may reasonably be thought not to be familiar with the unregistered design of the right holder.

During its first 12 months, a design with UCD protection may become registered. This allows for a sunrise period during which the potential success of a product can be ascertained before money is spent registering it. This right is a vital element of protection for industries whose products have a very short life cycle, such as the fashion and shoe industries which renew their collections every season. Their designs will need to be protected against counterfeiting and other infringements throughout the European Community while avoiding the formalities and costs involved in the longer term registration process.

Period of Protection

In the UK, UDR protection lasts for the shorter of:

  • 15 years from the end of the calendar year in which the design was created; or
  • if articles made to the design are made available for sale or hire within five years of the end of the calendar year in which the design was created, the protection lasts for ten years from the end of the calendar year in which the sale or hire first occurred.

During the last five years of a UDR term of protection, its powers are reduced since any interested party is entitled to a "licence of right" to make, sell or import the design in the UK. If a third party requests such a licence to use the protected design on payment of royalties or a lump sum to the owner of the UDR, he or she must grant one. However, if the two parties cannot agree on the terms of the licence, either party may apply to the Controller of the Patent Office to settle the terms. Although the UDR can no longer be used to prevent copying during this time, it can at least be used to the creator’s advantage to generate royalties.

In contrast, the term of protection for UCD is shorter than that offered by the UDR – just three years starting on the date on which the design is first made available to the public within the European Community.

A design is made available to the public when it is disclosed in any way, such as for example on paper or through sales and marketing. This disclosure will depend on whether or not disclosure could reasonably have become known, in the normal course of business, to the circles specialised in the sector concerned operating within the European Community. If disclosure is made in confidence, a design is not considered as having been made available to the public.

In theory, a design created outside the European Community may qualify for a far longer period of UCD protection since the three-year term will not begin until the design has become reasonably known in the European Community. This may be much later than when the design was first made outside the European Community. There is no equivalent of a "licence of right" in relation to a UCD.

Novelty Requirement

The novelty requirements needed to obtain UDR or UCD protection differ. While the criteria for UCD qualification are stricter, both offer similar protection.

To qualify for UK UDR protection, a design must be "original" (ie it is the designer’s own work and not "commonplace" in the design field in question at the time of its creation.) In order for a design to be afforded UCD protection, it must:

  • be "new" (ie no identical design has been made publicly available before the design for which protection is claimed was made available to the public. Designs are deemed identical if their features differ only in immaterial details; and

  • have an individual character. Simply not being "commonplace" is not enough.

Protection granted

UCD extends to an object’s components which, when incorporated as part of a product, remain visible during normal use. As such, "under the bonnet" car components would not be protected in this way.

Meanwhile, the UDR protects both internal and external features, whether visible or not, and is concerned with shape and configuration rather than appearance of an object. In view of the above, one may obtain greater protection under UK law as opposed to the European Regulation.

However, there are certain design features which are excluded from UDR protection. These include:

  • Methods or principles of construction;

  • Particular features of shape or configuration as applied to an article are protected, but the general theoretical or underlying principles are not;
  • A surface decoration applied to an article. The reason for this exclusion is that surface decoration does not fall into the category of functional design which the CDPA is intended to protect; and

  • Design features of shape or configuration of an article which:

"enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function".

The above is known as the "must fit" exception and applies when two articles are linked and certain features of shape or configuration enable either article to perform its function. For example, the shape dimensions of a pin in an electric plug would be excluded, together with the corresponding apertures in the socket, yet the overall shape of the plug may qualify for protection.

  • Design features of shape or configuration of an article which:

"are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part".

Therefore this applies to the design features of component parts which are dependent on the appearance of the article in which the components are found. This is known as the "must match" exception, originally introduced so that manufacturers could not create a monopoly on spare parts for cars through the law of Design Right. The part and product must be compatible and so the exception would apply, for example, to the design for the car components, such as body panels, doors and windscreens.

The definition of "design" under the Regulation does not distinguish between aesthetic and functional designs. Therefore, in principle, functional designs may have UCD protection. However, there are some exclusions.

Exclusions

According to Article 8 (1), a Community Design (which includes designs with UCD protection) shall not subsist in features of appearance of a product which are solely dictated by its technical function.

The purpose of this exclusion is to ensure that technological innovation is not hampered by the protection of features dictated solely by a technical function as it does not require that a design have any aesthetic quality. Therefore, similarly to designs offered UDR protection, those which have no visual appeal will also attract UCD protection, subject to the exclusions.

The Regulation’s "interconnection" exclusion bares some resemblance to the UK UDR’s "must fit" clause.

Article 8 (2) states that a Community Design shall not subsist:

"in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function."

In comparison to the UDR, the UCD does not provide any specific exclusion to "must match" features or surface decoration.

Public policy and principles of morality

A UCD does not subsist in a design which is contrary to public policy or to accepted principles of morality. The UDR does not specifically provide for this area.

Innocent infringement

Section 233 of the CDPA provides that a plaintiff is not entitled to damages where it can be proven in an action for UDR infringement that, at the time of the infringement, the defendant did not know, and had no reason to believe, that a UDR subsisted in the design to which the action relates. There is no equivalent provision for UCD.

Exclusive licensee

Under section 225 (1) of the CDPA, the licensee under an exclusive licence of UDR has the same rights against any successor in title who is bound by the licence as he or she has against the person granting the licence. As such, the exclusive licensee has the same rights and remedies as if the licence had been an assignment.

With respect to UCD, the position is different. According to Article 32, the licensee may only bring proceedings for infringement of a design if the rights owner consents. However, the holder of an exclusive licence may bring such proceedings if the right holder in the UCD, having been given notice to do so, does not himself bring infringement proceedings within an appropriate period.

Public policy and principles of morality

A UCD does not subsist in a design which is contrary to public policy or to accepted principles of morality. The UDR does not specifically provide for this area.

Invalidity

The CDPA does not specifically address the issue of invalidity. However, the right that a defendant can challenge the validity of an unregistered design during infringement proceedings is available.

With respect to UCD, invalidity is addressed under Article 24. This states that an unregistered Community design shall be declared invalid by a Community design court on application to such a court or on the basis of a counterclaim in infringement proceedings.

Groundless threats

Section 253 of the Copyright, Designs and Patents Act 1988 provides a remedy for groundless threats made by another person. Section 253(1) states that, where a person threatens another with proceedings for infringement of design right, the aggrieved may bring an action against the other claiming:

  • a declaration to the effect that the threats are unjustifiable;
  • an injunction against the continuance of the threats; or
  • damages in respect of any loss which he has sustained by the threats.

There is no equivalent provision under the Regulation.

Conclusion

The above comparison demonstrates that the regimes relating to Design Right and UCD differ in many ways and creators of designs should think carefully before deciding which of the two would be best suited to their particular needs.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

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