Protecting your design rights in the UK and the EU
Design right protection in the UK is complex and multi-layered. First, there are UK unregistered design right and UK registered design right. There is also unregistered EU design right and registered EU design right which currently cover the UK.
Design rights, whether registered or unregistered, protect novel features which determine the appearance of products or articles. They do not protect functionality, which may be eligible for patent protection. Both design right and patentability may co-exist in different aspects of the same product, so it is important to consider protecting all applicable rights.
UK unregistered design right only applies to designs which were created by a “qualifying person” or which were first put on the market in a “qualifying country”. A “qualifying person” is either a citizen, subject or resident of a qualifying country, or a company or other legal entity which is formed under the law of a qualifying company and has a place of business carrying out “substantial” business in a qualifying country.
A “qualifying country” is (1) the UK; or (2) another EU country; or (3) a country with which the UK has a bilateral agreement to protect unregistered designs or which has been designated as a qualifying country by Parliament. Countries coming within the third category include British territories such as Gibraltar and the Falkland Islands, but do not include, for example, Australia, the United States or Canada.
Accordingly, if you are not from the EU and want to protect your design rights, registering a design may be the best option open to you. Even for people based in qualifying countries, registered design right offers some significant advantages over unregistered design right, as set out below.
Unregistered design rights
Unregistered design right is similar to copyright in that it arises from the act of creation of a design. It protects the shape and configuration of the design of 3D objects against copying by others. Again, like copyright, the first owner of UK unregistered design right is the creator of the design, unless the design is created in the process of a person’s employment in which case the owner is the employer.
This position represents a recent change in the law. Prior to 2014 any design which was “commissioned” belonged to the person commissioning it. This is no longer the case, so if anyone who is not your employee designs a product on your behalf, it is essential to take a written assignment of the design right in this product to ensure that you obtain all relevant rights in it.
UK unregistered design right protects your design for ten years from the end of the calendar year in which articles to that design were first put on the market, or for 15 years from the end of the calendar year in which the design was recorded in a design document, whichever period expires first. Two dimensional designs are not protected by UK unregistered design rights, though designs for curtain fabric, wallpaper or similar may be protected as copyright artistic works.
Community unregistered design right offers protection for only three years for qualifying designs, the three years running from the date it was first made available to the public in the Community. The scope of what can be protected under Community unregistered design right is significantly different from what can be protected under UK unregistered design right. For example, community unregistered design right can cover designs of colour, texture and materials. It is directed towards protecting the appearance of a product and can include two-dimensional designs. It protects designs which are “new and have individual character”.
Registered design rights
For better protection, you can register your design. To do this, your design must meet the eligibility criteria of being new and having “individual character”. Designs which are dictated solely by the technical function of the product in question or which are contrary to public policy or morality may not be registered.
Registered design right provides protection for up to 25 years and can be registered in the UK by application to UK Intellectual Property Office and in the EU by application to the European Intellectual Property Office.
Design registration does not merely protect against copying but against anyone who independently devises or develops a later design which infringes the registered design.
EU design right protects designs throughout the whole of the EU, so organisations doing business in at least one member state in addition to the UK (e.g. the Republic of Ireland) may wish to apply for EU registered design rights in preference to UK registered design right.
What rights do we have with an unregistered and registered design?
Infringement of a registered design right occurs when your design is reproduced by a third party. With unregistered protection, you will need to prove that your design has been copied.
By registering a design, the owner has a monopoly right in that design. This means that a third party cannot knowingly or unknowingly produce products that incorporate elements of the registered design so as to produce a design which “does not produce a markedly different impact on the informed user” as the registered design.
Accordingly, when your design is registered, you do not need to prove that your design has been copied to establish infringement. What you have to show is a high level of similarity between the registered design and the infringing design.
Design registration is comparatively inexpensive, but it is important to meet appropriate time limits. A design has to be novel, so a design which has been on the market for years cannot be registered. However, in the case of EU registered designs, there is a twelve-month “grace period” before novelty is lost. For example, a design owner who uses a test marketing of products made to a specific design to gauge interest on 1 May 2017 has until 30 April 2018 to file for design protection.
As the owners of the Trunki ride-on suitcase design found, it is vitally important to consider the scope of what you are registering, and that it covers all key features of the design you are registering. For example, if the same basic design appears in different variations, like the Trunki suitcase, where the same basic design could be presented in the form of different animals, it is wise to register a series of designs showing each variation.
It is also important to include no more in a design than you intend to rely on. For example, if you are registering a design for a door, but the door handle and keyhole are options selected by the purchaser, not part of the door itself, make sure the door design as registered does not show these features.
Contact a design rights lawyer
We offer a full service contentious and non-contentious design right service. If you think you have a design right issue, you can contact Roy Crozier directly using the details given on their profile pages, or by calling 0800 652 8025.
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Roy Crozier is a Partner and Head of Clarke Willmott solicitors' Intellectual Property team specialising in both contentious and non-contentious IP law.
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