Design right — overview

Designs may have three types of intellectual property protection in the UK:

• registered designs

• unregistered designs (design right), and

• copyright.

Registered designs

These are governed by the Registered Designs Act 1949, as amended. Registered designs:

• apply to the appearance of a product resulting from its form, colours or materials

• must be new and have individual character

• protect the overall appearance of design (excluding methods of construction, features of shape and certain other features)

• give the registered proprietor the exclusive right to use the design; registered design thus prevents reproduction, not merely copying, and

• confer protection for five years from registration, renewable every five years to a maximum of 25.

The owner of design right is the creator, or:

• if created in course of employment, his employer, and

• if commissioned, the commissioner. This differs from the rule for copyright.

To do any act exclusively reserved to the proprietor is infringement (exceptions apply). Remedies include damages, injunctive relief and delivery up of infringing items.

Application to register is made to the UK Intellectual Property Office (UKIPO).

Unregistered designs (design right)

This right was introduced by the Copyright, Designs and Patents Act 1988. It:

• arises automatically on creation

• applies to original, non-commonplace designs of the shape or configuration of products

• protects only three-dimensional aspects of designs

• does not protect surface ornamentation, methods or principles of construction, or features enabling functional fit or aesthetic match

• gives an exclusive, non-renewable right against copying (not a monopoly on the design)

• confers protection for:

• • 15 years from first recording, or

  • 10 years from the design being made available for sale or hire, if within five years of the event above, and

• is subject to a licence of right in the last five years of protection.

Semiconductor chip topographies are protected by a variant of design right. Exclusivity lasts for ten years; there are no licences of right.

The rules as to ownership are the same as for registered designs. The owner has the exclusive right to reproduce the design for commercial purposes. Infringement requires proof of ownership of right and copying. The remedies are the same as for registered designs.

The Comptroller-General of Patents Designs and Trade Marks has jurisdiction in relation to design right disputes.

Copyright

Copyright may subsist in designs and documents containing them, on normal copyright principles (see Copyright — overview). Copyright and design right may coexist in the same design.

Design protection outside the UK

Protection outside the UK can be obtained in two ways:

Community Design Right (CDR)

Application for registered CDR is made to the Office for Harmonisation in the Internal Market (OHIM). As with UK registered design, the design must be new and have individual character. Registration is for five years, extendable to 25.

Unregistered Community design right also exists. The qualifications for protection are the same as for registered CDR, but (as with its UK equivalent) the right prevents copying rather than independent creation, and is similarly more difficult to enforce. Protection lasts for three years.

Both rights may coexist with UK (and other national) rights.

Outside the EU

A separate application for registration must normally be made in each country outside the EU. Priority can be claimed within six months of a UK application when filing in another country which is party to the Paris Convention (for the Protection of Industrial Property).