Unregistered design rights explained

UK Unregistered Design Rights provide automatic protection for the shape and configuration of original designs, offering a safeguard against copying without the need for formal registration. This is in contrast to UK registered design rights, which come with a certificate of entitlement. While this protection is instantly available, understanding its nuances and limitations requires expertise. The law of Unregistered Designs in the UK is covered by sections 213 to 264 also known as Part 3 of the Copyright Designs and Patents Act 1988 ("CDPA"). In the EU there is unregistered community design right.

Virtuoso Legal specialises in guiding businesses through the laws behind these rights, in order to ensure that you're not unfairly ripped off for your assets.

Whether you're looking to understand the scope of your rights or defend them from copyists, our team is equipped to offer the comprehensive support you need to protect your design.

Introduction to Unregistered Design Rights

So, what are unregistered design rights? And what does automatic protection entail?

Definition of Unregistered Design Rights

These Rights in the UK automatically protect the shape and configuration of original, non-commonplace designs, offering a form of intellectual property right that does not require formal registration. These rights, established under the Copyright, Designs and Patents Act (1988), safeguard designs from being copied without permission. The protection lasts up to 15 years from the date of creation or 10 years from first marketing the product, whichever is earlier, but requires proof of ownership and originality in case of infringement claims. During the last 5 years of a UK unregistered design right there is an opportunity for the design to be licensed as a matter of right, which can provide a useful defence to infringement claims. For authoritative information, consult the UK Intellectual Property Office or relevant legal statutes. Unregistered designs are different to registered designs.

The design means the shape or configuration of the whole or part of an article. It does not consist of a method of construction, the must fit or must match elements of the article or surface decoration. Where surface work needs to be protected, then a designer should consider Registered Design Protection.

• copying a product may be slavish or 'substantial' copying and there are many misunderstandings about both.

• It is always important to make sure that any designs created and kept dated and retained in a design document. These will show that the article has been made to the design. At this stage you may wish to consider registered designs too as another route to protection.

• A UK design owner or a design owner in the European Union or other qualifying country, must keep a good dated audit trail of the creation of a design.

• If you wish to protect surface styling, then consider a registered design instead.

Overview of UK Unregistered Design Right (UK UDR) and Unregistered Community Design (UCD)

While UK Unregistered Design Rights (UK UDR) offer up to 15 years of protection for the shape and configuration of original designs within the UK, the EU’s Unregistered Community Design (UCD) provides a broader, albeit shorter, three-year coverage across EU member states for the appearance of products. Unregistered community design are equivalent to the UK's unregistered designs

This is a key issue for people selling products into Europe, and is often a good reason to register a design and seek protection in the UK and the EUIPO. We help people navigate this complex landscape.

Our firm specialises in intellectual property law, expertly guiding clients through these issues globally to ensure their designs enjoy the fullest protection possible, leveraging our expertise to bridge the gap between UK, EU and global legal landscapes.

Eligibility and Requirements for Protection

What qualifies for unregistered design protection?

What qualifies for Protection under UK UDR and UCD?

Both require the design to be unique and not previously disclosed, but UDR and UCD does not protect against features dictated by technical function. These include

• items which are solely dictated by function - called the must fit, must match exclusion. Think of the shape of the plug, not prongs/socket

• method of construction.

• surface decoration

• the design must be made in the UK or a qualifying country and by a qualifying person.

• design rights existence automatically arises when the design is recorded in a design document such as line drawings or commonly these days CAD drawings and it is vital to capture when the design was first recorded.

Understanding what qualifies for protection under each is essential for designers and companies operating in both the UK and the EU.

Novelty and Individual Character Requirements?

For a design to qualify for protection under both UK UDR and UCD, it must meet the criteria of novelty and individual character. Novelty requires that the design has not been previously made public, ensuring it is genuinely new. Individual character means the design must create a different overall impression on the informed user compared to any design which has been made public before the date of creation. So for example, where a beer keg has been redesigned the new elements of it may attract design right. In some instances that element of the design could be protected by registered design and it would therefore become a protected design.

These requirements are specified in Part 3 of the CDPA 1988 and the EU's Community Designs Regulation No 6/2002, underscoring the need for originality and uniqueness in design protection.

The CDPA came about in 1988 as prior to that the law of designs was only covered by copyright which provided for very long durations of design right. In a modern economy that was felt to be unduly restrictive for industrial designs. Registered designs have however been available under statute since 1949.

The elements of novelty and commonplace in design are frequently debated and are a source of confusion for commercial purposes. It can be difficult for a lay person to decide if some things are infringing articles. What was commonplace in the design field, when an article was first made, and the first disclosure of an item are often hotly debated in UK Courts.

Complex Products and Spare Parts Considerations

Complex products, defined as items composed of multiple components that can be replaced and reassembled, face unique challenges in design protection.

For example, the design of a car wheel can be protected, but this does not give reciprocal protection that will extend to the entire car. Accordingly, the design will protect the features of an item but not all of it.

The law distinguishes between protecting the design of a whole product and its individual parts, particularly when those parts are used to repair complex products, often referred to as the 'must match' exception. This nuance ensures that while individual creativity in components is protected, the functionality and repairability of complex products are not hindered.

Exclusions from Protection

Certain designs are excluded from protection under UK and EU design rights. This includes designs dictated solely by the product's technical function, and those that must fit into another product to perform their function, known as "must-fit" exceptions.

Furthermore, designs that violate public policy or accepted principles of morality are also not protected. These exclusions ensure that the scope of protection balances the creator's rights with the public interest and market competition, encouraging innovation while preventing monopolies on technical solutions or functional necessities.

How Protection Arises

Let's now unpack exactly how protection arises.

The Automatic Nature of Unregistered Design Rights in the UK and EU

Unregistered Design Rights in the UK and EU offer automatic protection without the need for a formal design registration and process. Once you have created line drawings and created articles to that design, then protection has arisen. In the UK, this protection lasts up to 15 years, covering the shape and arrangement of original designs. In the EU, protection extends to the appearance of products for three years, including lines, contours, and texture. This automatic nature ensures immediate safeguarding of designs from the moment of their creation, providing a critical layer of security for designers and businesses in the fast-paced commercial environment.

Enforcement and Remedies

We'll now talk about how you can enforce your unregistered design.

How to Enforce Unregistered Design Rights

Successful enforcement hinges on demonstrating the originality of the design and the occurrence of an infringement. The landmark EU case of Procter & Gamble v Reckitt Benckiser clarified the importance of proving these elements in court.

• The case involved Procter & Gamble (P&G) alleging that Reckitt Benckiser's design of a air freshener product infringed P&G's registered design rights.

• P&G's claim focused on the overall visual appearance of their air freshener product asserting that Reckitt Benckiser's product was too similar to their registered design.

• The court examined the individual character and overall impression of the designs, comparing them from an informed user's perspective. The Court also looked at the design field for air fresheners.

• Ultimately, the court decided in favour of Reckitt Benckiser, finding significant differences in the design that led to a different overall impression on the informed user.

This case study demonstrates that documentation and evidence of the design’s creation and its use in commerce are vital for supporting any legal claim against infringement.

Available Legal Remedies for Infringement

1. Injunctions: to stop further infringements, as seen in Dyson Ltd v Vax Ltd, where Dyson sought to prevent the sale of a competing vacuum cleaner.

2. Damages or Account of Profits: compensating for losses by way of a royalty-type arrangement or surrendering profits made from the infringement.

3. Delivery up or Destruction: removing infringing products from the market, ensuring they are removed from circulation.

Relationship between Design Rights and Copyright

Design Rights and Copyright protect different aspects of a creator's work. Design Right safeguards the appearance or three-dimensional articles or aspects of an item in other words the physical product, focusing on the aesthetic and not the functional aspects. In contrast, Copyright protects original literary, dramatic, musical, and artistic works from being copied or exploited without permission. It is different from patent protection or trade marks. Mere surface decoration is usually not covered by design law but it maybe if an element of it is created as a relief type shape on the surface.

International Considerations

Now let's look in more detail at how legislation differs away from the UK.

Differences Between UK and EU Unregistered Design Rights

• Duration: UK Unregistered Design Rights offer protection for up to 15 years from creation, (albeit in practice this is normally 10 years from when the design moves to produce articles to the design, whereas EU Unregistered Community Designs protect for a shorter period of 3 years from the date of first marketing.

• Scope of Protection: UK rights mainly cover the shape and arrangement, excluding surface decoration. In contrast, EU rights encompass the entire appearance, including colours, texture, and materials, offering a broader scope of protection.

• Eligibility Criteria: In the UK, protection is automatic for designs created by residents or businesses. The EU mandates that the design must be made public within the EU to qualify.

• Geographical Coverage: UK rights protect designs within the United Kingdom only, requiring separate protection for international scope. EU designs, however, are protected across all member states, offering a wider range of geographical coverage. There are however, reciprocal rights up to a point between the UK and EU for any particular designs created in either location. If the design can be registered then consider international registration for such articles.

The Impact of Brexit on Unregistered Community Designs

Brexit has significantly altered the landscape for Unregistered Community Designs (UCD), impacting designers and businesses operating across the UK and EU. Post-Brexit, UCDs no longer provide protection in the UK, leading to the introduction of the Supplementary Unregistered Design (SUD), which mirrors UCD protection within the UK. However, designs disclosed in the UK may not qualify for UCD protection in the EU, and vice versa, necessitating strategic disclosures.

Practical Guidance from Virtuoso Legal

You might feel like you don't know where to turn to in the confusing world of unregistered design rights. We've compiled a guide that can help.

Steps to Take in case of Potential Infringement

If you suspect an infringement of your design rights, it is crucial to act promptly.

• Document the Infringement: Thoroughly record all relevant details of the suspected infringement, including dates, locations, and the nature of the infringement. If you have several designers then record the details of the qualifying person who created it. A written description and accurate documentation is essential for any legal action to show that the product was made to the design document. Keep this information and data stored safely. It will be an integral part of any proceedings. At the design stage consider registered design protection where the design has unique elements which are attractive to the eye and where substantial business activity could flow from selling the design. A protected design is a valuable asset.

• Consult a Lawyer: Engage with a lawyer such as Virtuoso Legal that specialises in intellectual property law. We can assess your situation based on statutory law and relevant case precedents, advising you on the viability of your case and potential legal strategies.

• Send a Cease and Desist Letter: You must engage an expert lawyer to draft and send a formal cease and desist letter to the infringer. This should clearly articulate your ownership of the design in the UK, detail the infringement, and demand an immediate halt to the infringing activities in relation to a particular design. It should also cover in detail why the item is an infringing article and set out any exclusive right to use the design to an alleged infringer. Remember that design right is calculated from the end of the calendar year in which the item was first made to the design.

• Initiate Legal Proceedings if Necessary: If the infringement persists despite your cease and desist letter, consult Virtuoso Legal about starting formal legal proceedings to enforce your rights and seek remedies.

• Here is also a word of warning if you choose to do this yourself. There are remedies for potential defendants under the CDPA in relation to unjustified threats. You need to make sure that a letter drafted by you as a lay person doesn't contain such threats. Design right may come into existence automatically, but you need to be aware of things such as the age of the design and how many years from the end of the period of automatic protection.

By following these steps, you protect your design and uphold your rights under the law.

Best Practices for Maintaining and Documenting Design Rights

Document every stage of your design's creation, from initial sketches to final product, including dates and detailed descriptions. This chronological record proves invaluable for establishing the design's originality and ownership. You should also record the first disclosure and whether or not any elements are commonplace in the design. The first owner is either the creator or the company who employs a person to create. There are certain limitations on this but the qualifying criteria are clearly laid out in s213 of the CDPA. If you are an individual designer you may want to approach businesses formed to discuss licensing and exploitation of your design. Some companies such as Black and Decker encourage this licensing of design right.

Regularly review and update these design right documents to reflect any modifications or iterations. Additionally, keep evidence of your design's public disclosure, noting the dates and contexts of such exposures. By way of example was the design right offered for sale or only shown to a few people for the purposes of demonstration.

This comprehensive documentation fortifies your legal standing in potential disputes and enhances the enforceability of your design rights.

Always consult legal experts such as ourselves to ensure adherence to the latest legal standards.

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Frequently Asked Questions (FAQ's)

Here are the questions people want answered about unregistered design rights.

What are unregistered design rights?

These rights in the UK and Europe provide automatic protection for the shape and configuration of original designs. In the UK, these rights last for 10 to 15 years from creation, whereas in the EU, the term extends up to three years from the date the design is first made public. Both jurisdictions do not require registration, offering designers a quick form of protection, although the scope and duration of these rights protect vary significantly between the UK and Europe.

What are unregistered design rights post-Brexit?

Post-Brexit, unregistered rights in the UK have seen substantial changes, diverging from EU norms. UK rights now protect the shape and configuration of unregistered designs for 10 to 15 years, independently from European rules. Effectively handling these distinctions demands expert legal advice. Virtuoso Legal offers specialised guidance to ensure your design rights are robustly protected in this new legal framework, aiding you in understanding and utilising these changes to your benefit.

What is an example of an unregistered design?

The Neptune design right case centred on a dispute over kitchen furniture designs, with Neptune alleging that DeVol had copied its Shaker range. The case provided significant clarifications on UK design rights, particularly underlining the critical need for originality in any supplementary unregistered design right protection. Ultimately, Neptune's claim for infringement was unsuccessful because the court determined there was insufficient evidence to substantiate the allegations of copying and infringement. This judgement highlighted the rigorous standards required to prove originality and infringement within the framework of UK Courts.

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About Virtuoso Legal?

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.

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