Unregistered Design Right FAQ
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| Design drawing by Thorsten Hartman Source Wikipedia Creative Commons Licence |
Jane Lambert
13 Aug 2016,
Revised 18 Aug 2016
What is Unregistered Design Right?
Unregistered design right is an almost uniquely British intellectual property right ("IPR") that protects functional as well as decorative designs. The right subsists in original designs. A design is defined as "the design of ...the shape or configuration (whether internal or external) of the whole or part of an article". Excluded from the definition of design are:
- methods or principles of construction,
- 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, or
- are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, and
- surface decoration.
Design right was introduced into our law by Part III of the Copyright, Designs and Patents Act 1988. That Act repealed the Copyright Act 1956. Under the 1956 Act an engineering drawing was regarded as an original artistic work in which copyright subsisted for the life of the author plus 50 years. Copyright in such drawings were infringed by copying the articles made to the drawing even if the copyist had no access to the design drawing. The sanctions for copying were draconian. Every infringing copy was deemed to be the property of the copyright owner who was entitled to damages for conversion as well as copyright infringement and additional damages. Moreover the courts were then far more inclined to grant Anton Piller orders and other extensive interlocutory relief than they are nowadays.
The protection offered in the UK for functional designs by artistic copyright was reviewed by the government of the day after the House of Lords refused to allow a large motor manufacturer to rely on its copyrights in the design drawings of an exhaust system to prevent after-market components suppliers from supplying replacement exhaust pipes in British Leyland Motor Corp and Others v Armstrong Patents Company Ltd and Others (1986) 5 Tr LR 97, [1986] 1 All ER 850, [1986] AC 577, [1986] FSR 221, [1986] 2 WLR 400, [1986] UKHL 7, [1986] RPC 279, [1986] ECC 534. In its white paper on copyright and designs the government considered various ways of protecting functional designs such as utility models and decided to create a new IPR to be known as unregistered design right which would be similar to copyright but with a much shorter term.
How do other Countries protect Functional Designs?
Although the Republic of Ireland and many Commonwealth countries had protected functional designs by artistic copyright, none of them (with the possible exception of New Zealand) followed the British example of creating a new unregistered design right. Australia, for example, introduced innovation patents which is a local name for utility models as did Ireland with its short term patents.
Other countries that protect functional designs by utility models include Albania, Angola, Argentina, ARIPO (African Regional Intellectual Property Organization) member state, Armenia, Aruba, Austria, Azerbaijan, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador, Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI (African Intellectual Property Organization) member state, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad and Tobago, Turkey, Ukraine, Uruguay and Uzbekistan (see Where can Utility Models be Acquired? on the WIPO website).
First, the right subsists in the design and not the design drawing although a design does have to be recorded in a design document or in a prototype or some other physical embodiment.
Secondly, unless the design is of a semiconductor chip, far fewer people can qualify for design right protection for their designs. As with copyright the person who created the design must come have a connection with a qualifying country. As almost every country in the world is party to an international agreement such as the Berne Convention or TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) which protects the artistic and literary works of British nationals and residents by copyright, almost every artist and author qualifies for copyright protection here. That is not the case with design right. The only qualifying countries for design right are the UK, some of its dependencies, the other member states of the EU and New Zealand which is thought to offer reciprocal protection to British designers. That can provide quite anomalous results as in Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd and Others [1999] EWHC Ch 252 where the judge concluded without any great enthusiasm that American designers did not qualify for design right protection for their designs.
Thirdly, the design right term is much shorter. Instead of the life of the author plus 70 years design right subsists for 15 years from the end of the year in which the design was created unless articles were made to the design were made available for sale or hire within the first 5 years in which case design right expires after 10 years after that event.
Another important difference between copyright and design right is that anyone in the world, including an infringer, can claim a licence to do anything that would otherwise be an infringement as of right during the last 5 years of the design right term. If the parties cannot agree the terms of the licence they can ask the Comptroller (the Chief Executive of the Intellectual Property Office ("IPO")) to settle those terms. No injunction can be granted against a party that offers to take a licence of right and damages for infringement are limited to twice the amount of the licence fee.
A fifth difference is that there is an action for groundless threats of design right proceedings but not for threats of copyright proceedings in this country.
Sixthly, it is not a crime to infringe a design right regardless of the scale of the infringement.
Seventhly, design right does not cover surface decoration.
Finally, there are no moral rights for designers as there are for authors of certain types of copyright work and performers.
How does Unregistered Design Right differ from Unregistered Community Designs?
Unregistered Community design ("UCD") is an IPR that subsists throughout the EU in new designs with individual character that could be registered with the EU Intellectual Property Office as registered Community Designs ("RCD") or indeed with the IPO as registered designs. As is the case with RCD the holder of an UCD enjoys:
"the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes."
However, the UCD holder can prevent the acts referred to above only if the contested use results from copying the protected design. UCD subsists for a period of 3 years as from the date on which the design was first made available to the public within the EU.
Unregistered design right applies only to the UK and lasts up to 15 years. There is no need to prove novelty or individual character for unregistered design right, only originality. The biggest difference lies in the definition of design. In contrast to the definition for unregistered design right given above for aspects of shape and configuration. the definition for both types of Community design focuses on appearance. That is to say:
"the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation."
Thus, although there is some overlap between unregistered design right and UCD, the former is intended primarily for machinery, circuity and other functional designs while the latter is intended for fashion goods, toys and novelties.
How is Unregistered Design Right created?
Three conditions have to be fulfilled.
First, the designer or his or her employer has to be a qualifying person or products made to the design have to be first marketed in a qualifying country by a qualifying person. A qualifying person is an individual habitually resident in a qualifying country or a corporation incorporated in a qualifying country. As I said in "How does Unregistered Design Right differ from Unregistered Community Designs?" the only qualifying countries are the member states of the EU (which may or may not still be the case after we leave the EU) and a handful of British overseas territories plus New Zealand.
Secondly, the designer must have created an original design. Again, as I mentioned in "What is Unregistered Design Right?", the design must be the independent work of the designer and it must not have been commonplace in a qualifying country at the time of its creation.
Thirdly, the design has to be recorded in a design document which can be "any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise" or an article has to be made to the design. There is no need for registration with the IPO or any other authority.
Who is entitled to Design Right?
The first owner of the design right in a design is the designer, that is to say the person who created the design, or his or her employer if the designer made the design in the course of his or her employment. It is, of course, possible to contract with a designer or an agency or consultancy that employs designers for the design right in any designs that may be created to vest in the person who commissions the design but it is no longer automatic.
What is the Point of Design Right?
It is a way of protecting innovation. The protection is less extensive than that provided by a patent or indeed a utility model in the countries that offer such protection in that it is not a monopoly but merely a protection against copying but that may be enough to allow a manufacturer to establish him or herself in the British market. The protection arises immediately, there is no correspondence with the IPO and above all the protection is free. British manufacturers and designers seem to be quite happy with this IPO. There is no great demand or enthusiasm for utility models in this country. On the other hand, if they were so wonderful it is surprising that no other country has introduced unregistered design rights into its law. Other English speaking common law countries with strong manufacturing sectors that do not offer utility models such as the USA, Canada, India, Pakistan or South Africa seem to get by pretty well without them.
How is Design Right infringed?
Design right is infringed by making articles to a design or making a design document recording the design for the purpose of enabling such articles to be made without the licence of the design right owner. Making articles to the design means copying the design so as to produce articles exactly or substantially to that design. Design right is also infringed by importing, possessing, selling, letting out on hire or offering for sale or hire an article which infringes (or if made in the UK would infringe) unregistered design right with knowledge or having reason to believe that its manufacture has infringed or would infringe.
What happens if someone infringes my Design Right?
You can sue for an injunction (an order of the court) to stop the infringement, damages (compensation) or an account of profits (order to account for an surrender ill-gotten gains). delivery up or destruction of infringing articles and a contribution to your costs (including solicitors' costs and counsel's fees) of bringing the action.
If the infringement takes place in England and Wales you can sue in the Chancery Division of the High Court or the County Court sitting in Manchester, Liverpool, Preston, Leeds, Newcastle, Birmingham, Bristol, Cardiff, Mold, Caernarfon or the Royal Courts of Justice. If your claim is for less than £500,000 and can be disposed of in no more than 2 days you can sue in the Intellectual Property Enterprise Court ("IPEC") where recoverable costs are limited to £50,000 for each side. If your claim is for less than £10,000 you can sue in the IPEC small claims track where recoverable costs are limited to a few hundred pounds.
Can Design Rights be bought or sold?
Yes they can be assigned or licensed just like any other IPR. However assignments and exclusive licences be in writing and signed by or on behalf of assignor or exclusive licensee.
Where can I look up the Law?
The only statute you need to consult is the Copyright, Designs and Patents Act 1988 and nearly all the case law is on-line with the British and Irish Legal Information Institute or the IPO.
I give talks on design right which are aimed at designers and entrepreneurs rather than lawyers or patent and trade mark attorneys from time to time as do the British Library Business and IP Centre and its associated libraries around the country.
If you want to discuss this article or any question on design law get in touch through my contact form or call me on +44 (0)20 7404 5252 during office hours.
