The intellectual property rights that relate to designs exist to protect industrial designs from being copied. They relate to how an article looks and not how it functions. There are two forms of design right:
- Registered Designs which are granted if you make a successful application to register your design; and
- Unregistered Design Rights which arise automatically once a design has been created
There are laws which apply solely to the UK and also to the European Union as a whole (community design rights). This fact sheet will primarily cover some of the basic points pertaining to protection of designs in the UK.
UK Registered Design
Registered designs have existed in the UK since 1911 and allow the registration of a design so that the owner of the design has a monopoly over the commercial use of that design. Registered designs refer to the appearance of the whole or a part of a product, and in particular the lines, contours, colours, shape, texture and ornamentation of the product. Registered designs cover both 2-dimensional and 3-dimensional designs. Design registration lasts for a maximum of 25 years (registration must be renewed every 5 years) and like any other intellectual property right can be bought, sold or licensed. To qualify for registration, designs must be novel (novelty in design right means that the design must be completely new upon the date of filing with no details of this design, any identical design or design whose features differ only in minor details having been made available to the public prior to this date, although there is a 12 month grace period meaning that disclosures by the designer in the 12 months preceding the filing date do not count), have individual character (meaning that the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any other design which has already been made available to the public). However, the design of internal components of complex products which are not visible in normal use (e.g. a piston in a car engine) or designs solely concerned with how a product works cannot be registered. Features solely dictated by technical function and “must fit” requirements are also excluded. The ownership of the right rests with the employer if the design was produced by an employee as part of their employment, or, if the design was commissioned, with the commissioner (this is different to copyright; see copyright fact sheet for more details). Registered designs are made publicly available so cannot be kept as a “trade secret”.
UK Unregistered Design Right
Unregistered design rights were introduced in the UK in their present form in 1988 in response to flaws in the existing design right laws which allowed for the dual protection of designs under registered design and copyright laws. This had led to a dispute over spare parts for cars in the early 1970’s between British Leyland and Armstrong which was resolved by the House of Lords coming up with a ‘spare parts exception’ to copyright law. This exception prevented the manufacturer of an article such as a car from using its copyright to prevent the owner from having free access to the market for spare parts. Unregistered designs are protected from copying for 10 years after a product has been put on sale, subject to an overall limit of 15 years from the creation of the design, although in the last 5 years of protection any person is entitled to ‘a licence of right’ to make, sell or import the design in the UK. Unregistered design rights can protect any aspect of the shape or configuration of the whole or part of an article whether aesthetic or functional in nature, but unlike a registered design does not apply to 2-dimensional designs. Surface decoration and principles or methods of construction as well as features of a shape or configuration referred to as ‘must fit’ and ‘must match’ requirements are also excluded from this right. Ownership of unregistered design rights is with the original designer except where they are employed to create the design or commissioned to create it. In cases of infringement, it has to be proved that the original design was copied; however, this can often be difficult to prove.
EU Design Law
EU registered designs and unregistered design rights came into effect in December 2001 and March 2002 respectively and allow for protection of designs throughout the European Union. The law and practice of obtaining registered designs in the UK and the EU are broadly the same as are the costs. It will frequently be attractive to obtain an EU registered design because of the greater territorial coverage. However, a disadvantage of an EU registered design is that a successful application to have it revoked results in a total loss of rights across the whole EU. A UK registration might be less vulnerable to such a challenge.
With the possibility of registered and unregistered rights, and both UK and EU laws, identifying the best approach to protection of the appearance of a product can be a complicated. You should contact Medipex if you require further advice on this subject, ideally before any details of the design are released to anyone.
These design protection facts have been produced in conjunction with Urquhart-Dykes and Lord, Patent Attorneys (telephone 0113 245 2388 or email email@example.com). It is provided for the purposes of information only and is not intended as a comprehensive guide to design protection. In any cases where you have concerns or require advice regarding intellectual property matters, you should get in touch with your IP lead or email Medipex.
For further information visit our Design Protection FAQs page.