In the United Kingdom, exclusive rights to designs can be established either through unregistered design protection (consisting of both EU and national UK unregistered rights) or by filing an application for:
- a UK registered design;
- a registered Community design;
- an international application to register a design through the Hague System, designating the European Community (the Intellectual Property Act 2014 includes a provision enabling the United Kingdom to join the Hague System).
UK design legislation consists primarily of the Registered Designs Act 1949 (for UK registered designs) and the Copyright, Designs and Patents Act 1988 (for UK national unregistered design rights), as well as associated rules and statutory instruments. The Registered Designs Act was substantially harmonised with Community designs law through the EU Designs Directive (98/71/EC). In addition, the Community Design Regulation (6/2002), which covers both registered and unregistered Community designs, has direct effect in the United Kingdom.
An original or novel design is automatically protected by a UK unregistered design right once it has been recorded in a design document or an article has been made to the design.
The Copyright, Designs and Patents Act states that a design right is afforded to the “design of the shape or configuration (whether internal or external) of the whole or part of an article”. The limitation of ‘shape or configuration’ excludes surface decoration and ornament.
A design must be original to qualify for protection. The term ‘original’ is not defined; however, a design will not be original if it is “commonplace” in the design field. Although the term ‘commonplace’ also lacks a definition, in Farmers Build Ltd v Carrier Bulk Materials Ltd ( RPC 461) the Court of Appeal provided guidance on determining whether a design is commonplace. The article in question must not have been copied from an earlier design; and if aspects of the design are not found in another design in the same design field, the design is unlikely to be commonplace.
A design may qualify for UK unregistered design protection if it is created in pursuance of a commission from or in the course of employment with a qualifying person. A ‘qualifying person’ is an individual citizen, subject or habitual resident of, or a body corporate or other body having legal personality, formed in or having a place of business at which substantial business activity is carried on in, the United Kingdom or another qualifying country.
Individuals or bodies corporate of the following countries/territories are qualifying persons: the United Kingdom; the Isle of Man; the Channel Islands; all EU member states; Anguilla; Bermuda; the British Indian Ocean Territory; the British Virgin Islands; the Cayman Islands; the Falkland Islands; Gibraltar; Hong Kong; Montserrat; New Zealand; Pitcairn, Henderson, Ducie and Oeno Islands; St Helena, Ascension and Tristan da Cunha; South Georgia and the South Sandwich Islands; and the Turks and Caicos Islands.
Design rights last for whichever is the less of:
- years from the end of the calendar year in which the design was first recorded in a design document or (if earlier) from when an article was first made to the design; or
- years from the end of the calendar year in which articles made to the design were first made available for sale or hire (Section 216(1) of the Copyright, Designs and Patents Act) – in other words, first marketed.
In practice, the 10-year limitation is most likely to be relevant.
The Intellectual Property Act 2014 made several changes to UK law. Most of the provisions relating to designs came into force on October 1 2014 and the remainder by late 2015. The following changes were made to the scope of unregistered design rights:
- Section 1(1) limits unregistered design protection to “the shape or configuration of… the whole or part of an article”. Before the change, protection was much broader and applied to “any aspect” of the shape or configuration of an article, or part thereof.
- Section 1(3) clarifies that ‘commonplace’ means “commonplace in a qualifying country”.
- Section 2 alters the position for commissioned designs – the designer of an unregistered design will be the first owner, not the commissioner. The same amendment is made for UK registered designs and aligns UK design law with EU law and UK copyright law.
The owner of a UK unregistered design right has the exclusive right to reproduce the design for commercial reasons by making articles to the design or by making a design document recording the design for the purpose of making articles from it.
A UK registered design provides a monopoly for up to 25 years, subject to the payment of renewal fees every five years. It is possible to protect all or part of a product and/or its ornamentation, shape, configuration, surface pattern, texture, material or any other feature of its appearance. Registered designs can protect both three-dimensional and two-dimensional designs.
A UK registered design must be ‘new’ as follows:
- It must not be identical to any design which has already been made available to the public anywhere in the world before the application or priority date. A design is identical to another design if the only differences are immaterial. A design is deemed to have been made available to the public if it has been made public in any way, unless the publication is so obscure that it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned (Section 1B(6(a)) of the Registered Designs Act). In Green Lane Products v PMS International Group Plc ( EWCA Civ 358) the court held that the sector concerned is the sector of the prior art, which is not necessarily the same as that of the design.
- There is a 12-month grace period from any publication by the designer in which to file an application. This allows the designer time to exhibit and market its design before deciding whether registration is justified.
Further, a UK registered design must have ‘individual character’ as follows:
- The design must produce a different overall impression on the informed user from existing designs. However, it need not have artistic merit.
- The informed user is a person familiar with the design corpus in the relevant field. He or she need not have a high level of technical knowledge, but pays more attention to detail than the average consumer of trademark law (although perhaps less than the person skilled in the art of patent law).
- The designer’s design freedom is an important aspect in considering whether a design would make a different overall impression on a user. Highly functional designs are likely to be more similar to other designs than designs in which the designer enjoys total freedom; hence, small differences may lead to a different overall impression and individual character. However, the flipside is that the scope of protection will also be narrower.
- Features of a product that are solely dictated by technical function will be disregarded in assessing whether a product has individual character. Further, so-called ‘must-fit’ features are excluded from protection, meaning that protection cannot be obtained for the part of a design which is necessary for it to be fitted as a component to another product, although the shape of a connection may be protectable.
Design registration cannot be used to protect spare parts where the part may be used for the purpose of repair of a complex product so as to restore its original appearance. This exclusion applies only when the design of the part depends on the appearance of the whole product.
Since the end of September 2015 it has been possible to apply to register a single design using an online service. This service is in its beta phase and it is anticipated that it will also shortly be possible to register multiple designs. The relevant forms must be sent to the IP Office with payment of the required fees. On filing a design application, the full name and address of the applicant must be declared, along with the following:
- illustrations of the design, including sufficient different views to ensure that there is no uncertainty about its nature. Recent case law would suggest that line drawings are generally considered to be more reliable than photographs in defining what the designer wishes to protect and to provide a broader scope of protection. Partial disclaimers can be used to indicate more accurately which part of the design is (and is not) protected. There is no limit on the number of views that can be filed for each design (a difference from the Community design regime, where there is a limit of seven);
- details of the product(s) to which the design is applied. This does not limit the protection conferred by the design to that product; and
- an (optional) brief description of the design if some features are not adequately shown in the illustrations.
It is possible to file for multiple designs within a single design application in the United Kingdom. In a multiple design application, official fees for the second design onwards are lower than that for the first (£60 for the first design and £40 for every additional one).
The owner can request deferred publication for up to 12 months on filing the design. However, there is an increased publication fee for doing so and the owner has no registered rights until the design has been published in the register. If the owner fails to act within the 12-month period, the application will be deemed abandoned.
The UK application procedure is relatively quick and inexpensive. There is no substantive examination procedure relating to novelty or individual character of UK registered design applications (as with registered Community designs), since the requirement was formally removed in 2006. Formalities will be assessed only when a design application is filed. Design registrations can be challenged by third parties post-registration by way of an invalidation action filed at the IP Office. An application to invalidate the design can also be made as a counterclaim to an infringement action. The grounds for invalidation are as follows:
- The design does not qualify as a design under Section 1(2) of the Registered Designs Act (Section 11ZA(1)(a));
- The design does not:
- fulfil the requirements of novelty or individual character (Section 1B);
- is dictated solely by function (Section 1C); or
- is contrary to public policy or morality (Section 1D and Section 11ZA(1)(b)); or
- The design infringes a third party’s copyright or trademark, or amounts to passing off (Sections 11ZA(3) and 11ZA(4)).
If the registrar intends to declare a UK registered design invalid, the owner may apply to modify the design under Section 11ZD of the Registered Designs Act. Any allowable modification is considered to have taken effect from the grant of registration. If a design is found to be valid or partially valid in court, the court may certify the validity of the design which was being contested. A UK registered design may also be removed from the register as a result of non-renewal and cancellation by the registered owner.
The owner of a registered design has the exclusive right to use the design and any design which does not produce a different overall impression on the informed user. Both the registered owner and an exclusive licensee may bring infringement proceedings. The following remedies may be sought:
- damages or, as an alternative to damages, an account of the profits made by the defendant;
- an injunction preventing further infringement; and
- an order for the delivery up or destruction of the infringing articles.
Infringement proceedings in England and Wales must be brought before the courts (ie, the IP Enterprise Court (formerly the Patents County Court) or the Patents Court). The IP Enterprise Court has a cap on the damages available (£500,000) and overall recoverable costs (£50,000), and therefore facilitates litigation of lower-value cases that are generally less complex. Both courts aim to issue a judgment within one year of the commencement of proceedings.
Ownership changes and rights transfers
UK registered designs and unregistered design rights can be assigned, licensed or mortgaged in the same manner as other IP rights.
The owner may assign a registered design by a written assignment, which must be signed by, or on behalf of, the assignor. The assignee must register the assignment at the Designs Registry. Consideration should be given to the inclusion of appropriate warranties and a further assurance clause. Stamp duty is not payable on assignments of registered designs executed on or after March 28 2000.
Licences of rights for UK unregistered design rights are available in the last five years of protection. Anyone who becomes entitled to an interest in a UK registered design should apply to register that interest (Section 19(1) of the Registered Designs Act). While a licence will not be invalid if it is not registered, any assignee(s) of the proprietor’s rights in the design may not be bound by that licensee’s rights (Section 15B(8) of the Registered Designs Act). Another consequence of failure to register an interest in a design is that unless the court directs otherwise, the document relating to that interest may not be admitted in court as evidence of title (Section 19(5) of the Registered Designs Act). It is therefore strongly advisable that licences of registered designs be recorded.
There is often an overlap between designs and trademarks in the United Kingdom. For example, it is possible to protect the shape of products as a registered trademark as well as a design; however, generally shape trademarks are more difficult to register than more traditional trademarks. Logos and other devices which can be registered as designs are often also registered as trademarks. Design and trademark registrations for the same representations can exist concurrently and be enforced on the basis of the various different legislative provisions. Disputes also arise in relation to the invalidating effect of earlier trademarks on later designs.
It is also possible for a product to attract both design and copyright protection. However, UK legislation seeks to minimise the impact of double protection. Section 51 of the Copyright, Designs and Patents Act states that “it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design”. Further, relating to infringement, Section 236 of the Copyright, Designs and Patents Act states that “where copyright subsists in a work which consists of or includes a design in which Design Right subsists, it is not an infringement of Design Right in the design to do anything which is an infringement of the copyright in that work”.
Richard Willoughby and Richard Burton
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.