What is the unregistered design right?
The unregistered design, also known as the design right, is to be distinguished from a registered design. The unregistered design right can protect things such as the shape of, say, a handheld gaming device or a mobile phone. Of course, these can also be protected as registered designs. The design right is similar to copyright in that it does not need to be registered. Neither does the design right need to apply to a product’s appearance, unlike a registered design. Clearly there are overlaps between registered designs and unregistered design rights, as the two are not mutually exclusive. If there is an overlap it is recommended to register a design if possible, as this also creates a monopoly right to the design.
Subsistence of a design right
Under s213 of the Copyright, Designs and Patents Act 1988, a design, for the purposes of a design right, is ‘the design of any aspect of the shape or configuration (whether external or internal) of the whole or part of the article.’ The shape need not be three-dimensional, in the sense that a cut-out from a piece of paper will satisfy the requirement. Components printed on a circuit board could be a configuration, but ‘colourways’ in a garment cannot (see Lambretta Clothing Co v Teddy Smith (UK) Ltd ). The design right applies to industrial designs regardless of whether they are functional or even visible in normal use. Designs must, however, be original. Under s213(4) of the Copyright, Designs and Patents Act 1988 a design is not original if it is commonplace in the relevant area of design when it is created. In C & H Engineering v F Klucznik & Sons Ltd  the court stated that this requires a two part test. First is whether the design is original in the sense that it originated from the author (similar to copyright). If it did, the second stage is to ask whether the design was commonplace at the time it was created. In other words, the design must be the designer’s original work and not commonplace when created. In Ocular Sciences Ltd v Aspect Vision Care Ltd  the court considered the word ‘commonplace.’ The judge thought that a design which was, among other things, ‘trite, trivial, common-or-garden [or] hackneyed…is likely to be commonplace.” However, commonplace features do not automatically mean that a design itself is commonplace. If the features are combined in a way which is not commonplace then neither will the design be commonplace.
Design rights cannot exist in a method or a principle of construction. Nor can they exist in an article whose shape or configuration either:
- enable the article to be connected to another article so that either article can perform its function, or depend on the appearance of another article which is intended by the designer to be an integral part.
For more information on:
- Ownership and duration of the right
- Infringement of the design right