The Unregistered Design Right

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 [2005]).   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 [1992] 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 [1997] 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.

Exceptions

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.

The first exception applies to spare parts which must be of a particular shape to fit another article, such as certain types of integrated circuits which must have a certain type of connector so that they can be installed in a computer.  The rationale is that spare parts should be freely available at a reasonable cost, otherwise manufacturers might be able to develop a monopoly over spare parts and charge excessive prices.

The second exception concerns items such as replacement body panels for cars, whose size and shape are based solely on the car’s overall appearance.  Surface decorations are also covered by this exception.  In Lambretta Clothing Co v Teddy Smith (UK) Ltd [2005] the court held that a coloured pattern in material was a surface decoration.  (For further discussion of surface decorations, in the context of fitted kitchens, see Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998].)

Ownership and duration of the right

A registered design is created by an author.  On the other hand, the person who creates a design subject to a design right is known as the designer.  The designer is the owner of the design unless it is created in the course of employment or as the result of a commission.  a computer-generated design is created by the person who makes the necessary arrangements to create the design.  The right lasts for 15 years from the end of the calendar year in which it was first recorded or an article was first made from it.  Alternatively, if articles have been made for sale during the first five years then the right lasts only for another ten years. 

Infringement of the design right

A design right is infringed when a person makes articles based on the design, or records the design for the purpose of making articles, without the design owner’s consent.   Infringement also occurs when a person ‘deals’ with infringing articles, such as by importing or selling them.  If a design relates to part of an article, it seems that the article must be looked at as a whole when deciding the question of infringement (see C & H Engineering v F Klucznik & Sons Ltd [1992]).   

Remedies

Remedies for infringing a design right are the same as those for infringing copyright but there are no criminal sanctions.