A product design usually consists of the shape and/or a particular design on the object. It relates to its actual appearance rather than its technical use.
What are unregistered design rights?
Unregistered design rights arise automatically on the creation of the original object, so it they can be distinguished from a registered design. Unregistered design rights allow the owner to prevent a third party from directly copying their design.
Of course, these can also be protected as registered designs. However, the unregistered design right is similar to copyright in that it does not need to be registered, and nor does the design right need to apply to a product’s appearance to have the protection (unlike a registered design). There are overlaps between registered designs and unregistered design rights, and where you can, it is recommended to register your design if possible as this gives you much greater protection.
Subsistence of a design right
A design, for the purposes of a design right, is “the design of the shape or configuration (whether external or internal) of the whole or part of the article” (section 213 of the Copyright, Designs and Patents Act 1988). The shape need not be three-dimensional so, for instance, components printed on a circuit board could be a configuration, though ‘colourways’ in a garment are not (Lambretta Clothing Co v Teddy Smith (UK) Ltd ).
However, it must be an original design. A design is not original if it is commonplace in the relevant area of design when it is created. There is a two-fold test as to whether a design is original: firstly, did it originate from the author; if so, was the design commonplace at the time it was created? This means the design must be the designer’s original work and not commonplace when created. If the features of the design are combined in a way which is not commonplace, then the design will not be commonplace.
Are there any exceptions?
Design rights cannot exist in a method or a principle of construction, or in an article whose shape or configuration either:
- enables the article to be connected to another article so that either article can perform its function (eg. spare parts of a particular shape to fit another article, such as circuit connectors), or
- depends on the appearance of another article which is intended by the designer to be an integral part (eg. replacement body panels for cars whose size and shape are based solely on the car’s overall appearance)
Ownership and duration of the right
The owner of an unregistered design is the design creator. 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.
Unregistered design rights last 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 commercial purposes, the rights last for a short term of 10 years.
What right are available if unregistered design rights are infringed?
An unregistered design right is infringed if a third party directly copies the owner’s design, or records the design for the purpose of making articles, without their consent. Infringement may also occur if a third party ‘deals’ with infringing articles by, for instance, importing or selling those infringing copies.
If it is argued that an allegedly infringing design relates to part of an article, the article must be looked at as a whole when deciding the question of infringement (C & H Engineering v F Klucznik & Sons Ltd ).
If a claim for infringement of unregistered copyright design is successful, the remedies are injunction/s and or compensation.