Unregistered design rights — post-Brexit

In the UK, and in many other countries, industrial designs are protectable by both registered and unregistered rights. Many clients are more familiar with the various registered design rights (which include UK, Community and Hague design registrations), which are obtained through an official application and registration procedure, somewhat similar to the procedures for obtaining patent or registered trade mark protection. Clients may be less familiar with unregistered design rights which arise automatically without the need for registration.

Registered design rights are often described as ‘monopoly rights’ because it is not necessary to show that a competitor has copied the design in question in order to prove infringement of the right – in the EU, for example, it is sufficient to show that the competitor’s product produces the same overall impression as the design which has been registered. In contrast, unregistered design rights only provide proprietors with the right to prohibit unauthorised copying of the design or unauthorised dealing in copycat articles. Registered designs may therefore be described as more powerful rights than unregistered designs. Nevertheless, design registration incurs both upfront costs and the payment of regular maintenance fees and so reliance on unregistered rights, which do not incur initial costs, can still be attractive.

The unregistered design rights

The unregistered rights which are available in the UK include UK unregistered design right, Community unregistered design right and copyright. All three rights come into existence automatically (and are therefore essentially free to acquire) and do not need to be formally registered.

UK unregistered design right automatically lasts for 15 years from the end of the calendar year in which a design is first recorded in a design document or an article is first made to a design. If the design is made available to the public through sale or hire within the first 5 years of this period, however, the UK unregistered design right lasts for 10 years from the end of the calendar year in which such so-called ‘first marketing’ occurs.

Community unregistered design right (which provides protection across the whole of the EU) lasts for 3 years from first making a design available to the public in the EU.

Copyright in an artistic work, which is generally the type of copyright work most relevant to industrial designs, comes into existence on the creation of the work and subsequently lasts for 70 years from the end of the calendar year in which the author of the work dies.

Definitions and exclusions

Unregistered rights can therefore provide relatively long-lasting protection, but there are restrictions on what can be protected by each right. UK unregistered design right protects the shape or configuration (whether internal or external) of the whole or part of an article, but it does not extend protection to:

1. methods of construction
2. features which enable an article to fit with another article so that either may perform its function
3. features of an article which are dependent on the appearance of another article of which it is intended to form an integral part, or
4. features of surface decoration

In contrast, the Community unregistered design right protects the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. The Community unregistered design right therefore explicitly protects surface decoration, but does not extend protection to:

1. component parts of complex products which are not visible in normal use
2. features of appearance of a product which are dictated solely by the technical function of the product, or
3. features of appearance of a product which enable the product to fit with another product so that either may perform its function

Artistic copyright can protect graphic works (such as paintings, drawings or diagrams), photographs and sculptures or collages, irrespective or artistic quality, as well as works of architecture and works of artistic craftsmanship (such as items of pottery or knitted sweaters).

Although the scope of protection afforded by each of the unregistered design rights tend to overlap, they are not the same. One product may therefore be protected under all three rights, whereas another product would only be protected by one right. The design for a car engine, for example, could be protected by UK unregistered design right but not by Community unregistered design right (the engine is not visible in normal use) or copyright (the engine does not meet the definition of an artistic work). Both the 3-dimensional shape and surface pattern of a digitally-printed dress could be protected by Community unregistered design right, whereas only the shape could be protected by UK unregistered design right and only the printed pattern might be protected by copyright.

Qualification

The nationality of the designer, the location of the creation of the design, or the place of first public disclosure or marketing influences which, if any, unregistered design rights apply.

In order for UK unregistered design right to come into existence, a design must qualify for protection by virtue of the designer or his employer being a ‘qualifying person’, meaning a habitual resident of, or a corporate body formed in, and having a place of business at which substantial business activity is carried out in, a ‘qualifying country’. A design may also qualify for protection if articles made to the design are first marketed in a qualifying country by a qualifying person. Qualifying countries currently include the UK and the other Member States of the EU, and several other territories with which the UK has reciprocal relationships (e.g. Hong Kong and New Zealand). Copyright protection also has analogous qualification requirements. In contrast, a design qualifies for Community unregistered design protection simply by virtue of having been first made available to the public in the EU. This means that a design first made available to the public outside the EU cannot qualify for Community unregistered design right, even if it is subsequently marketed in the EU.

This is an area of intellectual property law which will likely be affected by the UK leaving the European Union. For example, at present, a design created by a French designer in France could qualify for UK unregistered design right protection by virtue of the designer being a qualifying person. Similarly, a design created by a Japanese designer employed by a US company could also still qualify for UK unregistered design right protection if articles made to the design are first marketed, for example, in Germany by a German subsidiary. But if the UK leaves the EU, it is possible that the UK’s national legislation would be revised to remove EU member states from the list of qualifying countries, particularly if the UK does not maintain access to the single market.

In addition, if the UK ceases to be a Member State of the EU, designs first disclosed in the UK could be excluded from Community unregistered design right protection. This is because it is the location of first marketing which is relevant in EU design law. In that case, fashion designers, for example, who currently debut their new clothing lines at London Fashion Week might reasonably choose to show their collections first in Paris or Milan in order to secure pan-EU unregistered design rights.

Summary

Unregistered design rights can provide long-lasting legal rights to prevent unauthorised copying of industrial designs at little to no cost. Due to the potential difficulty in enforcing these rights, however, it is still generally advisable to register designs where possible. Nevertheless, where a design has already been disclosed to the public without prior registration, it is important to bear in mind that unregistered design rights may persist and that you may still be able to prevent third parties from copying the design by relying on those unregistered rights.

How can we help?

If you have any questions regarding design protection, please contact us.

This article is provided as a source of general information only and should not be considered legal advice. No guarantee is provided that the information provided herein is complete or current. Readers should not act or rely on any information provided herein without first obtaining specialist professional advice.