DESIGN RIGHT IN THE UK

Design right protects original features of shape or configuration of an article.

The features of shape or configuration may be internal or external and may be the whole or only part of the article.

Design right does not subsist in:

1.surface decoration

2. a method or principle of construction (this essentially excludes inventions from design right protection), or

3. features of the shape or configuration of an article which -

a. enable the article to be connected to, or placed in, around or against another article so that either article may perform its function. An example of this would be that part of a car exhaust pipe which is shaped to fit onto the exhaust manifold on the car engine, or

b. dependent upon the appearance of another article of which the article is intended to form an integral part. The usually quoted example of this exclusion is a car body panel - insofar as any one panel is dependent upon (i) the body panels all around it, and (ii) the body panel on the opposite side of the car.

To qualify for design right protection, the design must be recorded in a design document or an article must have been made to the design. The recording or manufacture must have taken place after 1st August 1989, and either

a. the designer must be a qualifying person, citizens or companies having their main residence or place of business in certain qualifying countries which include U.K., European Community and Hong Kong, but does not include USA or Canada, or

b. if the design was created as a commissioned work, or under a contract of employment, then the commissioner or employer must be a qualifying person, or

c. articles made to the design must be marketed for the first time anywhere in one of a list of countries.

Design right lasts for

a. a period of 15 years from the end of the calendar year in which the design is first recorded in a design document or an article made to the design, or

b. a period of 10 years from the end of the calendar year in which articles made to the design are first made available for sale or hire,whichever ends sooner.

Design right is only infringed by the copying of the article in question. Licences of right are always available for the last 5 years of design right. This means that anybody can insist that you allow them to make articles to your design upon payment of a reasonable royalty. Design Right therefore, essentially gives the owner just 5 years monopoly over the sale of articles made to the design.

DESIGN REGISTRATION IN THE UK

Registration of a design can protect the appearance of the whole or part of a product and in particular protect the features of shape, configuration, pattern and ornamentlines, contours, colours, shape, texture, materials or ornamentation of a new design. This means that as well as the features of shape and configuration which are protectable by design right, surface decoration is also protectable.

To be registrable, a design must be new, to the extent that the identical design or one differing only in immaterial details has not previously been made available to the public. A design must also have individual character, in that it must produce a different overall impression from designs which are already known.

Excluded from protection through registration are:

a. features of appearance which are dictated solely by the technical function which the product has to perform (for example, a cog of a car transmission system),

b. except in modular systems, features of shape or configuration which must match those of another product in order for either product to perform its function (the same exclusion as applies to design right).

An important recent introduction to UK design law is that of a 12 month grace period. This allows a designer to test the market with their new design and provided they file an application for registration within 12 months of the disclosure, the disclosure does not invalidate the registration. However, it is important to note that the registration would be invalid if a third party independently filed an application for a similar design during the period of grace.

Once registered, registration lasts for 5 years form the date of application. It is renewable for a further 20 years in a 5 year stages. There are different strengths to the protection afforded by copyright, design right and design registration.

To show infringement of any copyright or (unregistered) design right you may have, you must prove that the person you allege to be infringing, copied your design. That is, if he independently thought of the same design as you, then he is not infringing.

A registered design is an absolute monopoly. Even if someone has independently thought of the same design as you, provided that he did so after the date of your registration, then he will be infringing your registered design. Whereas copyright and design right subsist automatically once a qualifying work is created,it is beneficial if the subject matter of a registered design has not been disclosed to anyone on a nonconfidential basis before an application for registration is filed. It is vital that the subject matter has not been publicly disclosed for more than 12 months.

Please contact us for further information.