Design rights exist in order to protect unique features which determine how the whole or part of a product or article will look. Design rights apply to products and different parts of the same product can be protected. For example, for a coffee mug, design right may cover the shape of the mug and the shape of the handle, however it would not extend to any pattern on the mug that was there as decoration. The UK affords protection to both unregistered and registered designs.
Unregistered Design Right
Unregistered design rights do not require registration to exist but rather arise upon creation of the design, subject to certain requirements. Unregistered UK design right provides protection against copying for 10 years from the design being put on the market or 15 years from the design being recorded in a design document, whichever period ends first. In order to be protected, an unregistered design must:
- Cover the shape or configuration (whether internal or external) of the whole or part of an article.
- Be an original design*.
- Qualify for protection by reference to (a) the designer or the person by whom the designer was employed, or (b) the person by whom and country in which articles made to the design were first marketed.
- Be recorded in a design document or an article must have been made to the design.
*The Copyright, Designs and Patents Act 1988 does not define the term ‘original’ however a design will not be deemed original if it is ‘commonplace’ in a qualifying country (being the UK or a country enjoying reciprocal protection) at the time of its creation.
Registering Design Right
In order to better protect your design you can register it. To do so you must demonstrate that your design is new and has ‘individual character’. Registering your design affords protection for up to 25 years, provided that the registration is renewed every 5 years. If you have registered your design and someone does copy it, you only have to demonstrate that the same overall impression is created between your design and the infringing design. If your design is unregistered you will need to prove that your design has been copied, which can often be much more difficult to evidence.
Design rights tend to be relatively quick, cost effective and straightforward to register. Other intellectual property assets such as trade marks are examined thoroughly by the Intellectual Property Office at the examination stage, whereas designs are not examined fully to determine novelty or individual character. This has the benefit of a quick and easy registration but does mean that designs can be vulnerable to cancellation if a third party can later show that a design did not meet the requirements for registration.
Exceptions
It is important to note that it is not possible to register a design for:
- A method or principle of construction.
- Features of shape or configuration which (a) enable the article to be connected with another article so either can perform its function, or (b) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. These are known as the ‘must fit’ and ‘must match’ exceptions.
- Surface decoration.
The ‘must fit’ and ‘must match’ exceptions are designed to limit protection for example in relation to spare parts. In the case of Ocular Sciences v Aspect Vision Care Ltd it was decided that a design for contact lenses could not be protected because the lenses were designed to fit with an eye.
How can Thorntons help?
Designs are an important asset of many businesses and it is important to ensure that your designs are protected. If you have a design which you are interested in protecting or if you have concerns that your design has been copied by a third party, our team of experts would be happy to assist you. Contact us on 03330 430350 for advice.
