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Update: UK Unregistered Design Rights

Update: UK Unregistered Design Rights

Published: 13.03.15 at 12:25

The UK Unregistered Design Right also known as "design right" has been available since the passing of the Copyright, Designs & Patents Act 1988 and is automatic, i.e. it comes into existence the moment the design has been recorded in a document. It protects the shape or configuration of a marketable (or potentially marketable) product and is used to prevent unauthorised copying of an original design.

Design rights are independent of copyrights. Copyright protects the documents detailing the design as well as the artistic or literary work incorporated within the finished product, the design right focuses more on the shape, configuration and construction of the product.

However unlike registered design right protection, unregistered design rights are not an absolute form of protection. This means in order to successfully pursue a claim for infringement, it is necessary to show that the features of the design in question were copied.

UK Unregistered Design Rights end 15 years from the year in which the right was first recorded in a design document, or an article was first made to the design, whichever comes first. If articles made to the design are put on sale within the first five years of that term, then the design right lasts for only 10 years from the date of first sale.

Intellectual Property Act 2014 and its impact on UK Unregistered Design Rights

Under the old law, design right protected any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. As of 1 October 2014, the wording 'any aspect' was removed from the relevant provisions. Therefore if a very small or trivial part of a design (or a 'part of a part') is copied there will not be an infringement. The right comes into existence when either a qualifying design has been recorded in a design document or an article has been made to that design.

 A qualifying design, needs to be original and not commonplace i.e. should not be broadly known in the design field in question at the time of its creation. As of 1 October 2014, 'commonplace' is further defined as 'commonplace in a qualifying country.' Qualifying countries are the UK, other EU member states and countries with reciprocal arrangements with the UK. This means that if a design is well known within the relevant product sector in the UK or any of the qualifying countries, it will not meet the requirements for originality.

In practice a design will lack originality only if it has been copied. However, establishing that it is not commonplace is not straightforward and will be decided on a case by case basis.

As of 1 October 2014, it is not an infringement to copy someone else's UK unregistered design in the following circumstances:

  1. An act which is done privately and for purposes that are not commercial
  2. An act which is done for experimental purposes
  3. Reproduction for teaching purposes or the purpose of making citations provided that the reproduction is fair, does not compromise the ability of the owner to exploit the design, and the source of the design is cited
  4. Using equipment on non-UK registered ships or planes which are temporarily in the UK; or importing spares to repair them, or carrying out repairs

Guidance on the burden of proof for copying

A very recent case this year, G-Star Raw Cv v Rhodi Ltd and others [2015], highlights the importance of proper evidence and full disclosure when copying is alleged in relation to design rights. As with many cases in this particular area of law, most of them are determined on their own facts, however the detailed judgment of this case provides useful guidance on how to assess UK unregistered design right infringement.

  • The judge expected the person defending infringement to take care to preserve a full paper trail of the alleged independent designs process. He pointed to gaps in the case as a result of evidence not being given by key designers and a key manufacturer of the defendants' jeans. He criticised the fact that important correspondence was not disclosed and that the explanation for the deletion of emails was implausible and inconsistent
  • If the person claiming infringement demonstrates sufficient similarity, not in the works as a whole but in the features claimed to have been copied, and establishes that the person defending the claim had prior access to the copyright work, the burden passes to the person defending the claim to satisfy the judge that, despite the similarities, they did not result from copying.
  • Provided the person claiming infringement identifies correctly the part(s) of his design which he claims to have been taken exactly or substantially, he will obtain protection against unfair misappropriation of the time, skill and effort that he has expended on creating that design. In those circumstances, no purpose is likely to be served by investigating the extent to which other aspects of his design are also "original".

Written by Iroshi Kalubowila, a student at the University of Law, London.

Photography: some rights reserved by Bargain Moose

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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