Written by Ramsay Monime | April 25, 2023
Design rights can protect the shape, configuration or appearance of the whole or part of a product. In the UK, the two main design rights which subsist are either registered or unregistered design rights.
Registered design rights in the UK protect the appearance of a product, which includes its contours, colours, shapes, textures and materials. Registered design rights cannot protect features which are solely dictated by the product’s technical function, a need to interconnect with another product, or if it is contrary to public policy, or is a protected emblem.
A registered design right is a monopoly right, which means the proprietor does not need to show copying to prove infringement. The proprietor needs only demonstrate that the product does not create a different overall impression to the ‘informed user’ in relation to the registered design.
Unregistered design rights in the UK come into existence automatically, if a qualifying design has been recorded in a design document or an article has been made to that design. Unregistered design rights protect the shape and/or configuration of the whole, or part, of an article, but only cover 3D objects – both internally and externally.
Unregistered design rights will not cover methods of construction or surface decorations.
To be protected, a UK-registered design right must be both novel and have the necessary “individual character”. UK registered design rights applications are filed at the UK IPO using Form DF2A. They are territorial rights, only providing protection in the country in which the application is made.
The application will be examined with reference to whether it fits the definition of a design and does not include an excluded feature. To achieve registration, a substantive examination of whether the design is both novel and has the necessary ‘individual character’ will not take place.
However, it is imperative that you conduct an analysis of the prior art in the relevant field, to prevent the design being easily invalidated in relation to individual character and novelty.
Individual character arises in a design if it creates a different overall impression on an ‘informed user’.
The informed user is reasonably discriminatory and open to design issues. To assess individual character, the courts will account for the degree of design freedom afforded to the designer, i.e. whether the design was dictated by its technical function rather than the choices afforded to the designer.
Novelty in a design exists where there are no identical designs or designs which differ based on irrelevant details that have been made available to the public in the UK. Various international design databases provide searching capabilities against similar designs to allow users to assess whether the design is novel in the relevant field.
The UK provides for a 12-month grace period from self-disclosure of the design in which to file an application for registration. This allows the designer to test the design in the market. However, relying on the grace period can prove to be harmful to plans of the international registration of a design. This is because grace period provisions vary from country to country and not all foreign territories provide for a grace period.
For example, China does not provide a grace period, meaning a disclosure in the UK relying on the grace period may prevent your design from being novel in China or another key territory which does not operate a grace period.
To qualify for a UK unregistered design right, the design must be original and not ‘commonplace’ in the design field in question at the time of its creation.
In assessing whether a design is commonplace, the courts will deem a design that is clichéd, trivial or common to those in the relevant field as likely to be commonplace.
The existence of similar designs will not be fatal to the creation of unregistered design rights.
Registered designs are registered at the UK Intellectual Property Office, whereas unregistered design rights arise automatically with no registration process.
The scope of protection afforded to registered and unregistered design rights differ greatly, as do the criteria for infringement.
Registered design rights are monopolistic in nature and therefore do not require proof of copying. Instead, the proprietor need only demonstrate that the allegedly infringing product does not create a different overall impression on the informed user to the registered design. This provides for a broader scope of potential infringing designs for the proprietor to claim infringement.
Meanwhile, unregistered design rights are a form of copyright and therefore require the proprietor to show that the design has been copied for an infringement to be found. This provides for a narrower scope of designs which will give rise to an infringement, as slavish copying must be proved by the proprietor.
Design rights allow businesses in content-heavy industries, such as fashion and gaming, to protect ever-changing product ranges from being copied. The relatively low costs and time needed to register designs make it a worthwhile endeavour in ensuring your business’ creativity is protected.
Registered design rights will provide you with a broad scope of protection against any potential infringement, as you do not have to prove copying. Furthermore, in the UK, a single design right registration can protect up to 10 designs and will result in fees that are considerably lower than can be found in territories such as China and the US.
Unregistered design rights provide shorter-term legal rights to prevent unauthorised copying of designs. Even if your design has already been disclosed to the public without registration, unregistered design rights may still be pervasive in the design.
However, given the difficulty in proving the design has been infringed, we strongly recommend the registration of your design.
Registered designs are protected for five years from the date of registration. The proprietor can then renew the registration for one or more periods of five years up to a total term of 25 years provided there is payment of the prescribed fees. Registered designs, therefore, provide up to 25 years of enforceable protection as opposed to the weaker protection provided by unregistered design rights.
Unregistered designs will only last for 10 years from the end of the year in which articles made to the design were sold or leased anywhere globally. Moreover, in the last five years of the 10-year period, any person will be entitled to a license in respect of any activity that would normally have infringed the right.
The royalty rates available to an unregistered design right holder on a license will be decided by the Comptroller at the Designs Registry, which is known for granting unfavourable license terms.
If you notice that your registered design has been infringed, we recommend that you immediately begin to document the timeline of events and record each alleged infringing activity.
This can include taking screen captures of all infringing articles and obtaining all and any evidence related to the infringing party. Conducting a test purchase will enable you to verify any seller details and confirm that the article in question is actually infringing.
Once you have collated this information, you will be in a position to instruct a solicitor with an up-to-date chronology of events.
Upon instruction, solicitors will be able to provide you with the appropriate legal advice and escalate the matter with the other side. This may involve sending a cease & desist letter to the infringing entity, which will outline the similarities between the registered design and the infringing design. If the similarities are more visually striking than the differences, then the fact that the list of differences is substantial will be irrelevant, as it is the whole design which must be compared.
The letter will also require the infringing party to stop their activities and provide the relevant legal remedy.
The crucial element of a claim for unregistered design right infringement is proving subsistence and duration of the right itself.
To do this, you will need to create a chain of authorship, which will comprise a chronology of events that illustrate how and when the design was created. We advise that you keep track of any notes, materials, prototypes and communications with third parties which evidence the background creation of the design.
You will also need to outline how and when the design was first disclosed or made available to the public.
You must bear in mind that even if the infringing design is identical to the protected design, it will not infringe the unregistered design right if the other side can prove it was the result of independent design.
If you are accused of infringing a registered design right, the onus will be on you to disprove the allegation that your product does not create a different overall impression to the informed user in the relevant market.
It will be imperative for you to create a chronology of any and all differences or similarities between the two products.
You will then be in a position to instruct a solicitor and provide them with the necessary information required to make an informed assessment of the strength of your defence.
Your solicitors will account for how innovative the registered design is, the freedom of choices afforded to the designer and the similarity of the features taken as a whole when assessing the designs.
If you are accused of infringing an unregistered design right, you will need to undertake a comparative exercise between both designs where you outline all similarities and differences between the products.
To disprove allegations that you have copied the design, we advise that you produce a chronology of your design to prove your product is the result of an independent creation of work and not copying.
Design rights can be tricky. If you’re having an issue, perhaps your designs have been copied or you’re accused of copying, then our design rights team can help. Get in touch using the form below to organise a free consultation.
Written by Kemal Tayyareci and Ramsay Monime.
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