Under UK and European intellectual property (IP) law, designers may have certain rights over their creations. However, what is protected by design right may be different from the product as a whole. Generally, design rights are only concerned with particular features of the product, not the intrinsic product itself.
It is important to have an understanding of the rights that apply if you are to determine how best to exploit them, whether by manufacture of the designs or by selling or licensing your rights to a third party.
There are four types of right available to protect designs in the UK, and a single design may be protected by all four rights at the same time. These rights are:
- Registered UK Design
- Registered Community Design (RCD)
- Unregistered Community Design (UCD)
- Unregistered UK Design (also known as UK Design Right)
Further, there is also a design copyright, which protects artistic designs.
Registered design rights
If you consider your design to be marketable, you should consider registering it. You can choose to register your design in the UK only or for the entire European Union, each through a single registration. The first owner of a design is its creator unless the design was created in the course of employment (in which case it is likely to be the employer) or as a commission (in which case it is likely to be the commissioner).
The holder of a registered design right is granted the exclusive right to use, and to stop anyone else from using, the design and any other design which may be so similar to your design that it would confuse the notional ‘informed user’ of such products.
There are four basic requirements for protection:
- The design must come within the definition of a ‘design’; that is, it must be the appearance of whole or part of the product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation;
- The design must be ‘new’ (broadly, meaning that it has not been published or publicly disclosed in the UK or the European Economic Area) and have ‘individual character’ (meaning it must create a different overall impression on the ‘informed user’ of such product from those designs which have already been made available to the public). The UK Intellectual Property Office (IPO) has an online database of registered designs, which you can search for free to help check this.
- The design must not be purely functional, and
- The design must not be contrary to public policy/accepted principles of morality. For this, ask ‘Would the public think it wrong to grant protection’ notwould they be offended by the design.
How to register
To register a UK design right, you must apply to the IPO; however, you should be aware that a design is not necessarily valid just because it has been accepted for registration.
To register a Community design, you can apply to the Office for Harmonisation of Internal Markets (OHIM) in Alicante, Spain or to the UK IPO. The process works in the same way as for registering a UK design, except you can register multiple designs in one application (but note that the fees increase with increasing number of designs).
A registered design initially lasts for five years. However, it can be renewed every five years, up to a total of 25 years, on payment of further renewal fees.
The principal benefits of registration are that, it:
- grants an exclusive right to make, sell, distribute or licence the design within the UK or the European Community;
- acts as a deterrent to people who may wish to copy your design;
- gives the right to sue those who copy your design without your permission (although copying does not have to proved); and
- is a tangible asset with a value and the potential to increase in value.
Unregistered design rights
The substantive requirements for a UCD are the same as for a registered design, whether a UK or Community right. However, the right arises automatically when a design is first made available to the public in the Community, rather than requiring a formal registration.
As with an RCD, a UCD subsists across the Community. However, the disadvantages are that it only lasts for three years from the date it arises and that in order to prove infringement you also need to show that your design has been copied.
Unregistered UK Designs also arise automatically, without the need for registration, when the design is recorded in a design document or an article is made to that design. They are useful for protecting functional designs.
General requirements for an unregistered UK design right include:
- It must involve an aspect of shape or configuration of an article; and
- It must be original, in the sense that it has originated from the designer rather than been copied from a third party.
Note, however, that unregistered UK designs do not subsist in:
- a method or principle of construction;
- the shape/configuration which is required in order to enable the article to be connected to or placed against another article (for example, the three pins of a plug as this is needed for all UK plugs), or which is dependent on the appearance of another article which it is intended to form an integral part (e.g. a car door, which is dependant on the rest of the car); or
- surface decoration.
Unregistered UK design right lasts 15 years from the date the design was first recorded in a design document or an article was first made to the design. However, if articles made to that design are available for sale or hire within five years of the above date, then it is limited to 10 years after it was first available for sale or hire.
Design copyright protects design documents from being copied to make 3D objects. The key requirement is that the design must be artistic.
For example, to make a piece of jewellery from another’s drawn design would be an infringement as the design is of an artistic work. To make a machine from someone else’s design would not be copyright infringement (though the latter may infringe a design right).
Design copyright subsists in artistic works, including works of artistic craftsmanship and can, unlike unregistered UK Design Right, protect an article’s surface decoration.
Once the design has been used in a manufactured article, its duration is limited to 25 years.
There is no procedure for acquiring design copyright protection. Copyright arises automatically upon the recording of an original design, in the sense that the design has originated from its creator as opposed to have been copied.
You should keep good records of the process you go through when creating a new design, and when such design is recorded or first put on the market, in case in the future you need to enforce your unregistered design rights or copyright in design.
The legal definition of ‘design’ is considerably narrower than the everyday usage of the word. It may be that your creation does not fall under the protection of one of the above rights. However, these may still fall under the protection of certain other forms of IP rights.
Image: Beth Horner, The Cat Kingdom, 2017: www.bethhorner.co.uk