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Intellectual Property (IP) rights are quite varied, and in the business environment some are discussed more than others. Of all of the IP rights available, Design Rights rank among the least discussed and most misunderstood. Business professionals who are aware of Design Rights often dismiss them as being ineffective in protecting assets. However, this is not the most helpful of approaches to take when trying to understand how Design Rights work.
The point of this article is to introduce what Design Rights are, how they work and the avenues that can be pursued where someone is trying to protect their Design Rights. See more of our Intellectual Property Law Guides.
Design Rights are a kind of legal protection, that protect the appearance of a functional product e.g. light switch, hot water bottle or even a shovel. If something is protected by a Design Right, then it cannot be copied or reproduced by anyone else other than the holder of the Design Right.
It is important to acknowledge that there are two kinds of Design Rights; (i) Unregistered Design Rights; and (ii) Registered Design Rights. This guide will deal with both kinds of Design Right.
For a long time, Design Rights as a whole were never really recognised as independent legal rights on their own. They were included in different legislation that dealt more broadly with different kinds of IP rights. However, following a government overhaul of the law in this area, the role of Design Rights has been explicitly addressed. All of the rules governing Unregistered Design Rights are now set down in the Copyright, Designs and Patents Act (CDPA) 1988. The law regarding Registered Design Rights is elsewhere and will be discussed later.
Most kinds of IP right require that certain criteria are met before anyone can make use of them. Design Rights are the same, and there are certain things that a product will have to do before it can be considered worthy of protection by Design Rights.
Under the CDPA, something can be protected by Unregistered Design Rights if it meets the following criteria;
In addition to the above, there are certain things that a product cannot do, or it cannot be protected by Design Rights;
It is important to set out a distinction that exists in law between Design Rights, and Registered Design. Unregistered Design Rights do not require any formal application process. Providing a particular product meets all of the requirements outlined above, the individual or company in question will have a Design Right in that particular thing.
As mentioned earlier, the individual or company that engaged a Designer to make the design that becomes the subject of Unregistered Design Rights will be the owner.
It is important to note that during the last 5 years of an Unregistered Design Rights’ existence, the design that is covered by an Unregistered Design Right is covered by what is called a ‘Licence of Right’. This means that if any party asks the owner of an Unregistered Design Right within this 5 year period, they are entitled to have it. Where an Unregistered Design Right holder an a potential licensor are unable to agree the terms of a Licence Agreement, then they should contact the Intellectual Property Office (IPO) to settle the matter. However, nothing can be referred to the IPO earlier than one year before the earliest date that the licence of right becomes available.
The protection that is afforded by Unregistered Design Rights in the UK is not unlimited and the length of time that it lasts depends on which of the following happened earlier;
The point here is that, if aspects of the design are marketed then the Unregistered Design Right lasts for 10 years. If not, then the Unregistered Design Right will last for 15 years from when it was created. Whichever of these comes first.
As was mentioned above, being the owner of an Unregistered Design Right allows a party to reproduce a design for commercial purposes by recording the design i.e. making drawings, taking pictures or storing the information on a computer to allow for a product to be made. If any other party does any of these activities without the permission of the Unregistered Design Right owner, they may infringe the design right.
Unfortunately is can be difficult to prove that an Unregistered Design Right has been infringed as it must be proven that whatever is covered by the Design Right has been copied, or at least that the potential for copying the Design existed. This can be very expensive, and may involve a very lengthy dispute in the courts.
This guide has set out above how Unregistered Design Rights work, and what must be borne in mind when considering their use. Registered Design Rights are somewhat different to Unregistered Design Rights.
Most of the law covering Registered Design Rights is contained in the Registered Designs Act (RDA)1949. While a number of changes have been introduced by different pieces of legislation, the Registered Designs Act is still the main piece of legislation for Registered Design Rights.
Generally speaking, although covered by a different piece of legislation, the requirements that must be met before something can be protected by Registered Design Rights are broadly similar to those of Unregistered Design Rights.
Under the RDA, the concern is with protecting something that contributes to all of or part of a product – this can be texture, colour, shape or even colour. Before a design will be capable of being protected by a Registered Design Right it will need to meet the same criteria as Unregistered Design Rights, as discussed above.
The points to remember are that a design will only be capable of being protected by a Registered Design Right if it is (i) new and (ii) has an individual character.
Taking each component in turn, if a design is ‘new’, the law states that there can’t be anything identical to it anywhere else in the world when it became public i.e. when a designer applied for a Registered Design Right. There are some exceptions to this rule, the most important of these being what is called the ‘Grace Period’. If a designer makes their design public before he applies for a Registered Design Right, they are entitled to a 12 month ‘grace period’ to market the design and see if anything else on the market is similar. If there is some design that appears during this period that is similar, and that designer has applied for a Registered Design Right then other applications may be refused. It is always advisable that those seeking to have Registered Design Rights apply to get them as soon as a Design is made public.
If a design is of an ‘individual character’, it will need to give a different impression to what in law is called an ‘informed user’, that is familiar with products with similar designs in a particular field. The idea here is that when it comes to registering a design right, then whoever is registering the right – which will be discussed later – will not have pause to think that something very similar has already been registered.
Certain designs will not be able to be registered, and these include;
Assuming all of these criteria are met, and none of the exclusions apply, then a design should be capable of being covered by Registered Design rights.
As their name implies, Registered Design Rights have an application or registration process that needs to be followed.
The details of the application process are all covered by the Intellectual Property Office (IPO), who will register a Design Right, at www.ipo.gov.uk. Before discussing the details of the registration process, it is important to note that only the owner of a design or the owner’s agent i.e. a Patent Agent or a Solicitor can apply for a Registered Design Right. The important parts of the application process are outlined below;
As part of the application, the IPO will need all of the following details;
Provided that all of the relevant paperwork has been provided to the IPO, then an individual called the ‘Registrar’ will need to be satisfied that the design meets all of the requirements to merit registration, as discussed above. The Registrar will not look at the substance of an application for Registered Design Rights i.e. make sure it is new and has an individual character for any application that is made on or after 1 October 2006 – this is one of the changes made to the RDA.
If the Registrar is satisfied, they will provide a Certificate of Registration and publish a picture of the design and anything else they think relevant to it, in the Designs Journal.
It is important to note that third parties may object to a Design Right being registered, but only after registration, and only on the following grounds;
An important practical point in dealing with Registered Design Rights, is that applying for them can be quite an expensive affair. All of the fees for each stage of the application process are set out on the IPO website. It is very important to bear these costs in mind, when deciding on whether to apply for these rights.
Generally it will be the creator of a design, or the ‘author’ in law, that will own a Registered Design Right. However there are two exceptions to this;
If an employee creates a design as part of his job, it will be his employer that owns his design. If an employee, for whatever reason, goes and registers the design believing that he is the owner but later gives ownership to his employer, the IPO is able to alter the application be changing the registration.
If a design has been commissioned or ordered for money, the person who commissioned the design is the owner of the registered design right.
A Registered Design Right, will last for 25 years, provided that ever five years a renewal fee is paid to the IPO.
As with Unregistered Design Rights, being the owner of Registered Design Rights allows a party to reproduce a design for commercial purposes by recording the design i.e. making drawings, taking pictures or storing the information on a computer to allow for a product to be made. If any other party does any of these activities without the permission of the Registered Design Right owner, they may infringe the design right.
Pursuing parties that may have infringed Registered Design Rights, as will Unregistered Design Rights can be very costly and time consuming. However, with Registered Design Rights it is slightly easier in that the existence of a design right that is registered may be enough to stop anyone infringing the design – whereas intent to copy must be proven with unregistered rights. The advice of a Patent Agent or Solicitor with expertise in IP should be sought in these circumstances.
The added benefit of Registered Design Rights is that they last longer than Unregistered Design Rights, and they can be used to the financial gain of their owners who can sell the right, or even licence the right but retain ownership of it.
Nothing in this guide is intended to constitute legal advice and you are strongly advised to seek independent advice on matters that affect you.
