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Introduction; Design Registration; Registrability; Spare Parts; Scope of protection given by Design Registration; Protection for Industrial Designs abroad;
The Community Design Registration; The International Design Registration;
The Application for Design Registration; Ownership of Registered Designs; Unregistered Design Rights; UK Unregistered Design Right; Ownership of UK Unregistered Design Right; Unregistered Community Design; Copyright.
Industrial designs are designs which are intended to be multiplied, usually by some industrial process, and sold or hired to the public. This is distinct from works of art which are usually reproduced once only or a small number of times. A domestic telephone is an example of an industrial design, so is the pattern applied to curtains or wallpaper. In the U.K. there are two national routes through which industrial designs may be protected: by way of design registration and/or by way of unregistered design right protection. In addition it is possible to obtain equivalent protection through registered and unregistered Community design rights (see below).
Design Registration
A design registration gives protection for the appearance of a product, as distinct from its technical features, which should be the subject of a patent. Note that, to be registrable, it is not necessary for the design to have aesthetic appeal. The protection in the U.K. lasts for 25 years from the date of application, subject to payment of renewal fees every 5 years.
Registrability
To be registrable, a design must be new on the date that the design application is filed. By 'new' is meant that the design must not have been published anywhere in the world prior to the date of the design application. Publication includes publication in the normal sense of the word, but also includes commercial activity such as display at an exhibition, or sale of the product concerned.
A further requirement for registration is that the design to be registered must have “individual character” over any designs published anywhere in the world prior to the date of the design application. The term “individual character” means that the design must produce an overall impression on the informed user which is different from the overall impression given by the prior design.
Note that any publication by the owner of the design within the 12 month period prior to the filing of the design application will be excused when considering novelty and individual character. This “grace period” gives the owner an opportunity to test the market, for example, before going to the expense of filing a design application. Note, however, that although other countries have similar grace periods, not all do and therefore, before taking advantage of this, advice should be taken to ensure that your ability to obtain valid design registrations elsewhere is not compromised.
The range of products whose appearance can be covered by a UK design registration is very wide. For example, the product may be an industrial or handicraft article, or a graphic symbol or typeface. In addition the design does not need to apply to a complete product, but could apply to just part of a product. For example protection could be obtained for a shoe sole which could be applied to a number of different shoe types.
Certain designs, however, are excluded from registration, as follows:-
- Methods and principles of construction: these will usually be protectable by a patent - the design registration is intended to protect the appearance of a product, and not the way it functions.
- Those features of a design whose shape is dictated solely by the function which the article has to perform.
- Those features of a design whose shape is dictated by its need to fit with other parts. This is the so-called "must fit" exception and excludes from protection such things as the outside shape of a piston which has to fit in a cylinder, or the thread of a bolt.
- Computer programs.
- Designs which are contrary to public policy, or to accepted principles of morality.
- Designs which incorporate certain official or state emblems or insignia of the UK. Examples include the Royal arms or Royal crown of the UK.
- Designs which incorporate any of the UK national flags in a misleading or offensive manner.
- Designs which incorporate any national flag or other official or state emblem or insignia of a country other than the UK, unless permission is obtained.
Spare Parts
The protection of spare parts has for some time presented difficulties under UK Design and Copyright law. Spare parts are products which are intended to replace existing parts of larger products when, for example, they become worn out. Examples include spare parts for cars. Under the current law there is no specific exclusion to the registration of designs for spare parts, so they can be registered; however it is not possible to enforce a registration for a design of a component part which may be used for the repair of a larger product. Thus whilst designs for spare parts are registrable, the registrations so obtained are unenforceable.
Scope of protection given by Design Registration
This is a question which is always asked, but unfortunately it is not possible to be specific because, unlike patents, there are no written claims to which you can refer to ascertain the scope of protection. The protection extends to exact or near reproductions of the design the subject of the registration. How "near" will fall within the scope of the registration depends upon a number of factors, the most important of which is what has gone before - in other words, the "prior art" (see under patents).
It is important to note that the protection afforded by a UK design registration applies to the design, and not necessarily to the product to which the design has been applied. When filing an application for registration of a design, it is necessary to state the product to which the design is intended to be applied, but this does not limit the scope of the registration. In other words, action can be taken against an infringer who uses the same design on another (different) product.
Although the design is looked at as a whole, the tendency is that features of the design which are common to all similar designs - common trade variants - will be given lesser weight when assessing infringement, and attention will be concentrated on new features, and whether these have been reproduced in the alleged infringing article.
Protection for Industrial Designs abroad
In most countries, design registration is the only way to obtain protection for the appearance of a new product, although a few countries have very weak protection under their copyright laws and a further few give some protection under "unfair competition" laws. Only within the EU does unregistered design right apply, and this will be discussed separately below.
Registered design protection abroad is, by and large, similar to that in the U.K. It is usual to begin with a home design application - in our case in the U.K. - and to file corresponding foreign applications later. The provisions of the Paris Convention (see under Patents) apply also to design registrations, with the important difference that the foreign design applications must be filed within six months (not twelve months as with patents) of the filing of the original application, if the effective filing date of the foreign application is to be backdated to the home filing date. Note that it is unwise to rely on design right protection in the U.K. if you wish ultimately to obtain protection abroad since in some countries, publication of the design for example by selling anywhere in the world prior to the filing date invalidates the design; the Paris Convention does not apply to design right protection.
Normally it is necessary to apply separately in each country in which protection is required. There are a few exceptions to this however, the most significant of which are the Community design registration and the International design registration.
The Community Design Registration
The Community design registration provides a design registration which covers all of the European Union (EU) countries, as follows:-
| Austria | Germany | Netherlands |
| Belgium | Greece | Portugal |
| Denmark | Ireland | Spain |
| Finland | Italy | Sweden |
| France | Luxembourg | United Kingdom |
It is important to understand that the Community design registration is a unitary registration which covers all EU countries; it is not possible to pick and choose countries to be covered – it is all or nothing. In addition, is it not possible to assign the registration for one or more selected EU countries to another party, although it is possible, subject to certain conditions, to licence the registration to different parties in different countries.
The basic rules covering the term, registrability and scope of the Community design are virtually identical to those discussed above in relation to the UK national design registration; indeed, as part of the setting up of the Community design registration, national design laws within the Community were harmonised. Thus, in any one EU country, it is now possible to obtain equivalent protection either through the national Patent Office, or as part of a Community design registration.
There are one or two differences, however, the most significant of which is that, in the Community design registration, it is possible to obtain protection for multiple designs in a single application, with a resultant cost saving over the British national system, where each design registration can cover only one design.
Thee are also some small differences in the way that the enforcement (i.e. infringement and/or validity) of the granted design registration is handled. If protection is by way of a national design registration then, except in exceptional circumstances, all such matters are dealt with exclusively by the national courts. If protection is by way of a Community design registration, then which Courts have jurisdiction will depend upon the identity and location of the parties to the action.
The International Design Registration
The international design registration provides for a design registration which, once granted, covers any one or more of the following countries:-
Belgium
Indonesia
North Korea
Benin
Italy
Romania
Bulgaria
Liechtenstein
Senegal
Côte d'Ivoire
Luxembourg
Slovenia
Egypt
Macedonia
Spain
France
Monaco
Suriname
Germany
Mongolia
Switzerland
Greece
Morocco
Tunisia
Holy See
Moldova
Ukraine
Hungary
Netherlands
Yugoslavia
Note that the United Kingdom cannot be designated. Applications can only be filed in the name of nationals of member countries and this thus excludes most British individuals and companies. However, a British company which has a permanent address, or an affiliate or subsidiary in one of the countries in the above list can file in the name of the company, or in the name of the affiliate or subsidiary, as the case may be.
Unlike a Community design registration, an International design registration is not unitary and, once granted, is effectively treated as a bundle of national design registrations which may be renewed (or not) separately from the others.
Note that, as far as the Paris Convention is concerned (see above) the international design application is treated in the same way as any other foreign application.
The Application for Design Registration
A UK national design application is filed at the British Patent Office in the same way as a patent application. No detailed specification is filed with the application. Just drawings showing the design to be registered. Grant of the registration usually takes place within a few - say three - months from filing.
The timing of the filing of a design application is critical: because the design registration is relatively narrow in scope, it is important that the drawings filed with the design show the very final form of the design - preferably exactly as it appears in the market place - otherwise the owner of the design is liable to find that his design registration does not cover the product he is trying to sell. Therefore, the filing of the design should be left for as long as possible so that the final design can be illustrated.
Ownership of Registered Designs
The legal ownership of a registered design vests primarily with the designer of the design. However, there are two important exceptions:
- Where the designer is an employed person, generally his employer will have the legal right in the design registration.
- Where the design is commissioned for money or money's worth, generally the person doing the commissioning is the owner of the legal right in the design registration. c.f. patents, where this does not apply.
Unregistered Design Rights
Both the United Kingdom and the EU have a design right which comes into force automatically without the formality of an application for design registration. These unregistered rights are similar to the corresponding rights, but there are some significant differences which will be discussed in the following sections:
UK Unregistered Design Right
The UK unregistered design right was introduced in 1989 as a way of replacing copyright as the main way in which industrial articles receive automatic protection in the United Kingdom.
The protection is available for all articles, subject to the following exceptions:
- The design must be original in the sense that it is:
a) not commonplace in the design field in question at the time of its creation;
and
b) not copied from an earlier work.
- No protection is available for methods or principles of construction. This wording is taken from the law relating to Registered Designs (see above) and has come to mean, in effect, that protection is available only for the appearance of an article, and not for the way it functions.
- No protection is available for any "must fit" features of an article - see above under "Registrability" for the meaning of this term.
- No protection is available for those features of an article whose shape is dependent upon the appearance of another article with which it (the first article) is intended to form an integral part. This is the so-called “must match” exception, and is intended to cover, amongst other things, spare parts – see above, under Registered Designs.
- No protection is available for surface decoration. Thus, this excludes most wallpaper or textile articles - use registered design or copyright instead.
Note that protection is not dependent on any aesthetic considerations. In other words purely utilitarian articles such as a spanner or an oil pump will receive protection, provided they do not fall within any of the exceptions noted above.
Design right is not a monopoly right like a registered design, but is akin to copyright in that it is only a right to prevent copying. However, unlike copyright, it is not necessary to be able to produce original drawings of the article (although for convenience it would help) in order to support a claim to the existence of the unregistered design right. The right manifests itself in any material form, such as in a drawing, or a model, or even in the article itself as sold.
The duration of protection is 10 years from the end of the year in which first sale of the article anywhere in the world takes place. During the final 5 years of this period licences of right are available. Thus, the period of exclusive protection is a dramatically short 5 years only. The 10 year period is also subject to a maximum term of 15 years from the date upon which the design is first made; in other words, if a design is not marketed until, for example, 8 years after it is made, then the maximum period of protection would be 15-8 = 7 years, the last 5 years of which would be subject to licences of right. There are no provisions for registering design right protection at the Patent Office. Protection is thus automatic.
Ownership of UK Unregistered Design Right
Design right is not available to everyone. A design only qualifies for protection if the first owner of the design - see below - is a citizen or body corporate of an EEC country, New Zealand or certain former colonial territories. Designs made by non-qualifying individuals and companies may obtain protection if the articles concerned are marketed initially in one or more EEC countries and by a qualifying individual or company; in this case, the proprietor of the design right is the qualifying individual or company, not the original owner.
The primary owner of design right is the author of the design but this may be varied under the following circumstances:
- Where the author is an employee, the employer will normally be the legal owner of the design right;
- Where the author was commissioned for money or money's worth, the person doing the commissioning will normally be the legal owner of the design right.
Unregistered Community Design
The unregistered Community Design gives similar protection to the registered Community Design, but without the formality, and expense, of registration. The main differences are as follows:-
- the duration of protection is much shorter – a maximum of three years from the date upon which a product containing the design is first “made available to the public” within the European Union.
- the unregistered Community Design is a copyright-type right in that, in order to be successful in an infringement action, it is necessary to prove that copying has taken place.
The unregistered Community Design thus comes into existence automatically in respect of any design which fulfils the same criteria for registration and novelty/individual character as the registered Community Design (see above). It is anticipated that the unregistered Community Design will be useful for products having a short lifetime, or to provide protection during the grace period (see above) before an application for a registered Community Design is filed.
Copyright
Except for certain older designs, unregistered design right has now replaced copyright as the means by which industrial designs are given automatic (i.e. non-registered) protection within the United Kingdom. However, certain designs of a highly artistic nature remain protected by copyright and, where this applies, the term of protection is 25 years from the end of the year in which articles embodying the design are first placed on sale. Where both design right and copyright exist in a design, the copyright protection overrides the unregistered design right protection.
For registered designs, design right and copyright, contact Chris Boydell or
Sarah Perkins in our London office, or David Marles in our Bristol office.