How are UK design rights obtained?
Unregistered design right comes into existence automatically when an “original” design is created. The design can be made on paper, using a computer or even by making a model to the design.
The design needs to have been made by ” a qualifying person” (a British subject or a citizen of a country with reciprocal rights) or by first marketing of a product made to that original design in a qualifying country (again a country with reciprocal rights).
The design does is not registered but verifiable records should be kept of when and by whom designs are created or when and where the design was first marketed.
UK unregistered design rights last for:
- 15 years from the end of the calendar year in which the design was first recorded or an article was first made to the design; or
- 10 years from the end of the calendar year in which an article made to the design was first sold or hired; or
- 25 years if the design is artistic in nature but the artist has chosen to exploit the design commercially by making 50 or more reproductions of the design (copyright continues in those works which are solely artistic or literary on nature).
A licence of right is available to any person during the last five years of the design right term, to make, sell or import the design in the UK. This licence, which may be royalty earning, can be agreed between the applicant for a licence and the design right owner. If the parties cannot agree terms either party may apply to the Comptroller of the Patent Office to enforce the terms of the licence of right.
The important provisions of UK unregistered design right
UK unregistered design right gives exclusive rights to the owner to protect any aspect of the shape or configuration of the whole or part of the appearance of an article even if it is only functional in nature. N.B. Design right does not protect purely functional features of the article not dependent on appearance. In this case, patent protection is an obvious option.
There are some important design aspects that are specifically refused protection. These include a “surface decoration” applied to an article, design features which mean that one article “must fit” or “must match” another article or part of an article.
The owner of UK unregistered design right?
The designer of an “original” design (a design which is not copied) owns any UK design rights in it. If the designer was commissioned to produce the design or he was acting under a contract of employment to create the design then the design is owned by the commissioner or the employer. If designs are first created overseas or where the designers are not nationals or resident in the UK, different rules apply which are too complex to go into here. Call the experts at Brand Protect who will be pleased to advise.
UK unregistered design right enforcement?
Special care should be taken when enforcing UK design right as the right is subject to a “threats provision” whereby the owner of such a right may face an action for a carelessly worded letter.
The owner has the exclusive right to make the same or an article which is substantially similar to the design and to make articles which would allow articles to be made to that design.
UK design right can be enforced in any county court, in Scotland in the sheriff court or in the High Court.
A court order (interim or otherwise) may be sought from a judge. The court can also award damages and /or require ‘delivery up’ of the infringing articles and accounts of profit resulting from the infringement.
Once the design owner has informed a person who is merely selling or hiring out an article made to the design of the fact that the design is the subject of design right protection, then remedies are available against this secondary infringer.
It is important to remember that an unregistered design right is only infringed by copying. A design created independently, however similar, cannot be an infringement.
How commercially useful is UK design right?
UK design right is an important commercial asset that can be used in the following ways:
- the right can be bought and sold;
- gain royalties from third parties if the owner licenses the right to others;
- stop copying of the design;
- prevent counterfeits of the goods from entering the country