Protecting and enforcing design rights: United Kingdom

Legal framework

The United Kingdom has a relatively complex system for the protection of designs. Five possible forms of protection are available for aspects of a design:

• UK registered designs;
• registered Community designs;
• UK unregistered design rights;
• unregistered Community design rights; and
• copyright, which may protect certain elements of a design for both industrial and non-industrial applications.

Moreover, since UK registered design law was harmonised only in December 2001, the previous law in relation to validity will continue to apply to UK registered designs registered before this date until December 2026, when the last of these registrations will lapse.

UK design registration law has largely been harmonised with that governing registered Community designs, although some procedural differences remain.

While the United Kingdom remains in the European Union, owners can still obtain design registration as either a UK registered design or a registered Community design. Unregistered design protection is also available as an unregistered Community design right or a UK design right.

Relevant legislation

The primary legislation governing designs in the United Kingdom includes:

• the Registered Designs Act 1949 (UK registered designs);
• the Copyright, Designs and Patents Act 1988 (UK unregistered design rights);
• the EU Designs Directive (98/71/EC);
• the EU Community Designs Regulation (6/2002); and
• the Intellectual Property Act 2014 (amending the Copyright, Designs and Patents Act in relation to UK unregistered design rights).

Brexit

In June 2016 the United Kingdom voted to leave the European Union in a public referendum. At present, the United Kingdom remains an EU member state and no date has been set for its departure. As such, until the United Kingdom leaves, registered and unregistered Community design rights continue to apply to the United Kingdom.

However, there is no provision addressing how such rights will be affected upon the departure of an EU member state. Many observers contend that some provision will ultimately be made whereby, upon ‘Brexit’, registered Community design owners will be afforded continued protection extending to the United Kingdom from the relevant registered Community design. However, the position remains unclear.

Unregistered designs

UK design rights are available to the “design of the shape or configuration (whether internal or external) of the whole or part of an article”. This excludes surface decoration. As such, these rights relate primarily (although not exclusively) to three-dimensional (3D) objects.

To qualify, the design must be original and not commonplace in the design field. However, neither term is defined. The design must not have been slavishly copied from an earlier design; but provided that the design differs in some respects from other designs within the same design field, it is unlikely to be considered commonplace. In determining the design field, a reasonably broad approach should be adopted and encompass the type of design with which a “notional designer of the article concerned would be familiar” (Lambretta v Smith (2005) RPC 6).

Creation and ownership

Design rights are created automatically when the design is recorded in a design document or an article is made to that design, irrespective of when the design is first made available to the public.

The first holder of the design rights will be:

• the creator of the design; or
• if the design was created in the course of employment, the employer.

Qualifying countries

Unregistered design rights are available only if the designer or employer is a national of, or the design was first marketed in, a qualifying country. Qualifying countries include:

• the United Kingdom;
• EU member states;
• Anguilla;
• Bermuda;
• the British Indian Ocean Territory;
• the British Virgin Islands;
• the Cayman Islands;
• the Channel Islands;
• the Falkland Islands;
• Gibraltar;
• Hong Kong;
• the Isle of Man;
• Montserrat;
• New Zealand;
• the Pitcairn, Henderson, Ducie and Oeno Islands;
• St Helena, Ascension and Tristan da Cunha;
• South Georgia and the South Sandwich Islands; and
• the Turks and Caicos Islands.

Duration

Unregistered design rights have a maximum protection period of:

• years from the end of the calendar year in which the design is recorded; or
• years from the end of the calendar year in which articles bearing the design were first marketed, unless the 15-year term expires first.

Exclusions

The following features of a design are excluded from protection:

• ‘must-fit’ features – features of shape or configuration which enable the article to be connected to or placed in, around or against another article so that either article can perform its function; and
• ‘must-match’ features – features of shape or configuration which depend on the appearance of another article of which the designer intends the article in question to form an integral part.

Both of these provisions are designed to limit protection in relation to spare parts.

Registered designs

UK registered design rights are obtained through the UK Intellectual Property Office (UKIPO). Registration can be obtained for a design relating to all or a part of a product, and with regard to its ornamentation, shape, configuration and texture. In other words, registered designs protect both 3D and 2D designs.

The law governing UK registered designs has largely been harmonised with that governing registered Community designs, although there are procedural differences.

A design must be new and have individual character to be registered.

New

The design must not be identical to any design which has already been made available to the public anywhere in the world before the application or priority date. Designs are considered identical if their features differ only as to ‘immaterial details’. The EU Intellectual Property Office Invalidity Division has held that designs which were on a publicly available register in Japan – home to one of the world’s most important IP offices – could reasonably have become known (Sunstar v Dentaid ICD 0420).

However, obscure disclosures of an earlier design can be discounted; the earlier publication of a design will be irrelevant “if the design could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned” (Section 1B(6)(a) of the Registered Designs Act).

Individual character

The design must possess individual character, which means that the “overall impression (of the design) produced on the Informed User differs from the overall impression produced on such a user by any design which has been made available to the public” (Section 1B(3) of the Registered Designs Act).

The informed user is deemed to be familiar with:

• the existing design corpus;
• the nature of the product to which the design is applied or into which it is incorporated;
• the industrial sector to which it belongs; and
• the designer’s degree of freedom in developing the design (Recital 14 of the Community Designs Regulation).

The informed user is also a regular user of articles that are of the same sort as the registered design (Woodhouse UK Plc v Architectural Lighting Systems (2006) ECDR 11).

Exclusions

The following features are excluded from registered design protection:

• features that are dictated solely by their technical function. This is given a narrow interpretation – the design must be the only way to achieve that technical function (Landor & Hawa International Ltd v Azure Designs Ltd (2006) EWCA Civ 1285); and
• ‘must-fit’ features that are necessary for the interconnection of the product to another product. This is also given a narrow interpretation – features must be reproduced in their exact form and dimensions to permit the product to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

Complex products

Registration is specifically allowed for designs of “parts intended to be assembled into a complex product”. This is defined as “a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product” (Section 1(3) of the Registered Designs Act).

The term ‘complex product’ is potentially very wide, but is thought to include motor vehicles and components for such vehicles in limited circumstances.

Grace period

In terms of whether a design is ‘new’, there is an important exclusion in that any publication by the designer within the 12-month period preceding the priority date in connection with the application is discounted. In other words, an applicant can test its design in the marketplace before deciding whether to register the design, provided that the design application is filed within 12 months of first publication.

Duration

A UK registered design is renewable every five years, up to a maximum of 25 years.

Ownership

A design application can be filed by:

• the author of the design; or
• where the design is created by an employee in the course of his or her employment, the employer.

Where UK design rights subsist in the design, the applicant must also be the rights holder.

Procedures

It is possible to register online for single or multiple designs. Supporting design illustrations should be in JPEG, GIF or TIFF format.

On filing the application, the applicant must provide:

• its full name and address;
• illustrations of the design (up to seven are allowed), which can be line drawings, computer-aided designs or photographs; and
• details of the product to which the design is applied. However, this does not limit the protection conferred by the design to that product.

The applicant can also provide a brief description of the design.

The recent Supreme Court decision in PMS International Limited v Magmatic Limited ((2016) UKSC 12) emphasises the importance of the correct identification and selection of the most appropriate illustrations to support a design application.

Multiple designs can be covered in a single application. The UKIPO official fee is £60 for the first design and £40 for each additional design covered by the same application.

Deferred publication

The applicant can request deferred publication for a maximum of 12 months when filing the application. There is an increased publication fee (£40 for a single design and £20 for each additional design). This enables the applicant to secure a filing date, but the application will not be registered until after publication.

Registration process

A UK design application takes about one month to proceed to registration. Examination is restricted to formalities; there is no substantive examination in relation to novelty or individual character. However, it is possible to apply to invalidate a registered design at the UKIPO on the following grounds:

• The design does not qualify as a registrable design under Section 1(2) of the Registered Designs Act;
• The design is not new or lacks individual character;
• The design is dictated solely by technical function;
• The design is contrary to public policy or principles of morality; or
• A third party has rights that could prohibit use of the design (eg, under trademark or copyright law or by virtue of common law rights in passing off).

Enforcement

Registered designs

A registered design is a monopoly right and the rights holder has the exclusive right to use the design and prevent third parties from using a design that does not produce a different overall impression on the informed user.

Unregistered designs

Unregistered design rights holders can prevent the copying of the design by a third party with the aim of commercially producing articles that are identical or substantially similar to the design.

Remedies

In the case of both registered and unregistered design rights, the claimant may seek:

• damages or an account of profits;
• an injunction preventing further infringement; and
• an order for delivery up or destruction of the infringing articles.

Infringement proceedings can be brought in England and Wales before the courts, including the IP Enterprise Court. This court is specifically designed for comparatively low-cost, streamlined proceedings. However, there are caps on the level of damages and costs that can be obtained.

Ownership changes and rights transfers

Both registered and unregistered design rights can be assigned, licensed or mortgaged.

A registered design can be assigned by written agreement, but this must be signed by or on behalf of the assignor. The assignment should be recorded at the UKIPO.

Third parties are entitled to obtain a licence to use unregistered design rights during the final five years of the design right’s term. The prospective licensee can bring court proceedings to settle the terms, including the royalties to be paid for the licence.

It is unnecessary to record a licence in relation to a design registration; however, if the licence is not recorded, any assignee of the rights in the design may not be bound by that licensee’s rights.

Related rights

Trademarks

There is clear potential overlap between design and trademark law in the United Kingdom. In certain circumstances, a claimant may prevent the use of an offending shape or object under the UK doctrine of common law rights in passing off (Reckitt & Colman Products Ltd v Borden Inc (1990) RPC 341).

Moreover, it is possible to register a shape or 3D object as either a UK or (at present) an EU trademark. In principle, 2D logos and devices may be registered as either designs or trademarks.

Registered design protection is limited to 25 years, whereas a trademark registration can be renewed indefinitely. Moreover, in principle, it is not possible to register a design that has been published more than 12 months before the application date, whereas there is no corresponding restriction as to when a trademark application can be filed.

However, it is generally considered difficult to register 3D objects and shapes as trademarks in the absence of evidence of acquired distinctiveness.

Copyright

Equally, items of the design of a product can be entitled to both design and copyright protection. For instance, items of surface decoration are excluded from UK design right protection, but are protectable under copyright law.

In the past, UK law has tried to limit the crossover between copyright and design protection. Section 51 of the Copyright, Designs and Patents Act provides that “it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or typeface to make an article to the design or to copy an article made to the design”. Moreover, Section 236 of the act excludes the potential for a dual action based on both UK design rights and copyright, providing that where there are both copyright and design rights in a work, it will not be an infringement of the UK design rights to do anything that is also an infringement of the copyright in the relevant work.

Hiddleston Trade Marks

Polhill Business Centre

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Polhill, Halstead

Sevenoaks TN14 7AA

United Kingdom

Tel +44 1959 546212

Fax +44 1959 532676

Web www.hiddlestons.com

Mark Hiddleston

Director

[email protected]

Mark Hiddleston is a director and founder of Hiddleston Trade Marks, a new trademark firm established in 2015. He has over 25 years’ experience in the IP field, advising on trademarks and related design matters.

He has substantial experience in relation to the clearance and prosecution of UK and EU trademark applications, international registrations under the Madrid Protocol and national applications worldwide, the negotiation and drafting of settlement agreements in relation to trademarks and the handling of oppositions and cancellation actions before the UK and EU IP offices and disputes worldwide.

He is a senior editor and contributor to the United Kingdom Trade Mark Handbook, the leading authority on trademark practice in the United Kingdom.