Are you a designer? Want to know more about the protection available for your designs? CITMA’s designs & copyright working group has produced a run-down of the things you need to know about design.
What do rights in designs protect?
Rights in designs essentially protect the appearance of three dimensional articles and products including, in the case of some rights (but not all), the surface decoration of such products. The scope and extent of protection available will depend on the right relied upon, of which there are several.
Registered design rights
Registered designs have to be applied for. A validly registered UK design can secure protection for up to 25 years in the UK, and a validly registered Community design can secure protection for the same period throughout the European Community. To be validly registered, the design must be new, and have “individual character”, which means it must produce a “different overall impression on the informed user” than that produced by earlier designs.
Registered designs are not examined, and are therefore registered without any checks being made as to their validity. Once registered, however, they are deemed valid (and therefore enforceable) unless and until their validity is successfully challenged within invalidity proceedings.
A registered design is infringed by any design which does not produce on the informed user a different overall impression to that produced by the registered design. The right granted is a true monopoly, in that infringement will occur without the need to show any copying. A later design, which is created independently, will infringe if it falls within the test for infringement, notwithstanding the fact that it was created without any reference having been made to the registered design.
Unregistered design rights
Unregistered design rights arise automatically, and there is no need to register them. There is an unregistered community design which provides three years protection from the date on which the design was first made available to the public within the European Community; and a UK unregistered design right, which provides protection within the UK for between 10 to 15 years, depending upon when articles made to the design were first made available for sale or hire.
The tests for subsistence and infringement of the unregistered community design are the same as those for registered designs, in that to subsist it has to be new and have individual character over earlier designs; and it will be infringed by later designs which do not produce on the informed user a different overall impression than it does. Copying, however, is necessary in order for infringement of unregistered design rights to occur. So the independent creation of an identical or very similar design, without reference to the protected design, will not infringe.
UK unregistered design right is different to the other rights referred to above, and applies exclusively in the UK. In particular, the tests for subsistence and infringement of this right are different to the other rights mentioned. Original aspects of shape and configuration of articles (and parts of articles), which are not commonplace in the design field in question at the date of their creation are protected, as opposed to the overall impression produced by the design; and it is the making of articles to (or substantially to) these protected aspects of shape and configuration which is the test for infringement, as opposed to the overall impression produced by a rival design. These differences are important, as the courts continue to find that infringement can arise under one of these sets of tests, but not the other. As with the unregistered Community design, copying has to be proved in order for UK unregistered design right to be infringed.
Designs of artistic works, for example sculptures, works of artistic craftsmanship and buildings are protected by copyright, further details of which can be found in our copyright guide.
Dealings in designs
Rights in designs can be sold and licensed like other property rights. Dealings in UK unregistered and registered design rights will be governed by UK Law. They can be assigned or licensed, and licences can either be non-exclusive, enabling multiple licensees to be granted the same rights, or exclusive, which precludes any other person, including the design right owner, from exercising the right licenced.
The law governing dealings in registered and unregistered community designs will depend on various factors, such as where the holder of the right is domiciled or has an establishment. Whichever law applies, however, a community design can only be assigned in respect of the whole community. It can be licensed, however, either exclusively or non-exclusively, in respect of part only of the community, i.e. on a country by country basis.
If a person infringes a right in a design, the holder can bring infringement proceedings against them in court. Infringements of UK registered and unregistered designs and copyright can be brought in the UK.
The court with jurisdiction to hear Community design infringement actions will depend on factors such as where the defendant is domiciled or has an establishment, or where in the Community the infringing act is committed or threatened.
Remedies for infringement include financial compensation for damage suffered by reason of the infringement, an injunction to prevent further unauthorised acts, and an order for the removal of infringing products from channels of commerce (or their destruction).