Design Rights in UK Law

Introduction

Design rights in the United Kingdom protect the visual appearance of products, providing a distinct form of intellectual property protection that complements copyright, patents, and trade marks. UK law provides two principal forms of design protection: registered designs and unregistered design right. The distinction between the two reflects the different levels of protection and the different requirements for subsistence. Registered Community designs and unregistered Community designs remained available to UK businesses following Brexit through a process of conversion to UK rights.

Registered Designs

Registered designs are governed by the Registered Designs Act 1949, as amended, and the Designs Directive (98/71/EC). A registered design protects the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, or materials of the product or its ornamentation.

A design is registrable if it is new and has individual character. Novelty requires that no identical design has been made available to the public before the priority date. Individual character requires that the overall impression produced on the informed user by the design differs from the overall impression produced on such a user by any earlier design.

Registered designs are granted by the UK Intellectual Property Office (UKIPO) following examination for compliance with formal requirements. Registration lasts for an initial period of five years from the date of application, renewable for further periods of five years up to a maximum of 25 years.

Unregistered Design Right

The unregistered design right (UDR) is a UK-specific right that protects original, non-commonplace designs of the shape or configuration of articles. UDR was introduced by the Copyright, Designs and Patents Act 1988 (CDPA 1988), sections 213 to 264, as a response to concerns that copyright protection for industrial designs was too extensive and that registered design protection was too expensive and complex for many designs.

UDR protects the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. The design must be original (not copied from another design) and must not be commonplace in the design field in question at the time of creation.

UDR does not protect: a method or principle of construction; features of shape or configuration of an article which enable the article to be connected to or placed in, around, or against another article so that either article may perform its function (the must fit exception); or features of shape or configuration of an article which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part (the must match exception).

UDR arises automatically upon the creation of the design and lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded in a design document or the first article was made, whichever is earlier. However, if the design is commercially exploited within the first five years, the term is reduced to ten years from the end of the calendar year of first marketing. Licences of right are available in the final five years of the term.

Community Designs

Before Brexit, UK businesses could obtain protection through the Registered Community Design (RCD) system, administered by the European Union Intellectual Property Office (EUIPO), and through the Unregistered Community Design (UCD) system. Following the end of the transition period, existing RCDs and UCDs were automatically converted into equivalent UK registered and unregistered design rights.

New applications for Community designs are no longer available to UK applicants, but UK businesses may apply for international design registrations under the Hague Agreement designating the UK and the EU.

Copyright in Designs

The interface between copyright and design law is complex. Section 51 of the CDPA 1988 provides that copying a design document recording the design of an article is not an infringement of copyright, except where the article is itself a work of artistic craftsmanship. This provision prevents copyright being used to protect industrial designs and directs such protection to the design right regime.

Works of artistic craftsmanship remain protected by copyright, but the definition is narrow. In Lucasfilm Ltd v Ainsworth (2011), the Supreme Court held that a stormtrooper helmet created for the Star Wars films was not a work of artistic craftsmanship because its primary purpose was utilitarian.

Infringement of Design Rights

Infringement of a registered design occurs where a person uses a design that does not produce a different overall impression on the informed user. The informed user is a person who is familiar with the product category and its design features but is not a design expert or an average consumer.

Infringement of UDR occurs where a person copies the design to produce articles exactly or substantially to that design. The defendant must have known or had reason to believe that the design was an original design right protected design. Independent creation is a defence.

Conclusion

Design rights in UK law provide protection for the visual appearance of products through a dual system of registered and unregistered rights. Registered designs require novelty and individual character and provide the strongest protection. Unregistered design right provides automatic but more limited protection for original, non-commonplace designs. The conversion of Community designs following Brexit has ensured continuity of protection for UK businesses.