On 9 December 2001 a new law on Registered Designs came into force to bring British law into line with that of Europe. Although the application process remains essentially the same, there have been some important changes with respect to requirements for registrability and scope of protection conferred by registration.
The definition of "design" has been broadened to include features of the lines, contours, colours, shape, texture or materials of a product or of its ornamentation. In addition, the appearance of the whole or just a part of a product may be protected by registration. A component part of a complex product may be protected if visible in normal use. Although as part of the application process it is necessary to state to which product the design is intended to be applied, protection is conferred on the design itself rather than on the article. The product may be a handicraft item as well as an industrial item, or could be a graphic symbol such as a computer icon. There is no longer any requirement for the design to "appeal to the eye".
The substantive requirements for registrability are now set at a higher threshold; however, the scope of protection conferred is broader. A design must differ in more than immaterial details from designs made available to the public anywhere in the world; however, "obscure" prior art is not considered novelty-destroying. An important development is that of a 12 month grace period for disclosures made by the designer. This will allow designers to assess market potential before undertaking the expense of a design registration. The other criterion that must be met for design registration is that of "individual character". This is defined such that a design must form a different "overall impression on the informed user", taking into account the degree of freedom of the designer and similar reasoning will be used to decide cases of infringement.
You and your clients may wish to review their intellectual property in this area, perhaps taking advantage of the 12 month grace period, since designs that were previously unregistrable may now qualify for protection in the UK. Since this new law is based on a European Directive, the law will eventually be the same across the European Union, although it has not yet been implemented in all Member States. For further details, please contact us.
As the name suggests, there is no need to register this right, and indeed, no register exists. Rather, the right arises automatically on creation of the design, in much the same manner as copyright arises on creation of an artistic work. As with copyright, unregistered design right (UDR) is infringed only when a design is copied; independent creation of a design does not infringe.
In common with registered designs, UDR protects the appearance of articles, and does not protect methods or principles of construction. The "must fit" exclusion also applies. However, there are a number of important differences between UDR and registered designs.
The principal difference is that UDR protects functional designs (as well as aesthetic designs). Thus an industrial article, the design of which does not have any "eye appeal", might well attract UDR. Secondly, UDR does not protect 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 may perform its function (the "must match" exclusion). Neither does UDR protect surface decoration.
The provisions of UDR are complex and we would be happy to advise further in relation to specific enquiries.