Unregistered design right
This is a right which applies to an original design of any aspect of the shape or configuration (internal or external) of the whole or part of an article. Unlike a registered design, it does not give the owner a monopoly — it simply prevents other people from copying the design. That means that the owner has no grounds for complaint if someone else comes up with the same design completely independently.
Unregistered design right does not protect any of the following:
- a method or principle of construction;
- features of shape or consideration of an article which allow it to be functionally fitted or matched to another article — the so-called “must fit” and “must match” exceptions, which are intended to ensure that competing designs for spare parts can be made available legally;
- surface decoration — this can be protected by a registered design.
- A design is not “original” — and therefore is not entitled to design right protection — if it is commonplace in the design field in question at the time when it is created.
Unregistered design right lasts for 15 years from the end of the calendar year in which the design was first recorded in a “design document” or an article was first made using that design, whichever is the earlier; however, if articles are made available for sale or hire within five years of the end of that calendar year, then the duration of the design right is limited to 10 years from the end of the calendar year in which those articles are first made available.
During the last five years of the design right term, anyone can apply for a licence of right to use the design. If terms for other license cannot be agreed between the owner and the person that wants a licence to use the design, then there is a procedure for settling the terms.
Unregistered design right arises automatically — it does not require any form of registration.
Community Designs
A Registered Community Design is very much like a Registered Design, but with effect throughout each of the member states of the European Union.
As with Registered Designs, a Registered Community Design can be valid for up to 25 years — the registration is initially for a period of five years, and can then be renewed for a further four periods of five years each.
A Community Design is obtained by making application to the Trade Marks and Designs Registration Office of the European Union in the prescribed form and with the prescribed fee.
Unregistered Community Design
This provides a lower level of protection, but does not have to be applied for and there is no fee payable. An Unregistered Community is protected for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. An Unregistered Community Design does not give the owner a monopoly on that design — it only gives a right to prevent copying. Therefore, if someone else comes up with an identical design quite independently, and can show that they were not aware of your design, you cannot succeed in a claim for infringement of Unregistered Community Design.
Within the first 12 months from the date when the design was first made available to the public within the European Union, you can apply for a Registered Community Design. In effect, this gives you the opportunity to test the value of the design for up to a year before deciding whether to apply for a Registered Community Design.
How I can help?
I can help in a variety of ways:
- Advising as to ownership of designs used in your business;
- Advising as to what forms of protection are available for your designs;
- Helping you to secure design protection;
- Licensing and assignment of designs and any corresponding registrations.
It is possible that a design might be protected under copyright law, if it constitutes an “artistic work”. I can advise you as to whether this protection is available in a particular case.