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BM Nyman & Co

Publishing Lawyers

BM Nyman & Co

Bernard Nyman
Sole Principal

25 Limes Avenue
London
N12 8QN
UK

info@bmnyman.co.uk

Tel: +44 (0)20 3601 4163
Fax:  +44 (0)20 8445 2852
Designs Print E-mail

DesignsIt 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.

However, separately from copyright law, there are two types of legal protection specifically for designs under UK law:

A registered design provides stronger protection than unregistered design right and applies in different circumstances.

There is also a system which can provide a registered design that is effective throughout the European Union -- the Registered Community Design. And to make things even more complicated, there is also an Unregistered Community Design.

What is the difference between a design and other Intellectual Property Rights, e.g. patents and trade marks?

All intellectual property rights are intended to protect the creativity of businesses and individuals. However, they do not cover the same aspects.

A design only covers the appearance of a product. A design cannot protect the function of a product.

A trade mark identifies the origin of the goods and/or services of one business to differentiate them from those of its competitors.

A patent protects the function, operation or construction of an invention. To be patentable, a function must be innovative, have an industrial application and be described in such a fashion to permit reproduction of the process.

Registered designs

A registered design gives the owner of the registration a complete monopoly over that design, and any similar design, throughout the period of the registration. A design can be registered for a maximum period of 25 years -- initially the registration is for five years, but it can be renewed for four further periods of five years each. It is valid only in the UK and provides no protection elsewhere.

In the context of registered designs, "design" means 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. "Product" means any industrial or handicraft item other than a computer program, and specifically includes packaging, get-up, graphic symbols and typographic typefaces.

To be capable of registration, a design must:

  • be new -- this means that it must not be identical to a design that has already been made available to the public; and
  • have individual character -- this means that the overall impression is that it produces on the "informed user" is different from the overall impression produced on such a user by any design which has previously been made available to the public; and
  • not be contrary to public policy or to accepted principles of morality.

A registered design will give no protection to any features of appearance of a product that are solely dictated by the product's technical function or which must necessarily be reproduced in the exact form and dimensions in order to allow the product in question to perform its function.

What rights does a registered design give the owner?

The owner of a registered design has the exclusive right to "use" the design and any similar design (i.e. any design that does not produce a different overall impression on the informed user). "Use" of the design includes:

  • making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which the design has been applied; and
  • stocking such a product for those purposes.

Because the owner of the registered design has the exclusive right to use the design, it follows that the owner can take legal proceedings against anyone who uses the design without the owner's permission. In addition, the mere fact that a design has been registered might be enough to put off other people from using the same design without permission.

How do you obtain a registered design?

A registered design is obtained by making an application in the prescribed form to the UK Intellectual Property Office, and paying the prescribed fee. If the application is accepted, the registration is completed quite quickly.

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.