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Dan Griffin

Posted 31 July 2017
by Dan Griffin

Unregistered Design Rights – 3 Reasons Why They Should Not Be Overlooked



Unregistered design rights (referred to as just ‘design rights’) are a valuable asset which tends to be forgotten. These are just 3 reasons why they should not be overlooked:

  1. Design rights provide protection in an area where copyright cannot. Design rights protect three-dimensional products without the necessary aesthetic quality to be considered “artistic works” for the purposes of copyright.
  2. Registered designs are useful but incur application costs whereas as design rights do not. Registering a design becomes impossible more than 12 months after the design has been disclosed, this deadline can be easily missed. Because design rights do not require registration, there is no risk of losing rights by forgetting to register.
  3. Design rights can stop copycat products which trade marks cannot. Trade marks can be ineffective to prevent copycats because often they only protect the product name, not the shape or appearance. Also, trade mark infringement requires the consumer to be confused about the origin of the copycat but most consumers are not confused and are well aware that the copycat is not genuine. Design rights fill this gap because there is no requirement for confusion on the part of the public, it is enough to prove the design has been copied – which a copycat product by nature will almost inevitably have done.

What do design rights protect?

Design rights were created by the Copyright, Designs and Patents Act 1988 (CDPA) to protect products which would otherwise not be protected by copyright. Confusingly they are distinct from ‘registered design rights’ which protect the surface appearance of a product.

They exist automatically once a design is in some type of permanent or recorded form, giving the owner the right to prevent copying. This does not require a physical product to have been created, putting the design on paper or saving it in a software file is sufficient.

Design rights protect the shape or configuration of any original three dimensional design. This means they can protect the appearance of a purely functional product with no aesthetic quality.

The period of protection for a design right is either 10 years after the design was first sold or 15 years after it was created (if no articles incorporating the design are sold within 5 years).

What they do not protect

Design rights do not extend to surface decoration. That is protected by registered design rights.

They do not protect any features that are made to fit or are dependent on the appearance of another article, known as ‘must fit’ and ‘must match’ exceptions.

A design must simply be “original”. This term is not defined in the CDPA, but a design is not original if it is a commonplace in the design field in question at the time of its creation. This introduces some requirement for the design to be novel.

To discuss your business’ intellectual property or take action against a competitor copying your products speak to our Intellectual Property and IP team.

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About the author

Dan Griffin

Dan Griffin

Associate

Associate within commercial litigation