IP in More Detail - Overview

Design Rights2018-12-12T14:02:52+00:00

10 Things all businesses should know about Design Rights

  1. The Calico Printers’ Act 1787 was the first legislation to protect designs and conferred exclusive rights lasting two months on those first printing new and original patterns on linens, cottons, calicoes and muslins.
  2. A “design” is any aspect of or feature applied to an article or product, it is not necessarily the article or product itself.
  3. Designs are now protected by a group of rights as follows:
  4. Requirements for Protection:
    • UK Registered Design. A design shall be protected to the extent that it is new and has individual character.
    • UK Unregistered Design Right. A design shall be protected to the extent that it is original.
    • Registered Community Design. A design shall be protected to the extent that it is new and has individual character.
    • Unregistered Community Design. A design shall be protected to the extent that it is new and has individual character.
  5. Ownership:
    • UK Registered Design. If the design is made under a commission, for money or money’s worth, the first owner is the commissioner; If that is not the case, where the design is made by an employee in the course of employment, the right belongs to the employer; failing this, the designer, that is the creator, is the first owner of the right.
    • UK Unregistered Design Right. If the design is made under a commission, for money or money’s worth, the first owner is the commissioner; If that is not the case, where the design is made by an employee in the course of employment, the design right belongs to the employer; failing this, the designer, that is the creator is the first owner of the design right.
    • Registered Community Design. The right to this Community Design shall vest in the designer or where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to this Community Design shall vest in the employer.
    • Unregistered Community Design. The right to this Community Design shall vest in the designer or where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to this Community Design shall vest in the employer.
  6. Duration of Right:
    • UK Registered Design. The initial registration period is five years from the date of registration of the design. The design registration may be renewed for a second, third, fourth and fifth period of five years subject to the payment of the relevant fee.
    • UK Unregistered Design Right. This right expires 15 years after first recording of the design in a design document or the first making of an article to the design, whichever is earlier or 10 years from the date an article made to the design is marketed anywhere in the world.
    • Registered Community Design. The initial registration period is five years from the date of filing of the application of the design. The design registration may be renewed for a second, third, fourth and fifth period of five years subject to the payment of the relevant fee.
    • Unregistered Community Designs are protected for a period of three years as from the date on which the design was first made available to the public within the Community.
  7. Rights given by Ownership of the Right:
    • UK Registered Design. The registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
    • UK Unregistered Design Right. The owner of a design right subsisting in a design has the exclusive right to reproduce the design for commercial purposes by making articles to the design or by making a design document recording the design for the purpose of enabling such articles to be made.
    • Registered Community Design. The registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression and to prevent any third party not having his consent from using it.
    • Unregistered Community Design. This right confers on the owner the exclusive right to use the design and any design which does not produce on the informed user a different overall impression and to prevent any third party not having his consent from using it, but only if the contested use results from copying of the protected design.
  8. Infringing Activities:
    • UK Registered Design. Infringing activities include the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied or stocking such a product for such purposes.
    • UK Unregistered Design Right. Infringing activities include the reproduction of the design for commercial purposes by making articles to the design or making a design document recording the design for the purpose of enabling such articles to be made without the consent of the owner and/or in certain circumstances:
    • imports into the UK infringing articles for commercial purposes;
    • possesses infringing articles for commercial purposes; and/or
    • sells, hires or offers or exposes for sale or hire infringing articles, in the curse of business.
    • Registered Community Design. Infringing activities include the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied or stocking such a product for such purposes
    • Unregistered Community Design. Infringing activities include the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied or stocking such a product for such purposes
  9. If any person falsely represents that a design applied to, or incorporated in, any product sold by him is registered, he shall be liable on summary conviction to a fine not exceeding £1000.
  10. Where any person by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the right in either a UK Registered Design or UK Unregistered Design Right, any person aggrieved thereby may bring an action against him.