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UK Unregistered Design Right – A Brief Guide

Keltie LLP

K2 IP Limited

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Outspan carWhat is UK design right?

UK unregistered design right (also referred to as UK design right) covers the shape or configuration of an object, but does not protect surface decoration.  It is an automatic right, meaning that no registration is required.

To be protected by UK design right, a design must be original. This means that the designer must have designed the design independently and the design must not be “commonplace” in the design field in question. “Commonplace” means that the design must not be widely known in the design field in question in the UK, the EU or any one of a number of other qualifying countries mentioned below.

How long does UK design right last?

UK design right lasts 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was made to the design. However, if articles made to the design are made available for sale or hire within the first five years of the above 15 year period, the UK design right lasts 10 years from the end of the calendar year in which the design was first made available for sale or hire.

Who qualifies for UK design right?

For a design to qualify for UK design right, the design must be created by, or in the course of employment with, a qualifying individual or person.

A qualifying individual or person may be:

  • a citizen or subject of, or an individual habitually resident in, a qualifying country, or
  • a company formed in any of the qualifying countries and doing a substantial amount of business in any of the qualifying countries

The qualifying countries for UK design right are the UK, all other EU member states, and a number of other countries who have reciprocal arrangements with the UK.  A full list of qualifying countries is included at the end of this article.

If the above requirements are not met, the person who markets the design may in some instances be eligible to own the UK design right, if they are the first one to market the design and that marketing takes place in a qualifying country.

Who is the owner of a UK design right?

In general, the first owner of a UK design right is the creator of the design, unless the design is created by an employee during the course of their employment.  In this case, the UK design rights belong to the employer.

Commissioners of designs do not automatically own the UK design right in a design. The UK design right for a commissioned design belongs to the designer of the design. Therefore, it is essential that agreements assigning UK design right are drawn up if the UK design right is to reside with the commissioner.

How do I record UK design right?

As there is no certification for unregistered designs, it is important to keep good records of the development of your designs in case of future disputes.

In order to provide the strongest protection, your records should include evidence of the design creation process, ownership of the design and the date of creation or date of first marketing/public disclosure.

What documents should I capture to record the creation of UK design right?

We suggest that the following documentation is captured when developing a design.  All design documentation should be signed and dated by the designer.­­

  • Copies / photos of your design drawings which should be dated, signed and counter-signed.
  • Initial sketches and sketch books which show the evolution of the design which should be dated, signed and counter-signed.
  • Records / notes of meetings, including significant telephone conversations, relating to the design process.
  • Copies of e-mails, letters, faxes and handwritten notes relating to the design process.
  • Any other original documentation of when the design was first recorded.
  • Any prototypes of when the design was first produced.
  • Any documentation regarding to the date of first marketing.

How do I enforce my UK design right?

If you suspect a person or business has copied your unregistered design, the first course of action may be to send a warning letter to the other party informing them of their potential infringement of your UK design right.  This is worthwhile as the infringing party may be genuinely unaware of your design and may be willing to come to an agreement regarding licensing of your design.

If the other party disputes your UK design right, it may be possible to enter into negotiations to attempt to agree on a course of action.  In this case, the UK Intellectual Property Office has a mediation service which attempts to help resolve disputes regarding various intellectual property issues, including UK design right.

If the dispute cannot be resolved through mediation or other forms of dispute resolution, you have the right to take civil court action against the infringing party.  However, it should be noted that a court will expect both parties to have attempted to resolve the dispute before starting legal proceedings.

Emma Arbabzadah 23 August 2016

Annex: Qualifying countries for UK design right

UK and other EU* member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden.

*It is unclear how Brexit will impact on UK design right. However, please follow IPcopy for further updates on the impact of Brexit on intellectual property law.

Countries with reciprocal arrangements with the UK: Anguilla, Bermuda, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Channel Islands, Falklands Islands, Gibraltar, Hong Kong, Isle of Man, Montserrat, New Zealand, Pitcairn, Henderson, Ducie and Oeno Islands [St Helena, Ascension and Tristan da Cunha], South Georgia and the South Sandwich Islands Turks and Caicos Islands.

 


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