‘Academic’ Intelligence: On Unregistered Design Rights, Part One

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Today’s entry shall opt to provide the reader with a brief overview of the law governing the intellectual property (‘IP’) right of unregistered design (‘UDR’) and will focus on the criteria that need to be satisfied in order for it to subsist.

UDR is most often used to protect the design of machine parts as, unlike registered design, it can protect the design of parts which cannot be seen by the end user.

It is worth noting that, as with copyright, UDR (as the name suggests) is a non- registrable IP right and, as such, is not a monopoly right.

Nevertheless, as with other IP rights, it can still be assigned or be granted a partial of full licence of. Such a grant must be recorded in writing (ss. 222 (2), 222 (3)   Copyright Designs and Patents Act 1988 (‘CPDA’)).

The law governing UDR is contained in CPDA. ‘Design’ is itself defined in s. 213 (2) CPDA as:

“…the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article…”

Note that, unlike registered design, the definition of UDR refers to an ‘article’ (which is not defined in the CPDA) and NOT a ‘product’.

The criteria for UDR to subsist are as follows:

1. Originality (s. 213 (1) CPDA)

The design in question must be ‘original’. It must be the designer’s own work (and not copied) AND must satisfy the requirement set out in s. 213 (4) CPDA. Namely, that a design will NOT be deemed to be original if it is “commonplace in the design field in question at the time of its creation”.

Thus, if a similar design exists, the degree of similarity between both designs must be objectively assessed; the higher the degree, the more likely that those are ‘commonplace’.

As for the ‘design field’ in question, suffice to say that the courts have adopted a very wide approach to what that constitutes (including, product market, materials used, structure of the article, etc.).

Finally, ‘at the time of its creation’ refers to the time of creation of the claimant’s design and NOT the time of the alleged infringement.

2. Fixation (s. 213 (6) CPDA)

Design must be recorded in a document or outlined in an article; UDR only subsists with fixation.

There are several designs which cannot be protected by UDR and are, therefore, expressly excluded by the CPDA, namely:

• Method or principle of construction - s. 213(3)(a) CPDA

If a certain design is original but the process or technique through which it was created was commonplace at the time, the designer will be able to protect the original design but will not be able to preclude others from using the said process or technique to make different articles.

• ‘Must match’ - s. 213(3)(b)(ii) CPDA

Id est, the shape of the parts of a product which look as they do solely because they need to do so in order for the product to be complete. Note that, unlike the ‘must- fit’ below, this exception only concerns itself with the APPEARANCE of those parts.

• ‘Must fit’ – s. 213(3)(b)(i) CPDA

If the shape of a design/ product is such as to allow for it to fit with the rest of the product (or another design/ product) it will not be registrable.

As an example, most products used to ‘attach’ lamps, etc. to various surfaces are likely to fall foul of the above

• Surface decoration- s. 213(3)(c) CPDA

Colours or patterns (wallpapers, tapestry, etc.) cannot be protected by UDR.

Although the criteria for establishing a valid UDR are not as stringent as with other IP rights, UDR is one of the weakest IP rights available under English law. This will be better demonstrated in next week’s entry which will primarily focus on establishing a valid UDR infringement claim.