Designs (Unregistered)

Question 1

CUDR

What are the main differences between the CUDR and the UKRD/CRD?

Answer 1

The CUDR is substantially similar to the UK/Community registered design (if you can get a registered design right, then CUDR will also apply).

Differences:

• Duration is 3 years from first disclosure in the EU.
• No registration required
• No requirement for the proprietor to be a qualifying person (contrast with UKUDR)
• Copying is required to infringe
• Designer retains the rights, so assignment may well be necessary

Question 2

UKUDR

What does UKUDR protect?

Answer 2

A design right for an original design can exist in the shape or configuration (whether internal or external) of all or part of an article.

NB shape or configuration can be microscopic - visual impression and appearance in the conventional sense are not an issue.

Question 3

UKUDR

What are the statutory exclusions for UKUDR?

Answer 3

• A method of principle of construction
• Features of shape or configuration of an article that are:
  
  • required to co-operate with another article so either article can perform its function (the ‘must fit’ exclusion)
  • aesthetically dependent upon other another article that the article forms an integral part of (the ‘must match’ exclusion)
• surface decoration (avoids overlap with copyright)
• protected symbols (e.g. national flags, Olympic symbol etc.)

Question 4

UKUDR

Compare UKRDR and UKUDR for the following:

• Features of an exhaust pipe that enable connection to a car
• Spoiler that matches a famous car
• Internal feature of a blender
• Philips 3-headed shaver
• Font
• Decoration on a table

Answer 4

• Features of an exhaust pipe that enable connection to a car
  
  • RDR - no (must fit exclusion)
  • UKUDR - no (must fit exclusion), although other features of the pipe which are decorative may have protection
• Spoiler that matches a famous car
  
  • RDR - yes (although note right to repair)
  • UKUDR - no (must-match exclusion)
• Internal feature of a blender
  
  • RDR - no (blender is a complex product, so part not visible in normal use no protected)
  • UKUDR - yes
• Philips 3-headed shaver
  
  • RDR - no (solely dictated by technical function)
  • UKUDR - yes (the look of a purely function design is still protected against copying)
• Font
  
  • RDR - yes
  • UKUDR - no (only articles are protectable)
• Decoration on a table
  
  • RDR - yes
  • UKUDR - no (surface decoration not protectable)

Question 5

When will a design be considered original?

Answer 5

A design is not original if it is commonplace in the relevant field within a qualifying country when created (not first disclosed).

NB and obviously not original if copied either.

Question 6

UKUDR

Who is able to claim UKUDR?

Answer 6

Design right is only conferred on a qualifying person

Question 7

UKUDR

At what point does design right come into existence?

Answer 7

A design right doesn’t exist until it has been recorded.

Question 8

UKUDR

Are purely functional designs covered by UKUDR?

Answer 8

Yes - there is no exclusion like there is in RDR

Question 9

What are the qualifying countries?

Answer 9

• UK
• Channel Islands and Isle of Man
• EU Member States
• UK Protectorates
• New Zealand
• Hong Kong

Question 10

Who is a ‘qualifying person’?

Answer 10

UKUDR will only subsist if the designer/employer is a qualifying person.

A ‘qualifying person’ is a habitual resident of a qualifying country or a government of a qualifying country or a business formed in the qualifying country and having a substantial activity within a qualifying country

Question 11

UKUDR

Explain qualification by reference to a designer

Answer 11

For designs not made during employment, then if at least one of the designer(s) is a qualifying person then design right protection is available to only those qualifying person(s).

Question 12

UKUDR

Explain qualifcation by reference to employer

Answer 12

If a design is created in the course of employment, then design right protection is available if the employer (i.e. the would-be proprietor) is a qualifying person.

In joint employment situations, design right protection is only available to the employer(s) who are qualifying person(s).

Question 13

UKUDR

Explain qualification by reference to first marketing

Answer 13

If there is no design right already with an employer or designer (e.g. because designed in non-qualifying country), then a design only qualifies for a design right if the first marketing of articles made to the design is by a qualifying person in a qualifying country.

For joint persons, design right is only available to those persons who qualify.

Question 14

UKUDR

Who is the ‘designer’?

Answer 14

The designer is the person who creates the design.

In the case of computer generated designs, it is the person who makes the arrangements necessary to give rise to the design.

Question 15

UKUDR

Who is the owner of design right?

Answer 15

The (qualifying) designer is the first owner of any design right in a design that is not created in the course of employment.

If created by an employee, then the (qualifying) employer is the proprietor (in this case, if the employee does qualify, but the employer doesn’t, then neither owns the design right)

Where an object qualifies for design right by virtue of first marketing in a qualifying country by a qualifying person, then that person is the proprietor.

NB commissioners are not in the chain of automatic ownership, so they need to get ownership assigned to them.

Question 16

UKUDR

What is the duration of UKUDR?

Answer 16

A design right expires at the earliest of:

• 15 years from the end of the calendar year in which the design was first recorded, or an article was first made according to the design;
• 10 years from the end of the calender year in which an article made according to the design was sold/hired out

BUT licences of rights are automatically available in the last 5 years of a design right.

No renewals are required

Question 17

UKUDR

What right does the owner of UKUDR have?

Answer 17

The proprietor of design right has the exclusive right to reproduce the design for commercial purposes by making articles to the design or making design documents for the purpose of making such articles.

Question 18

What does ‘reproduction’ mean?

Answer 18

Reproduction means copying the design to product articles exactly or substantially according to the design.

Copying can be direct/indirect and it is immaterial whether any intervening acts constitues an infringement.

Question 19

UKUDR

What is UKUDR primary infringement?

Answer 19

Primary infringement of a design right occurs by acting to, or authorising another to, exactly or substantially copy the design to make articles or design documents (for the purpose of making such articles), without a licence from the proprietor.

Easy mark - always point out the need to prove copying for UKUDR (not a monopoly right)

Question 20

UKUDR

What is secondary infringement of UKUDR?

Answer 20

Secondary infringement occurs where, without a licence from the proprietor, a person:

• imports into the UK for commercial purposes,
• keep (in the UK) for commercial purposes, or
• sells, hires out, or offers for sale or hire in the course of a business,

an article that is, and they know or have reason to believe is, an infringing article.

Question 21

UKUDR

What is the meaning of an ‘infringing article’?

Answer 21

An infringing article is one made to a design and infringing a design right, or

is one imported or proposed to be imported into the UK that would have been an infringing article if made in the UK.

Question 22

UKUDR

Does exhaustion of right apply to UKUDR?

Answer 22

Yes, European exhaustion applies - if sold with the proprietor’s consent in the EU and imported into the UK, then no infringement.

Question 23

UKUDR

Who bears the burden of proof if an identical article is produced?

Answer 23

If the article is identical, there is a presumption that the article was made to the design.

Independent creation is a defence.

Also, if a design right existed at any time, there is a presumption that an article was made while the design right was in force, until proven otherwise.

NB design documents are not articles.

Question 24

UKUDR

Scenario:

A commissions B to produce a design, and unknown to A, B plagiarises a design

Answer 24

In this case A is not infringing by authorising another because they did not know B was plagiarising.

The commissioner, A, is an innocent infringer and the remedy of damages is not available.

Question 25

UKUDR

What remedies are available for infringement of UKUDR?

Answer 25

The same as for patents:

• Damages or account of profits
• Delivery up or destruction
• Injunctions
• Flagrancy damages

NB where a licence of right is available, than an infringer can take a licence during proceedings to avoid an injunction or order to deliver up and damages are limited to double the retroactive licence fee.

Question 26

What happens if something infringes both copyright and design right?

Answer 26

If something infringes both, it is taken to be only an infringemnet of copyright, not design right.

NB copyright in designs is itself curtailed by s51 and s53 CDPA:

s51 - not an infringement of copyright in a design document to make an article according to the design, unless it is an artistic work (graphics works, photographs, sculptures, collages, architecture, artistic craftsmanship)