UK Design Protection - Overview Flashcards
In how many dimensions can a design be?
2D or 3D
How may a design be embodied?
Drawing, Photograph, Writing. These must be in a design document.
Product or Prototype
What differentiates one product from another in the market place?
Designs
Social Benefits of Design Protection
Protects investment in creating well-designed products.
Causes competitors to independently design, not copy, increasing diversity.
Limits copies, which also make consumer choice simpler.
What are protectable designs.
Functional/Useful or ornamental.
Registered Design RDA 1949
Can be obtained from:
Re-registered (Community) Design)
Re-registered (International/EU) design
International (UK) Design - Hague Agreement.
What is a Supplementary Unregistered Design (SUD)
provide a limited form of protection for the appearance of a product without requiring formal registration.
When does an SUD get protection
Automatic Protection – SUDs arise automatically when a design is first disclosed in the UK. There is no need for an application or official registration.
SUD Scope of Protection
Covers the shape and configuration of a product but not surface decoration, colours, or materials.
SUD Duration
Duration – Lasts for three years from the date the design is first made available to the public in the UK.
SUD vs Unregistered UK Design Right
SUDs protect the overall appearance of a design (like the previous EU Unregistered Community Design).
UKUDR protects functional and technical aspects of a design and lasts up to 15 years.
Post-Brexit Context – SUDs were introduced after the UK left the EU to replace the loss of EU Unregistered Community Designs (EU UCDs), which no longer apply in the UK.
SUD Infringement Proceedings
Infringement and Enforcement – To prove infringement, the designer must show that the alleged copy results from deliberate copying rather than independent creation.
UK Registered Designs (RD)
Registered at the UKIPO
Lasts for 25 years from filing date. Renewals every 5 years. Protect product appearances not concepts, functions or theories.
Must be novel and have individual character.
Can you claim priority on a registered design?
Yes
How is a UK Registered Design Infringed?
By another design creating the same overall impression. Does not require copying.
Can a Registered Design be solely dictated by the product’s technical function?
No
Are Registered Designs examined for novelty?
No.
Hague Agreement International Designs (IR)
Registered at the WIPO designating GB.
Can only be obtained by nationals of a Hague state.
Usually allowed by UK IPO with no national phase
Exactly the same substantive effects as a UK RD (Same validity and infringement) Litigated in UK Courts
Where are IR Designs renewed?
WIPO
How quick is registration of designs?
GB:EU - few days
US:JP:KR - 12 months
Can you defer publication?
12 months from filing, 30 from priority.
Supplementary Unregistered Design and Continuing Unregistered Community Design
No formalities required for protection.
First Disclosure date takes place of filling date.
Lasts for three year from first disclosure.
What does SUDs or CUCDs protect?
Protect product appearances not concepts, functions or theories.
Must be novel and have individual character over earlier designs (before first disclosure)
Only infringed by copied designs
UK Unregistered Design Right (UK UDR)
No formalities required for protection.
Protects shape and configuration, not surface decoration.
UK UDR protection length
10 years from first marketing of the design, or
15 years from recording the design
When can you ask for a licence of right in UK UDR?
Last 5 years
UK UDR requirements
Requires originality and not commonplace, NOT novelty.
UK UDR infringement requirements
Only infringed by copied designs
Shape and configuration
Does cast a shadow. Have a 3D shape.
Surface decoration
Does not cast a shadow. 2D shape.
Copyright protection for designs
No formalities required for protection.
Protects artistic works
Copyright protection for design protection length
Lasts up to 70 years from author’s death.
PMA - Post Mortem autoris (from year of death)
Copyright protection for designs infringement requirement
Only infringed by copied designs
National vs European substantive basis
National:
- UK UDR
- UK Copyright
European:
- UK Registered Design
- Continuing or Supplementary Unregistered (Community) Design
Monopoly vs Copyright
Monopoly - stopping people from doing things regardless of copyright
- UK/International registered design protection
Copyright-type - stopping people from copying
- UK UDR/Continuing or Supplementary Unregistered (Community) Design
- UK Copyright
UK/Int RD Type - Monopoly or Copying?
Monopoly
UK/Int RD 2D or 3D?
Both
UK/Int RD Purely Functional Allowed?
No
UK/Int RD Life?
25 years
UK/Int RD Must-fit Allowed?
No
UK/Int RD Must-match Allowed?
Yes
UK UDR Monopoly or Copying?
Copying
UK UDR 2D or 3D?
3D
UK UDR Life?
10-15
UK UDR Purely Functional Allowed?
Yes
UK UDR Must-fit allowed?
No
UK UDR Must-match allowed?
No
CUCD/SUD Monopoly or Copying?
Copying
CUCD/SUD 2D or 3D?
Both
CUCD/SUD Life?
3 years
CUCD/SUD Purely functional allowed?
No
CUCD/SUD Must-fit allowed?
No
CUCD/SUD Must-match allowed?
Yes
Copyright Monopoly or Copying?
Copying?
Copyright 2D or 3D?
2D
Copyright Purely Functional Allowed?
No
Copyright Must-fit allowed?
Yes
Copyright Must-match allowed?
Yes
Must fit
This applies when a design is shaped a certain way because it has to connect with something else. If the shape is necessary for it to work, you can’t get design protection for that feature.
🔹 Example: A phone charger port—it has to be a certain shape to fit the cable.
Must Match
This applies when a part has to look a certain way to match another product. If a design is only about making something blend in with an existing item, you can’t protect it.
🔹 Example: A car door panel—it needs to match the rest of the car, so you can’t claim exclusive rights over the shape.
Designs and Copyright
Designs carve from copyright.
Should designs with aesthetic appeal be protected by copyright?
Former UK Position attempted to exclude copyright where design protection was possible.
Design overlap with patentable inventions
EPC excludes Aesthetic Creations Art 52(2)
European/UK RD excludes features which are solely dictated by technical function
UK design right
Given by Copyright, Designs and Patent Act.
Shorter period of protection. Licences of right last 5 years.
Must fit and must match are not allowed. Cannot monopolise that.
No need for a design drawing.
Paris Convention
Must protect industrial designs, but no restriction on how
Berne Convention
Must protect “works of applied art”, but no restriction on how - except that if copyright, must be at least 25 years
TRIPS
Must protect “industrial designs” for at least 10 years.
Author for:
Copyright and UK RD
Designer for:
UK UDR, SUD & UCD
Who deserves the title of designer?
Person who determines the appearance
Moral Rights for Designs
None for UK UDR, UK RD or UCD.
Right for designer to be named in RCD, and (for some designations only) in international design.
Moral Rights for Copyright
Right to be identified and paternity right, for sculptures and works of artistic craftsmanship, only apply to issuance of 2D images.
First marketing (UK UDR)
For designs which do not qualify by designer or employee but by first marketing, the first marketer is first proprietor of UK UDR.
First marketer if no uk identifiable employer or individual.
