UKUDR Notes

Question 1

What is stated in s 213(1) and (2) CDPA 1988 re design right and what is meant by ‘design’

Answer 1

(1) Design right is a property right which subsists in accordance with this part in an original design.
(2) In this Part ‘design’ means the design of the shape or configuration (whether internal or external) of the whole or part of an article.

Question 2

What are the sources of law for UKUDR?

Answer 2

CDPA 1988, Part III Design Right

and amendments made by the Intellectual Property Act 2014

Question 3

What amendment was made to s 213(2) and what was its effect?

Answer 3

Intellectual Property Act 2014 amended s 213(2) to remove wording “any aspect of…(the shape or configuration)”

“any aspect of” included disembodied features which are merely recognisable or discernible (whereas parts of a design are concrete parts). This means there is no more unregistered design right in abstract designs.

Question 4

What is stated in section 213(3) CDPA? What are the different parts referred to colloquially?

Answer 4

(3) Design right does not subsist in–
(a) a method or principle of construction,
(b) features of shape or configuration of an article which–
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.

(i) and (ii) are referred to as ‘must fit’ and ‘must match’ exclusions respectively.

Question 5

How is the exclusion in section 213(3)(a) CDPA usually used in court cases?

Answer 5

This exclusion is usually used as a “squeeze” to prevent over broad claims. It could be considered as an equivalent to the idea/expression dichotomy in copyright law.

Question 6

What are the aims/reasons for the ‘must fit’ and ‘must match’ exclusions?

Answer 6

‘must fit’–to exclude protection for aspects of spare parts, which often have to fit into a machine. It doesn’t excuse protection from the whole article, just from the bit of it which has been ‘designed to fit’ the other article. The shape of the features excluded must result in a part being able to perform its function.

‘must match’–aimed at spares (such as car panels) which must be replaced keeping the original appearance.
In ‘Dyson’, the Court said that in deciding whether a feature of a part is excluded, you have to consider whether there is a dependancy of the kind, or to the extent, which would make the overall article in question radically different in appearance if the first article was not the shape it was.

Question 7

What is meant by ‘original’ in s 213(1)?

Answer 7

According to section 213(4):
A design is not ‘original’ for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation.

(omitted part of this section where it talks about what is meant by ‘qualifying country’)

Common place not NOT equal novel. There is no requirement for a UKUDR to be new (therefore could have a situation in which a UKUDR exists for a registered design that is invalid over prior art which is publicly disclosed but not commonplace)

Question 8

What is meant by “design field in question” recited in s 213(4)?

Answer 8

“design field in question” must be given its ordinary and natural meaning, and a reasonably broad approach is taken.

What matter are the sorts of designs with which a notional designer of the article concerned would be familiar, and those earlier designs are considered through the eyes of a person to whom the designs were ultimately intended to appeal.

Question 9

How may a UK unregistered design qualify for protection?

Answer 9

Under section 213(5), design right subsists in a design only if the design qualifies for design right protection by reference to–
(a) the designer or the person by whom the designer was employed, or
(b) the person by whom and country in which articles made to the design were first marketed,
or in accordance with any Order under section 221 (power to make further provision with respect to qualification).

Before amendment by IP Act 2014, a design may also qualify for protection by reference to a commissioner.

Question 10

What does section 215 CDPA 1988 state (re ownership of design right?)

Answer 10

(1) The designer is the first owner of any design right in a design which is not created in the course of employment.
(2) Where a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design.
(3) If a design qualifies for design right protection by virtue of section 220 (qualification by reference to first marketing of articles made to the design), the above rules do not apply and the person by whom the articles in question are marketed is the first owner of the design right.

[regarding (3), a design qualifies if its first marketer is a qualifying person and the territory in which it is first marketed is a qualifying country]

Question 11

Who is the owner in the case of a commissioner/joint designer?

Answer 11

If the design is created in pursuance of a commission from a qualifying person, then the design is protected and the first owner is the commissioner.

In the case of a joint design, the design will qualify for protection if any of the designers (or employers (or (commissioners–pre IP Act 2014), as the case may be) is a qualifying person.

Question 12

What is meant by “qualifying person” under CDPA 1988?

Answer 12

Section 217 CDPA:
(1) In this Part–
“qualifying person” means–
(a) an individual habitually resident in a qualifying country, or
(b) a body corporate or other body having legal personality which–
(i) is formed under the law of a part of the UK or another qualifying country, and
(ii) has in any qualifying country a place of business at which substantial business activity is carried on.

(2) References in this Part to a qualifying person include the Crown and the government of any other qualifying country.

Question 13

What is meant by “qualifying country” under CDPA 1988?

Answer 13

Section 217 (3) In this section, qualifying country means–

(a) the UK,
(b) a country to which this Part extends by virtue of an Order under section 255, [e.g. colonies]
(c) another member state of the European Union, or
(d) to the extent that an Order under section 256 provides, a country designated under that section as enjoying reciprocal protection.

Question 14

What does section 213(6) say re recordals?

Answer 14

(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.

Question 15

What is the duration of a design right?

Answer 15

Section 216 CDPA 1988:

(1) Design right expires–
(a) fifteen years form the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurs, or
(b) if articles made to the design are made available for sale or hire within 5 years from the end of that calendar year, 10 years from the end of the calendar year in which that first occurred.

Question 16

Explain licences of right in relation to UKUDR

Answer 16

In the last 5 years of the term of protection, any person is entitled as of right to a licence to do anything which would otherwise infringe the design, on terms which, in default of agreement, shall be settled by the IPO.

In determining the royalty where an application has been made for a licence of right but no agreement has been reached, the approach taken is not to assess what damages the right owner might have suffered, but to try to determine what willing parties would have agreed.

Question 17

What does section 214(1) say re who the design is

Answer 17

(1) In this Part the ‘designer’, in relation to a design, means the person who creates it.

Question 18

What is meant by the “pleaded design” in an infringement action?

Answer 18

The claimant in an infringement action is required to specify what the design in suit is, and is therefore able to select and “trim” the part or parts of his own design for the action, and thereby the corresponding parts for the infringing product for comparison.

Question 19

What does section 226(1) say regarding primary infringement?

Answer 19

(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes–
(a) by making the articles to that design;
(b) by making a design document recording the design for the purpose of enabling such articles to be made.

[Reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right.]

Question 20

What is meant by “exactly or substantially” in s 226(2) re primary infringement?

Answer 20

(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.

“A court must look at whether the design, as a whole, is substantially the same as the design that enjoys design right protection. Regard has to be had to the overall design which enjoys design right”

Objective test: through the eyes of the person to whom the design is directed

—from ‘Ocular Sciences’ case

Question 21

What does section 227 say re secondary infringement?

Answer 21

(1) Design right is infringed by a person who, without the licence of the design right owner–
(a) imports into the UK for commercial purposes, or
(b) has in his possession for commercial purposes, or
(c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article.

Knowing involves “knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect … cannot be enough …” (LA Gear [1992] FSR 121).

Question 22

What is meant by “infringing article”?

Answer 22

An article is an “infringing article” if its making was an infringement of the UKUDR in that design, or if it has been imported, or is proposed to be imported, into the UK and it would have been an infringement if it had been made in the UK.

Question 23

What remedies are available in primary infringement (where infringement is innocent)?

Answer 23

In an action for primary infringement, if the defendant can show that at the time of the infringement he did not know and had no reason to believe that UKUDR subsisted in the design to which the action relates, the claimant is not entitled to damages (although all other remedies are available).

Question 24

What remedies are available in secondary infringement (where infringement is innocent)?

Answer 24

In an action for secondary infringement, if the defendant can show that the infringing article was “innocently acquired” (did not know and had no reason to believe that UKUDR subsisted in the design to which the action relates) by him (or by a predecessor in title of his), the claimant is only entitled to a reasonable royalty, and to no other remedies.

Question 25

What are the defects for infringement?

Answer 25

These are the same defences as for registered designs, i.e. private & non-commercial use, experimental use, teaching or making citations. As for patents and registered designs, use by or for the Crown for medical or defence purposes is not infringement (CDPA ss. 240-244).