Unregistered Designs (Rules and Definitions) Flashcards
To what category of work does unregistered design rights and not copyright rights apply?
Industrial designs. These are 3D articles which are non-artistic. They would not qualify as works of artistic craftsmanship and would therefore not qualify for copyright protection in their own right.
However, note that the original design drawings themselves would qualify for copyright, as they are “graphic works”.
Typically, under copyright, making a 3D copy of a 2D artistic work would infringe the copyright in the latter. However, for industrial designs, there is a specific exclusion for this (in S51 of the CDPA), and any such copy would not infringe the copyright in the original design drawings. Instead, unregistered design rights apply to the making of any such 3D copies.
Define “original design”.
A design is original if has not been slavishly copied from another design, and if it is not commonplace in a qualifying country in the design field in question at the time of creation.
Qualifying countries include the UK and some former dependent territories such as New Zealand and Hong Kong.
The latter provision about a design being commonplace is obvious: even if you have arrived at a design independently and have not copied anyone, if basically the same design exists already and is commonly found, you can’t get protection for it.
NB unregistered design rights only subsist in original designs as defined above.
Define “design” in the legal sense of unregistered designs.
The design of the shape or configuration (whether internal or external) of the whole or part of an article.
NB this definition excludes part of a part of an article. For example, if someone designs a cottage, the cottage is the whole article. The roof is a part of that article. The chimney may be seen as part of the roof, and therefore does not qualify for UDR protection in its own right.
NB there is no exclusion on functional designs when it comes to UDR.
NB design rights are concerned with 3D designs only. “Shape and configuration” is referring to the 3D shape/configuration. Thus, design rights subsist in the article itself, not in any design drawings for said article (which are protected by copyright instead as graphic works).
What are the exclusions to UDR?
UDR does not subsist in:
- a method or principle of construction;
- features of a shape or configuration of an article which “must fit” or “must match”; or
- surface decoration.
Explain the “method or principle of construction” UDR exclusion?
UDR subsists in a specific embodiment of a design - one individual and specific appearance.
A design cannot be claimed so broadly that an article can be made with different appearances but still have all the claimed features of the design.
Any design claimed so broadly is seen as a method or principle of construction, as the shape of the claimed designs depends on how they were made, so the broadly claimed design is effectively a method or principle of construction.
To give a practical example, if you have designed a car, your UDR subsists in your particular car design. The exclusion means that you do not have any UDR subsisting in the features of the car itself, which can be assembled in different ways to produce cars that look completely different. (Such a general protection is what patents are for.)
Explain the “must fit” UDR exclusion.
Features of the shape or configuration of an article which enable the article to be connected to or placed in, around or against another article so that either article may perform its function are excluded from UDR.
What this means is that features that enable an article interface or interfit with another article are excluded from UDR but only if those features have an effect on the functionality of those articles.
For example, consider an interface on a nib of a fountain pen which is shaped so as to ensure no leakage. The shape/configuration of the interface is designed to fit into the fountain pen, and it does have an impact on the functionality of the nib and pen body (no leakage), therefore the shape/configuration of the interface is excluded from UDR.
As another example, consider Stuart’s speaker which fits around his monitor stand. The shape/configuration of the U-shaped speaker handle which fits around the monitor stand is not excluded from UDR because it has no effect on the functioning of either the speaker or the monitor.
Explain the “must match” UDR exclusion.
Features of the shape or configuration of a first article which are dependent on the appearance of a second article of which the first article is intended by the designer to the form an integral part are excluded from UDR.
Note the reference to the “appearance” of the second article: this exclusion may be considered as the aesthetic equivalent to the “must match” exclusion.
For example, designs for the integral components of a car, such as the main body panels, doors, etc. are excluded from UDR protection in their own right because their design must comply with the aesthetic of the car of which they are apart (and which does qualifty for UDR).
Explain the “surface decoration” UDR exclusion.
Surface features such as ribs and grooves are technically 3D features even though they are applied to a 2D surface.
If such 3D surface features have a functional purpose then they qualify for UDR.
However, if they are decorative in nature then they are excluded as surface decoration.
From when does UDR subsist?
From when the design was first recorded by creating a design document or making an article to the design.
Define “designer”.
The designer is the person who creates the design.
If the design is computer-generated, the designer is the person who put the arrangmenets necessary for the creation of the design in place. This may be the person operating the computer if skilled input is required, or otherwise the owner of the computer.
Who is the first owner of an UDR?
The designer by default, unless the design was created in the course of employment in which case it is the employer (NB a commissioner is not an employer and does not own the UDR by default). This is the same as copyright.
However, if the design qualifies for UDR by virtue of being first marketed in the UK, the first owner is the person by whom the articles were marketed.
What is the duration of an UDR?
15 years from first recording by creating a design document or making an article to the design.
If articles made to the design are made available for sale or hire (anywhere in the world, and not counting unauthorised acts) within 5 years of first recording, the term is limited to 10 years from first being made available.
NB “from” means “from the end of the calendar year of”.
Define “qualifying person”.
- An individual habitually resident in a qualifying country; or
- a body corporate or other body having legal personality which is formed under the law of a qualifying country and which has a place of business ina qualifying country at which substantial business activity is carried on (e.g., not a post box).
Define “qualifying country”.
The UK or a reciprocal arrangement country.
Reciprocal arrangement countries include New Zealand, Hong Kong, and some other dependent territories (like Gibraltar) or formerly dependent territories.
When does a design qualify for UDR?
Design not created in course of employment
If the designer is a qualifying person. If there are joint designers, if one of the designers is a qualifying person (but only those joint designers who are qualified will own the UDR).
Design created in course of employment
If the employer is a qualifying person. In the case of joint employment, if one of the employers is a qualifying person (but only those employers who are qualified will own the UDR).
First marketing
If the designers/employers are not qualifying persons, then if the first marekting of articles made to the design was in the UK and by a qualifying person. In the case of first marketing being by multiple people, if one of them was a qualifying person (but only those who are qualifying persons own the UDR).
