Unregistered UK designs

Question 1

In what does a UK unregistered design right exist

Answer 1

S213 CDPA
(1) a design right for an ORIGINAL design exist
(2) the SHAPE or CONFIGURATION (INTERNAL or EXTERNAL) of ALL or PART of an article

Question 2

What can a UK URDR not exist in

Answer 2

S213 CDPA
(3) but NOT in
a) a method or principle of CONSTRUCTION
b) features of shape of configuration of an article that (i) MUST FIT or (ii) MUST MATCH; or
c) surface decoration

(5A) cannot exist in a design comprising protected symbols

Question 3

What is the must match exclusion

Answer 3

S213 CDPA (3)(b)(ii)
shape or configuration of an article that is aesthetically dependent upon another article that the article is intended to form an integral part of

Question 4

What makes a UK URD original

Answer 4

S213 CDPA (4)
it is not ORIGINAL is it is COMMONPLACE in the relevant field within a QUALIFYING COUNTRY when created

Question 5

Who is conferred a UK unregistered design right

Answer 5

S213 CDPA (5)
only a QUALIFYING PERSON

Question 6

When does an unregistered design right begin

Answer 6

S213 CDPA (6)
does not exist until the design has been RECORDED (e.g. as a document or article)

Question 7

What features are protected as UK unregistered designs, but not as registerable designs

Answer 7

purely functional features

Question 8

What are qualifying countries for UK URD

Answer 8

S217 CDPA (3)

UK (and channel islands and Isle of Man)
UK protectorates
New Zealand
Hong Kong

NOT US / JP / EU (post of Brexit)

Question 9

Who is the designer and owner of a UK unregistered design

Answer 9

S214 CDPA - designer is person who creates design

S215
(1) qualifying designer is first owner that is NOT created in the course of employment

(3) IF created by employee, qualifying employer is owner

(4) OR where an object qualifies for a design right by virtue of first marketing in a qualifying country by a qualifying person, that person is the owner of the right

Question 10

Who is a qualifying person for a UK URDR

Answer 10

S217 CDPA
a habitual resident of a qualifying country
OR government of a qualifying country
OR business formed in a qualifying country AND having a substantive activity within a qualifying country

Question 11

When is a designer an owner of a UK URD

Answer 11

S218 CDPA
(1) for designs NOT made during employment
(2) (3)(4) IF at least one of the designers is a qualifying person then design right protection is available to (only) those persons

Question 12

When is an employer owner of a UK URD

Answer 12

S219 CDPA
(1) if a design is created in the course of employment, protection is available IF the employer is a qualifying person
(2)(3) For joint employment, IF at least one of them is a qualifying person, then design rights fall only with the qualifying person

Question 13

When do design rights exist by qualification for reference to first marketing

Answer 13

S220 CDPA
(1) IF there is no design right already with an employer or designer, then a design qualifies for protection if the first marketing of articles is by a qualifying person and in a qualifying country
(2) For joint persons, IF at least one is qualifying person in qualifying country , protection is avaliable to them

Question 14

What rights do an owner of a UK URD have

Answer 14

S226 CDPA (1)
the owner has the EXCLUSIVE right to REPRODUCE the design for COMMERCIAL PURPOSES by making articles to the design or making design documents for the purposes of making such articles

Question 15

What does reproduction mean for a UK URD

Answer 15

S226 CDPA (2)(4)
COPYING the design to produce articles exactly or substantially according to the design. Copying can be direct or indirect and it is immaterial whether any intervening act itself constitutes an infringement

Question 16

What constitutes PRIMARY INFRINGEMENT of a UK URD

Answer 16

S226 CDPA CDPA (3)
occurs by acting to EXACTLY or SUBSTANTIALLY COPY THE DESIGN to MAKE ARTICLES or DESIGN DOCUMENTS for commercial purposes - or by authorising another to do so - WITHOUT THE LICENCE of the design right owner

Question 17

What constitutes SECONDARY INFRINGEMENT of a UK URD

Answer 17

S227 CDPA (1)
where, without a licence from the design right owner, a person
a) IMPORTS into the UK for commercial purposes
b) KEEPS (in the UK) for commercial purposes
c) SELLS, HIRES out, or OFFERS for sale or hire, in course of business, an article that is,
AND they know OR have reason to believe it is an “infringing article”

Question 18

What is an infringing article UK URD

Answer 18

S228 CDPA
(1)(2) one made to a design and infringing a design right in that design OR
(3) one importer OR proposed to be imported into the UK that would have been an infringing article if made in the UK
(6) Design documents are not articles

Question 19

When does an exhaustion of rights apply for UK URD

Answer 19

S228 CDPA (5)
for items applies for items sold with the proprietors consent within the EEA and then imported

BUT only for UK rights, consent in the UK does not exhaust rights in the EU

Question 20

What is the assumption when a UR design right has existed in a design

Answer 20

S228 CDPA (4)
Where a design right as existed AT ANY TIME , there is a presumption that an article made to the design was made while the design right was in force UNLESS PROVED OTHERWISE

i.e. a reversal of the burden of proof

Question 21

What remedies are available to a claimant of for UK URD

Answer 21

damages, injunctions and orders to deliver up

Question 22

What is innocent infringement of UK URD

Answer 22

possible if for example a party commissions a design and that person secretly plagiarises a design, in which case damages are not recoverable from the innocent infringer.

Question 23

What effect does the existence of a licence of right have on infringement of a UK URD

Answer 23

S239 CDPA
the infringer can take a license during proceedings, and thereby avoid an injunction, or order to deliver up, and damages will be limited to double the retroactive license fee for the duration of the infringement

Question 24

What is the duration of a UK URD

Answer 24

S216 CDPA (1)
it expires at the EARLIEST of
a) 15 YEARS from the END OF THE CALENDAR YEAR in which the design was first recorded or an article was made from it (whichever is first)
b) if an article was made and made available for SALE or HIRE (anywhere in the world) within the FIRST FIVE YEARS from the end of that calendar year, then up to TEN YEARS from the END OF THE CALENDAR YER in which that occurred

Question 25

When are licenses of right available for a UK URD

Answer 25

S237 CDPA
In the LAST FIVE YEARS anyone may request it , preferably by agreement between the parties but failing that by settlement of the Comptroller