Design Right

Jane Lambert
27 May 2010

National unregistered design right (usually abbreviated to “design right”) protects aspects of shape or configuration (whether internal or external) of the whole or part of an article. It does not subsist in methods or principles of construction or in surface decoration. It comes into being automatically without registration or other formality upon recording the design of any such aspect of shape or configuration in a design document or making an article to such design. Novelty is not a requirement for subsistence of this right. It is enough that the design is original.

This intellectual property right came into existence on 1 Aug 1989. Previously the design of functional articles could be protected by artistic copyright for the full term of that copyright so long as the design was created in a drawing. Since the amendment of the Registered Designs Act 1949 on 9 Dec 2001 this right has occasionally been referred to as national unregistered design right to distinguish it from unregistered Community design right which came into existence on 6 March 2002.

This right was created by Part III of the Copyright Designs and Patents Act 1988 (“CDPA”). S.213 (1) provides that design right is a property right which subsists in accordance with Part III of the CDPA in an original design. S.213 (2) defines a design as “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.”   The adjective original is not defined by the Act though s.213 (4) provides that a design is not “original” for the purposes of Part III if it is commonplace in the design field in question at the time of its creation. In Farmer Build Ltd. v Carier Bulk Materials Handling Ltd. and others [1998] EWCA Civ 1900 Lord Justice Mummery explained that originality for the purpose of design right meant that the design for which protection was claimed had to originate from the designer but must also differ in some respects from other contemporaneous designs.

Unregistered design right comes into being automatically as soon as an original design is recorded in a design document or an article is made to such design. A further condition is that the design must qualify for design right protection by reference to the designer or the person who employed or commissioned the designer or the person by whom and country in which articles made to the design were first marketed (s.213 (5) CDPA). Except for semiconductor topographies, qualifying countries for the purposes of the Act are the UK and other EU member states or other countries or territories to which design right protection is extended by order in Council (s.217). The only industrial countries to which design right protection has been extended are New Zealand and Hong Kong.

Unless he or she was employed or commissioned to create the design, the designer (that is to say the person who created the design (s.214 (1)) is the first owner of the design right. Where a design is created pursuant to a commission or in the course of the designer’s employment, the commissioner or employer is the first owner of the right (s.215 CDPA).

National unregistered design right subsists for 15 years from the end of the calendar year in which a design was first recorded in a design document or an articles made to the design. If articles made to such a design were made available for sale or hire within the first 5 years of that term, the right subsists for 10 years from the end of the calendar year in which that first occurred (s.216 CDPA). In the last 5 years of the term, it is open to anyone including an infringer, to apply for a licence of right to do anything that would otherwise infringe the design right (see below).

Exclusive Right
The owner of a national unregistered design right has the exclusive right to reproduce the design for commercial purposes by making articles to the design or making a design document for the purpose of enabling such articles to be made (s.226 (1) CDPA).

As with copyright, a distinction is drawn between primary and secondary infringement. Primary infringement is doing or authorizing an act that is restricted to the design right owner without that owner’s licence.    Secondary infringement is importing or possessing for commercial purposes or selling, letting, offering or exposing for sale or hire in the course of a business, an infringing article in the knowledge or with reason to believe that the article was an infringing article.

Proceedings for design right infringement are brought in the Chancery Division, the Patents County Court or the Birmingham, Bristol, Cardiff, Caernarfon, Leeds, Liverpool. Manchester, Mold or Preston County Courts.

Licence of Right
Any person (including an infringer) may apply under s.237 (1) of the CDPA for a licence to do in the last 5 years of the design right term anything which would otherwise infringe the design right. If the parties cannot agree terms for such licence, they may be settled by the Comptroller-General of Patents Designs and Trade Marks. Where a party undertakes and is entitled to take a licence of right, no injunction or order for delivery up may be granted against him and the maximum pecuniary relief by way of damages or upon an account of profits that may be recovered is twice the amount of a royalty payable upon a licence of right from the date of the first infringement (s.239 (1) CDPA).

Semiconductor Topographies
HM government is party to the Treaty on Intellectual Property in respect of Integrated Circuits (“the Washington Treaty“) of 26 May 1989 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). To give effect to those obligations under those agreements semiconductor topographies are protected by design right under The Design Right (Semiconductor Topographies) Regulations 1989.These regulations modify the Act in relation to qualification, duration, infringement and licences of right.