Unregistered Design Rights at UK and Community Level - Which One is Best for You?
There are two ways in which designs are given protection in the UK - the Unregistered Design Right and the Unregistered Community Design. In this article, IP expert Kerry Lee of City law firm Field Fisher Waterhouse compares them.
The first of these is the UK's home grown Unregistered Design Right (the "UDR") which falls under the remit of the Copyright, Designs and Patents Act 1988.
The second, the Unregistered Community Design (the "UCD"), is governed by Council Regulation (EC) No 6/2002 on Community Designs ("the Regulations") which came into force on 6 March 2002. Unlike the UDR, this is a standalone regulation and does not affect the design right laws of individual EU Member States.
How are unregistered design rights obtained?
As with copyright protection, UDR and UCD protection arises automatically whenever an original design is created, whether it appears on paper, as a model or a computer graphic
However, as disputes relating to design rights usually require supporting documentary evidence, it is vital that records of the design process are kept, including relevant dates and the identity of its creator or creators.
Designs eligible for UDR protection are defined in Section 213 (2) of the Copyright, Designs and Patents Act as:
"the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article."
An original design includes:
an article to a particular design
a "design document". This must be a record of the design, but might include anything from a drawing, photograph, model or data stored in a computer or on a disk.
UDRs can be given to the appearance of industrially produced articles, decorative articles or decorative features of an article.
Designs which obtain UCD protection are defined in Article 3 of the Regulation as:
"the appearance of the whole or a part of a product resulting from the specific features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product and/or its ornamentation."
Industrial or handicraft products are eligible for protection, as are packaging, get-up, graphic symbols and typographic typefaces. It is worth noting that computer programs are excluded.
This definition is obviously concerned with the appearance of a product or part of a product and, as such, is similar to the UDR. However, in contrast to UDR, there is no requirement for a design with UCD protection to be recorded in a document, or for an article to be made to design for it to exist.
Furthermore, under the Regulation, the definition of a UCD has a wider scope than that which a UDR can offer under the remit of the CDPA. For example, the UCD right can be applied to specific features of an ornament or a particular colour or texture; the UDR cannot.
A UK design must qualify for protection by reference to the designer, commissioner, employee or first marketer. For example, the person or body corporate commissioning the designer must be a "qualified person" by meeting certain nationality or residence requirements. A qualified person is a citizen or subject of, or an individual (or body corporate) habitually resident in the United Kingdom or another member state of the European Union. At present, qualification for a design right extends only to nationals of overseas territories whose laws give reciprocal rights to UK nationals.
In relation to UCD there are no "qualification requirements" by reference to designer commissioner, employee or first marketer. However, a design must be made available to the public...