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3 years on from the introduction of new design laws Halliwells explore the impact the changes have had in practice.

The changes in law have meant that UK registered design rights and European Community registered and unregistered design rights are now almost identical in general scope apart from a few changes which are discussed below. UK unregistered design rights were unaffected by the changes and accordingly differ from the other three rights in a number of ways.

UK Unregistered Design Rights

Qualifying designs are automatically protected by UK unregistered design rights, but there are limitations. UK unregistered design rights only subsist in the shape and configuration of a design, but do not cover:

• any surface decoration
• any aspects of the shape which are dictated by virtue of the fact that they "must-fit" to or "must-match" another component; or
• any aspects of the shape which are commonplace within the design field in question.

• 10 years from the end of the year in which an article made to the design was first marketed; and
• 15 years from the end of the year in which the design was created.

The new law protects “designs” that are “new” and have “individual character”. The new law defines a “design” as being the appearance of the whole or part of a “product” resulting from its features (such as its lines, contours, colours, shape, texture, materials and/or ornamentation). A “product” is any industrial or handicraft item other than a computer program, including parts intended to be assembled into a complex product, packaging, get up, graphic symbols and typographical typefaces. The change in the law means that protection extends to the internal and external aspects of the design, the whole or part of the design (where the part remains visible during normal use) and 2D or 3D designs.

These definitions mean that design rights now extend far beyond the scope of the old law. In fact, there is now a clear overlap between design rights and other intellectual property rights which would traditionally have been relied upon to protect particular design features or products. A design is “new” if there is no identical design, or no design whose features differ only in immaterial details, which has already been made available to the public. To have “individual character” the overall impression the design produces on the “informed user” must differ from the overall impression produced by any design which has already been made available to the public. It has been said that a design which creates a feeling of "déjà vu" cannot have individual character. When assessing individual character one must take into account the design freedom available to the designer.

The new law allows the registration in the UK of designs with individual character rather than those which qualified under the previous regime as having “eye appeal”. The registration can last for up to 25 years. Previously publication of a design meant that it could no longer be registered. The owner of a design now has a grace period of 12 months to test the market without such disclosure to the public preventing registration. A word of caution though: third party designs created independently during the grace period will prevent your design being registered.

As well as protecting designs in the UK, the new law also allows designs to be protected throughout the European Community. Community registered designs are almost identical to UK registered designs except that they extend throughout the European Community. Unregistered Community designs work on a very similar basis but last for only 3 years from date the design is first made available to the public within the Community and infringement depends on there having been unauthorised copying.

• a single application covers all members of the European Community
• it is cheaper to file an application to register a Community registered design than multiple individual national applications
• you only have a single renewal date to remember
• the Community registration procedure is less rigorous, so you are more likely to obtain a registration
• it is possible to defer the publication of a Community design application and keep the design secret until it is marketed which can cause real difficulties for competitors.
The big downside is that if the Community registered design is revoked in one member state protection is lost Community wide.

Ownership of Design Rights

The owner of the design right is generally the designer. Where the design is created by an employee during the normal course of their employment, the employer will be considered to be the owner. Where a design has been commissioned, for the purposes of UK design rights the person or company that commissioned the design will be considered to be the owner – this is different from copyright where the owner of the copyright will usually be the person or company that created the copyright work. This rule on commissioned designs does not apply to Community design rights so that title will not pass by virtue of having paid for the design. This leaves us with the odd situation where a commissioner may own the UK design rights but not the Community design rights in a design. Accordingly, it is now important that an assignment of all rights in a design is always taken in respect of commissioned works.

Arsenal Football Club has registered its new crest as a UK registered design. The test for infringement will now be whether an alleged infringement produces a different overall impression on the informed user. This will avoid the complex legal questions recently faced by Arsenal in respect of a claim for trade mark infringement against a market trader selling allegedly counterfeit goods bearing the old crest. The main advantages of a design right over a trade mark are as follows:

• a design may be registerable where a trade mark is not due to a lack of distinctiveness
• the test for infringement is whether an allegedly infringing design creates a different overall impression. Unlike a claim for trade mark infringement, there is no need to establish a reputation in the design or evidence confusion where it is used on non-identical goods
• designs are generally cheaper to register than trade marks
• Community registered design applications face less scrutiny than Community trade mark applications
• there is no requirement to use the design unlike registered trade marks which are vulnerable to revocation if not used within 5 years from the date of registration.

• the duration of a registered trade mark continues indefinitely so long as the renewal fees are paid, whereas registered designs last for a maximum 25 years
• trade marks can be registered regardless of any length of use of the mark prior to the application unlike design rights in respect of which there is a limited 12 month grace period.

Design rights -v- Copyright

Mars UK Limited has registered the “Millenium typeface” as a UK registered design. Traditionally typefaces could only be protected by copyright. The main advantage of relying upon registered design right rather than copyright is that there is no need to prove copying. If the design in issue is the subject of a UK registered design or Community registered design it is simply enough that the alleged infringement does not create a different overall impression on the informed user. It is easy to see why some now consider that design right has been extended too widely and also why others consider it to be the new super right. Only time and case law will determine which view is more accurate.

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