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Unregistered design
right only applied in the UK prior to the 6th March 2002 after which
date designs published in the EU are entitled to a three year period
of community wide unregistered design right. UK unregistered design
right still co-exists and is detailed below.
Unregistered design
right as the title suggests is a right which comes into existence
without a formal registration process and the right is automatically
acquired by a designer upon creation of an original design.
The primary
disadvantage of relying on unregistered design right is that
existence, title and copying of your unregistered design right must
all be proven in a court of law in an action for infringement. This
is often a difficult task as there is rarely direct evidence of
the copier at work. However, in many cases there is no other
form of protection in existence and so it must be relied upon to
prevent a third party commercially exploiting your design.
What is
unregistered design right?
Design right is a
property right in an original design and design means the
design of any aspect of the internal or external shape or
configuration of the whole or part of an article.
A design is not
considered original if it is commonplace in the design
field in question at the time of its creation.
What exclusions
apply to unregistered design right?
Methods or
principles of construction are excluded from design right
protection, so a method of assembling a roof would not be afforded
design right protection. However, once assembled the actual shape
and configuration of the roof may be afforded design right
protection if it is original.
Features of 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
design right protection and these excluded features are often
referred to as the ‘must fit’ exclusion.
Features of shape or
configuration of an article which are dependent upon the appearance
of another article of which the article is intended by the designer
to form an integral part are excluded from design right protection
and these excluded features are often referred to as the ‘must
match’ exclusion.
Surface decoration
is also excluded from design right protection although surface
finish for a functional purpose such as threads on a tyre are not
excluded.
How does an
article qualify for design right protection?
Design right subsists
in a design if the designer, the person by whom the design was
commissioned or the designer’s employer are residents or citizens of
a member state of the EEC.
A design can also qualify for design right protection if the first
marketing of articles made to the design
is by a person who is a
resident or a citizen of a member state of the EEC
and who is exclusively authorised to put such articles on the market
in the United Kingdom provided
the marketing takes place in the
United Kingdom or another member State of the European Economic
Community.
When does design
right come into existence?
Design right is
created when the design has been recorded in a design
document or an article has been made to the design. A design
document means any record of a design, whether in the form of a
drawing, a written description, a photograph, data stored in a
computer or otherwise.
Who is the
designer?
The designer in
relation to a design means the person who creates it. In the case of
a computer-generated design, the designer is the person by whom the
arrangements necessary for the creation of the design are
undertaken.
Who is the
first owner of the design right?
The designer is
the first owner of any design right in a design which is not created
in pursuance of a commission or in the course of employment.
What is the
life span of a design right?
Design right
expires fifteen years from the end of the calendar year in which the
design was first recorded in a design document or an article was
first made to the design, whichever first occurred.
However, if articles
made to the design are made available for sale or hire anywhere in
the world within the first five years of the designs creation, the
design right expires ten years from the end of that year.
What rights does
the design right accord to its owner?
The owner of
design right in a design has the exclusive right to reproduce the
design for commercial purposes by making articles to that design, or
by making a design document recording the design for the purpose of
enabling such articles to be made.
Reproduction of a
design by making articles to the design means copying the design so
as to produce articles exactly or substantially to that design.
How is design
right infringed?
Design right is
infringed by any person who reproduces the design for commercial
purposes without the licence of the design right owner or authorises
another to do the same.
The design right
owner is entitled to damages, an injunction, an account of the
infringer’s profits in an action for infringement of design right.
The court may
award additional damages as the justice of the case may require in
view of the flagrancy of the infringement, and any benefit accruing
to the defendant by reason of the infringement. However, if the
defendant can show that they did not know, and had no reason to
believe, that design right subsisted in the alleged infringed
design, no damages will be awarded against him.
What about
copyright infringement of drawings of simple mechanical components?
It is not an
infringement of any copyright in a design document or model
recording or embodying a design for anything other than an artistic
work or a typeface to make an article to the design or to copy an
article made to the design.
This is a very
important aspect of the 1988 CDPA and prevents people claiming
copyright infringement in drawings of designs for simple parts such
as replacement or spare parts meaning that they are unable to claim
extended copyright periods of 70 years for simple technical designs.
Licences of
Right
Licences of Right are
available in the last five years of design right which means anyone
can apply for a licence on a reasonable royalty basis during the
last five years of design right protection.
During a design
right infringement case in respect of a design in the last five
years of its protection period, if the defendant undertakes to take
a licence no injunction can be granted against him and no order for
delivery up of infringing articles can be made. Furthermore, the
amount recoverable against him by way of damages or on an account of
profits could not exceed double the amount which would have been
payable by him as licensee if such a licence had been granted before
the earliest infringement.
Can you
threaten someone with an action for infringement of design right
protection?
If you threaten
another person with legal proceedings for infringement of design
right, that person aggrieved by the threats may bring an action
against you. The person threatened can apply to the court for a
declaration to the effect that the threats are unjustifiable and for
an injunction against the continuance of the threats. Furthermore,
the threatened person can apply to the court for damages in respect
of any loss which he has sustained by the threats.
If the plaintiff
proves that the threats were made and that he is a person aggrieved
by them, he is entitled to the relief claimed unless you can show
that the alleged infringing acts were actually an infringement of
your design right.
Threats to bring
proceedings for an infringement alleged to consist of making or
importing anything are not actionable and mere notification that a
design is protected by design right does not constitute a threat of
proceedings.
This allows you to
threaten a primary infringer with action but discourages you going
around to shops that stock the product and threatening to sue them
if they do not take the product off the shelves.
Design Right
applies in relation to a kit, that is, a complete or substantially
complete set of components intended to be assembled into an article,
as they apply in relation to the assembled article. Design right may
subsist in any aspect of the design of the components of a kit as
opposed to the design of the assembled article.
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