The advantages of registered design protection
A common dilemma for designers looking to protect a new design is whether to apply for registered design protection or instead rely solely on unregistered design rights. This decision is made more difficult by the fact that there are four different systems of design protection covering the UK.
Registered protection can be obtained by filing an application for a UK Registered Design (UKRD) or a Community Registered Design (RCD), which provides unitary protection in all 28 Member States of the European Union. Additionally, designers can take advantage of the UK unregistered design right and Community unregistered design right, both of which subsist automatically.
At first glance, it may be tempting for a designer to rely on unregistered protection because it avoids the need to file any forms or pay any fees. However, there are several important benefits to applying for registered design protection. Furthermore, there is currently uncertainty as to whether certain designs will be afforded any unregistered protection once the UK officially leaves the European Union on 29th March 2019.
Different scopes of protection
The Community Design Regulation (Council Regulation No. 6/2002/EC) provides the legal framework for both registered and unregistered Community design protection. UK registered design protection is also based on EU law, namely the Community Design Directive (Directive 98/71/EC) that was introduced to harmonise the national registered design laws of Member States. The result of this is that the UK and Community registered design systems and the Community unregistered design right use the same definition of what constitutes a valid design and the same test for assessing whether an article produced by a third party falls within the scope of protection.
The Community Design Regulation and Directive both define a ‘design’ as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. For a design to be valid it must be ‘novel’ and have ‘individual character’, producing a different overall impression on an informed user over designs that have previously been made available to the public (the ‘prior art’). Infringement is assessed in a similar manner by determining whether a third party article produces the same overall impression on the informed user as the design in question.
The UK unregistered design right on the other hand has its basis in the Copyright, Designs and Patents Act 1988 (CDPA) and is not harmonised by EU law. The CDPA defines a design as the shape or configuration (whether internal or external) of the whole or part of an article, and stipulates that to be eligible for protection a design must be ‘original’ in the sense that it was not ‘commonplace’ in the relevant field when created. The test for infringement is whether a third party has exactly or substantially copied the design in question. The UK registered design right will therefore often provide a different scope of protection to that of registered designs and the Community unregistered right. For example, a third party article may not be an exact or substantial copy of an earlier design, and thus would not infringe the UK unregistered design right, but nonetheless may produce the same overall impression on an informed user and therefore still fall within the scope of the other systems of protection.
Designers should also be aware that surface decoration, including colouring and graphics, is explicitly excluded from protection under the UK unregistered design system. This has proved to be particularly problematic for the fashion industry where design evolves quickly (thus there is a desire to rely on unregistered design rights), but where protecting the fabric design of garments is very important. This was illustrated in Lambretta Clothing Co Ltd v Teddy Smith Ltd (2004), where Lambretta alleged that Teddy Smith had copied their vintage-style colour scheme in an otherwise conventional tracksuit top (below left). Lambretta argued that the combination of colours amounted to a ‘configuration’ that was protectable by the UK unregistered design right and that since the colouring was dyed all the way through the fabric it was not mere surface decoration. The Court of Appeal held the colouring was not protected because it did not itself contribute to the ‘shape or configuration’ of the tracksuit top and, in any event, surface decoration must include instances “like that in Brighton rock” where the decoration runs throughout the article. Therefore, there was no infringement. It is worth noting that the colouring would have been covered by the Community unregistered design system had it been in force at the time, although this would have provided a much shorter duration of protection.
The Community and UK unregistered design rights prevent unauthorised use of the design in trade but only when the design has been copied. In contrast, registered design protection is a monopoly right that stops unauthorised exploitation regardless of whether the design has been copied or independently conceived. In practice this means that it is easier to successfully enforce a registered design, because proving copying is more arduous than simply showing that a third party was aware of the design.
The difficulty in proving copying was demonstrated in John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd (2014) in which John Kaldor (JK), a design house, was given a brief by Lee Ann (LA), a fashion supplier, to create a new fabric design that LA could incorporate into a dress for supply to Marks and Spencer (M&S). JK supplied a number of different design samples and LA requested a costing of one of the designs (above left). However, LA subsequently decided to produce their own design which was incorporated in a pattern on a dress (above right) sold by M&S.
JK brought infringement proceedings against LA at the UK High Court, alleging that LA’s designer had copied JK’s design and therefore manufacture of the dress infringed JK’s unregistered Community design right. JK argued that similarities between their design and the dress showed that LA’s designer must have consciously or unconsciously copied the design after seeing the original sample, or indirectly copied the design based on a colleague’s detailed description of it. To counter, LA provided evidence that their designer was given a general brief to create a ‘tribal print’ and explained the design decisions that were taken to arrive at the dress pattern. This was sufficient to persuade the judge that no copying took place and thus that there was no infringement, despite the fact that LA did not dispute that their designer had access to JK’s design samples.
Applying for registered design protection has the additional benefit that designers can mark their products and packaging with the registration number, which can help to deter third parties from copying the design. Having a registered intellectual property right can also add value to a business and make it easier to obtain funding and attract investors.
Another advantage of registered design protection is that it offers a significantly longer duration of protection. Both UK and Community registered designs can be renewed every 5 years on payment of a fee, up to a maximum of 25 years from the date of filing. In comparison, a UK unregistered design right expires the earlier of 15 years from the end of the calendar year in which the design was first recorded or made, or 10 years from the end of the calendar year in which an article according to the design was first sold or hired out. The Community unregistered design right offers an even shorter period of protection, expiring three years after the date that the design was first made available to the public.
One potential pitfall of registered design protection is that it can be invalidated by the proprietor’s own disclosure of the design to the public prior to filing an application. However, there is a 12-month grace period during which an application may be filed after the first disclosure of the design, although disclosures in the grace period by third parties that independently conceived the design would still invalidate the application. The grace period can be particularly useful for small businesses, who may not want to commit to the cost of filing an application before marketing the design to assess whether is likely to be commercially successful.
No such grace period exists for unregistered Community designs and instead the right subsist automatically from the date that the design is first made available to the public within the EU. Any public disclosure of the design before this date outside of the EU, even by the designer, could invalidate the Community unregistered design right. In practice this means that a designer may have to ensure that the design is first marketed within the EU to ensure that it is eligible for unregistered Community design protection. This is not an issue with registered designs, where the designer can choose to launch anywhere in the world providing that a design application is filed within the 12-month grace period.
As things currently stand, the Community Designs Regulation will cease to have effect in the UK once the UK formally exits the EU and thus Community registered and unregistered rights will no longer provide protection. However, it is likely that the UK government will introduce transitional provisions that prevent any loss of registered design protection. For example, it may be agreed that existing and/or new RCDs will still cover the UK after Brexit, or that RCDs can be converted into supplementary UKRDs to maintain protection in the UK. In any event, designers seeking to protect new designs will still be able to apply for UKRD protection, and UK based designers can continue to apply for an RCD to seek protection in the remaining Member States of the EU.
The situation regarding unregistered design protection is more complicated. Firstly, the UK unregistered design system is quite different to its Community counterpart, being restricted to the ‘shape and configuration’ of an article with surface decoration excluded from protection. Therefore, in the absence of any transitional provisions that extend the Community unregistered system to cover the UK, surface decoration may not be afforded any unregistered protection in the UK after Brexit. Furthermore, products launched in the UK may no longer be eligible for unregistered Community design protection in the remainder of the EU because of the requirement that the design must be first marketed in an EU Member State.
In conclusion, designers should consider carefully whether unregistered protection will adequately protect their designs, particularly in a post-Brexit UK, and keep in mind that filing a registered design will provide a longer period of protection that is easier to enforce.