Where a registered design is in some ways like a trade mark, as another kind of registered right, design right is more like copyright, only it exists only in the specific context of designs for physical articles. In fact, sometimes design rights and copyrights can overlap and there are specific rules of law for dealing with that situation.
At Lupton Fawcett, our team of intellectual property solicitors has over 50 years’ combined experience in this area of law and have helped many individuals and businesses protect their designs. To speak to a solicitor about how you can protect your designs, get in touch with us by calling 0333 323 5292 or fill in the enquiry form on this page and we will get back to you as soon as possible.
What are Design Rights?
A design right is a UK-based right and comes into being in the same way as a copyright, when an original design for an article is recorded. The resulting design right belongs to the designer except where they are produced by an employee in the course of his/her employment or have been produced under an agreement that assigns the rights to another, like a copyright. This protects original design elements that are not inevitable requirements for the article concerned, such as an element dictated by the function of the article or its need to fit together with another article. The design elements protected are elements of the shape or configuration of the article, and not its aesthetic appearance as such – that is dealt with where relevant by registered designs or can sometimes be protected by copyright.
The design right prevents anyone else making an article to the same design, or taking the article made to the design and copying or “reverse engineering” it. It doesn’t protect engineering principles or concepts – if these are novel enough to be protectable, patents would be the appropriate way to do that.
What design right means in practice is that if you have designed an article that is original, meaning it is not entirely commonplace but has some originality in it, and someone else wants to make an article of the same or a similar kind, they have to use their own original design and not copy yours. The right lasts for up to 15 years from the date of the design. Like the other rights discussed here, design rights not only have a value but they can also release value through licensing and other forms of exploitation.
The importance of design right is that it prevents the copying of three-dimensional articles that are not protected as artistic works by copyright or as novel inventions by any patent, but which still represent a business investment in research, development and creativity. Their power and value should not be underestimated, and just as systems and standard contracts should be put in place to protect copyrights, the same goes for design rights.
European Community Unregistered Design Right
One footnote to mention here is that European Community law also provides for an unregistered design right of a different nature, more closely resembling the rights that arise on the registration of a registered design and which protect the look and general impression of an article. This right comes into being automatically if an article is novel, and the rights last for a period of three years. Ignoring the existence of this right is an error commonly made by those who copy articles believing the absence of a registered design leaves the way clear for them to do so. That can be a very expensive mistake.
When a design for an article that is intended to provide some kind of appeal in itself is novel, in that it creates an impression on an informed user that is different from the impression created by another article. That article can be made the subject of a registered design which can last, when renewed at intervals of five years, for up to 25 years.
The importance of this is that:
- where an article having a three-dimensional physical aspect (typically a product of some sort) is going to be mass produced it does not attract the protection of copyright except for some artistic works and works of artistic craftsmanship;
- some aspects of the design will not have design rights in the UK and the European Community Unregistered Design Right lasts only three years;
- the protection for designs varies country to country and may not be available at all without a registration.
However, the article may well have highly developed and creative design elements that make it new and desirable, and justify protecting it against being copied, even where copyright and other design right protection doesn’t apply. Many designs for items such as articles of clothing, furniture, ornaments and consumer goods – the sort of things in which we think of design as having a definite value – can and should be protected in this way.
Like patents or trademarks, registered designs arise from a registration process, but one that is less complex and exacting than the others. Again, there are classes of goods for which a design can be registered, and there is a test of originality as outlined above: the item must create a different overall impression from that created by other like items. Elements of surface decoration, for instance, a distinctive pattern, can also be registered more generally, and this can provide an additional element of brand protection to that offered by trade mark registrations.
Once registered, the owner can prevent articles being made and sold by others which offer no different overall impression to that offered by the registered design – in other words, copies of the design or articles that are simply intended to exploit the design elements of the original. Like the other rights referred to here, it has its own value as well as offers further value through licensing and other commercial exploitation.
Our team can advise on both registered and unregistered design law, assist with protection strategies, exploitation by licensing and merchandising and disputes of all kinds. We can also provide guidance on enforcement by court proceedings.
The team’s expertise has been recognised in major independent guides to the legal profession such as Chambers and Partners and the Legal 500. They also have an extensive record of major books and online publications for use by other practitioners, students and academics – giving the advice they give you an authority that sets them apart from the competition.
Relevant publications by team members
Intellectual Property in Designs, by John Sykes (Butterworths LexisNexis).
Valuation and Exploitation of Intellectual Property and Intangible Assets, by John Sykes, co-author. (Emis).
Brands: Law, Practice and Precedents, by Clive Lawrence (Jordans Publishing)
Getting in Touch
Protecting a design requires the assistance of a competent and professional solicitor. The intellectual property team has over 50 years’ combined experience in helping businesses protect their interests. Contact John Sykes or Clive Lawrence using the details on the enquiry form to discuss your requirements. With offices in Leeds, Sheffield and York, we are able to provide advice to those in and around Yorkshire.