Intellectual property and design protection

Intellectual property (IP) means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property (Supreme Court Act 1981, s. 72(5)). It describes the legal rights that exist in products of human creativity: inventions, designs, literary and artistic works, databases and brands. IP and industrial property are synonymous.

Intellectual property rights (IPRs) arise either automatically or on registration. Examples of the former are copyright, design right and database right. The latter include patents, registered trade marks and registered designs. IPRs are negative although often expressed as exclusive rights. They entitle the owner to prevent others using or misusing the subject of the right.

Unregistered design right

Design right is a quasi-copyright form of protection introduced by the CDPA for designs created on or after 31 August 1998. It does not depend on registration.

What does unregistered design right subsist in?

Design right subsists in the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article (s. 213 CDPA):
  • Purely functional designs are included.
  • The shape of part of an article can be protected.

Design right cannot be claimed in:
  • Methods or principles of construction.
  • Parts of articles that are designed to fit with or match another article.
  • Surface decoration whether 2D or 3D.

Criteria for unregistered design right protection

The design must be original (not copied) and not commonplace in the design field in question.

In order for design right to come into existence, the design must have been recorded in a design document or an article made to the design.

The designer (employer or commissioner) must be a "qualifying person". A qualifying person is a citizen or habitual resident of the UK, a Member State of the EEA, or a state that grants reciprocal rights to UK citizens. Alternatively first marketing must be by a qualifying person or take place in the UK, EEA or country of reciprocity (s. 217 – 220 CDPA).

Ownership of unregistered design right

The owner of design right is the designer, or employer if the design is made in the course of employment, or commissioner if the design is commissioned (s. 215 CDPA).

Design right can be assigned and licensed (s. 222 CDPA). Assignments and exclusive licences must be in writing.

Infringement of unregistered design right

Design right is infringed by (s. 226 - 228 CDPA):
  • Copying the design directly or indirectly to make articles exactly or substantially to that design.
  • Knowingly dealing in infringing copies for commercial purposes.
Remedies are essentially the same as for copyright infringement except that there is a remedy for groundless threats of design right infringement proceedings (s. 253 CDPA).

Duration of unregistered design right

Design right lasts for 15 years from the end of the calendar year in which it was created or if articles made to the design are marketed within five years from the end of that calendar year, 10 years from the end of the calendar year of first marketing (s. 216 CDPA).