Unregistered Design Rights : the UK Experience

(IPRinfo 4/2002)
Jodie Flynn
Managing Associate, Linklaters

The Community Design Regulation (No. 6/2002) was implemented on 6 March 2002. It covers both registered designs and unregistered design rights (UDRs). Community UDRs arise automatically upon the designs being made available to the public within the Community, subsist for three years, grant a limited right to exclude others from copying and have a unitary character, akin to the community trade mark: uniform protection with uniform effect throughout the EU.

The UK is one of the few countries which already protected a form of UDRs. UDRs were introduced in the UK in 1989 under the Copyright Designs and Patents Act, 1988 (CDPA) as part of a broad overhaul of industrial design protection. Prior to 1989, designs were protected in the UK by registered designs and by copyright (there is no tort of unfair competition and no system of utility models in the UK). Unfortunately, this system was not satisfactory because:

* Some industrial designs which were purely functional and could not be registered obtained full copyright protection.
* If a designer did not register his design, he had to rely on copyright protection. This required showing either that (i) the design was a work of artistic craftsmanship or (ii) a design document existed and the infringer’s 3 dimensional article made to the design could be discerned from the design document. In Merlet v. Mothercare the Court reluctantly held that the designer of a baby cape had no redress against a company that had blatantly copied the baby cape because the cape was not a work of artistic craftsmanship and there was no design document.
* Manufacturers could seek to monopolise trade in spare parts by relying on full copyright protection in their design documents. In the British Leyland case the House of Lords (the highest UK Court) tried to find a way around this by finding grounds for non-infringement in the case of repairs. The decision was based on policy rather than legal ground and has been much criticised.

UDR protection was therefore introduced (and part of copyright protection carved out). As we shall see below, UK UDRs differ in several important respects to the new Community UDR.

Designs in which UK Unregistered Design Rights may subsist

The UK UDR covers “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”.

Thus the design subsists not in the actual article itself but in the shape (i.e. the three-dimensional aspects) or configuration (i.e. the relative arrangements of the parts or elements) of the article (Mackie v. Behringer). The design can be the shape or configuration of the whole or part of the article. For example, in relation to a teapot, the right may reside in the design of the whole pot or just in the spout. It is not necessary for the parts to be sold separately.

UDR does not subsist in the “surface decoration” of an article – this is the preserve of copyright. “Surface decoration” includes two-dimensional decoration lying on the surface of an article (e.g. a painted finish) and three-dimensional decorative features of the surface itself (e.g. shallow grooves running around the edges of a kitchen cabinet) (Mark Wilkinson Furniture).

The design does not need to exhibit any aesthetic appeal: it may be purely functional provided that it is not a method or principle of construction and is not excluded by the “must fit” or “must match” exclusions. Nor does the design have to be visible to the naked eye. It may be concealed within larger machinery (Farmer’s Build – slurry separating machine) or just too small to see (Ocular Sciences – contact lenses).

Because an alleged infringer does not know in which features the claimant’s UDRs may subsist, the Courts require the claimant to identify (in the pleadings) as precisely as possible what he claims to be the features constituting his original design. The claimant has the advantage of having the alleged infringing product in front of him when identifying the features of his design – he can trim his design right claim to most closely match what he believes the defendant to have taken. This is in contrast to registered designs where the scope is already set out in the specification.

The Community Design Regulation defines a design (both registered and unregistered) as “the appearance of whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or material of the product itself or its ornamentation” (Article 3(a)). “Product” is given a broad statutory definition encompassing assembly parts, packaging, get-up, graphic symbols and typographic typefaces.

Thus the Community design clearly covers two-dimensional aspects including surface decoration which is excluded from UK UDR protection. The Community design must not be dictated solely by function, whereas UK UDRs can be. The Community design must be visible to the eye: component parts of complex products must remain visible in normal use. Again this differs from the UK UDR.

The Community design may subsist in the whole or part of an article.

The Exclusions: Method or Principle of Construction

In the UK, methods or principles of construction are excluded on the basis that UDR is concerned only with the shape and configuration of the design. A design, which necessitates the use of a certain material in making an article, constitutes a “method of construction”. Thus, in Farmer’s Build UDRs subsisted in the shape of a roller component in a slurry-separating machine but not in the laminated rubber from which the roller was made.

Furthermore, if the method of manufacture of an article has an impact on its shape or configuration, design rights may be excluded. A design for the stitching on a leather mobile phone case with the seams turned in has been held to be a method of construction (Parker v. Tidball), but design rights subsisted in the shape of an umbrella case (A. Fulton & Co.).
The Community Design Regulation does not include a similar provision although features of appearance dictated solely by technical function are excluded from protection.

The ‘Must Fit’ Exclusion

UDR does not subsist in 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”. This exclusion (together with the “must match” exclusion) is intended to limit the ability of UDR protection to create monopolies in spare parts.
In Ocular Sciences, features of dimensions of the claimant’s contact lenses were excluded from UDR protection as they enabled the lenses to fit against the eyeball and such juxtaposition enabled the lenses to perform their function.

It is irrelevant whether the relevant feature of shape or configuration performed some other purpose, such as aesthetics. Furthermore, if a number of designs are possible, each of which enables the two articles to be fitted together in a way which allows one or both to perform its function, each such design falls within the statutory exclusion. Thus the bottom flap of a mobile phone case was excluded from protection because it functions to hold the phone in the case, even though different designs of the flap could have performed the same function (Parker v. Tidball). However, umbrella cases designed to hold an umbrella do not automatically fall foul of the exception (A Fulton & Co.).

It is not clear whether the exclusion applies to connecting parts of a composite article or only to the interface between two separate articles.

The Community Design Regulation also contains a must-fit exception but it is worded differently (Article 8(2)). It specifically provides that the exclusion shall not prevent design rights subsisting in “a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system” (Article 8(3)).

The “Must Match” Exclusion

UDRs do not subsist in the shape or configuration of a component which is dependent upon the appearance of the whole article. For the exclusion to operate, the designer must have intended at the time of the design, for the article to form an integral part of another article. Thus the shape of a car door, body panel and windscreen will be excluded, but the shape of a side mirror (which is not dependent on the shape of the rest of the car) will not be excluded.

In Mark Wilkinson Furniture v. Woodcraft Designs the defendants said that this exclusion applied to the claimant’s kitchen unit, the appearance of which was dependent upon the appearance of the whole fitted kitchen comprised of other units within the same range. The judge disagreed, finding that it was really a series of matching articles, none of which formed an integral part of another.

The Community Design Regulation does not yet contain a must-match exclusion.

Originality

o be protected by UDR, a design need not be new (novel). However, it must be “original” in the sense that:

* it must be independently created without copying (although even if substantial parts are copied, provided the end result differs substantially and is the independent work of the designer, a design right can subsist); and
* it must not be “commonplace” in the design field in question at the time of its creation.

A design does not become commonplace merely because an exhaustive search of trade magazines discloses one other basically identical design in the common art (Frayling Furniture v. Premier Upholstery). Any design which is “trite, trivial, common-or-garden-hackneyed or of the type which would excite no peculiar attention in those in the relevant art is likely to be commonplace” (Ocular Sciences). In deciding what is commonplace, the claimant’s design can be compared to historical designs, which have fallen into disuse, provided that examples of the old designs could still be seen at the date of the claimant’s design (Scholes Window v Magnet).

The Community Design Regulation provides that community designs, unlike UK UDRs, must be new (Article 4(1)) and must differ “in material detail” to designs previously made available to the public (Article 5). A design will be deemed to have been made available to the public if it has been published, used in trade or otherwise disclosed anywhere in the world, unless those events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community (Article 7).

Note also the special 12-month grace period.

In addition, Community designs must have “individual character” (Article 4), giving a different “overall impression” than prior art designs to the informed user (Article 6(1)). In assessing individual character, one looks just at the features of the article in which the design right is claimed. Consideration shall be given to the degree of freedom of the designer in developing the design (Article 6(2)), the nature of the product and the sector to which it belongs (Recital 14).

Creation and Duration of UDRs

UDRs arise automatically upon the design being recorded in some form of media or an article being made to the design (even if the design is not publicly available). UDRs expire on the earlier of (a) 15 years from the end of the calendar year in which the UDR first arose; or (b) 10 years from the end of the calendar year in which articles made to the design are first made available for hire or sale. In the last 5 years, licences of right are available.

The Community Design Regulation provides that community UDRs arise automatically upon being made available to the public and subsist for only 3 years from the day the design was publicly available. The aim is to give some protection to designs with a short lifespan, such as fashion designs.

Infringement

In the UK, it is an infringement to (i) copy and make articles exactly or substantially to the protected design or (ii) copy the design document that enables articles to be made to the design. If the defendant independently creates a design, which coincidently is identical to the claimant’s earlier design, there will be no infringement.

Because UDRs subsist in the design and not the article itself, a design on a silver fork handle would be infringed by a copier who made an identically designed knife handle. The test for infringement is objective and judged through the eyes of the person to whom the design is directed. The test requires the court to compare the alleged infringing article with the document/article embodying the design and see if copying has taken place and, if so, whether it has been exactly or substantially copied.

Where design rights subsist in part or parts of an article, it is not clear whether the courts should compare the whole of the allegedly infringing article to the claimant’s design article or whether a separate comparison should be made between each set of individual parts. The courts are inconsistent in their approach (see, for example, C & H Engineering and the Baby Dan case).

It is not an infringement of UK UDRs to use the design for private non-commercial purposes.

The Community Design Regulation provides that infringement only occurs by copying (Article 19) and involves using a product, which incorporates or has applied to it the design or a design which does not create a “different overall impression to the informed user” (Article 10(1) and Article 19).

In assessing whether a design creates a “different overall impression” to the informed user, the degree of freedom of the designer in developing his design shall be taken into consideration (Article 10(2)).

It is not an infringement to use a Community design for private non-commercial purposes, for experimental work or for citing or teaching (under certain specified conditions).

Parallel Rights

Under UK law, a plaintiff can sue for infringement of both registered design and UDRs. These are independent rights with different characteristics.

However, the CDPA seeks to prevent overlap between copyright and UDR claims. It does so by providing that “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 typeface to make an article to the design or to copy an article made to the design.”

Where this does not apply and the claimant could rely on both copyright and UDR, the CDPA prevents this by providing that an act that infringes copyright will not also infringe UDR.

The Community Design Regulation provides that a design protected by community design rights may also be protected by copyright – the conditions under which such copyright protection shall be conferred shall be determined by each Member State (Article 96(2)).

The Future

As recognised by the European Commission during discussion on the new Community Design Regulation, “[a]s long as design protection under the umbrella of copyright law has not been harmonized, completely satisfactory internal market conditions will not have been fully established, notwithstanding the creation of a Community Design” (Green paper, paragraph 10.2.1). However, harmonisation of copyright laws governing designs remains a long way off.

Links:
European Commission, Internal Market, Industrial Property: links to press releases, directives and regulations.
http://europa.eu.int/comm/internal_market/en/indprop/design/index.htm