Designs for Life: Different types of protection

Designs are key assets for many businesses and there are several aspects that are vital to success. In this guide from our Designs for Life series, we take a look at different types of protection.

What are the rights?

In the United Kingdom, a creator of a design has access to a number of forms of design protection. Protection can include registered and unregistered forms of design right and associated rights such as copyright. The table below sets out the different forms of designs protection available in the UK. However, for more detail, the qualification criteria for the respective rights and a consideration of the overlap between design rights and copyright, please see our Registered Rights table.

In more detail

There are a number of ways in which your design can be protected currently available in the UK:

Unregistered rights

The below rights will subsist automatically providing the qualification criteria is met.

Registered rights

In addition to the above automatic rights, designers may decide to seek enhanced protection by registering the design. This decision will hinge on many variables, some of which are discussed in our "Registration" guide.

In addition, designers should consider registration in the EU and elsewhere, many of such rights can be sought following filing of the UK registrations.

Looking first at the unregistered designs:

Duration

1. UK unregistered design right (UKUDR) lasts for either 10 years from the end of the year in which it is first made available to the public, or 15 years from the date of design, whichever is shorter. During the last five years of the term, the right enters into a "licence of right" period - where the proprietor must, if requested by a third party, grant a licence at a rate to be agreed or, failing an agreement, determined by the UK Intellectual Property Office.
2. Supplementary unregistered design right (SUDR) and continuing unregistered design right (CUCD) replace the "gap" left following Brexit. The CUCD basically clones any Community Unregistered Design that existed as at 31 December 2020 so they still apply in the UK. SUDRs replace that right going forwards for designs post 1 January 2021. Both designs last for three years from the date first made available, depending on whether pre or post-Brexit: i.e. publication prior to 1 January 2021 will be CUCDs, whereas publications after this date will be SUDRs. They are the same in their detail and effect.
3. Both UKDR and RRDs last for up to 25 years, subject to the payment of renewal fees every five years.
4. Copyright affords much longer protection, lasting for 70 years from the death of the designer - so is an attractive proposition for designers, but its scope is much more limited - i.e. not all products will qualify.

Point to note: It is clear that design rights can be an incredibly valuable asset when they are properly protected, enforced and exploited. However, unlike trademarks, which can be renewed in perpetuity, the protection afforded by design rights has a limited lifespan.

While this does not present a problem for designs which are only ever intended to have a short lifespan, certain designs (such as classic cars) may become more valuable the older they become. Some even become design "icons". Yet no matter how iconic the design, the term of statutory design protection is absolute. So how can the investment which has been made in the design be protected and the next design "icon" stopped from being copied once its design protection expires?

The most common method of seeking to extend design protection is to make minor changes to the design, sufficient to allow new design protection to be sought. This method is most applicable to designs with a design language which is capable of evolving over time. Incorporating new features which are capable of protection into an existing design may provide extended protection against copycats if the new features are sufficient to afford the new design protection. Prior to applying for design protection, it is therefore sensible to understand from the designer how a design may develop over the course of its lifetime.

There is, however, a significant tension between protecting new design features and ensuring that they are not invalid as a result of the earlier designs. For this reason, the approach is of particularly limited use when seeking to protect designs which are not capable of iterative development, but which are fixed (as is the case with most iconic designs). Nevertheless, even where new designs are likely to be invalid as a result of the earlier designs, registered design rights (which are not examined prior to grant) may deter low level infringement and provide a minimal level of protection.

Protection

UKUDRs protect the shape or configuration (whether internal or external) of the whole or part of an article - not the colour, material or surface decoration - whereas registered designs, SUDRs and CUCDs protect the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or its ornamentation.

Copyright is primarily concerned with protecting creative and artistic expressions of an original idea.

Validity/subsistence

The protection afforded by the registered designs (UKRD and RRD) and by CUCD and SUDRs stems from European law, and, therefore, has similar validity requirements. To be afforded protection under these rights, the design concerned must be "new" and possess "individual character". There is a good deal of law addressing precisely what is meant by "new" and "individual character", but it can be summarised as follows:

1. Novelty. A design is "new" if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date. Designs are considered "identical" where their features differ from each other only in immaterial details. In practice, this tends to require that either the design itself or one almost entirely the same was disclosed before the design in question was filed (or the priority date if priority is claimed, or the date the design was first made available to the public for an unregistered design).
2. Individual character. A design possesses "individual character" if it produces a different "overall impression" on an informed user relative to any prior design.
3. Overall impression. In assessing the overall impression, one must bear in mind the nature of the product to which the design is applied or incorporated, the industrial sector to which it belongs, and the degree of design freedom available to a designer of such designs.
4. Prior design. Designs made available to the relevant UK public prior to the business's design will class as "prior designs" for the purpose of assessing novelty and individual character.

Whereas UKUDR is different; for a UKUDR to be valid, is must be "original" or "commonplace", which can be summarised as follows:

1. Original. Not a slavish copy of a prior design.
2. Commonplace. A design will be considered commonplace if it is "trite, common-or-garden or hackneyed", i.e. they are common within the design field.

For copyright to subsist, it requires the expression to be "original" - this does not mean that the expression must be original/inventive, just not slavishly copied from another work.

Qualification

For unregistered design rights, the key question is whether your design qualifies for it. The right only exists if the qualification requirements are satisfied. It is important, therefore, that records are kept to demonstrate how the qualification requirements are satisfied, otherwise it can be difficult to prove later. The rules are quite complex, but for designs created since October 2014, the rules are essentially as follows:

1. Designers working for themselves and who are habitually resident in the UK, or another "qualifying country" (which includes New Zealand, Hong Kong and various Caribbean islands but does not include, for example, USA or Europe) will qualify.
2. If neither of the two routes above work, the final option is if the product made to the design is "first marketed" in the UK. This is a way in for EU, US and Asian (except Hong Kong) companies to obtain protection, but it does require the product to be launched in the UK before their home markets.

Similarly, qualification is important in relation to copyright. The rules are essentially as follows:

1. The author is:
   1. a citizen of the UK/EEA;
   2. domiciled/resident in the UK/EEA;
   3. a body incorporated in the UK/EEA;
   4. domiciled, resident or incorporated in a country to which the legislation applies; or
   5. from a country to which the legislation has been applied;
2. the country in which the work was first published is a country to which the legislation applies; or
3. the country in which a broadcast was made is a country to which the legislation applies.

Infringement

Registered rights provide a monopoly protection, meaning that unlike unregistered rights there is no need to prove the infringer copied your design to succeed.

UKUDRs are infringed when the design is copied so as to produce articles exactly or "substantially" similar to that design, which typically requires a product-by-product comparison. The issue of copying is often also determined with account to the similarity between two designs. For sufficiently similar designs, copying may even be inferred without direct evidence of any copying actually having taken place, and it is then for the accused to prove it did not do so.

CUCD and SUDRs are infringed by any design that does not produce a different overall impression provided the accused design results from copying. Registered designs similarly are infringed by any design that does not produce a different overall impression, but there is no requirement to show that the design has been copied. Intentional copying of a registered design, while knowing or having reason to believe the design is a registered design, is now a criminal offence in the UK. The test is, therefore, whether the potentially infringing product creates a different overall impression. As above, overall impression is judged from the perspective of the informed user (i.e. someone familiar with the products in question, typically a consumer and/ or wholesaler/retailer dealing in the relevant products) and is judged by reviewing the whole product.

For copyright there are a number of grounds for primary infringement, all of which require the work to have been copied (e.g. copying, issuing copies to the public, etc.)

Copying should therefore be avoided at all costs. As a result, it is especially important that records are kept to show that no copying took place, and that (a) the business believes the registered design was invalid and/or (b) the business believes that the design it created did not infringe the earlier design. One way to prove this may be to obtain independent legal advice to this effect (although the courts are yet to determine what would be sufficient in this regard to defend against an accusation of criminal liability).

Trademarks

An innovative design can make a significant contribution to a successful product. However, it is not the only factor which is important. Other intellectual property rights such as trademarks, copyright and patents will frequently contribute to the success of a product. It goes without saying that building a successful brand is important in driving sales, and there are numerous facets to establishing an effective brand identity.

Here, we will focus specifically on how trademarks can be used in relation to the design of the product itself, rather than the branding. However, it is important to remember that an effective strategy will often require a holistic view of both the brand and the product.

1. First, it is important to note that some shapes cannot be registered as a trademark, in particular:
   1. shapes with an essentially technical function;
   2. shapes with a substantial aesthetic value;
   3. shapes resulting from the nature of the goods; and
   4. shapes which do not identify the origin of the goods or are not distinctive.
2. Outside of these exceptions, the shape of a product can be registered as a trademark if it is capable of distinguishing the designer's goods from those of another undertaking. This is the holy grail of protection for designers because, in theory, it provides everlasting design protection. As a result, the bar for registering a trademark for the shape of goods is set extremely high. While some shape trademarks have been successfully registered (for example, the shape of the Lego manikin), other attempts to register have been less successful (for example, the shape of Nestlé's KitKat fingers and the shape of a Lego brick) or have subsequently been found invalid in the courts (for example, the shape of the 'Fairway' London taxi).
3. The first requirement is to establish that the shape in question is distinctive. The Court of Justice of the European Union has held that because consumers are not used to identifying the origin of the products on the basis of their shape, this requirement will often only be satisfied where the trademark departs significantly from the "norms or customs of the sector".
4. However, where there is evidence that consumers do rely upon the appearance of the shape of the product to identify the origin of the product (rather than any other word or logo), such as the shape of certain vehicle radiator grilles, it is likely that the shape will possess the distinctive character necessary for registration. Similarly, where a designer applies the same styling feature to the shapes of a range of goods of the same kind, this may assist in educating the public that the feature has some trademark significance and be sufficiently distinctive.

Gowling WLG's Brands, Advertising and Designs team is a leading designs law team and are actively involved in shaping designs law. We have acted on a number of the significant, reported designs law cases in the UK over recent years, and have been the proud holders of the MIP Designs Firm of the Year Award for four years (2019 - 2022). We act for a number of design-led clients.

Footnotes:

[1] CDPA, s216(1)(a).
[2] CDPA, s213(2).
[3] CDPA, s226(2).
[4] Community Design Regulation, Article 11(1); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 1 part 1, paragraph 10.
[5] Regulation 6/2002/EC on Community Designs ("Community Design Regulation"), Article 3(a); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 1 part 1, paragraph 4.
[6] Community Design Regulation, Article 10(1); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 1 part 1, paragraph 9.
[7] Community Design Regulation, Article 11(1); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 2, part 1, paragraph 11.
[8] Regulation 6/2002/EC on Community Designs ("Community Design Regulation"), Article 3(a); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 2, part 1, paragraph 5.
[9] UK. Copyright, Designs and Patents Act 1988 ("CDPA") s 12(2).
[10] CDPA, s16(3)(a).
[11] Registered Designs Act 1949 ("RDA") RDA, s8(2).
[12] RDA, s 1(2).
[13] RDA, s 7(1).
[14] Community Design Regulation, Article 12; The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 3, paragraph 2; RDA, s 8(2).
[15] Community Design Regulation, Article 3(a); The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 3, paragraph 2.
[16] The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, Schedule 3, paragraph 2; RDA, s 7(1).