The appearance or configuration of a product may be protectable by unregistered design right and/or design registration.
UNREGISTERED DESIGN RIGHT
Both the UK and European Community provide for certain rights in a design by virtue of its creation, known as “unregistered design right”. The right subsists in the “shape and configuration” of an article or a part of an article (internal or external) and arises automatically for ‘original’ designs in the sense that the design is “not commonplace” in the design field in question. However, it does not extend to a method or principle of construction, ‘must fit or must match’ features or surface decoration. The design must be recorded in a design document or an article made to the design. In the UK, design right lasts for 15 years from the recording of the design in a design document but if articles are made to the design and put on the market within the first five years, design right lasts for 10 years from this date, with the final 5 years being subject to licences of right. In the Community, unregistered design right lasts only for 3 years.
Unregistered design right is infringed by making articles to the design or substantially to the design, i.e. by copying the design. Independent creation of a similar design does not amount to an infringement.
Registered design right provides for a wider scope of protection than unregistered design right but it does not arise automatically – registration at a national or regional office is required, such as at the UKIPO or OHIM. It is also possible to apply for an International Registration covering multiple countries.
The right may subsist in the appearance of a product or part of a product, including “lines, contours, colour, shape texture, materials or ornamentation” and thus would apply to surface decoration. The design must be new and have individual character, as judged by the overall impression of the “informed user”. Functional shapes or interconnections are excluded from registered design right protection. Protection lasts for an initial period of 5 years but may be renewed upon payment of a fee every 5 years up to a maximum period of 25 years from filing the application.
A registered design provides the owner of the right with the exclusive right to “use” the design. ”Use” extends to making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or stocking such a product for those purposes. Copying of the design is not required; independent creation of a similar design by a third party will not enable infringement to be avoided.
We are able to advise with respect to all aspects of design law and can file and prosecute UK , Community and International design registrations on your behalf.
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