Unregistered design right protection
Introduction
Owning unregistered design rights (both at a UK and a Community level) enables the creators of original designs for the visual appearance of products to prevent those designs from being unlawfully copied by unlicensed third party imitators.
The great thing about unregistered design rights is that you don't have to pay anything, or to fill in any forms and lodge them somewhere, before they can exist. Subject to certain qualifying criteria, they arise automatically on the creation of the designs in question.
However, given the ease of creation of unregistered design rights, it is surprising how few businesses are aware of their existence and effect.
A recent Patents County Court judgement in the case of Bailey v. Haynes has usefully reminded everyone of the significance of these important, but often overlooked, legal rights.
The case concerned the production of rival bait bags, used by anglers involved in coarse fishing. Each party had developed a bait bag, but the Bailey's claimed that their bait bag had been designed first and that the rival Haynes product was a copy that infringed their UK and Community unregistered design rights. Unsurprisingly, this claim was denied by Haynes.
Is the design for your product a 'qualifying design'?
In summary, UK unregistered design right protects the design of "any aspect of the shape or configuration (whether internal or external) of the whole or part of an article", where such design is "original" (i.e. not copied and not commonplace in the design field in question at the time of its creation).
By contrast, Community unregistered design right is broader in scope, as it protects the appearance of the whole or part of a product, resulting from the features of that product or its ornamentation. In order to qualify, the design must be "new" and have "individual character". To decide this, a comparison of the design in question with those that were publicly known prior to its inception is required.
In the Bailey case, the way in which the weave in the woven bait bag was woven created a distinct visual appearance, particularly when viewed under a magnifying glass. The claimant claimed this visual appearance qualified for unregistered design right. The Court held that the design in question prima facie qualified for both UK and Community design right. The Court then went on to examine whether there was an exclusion which would prevent the rights subsisting.
Does the design of your product fall within a statutory exclusion?
UK unregistered design right does not subsist in "a method or principle of construction" (i.e. in a process or operation by which a shape is produced, as opposed to the shape itself).
In the Bailey case, the Court held that the claimant's design was, in effect, a claim to the knitting pattern used to create the bait bag. The appearance of the product was created by use of this pattern, and thus the claimant was seeking to obtain unregistered design right in a method or principle of construction, which if granted would prevent third parties from using the same pattern. Thus, the exclusion applied and prevented UK unregistered design right subsisting in the claimant's product.
Community unregistered design right does not subsist in features of appearance of a product which are solely dictated by its technical function.
In the Bailey case, the claimant's product was designed to hold bait. The weave forming the subject of the design was tailored to ensure that the product fulfilled its purpose efficiently. This, however, was held not to be the same as saying that the appearance of the design is solely dictated by its technical function. In the case in issue, it was apparent that the same result could be achieved using other designs and, as a result, the exclusion was held not to apply. Community unregistered design was found to subsist.
Has your unregistered design right been infringed?
In order to prove that a third party has infringed your unregistered design right you must be able to prove that they copied your design. Where a third party comes up with the same design, but does so independently without copying your pre-existing design, there will be no infringement.
In the Bailey Case Haynes were able to show that their bait bag, although almost identical to the Bailey bait bag, had been developed independently. Haynes were able to supply evidence such as prototypes which demonstrated the thought process which had led to the final, allegedly infringing product, and this was enough to prove that the Bailey design had not been copied. In the absence of copying, the court held that Bailey's unregistered Community design right had not been infringed.
Conclusion
Unregistered design rights are useful, but often over-looked, IP rights that can (particularly when combined with a portfolio of registered IP rights) assist a designer of products from preventing third parties from copying the visual appearance of the products he/she has designed and sells in trade.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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