Hidden IP: Unregistered design rights

Every day, businesses generate valuable intellectual property ("IP") - often without realising it. In this blog series, Andrew McDonald draws attention to some of the IP being created by businesses, which might be overlooked, undervalued or not utilised.

This blog covers unregistered design rights under the Copyright, Designs and Patents Act 1988, infringement, and their commercial benefits compared to other IP rights. 

Design protection is often seen as a supplement to the shortfalls of other types of IP, for example products which lack the necessarily inventiveness for patent protection or cannot be considered works of artistic craftsmanship under copyright. Due to this perception, design rights are often undervalued - sometimes viewed as the poor relation of IP rights. This could not be further from the truth; they form a vital part of the IP toolbox for those in the field of product design. 

While registered designs provide a broader scope of protection, the unregistered design right (“UDR”) under the Copyright, Designs and Patents Act 1988 is essential for protection in fast-moving sectors where products have relatively short commercial lifespans, where registration costs cannot be justified for every iteration of a product, or where it has simply been omitted. It protects the shape and configuration of the whole or part of the product. Fields where UDRs are frequently utilised include consumer goods, furniture, lighting, packaging, automotive components, electronics housings, fashion accessories, and industrial equipment.

Establishing an unregistered design right

To qualify for protection under the UDR, the design must also be original, meaning it has not been copied from an earlier design and is not ‘commonplace’ in the relevant design field at the time of creation. Unlike a registered design, the UDR does not protect surface decoration of the product; only the shape and configuration. UDRs will also not cover any element of the design which is intended to enable connection to another product or is dictated by the appearance of another article of which the design forms an integral part.

In terms of duration, the UDR lasts for the earlier of: 

• 15 years from the end of the year in which the design was created; or
• 10 years from the end of the year in which the products made to the design were first marketed.

Infringement

Like copyright, to establish primary infringement of an UDR, it must be shown that the design was copied. Copying the article and making others exactly or substantially the same as the protected design for commercial purposes is prohibited. 

Secondary, infringement occurs when a person: 

• imports an infringing product into the UK or has it in their possession for commercial purposes, or
• sells, hires or markets for sale the infringing product in the course of business.

The difference between primary and secondary infringement is relevant where the infringement is deemed to be ‘innocent’, i.e. it was not known by the infringer that the infringing design was copied from the protected design. Innocent ‘primary’ infringers will not be liable for damages, whereas innocent ‘secondary’ infringers will be liable only for damages amounting to a reasonably royalty for the infringing act.

Unlike registered designs, independent creation is a complete defence. It is not a monopoly right. If it can be shown that the allegedly infringing article was created independently of the protected design, there is no infringement. 

Commercial benefits compared to other IP rights

The key advantage of unregistered design rights is that they arise automatically, without the cost, delay or formality of registration. This makes them particularly attractive for businesses who deal with regular iterations of designs, such as in the fashion industry or operate in price-sensitive markets.

Used strategically, unregistered design rights can provide valuable, cost-effective protection and complement registered IP rights within a broader commercial IP strategy.

If you would like advice on unregistered design rights within the IP landscape, do not hesitate to get in touch with our specialists.

As part of this blog series, Andrew wrote about the importance of database IP rights and the various types of IP protection available for databases; the importance and the various benefits of registering trade marks to protect product packaging in the market; and, the benefits of businesses’ confidential information and know-how to qualify as a trade secret and what information can be defined as a trade secret.

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