Unregistered designs - the unknown but super useful IP right
Updated: Sep 29, 2020
Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were published last week. My key takeaway is that the designs community does not appreciate the value of designs - particularly unregistered designs. This post aims to change that.
Unregistered vs unregistered designs
In the report, unregistered designs were rated at the bottom of the list of useful rights for the designs industry. However, in practice it is usually the most useful and versatile right. The report confirmed that unregistered design rights are more commonly litigated and have a much higher success rate than registered designs. Strangely enough, the authors of the report expected registered designs to be much more useful than unregistered rights. If government expectations are out of line with the commercial reality, it is not surprising that the designs industry does not appreciate unregistered designs. I conducted a much less sophisticated review of IPEC cases for my old firm, Rouse, back in 2012, at that time unregistered design rights were successful in every reported case. The pattern does not appear to have drastically changed in the intervening years
Unregistered designs in a nutshell
Across the EU, unregistered community designs or UCD protect the visual appearance of the whole or part of a product. This can include the product’s shape, texture, surface decoration and logos. UCDs arise automatically provided that the design is new, has “individual character” and is first published in the EU. To have individual character, a design must (i) not be commonplace and (ii) have a different overall impression to earlier designs. UCDs apply across the whole of the EU and last for three years from the date of publication. They are useful for consumer goods industries but the short shelf life can pose problems for longer term goods.
Fortunately, businesses have up to one year from publication in which to register the design as a registered community design or RCD. There are also separate national registries for designs. RCDs can last for up to 25 years provided they are renewed every five years. In practice, the sooner you register a design, the better. Think carefully about exactly what you register as a design - this could be a drawing, photograph or CAD or be in colour, grey scale or black and white. Any details will limit the scope of protection but make it harder to invalidate.
UK unregistered design right
Finally, the UK also has its own unregistered design right which focuses more on industrial designs and only protects the shape and configuration of a product. However, it has a more generous term of protection of ten years from first marketing.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org
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