The protection offered by UK unregistered designs is due to change

In light of upcoming changes to the law, it is worth rethinking how much you rely on unregistered design rights to protect the investment you make in designing commercial products, with registered design protection becoming even more important.

Unregistered design rights protect the appearance of a product. Under UK law these rights exist automatically if the design meets certain qualification criteria (for example, it must be original). This compares to registered design rights, where – as the name suggests – the design to be protected must be registered to obtain protection.

The protection offered by unregistered design rights will be changing on 1 October 2014, in a change brought in by the Intellectual Property Act, as discussed in our article earlier this year.

Under current law, unregistered design right can exist in “… any aspect of the shape or configuration of an article or part of an article”. This means that unregistered design rights can exist in isolated parts of a product, as well as in the overall design of a product. However, from 1 October the wording “any aspect of” will be deleted and therefore unregistered design right will be defined as existing in “… the shape or configuration of an article or part of an article”.

The impact of the relevance of the current reference to the design rights being “any aspect of” the design can be seen in a decision from the Patents County Court (now the Intellectual Property Enterprise Court) from last year, involving Sealed Air Limited and Sharpak Aylesham Limited.

In this regard, the parties involved in the litigation were both selling punnets for holding soft fruit. Sealed Air believed that Sharpak were infringing their rights in the design of the punnet and took them to court.

The court found that the punnet sold by Sharpak was different from the punnet sold by sealed air when considered as a whole. However, Sharpak’s punnet was viewed as infringing certain aspects of the design. These included:

  • the shape and dimensions of the corners of the punnet;
  • the combination of an inner shelf and a nesting feature that allowed the punnets to be stacked; and
  • the combination of the corners and ribs on the sides of the punnet.

Because unregistered design right can be infringed by any aspect of part of an article, Sealed Air were able to pick out certain features of their design to be considered in isolation.

This case was of course tried under the current law. However, under the new law, where the “any aspect” wording is dropped, it is less likely that Sealed Air would be able to successfully claim infringement of all of the different features. Under the new law, distinct parts of the design can still be considered separately as having design right protection. However, more isolated sections of the design will not be.

For example, the corners in the Sealed Air punnet were clearly a distinct part of the design and it is therefore likely that even after the law change the shape and dimensions of the corners would still be considered as being covered by unregistered design right. However, the other aspects of the punnet that were seen as infringed in the trial are more isolated from the punnet as a whole, and are probably not genuinely individual “parts” of the article, and so may well not be covered by unregistered design rights under the new law.

The reason for the change in law is to try to make it clearer what is and what is not covered by unregistered design rights. Under the old law, it has sometimes been very difficult to work out which isolated aspects the design rights holder may believe have protection. Under the new law, this should be clearer, because a design feature must be seen as “the article” or “a part of” the article to be protected; there is not the option for the rights holder to claim that other features or combinations of features in the design of the article present a protected “aspect” of the article.

A consequence of the law change is that it may make it more worthwhile to seek registered design protection, as the unregistered design protection will not be as comprehensive as it once was. In particular, if there are certain features of an article (or certain combinations of features) that cannot be seen as forming a clear and distinct “part” of the article and these are viewed as important, then a registered design directed to those would be advisable.

Even under the current law, it is favourable to apply for registered designs where possible, for a number of reasons:

  • unlike unregistered design right, registered designs do not need copying for there to be infringement. Registered designs can therefore be enforced against independently created designs, while unregistered resigns cannot.
  • To prove a registered design is infringed by a product, the product needs to create the “same overall impression” as the design as registered. Unregistered design right requires the product to be made to “the same or substantially the same” design. Therefore, for there to be infringement, a product has to be closer to an unregistered design than a registered design.
  • To enforce an unregistered design right, it is necessary to prove that the right exists and that you are the owner of it. The registration of a design simplifies this process, because you have a certificate proving the existence of the right and that you are the registered owner the right. A copy of this certificate can therefore be sent to the infringer.

Registered design protection can be obtained in the UK via a national UK registered design, or via an EU Community registered design.

In practice, in situations where products include a number of different elements, and it is not necessarily clear which elements may be the most important, the most cost effective strategy is usually to rely on a combination of registered and unregistered rights. Although registered designs are beneficial for all the above reasons, they do require the identification of whether the protection should be for the product as a whole, or for certain features only, such as certain parts of the shape or surface decoration.  Whilst a number of registrations can be made, to cover various features and combinations of features, there clearly is a cost implication in trying to register every possible angle. Many applicants will decide to rely solely on a registration for the product design as a whole.

The Sealed Air case was one of a number of recent examples of cases showing the advantages of unregistered design right over a registered design for the product as a whole, however. Before claiming infringement of the unregistered design rights, Sealed Air had also argued that Sharpak infringed their registered design. The registered design was in respect of the whole punnet and so did not protect any of the separate aspects. Because the overall shape and look of the punnets was different, there was no infringement.

Sealed Air could have improved their position if they had originally filed applications for registered design protection for the different aspects of their design as well as for the product design as a whole. However, in the court case, over ten different aspects of the design were reviewed and therefore as a minimum, Sealed Air would have had to have filed separate applications for all of these. At the time the registered design application was filed they might not have appreciated which aspects and combinations of features were going to be important.

Under the new law, the risk of it being harder to claim the existence of, and therefore enforce, an unregistered design right relating to an isolated aspect or combination of features may well make the cost of filing more registered designs worthwhile. Certainly it is something that should be properly considered in order to ensure that IP rights are obtained that adequately protect the investment made in designing the product. It is worth noting that both the UK and EU registered designs systems allow the filing of multiple design applications, where more than one design can be included in a single application, making the process significantly more cost effective than if separate design filings had to be made for each design of interest. Thus the registered design application can cover the design of the product as a whole, but can also include designs for one or more parts of the product in their own right, and/or one or more designs in respect of combinations of design features or isolated aspects. There will be a commercial decision to be made as to whether it is worth filing as many as twenty or thirty designs, but certainly where a particular feature or combination of features in a product are important, serious thought should be given as to the filing of registered designs not only for the product as a whole but also for these important features. The additional cost of having one or two extra designs to cover certain features, in addition to the first design to cover the product as a whole, is relatively low.

If you have a new design of product please contact your usual Barker Brettell patent attorney to talk about protecting the design. We are happy to advise on the possible options for covering features of the product, as well as the product as a whole, and can always provide no obligation costs for this.