Unregistered Design Right is an IP right that arises automatically upon creation of a new design. UK Design Right arises under UK law by virtue of the Copyright, Designs and Patents Act 1977, and (Unregistered European) Community Design Right arises under the European Designs Directive.
UK Design Right subsists in any original design, that is to say, a design that was created as a result of the independent skill and labour of the Designer, or in other words, any design that is original in the sense that it has not be copied from an earlier source. The design must be recorded in a tangible form, such as in a design drawing, a prototype or an actual product.
The first owner of Design Right is the Designer, unless the rights have been transferred by way of a contract of employment, an agreement (such as a contract entered into between a company and an external designer), or unless the design was created in pursuance of a commission. In the latter cases, the rights in the design usually belong to the employer, counterparty to the agreement, or the commissioner.
Design Right provides an exclusive right to reproduce the design in question, so it enables the right holder to sue if another person or company makes copies of the design without the owner’s consent.
In order to enforce design right, several key aspects need to be proven and supported by evidence:
- That the design is original. This usually involves providing evidence of the process that led up to the creation of the design, such as iterative design drawings, the “design brief” and so on. It usually involves proving in some way that the design is not copied from an earlier source, so evidence of the design corpus (the body of designs that came before the design in question) may need to be adduced, and evidence provided as to how the design in question differs from what went before. However, the key test is whether or not the design is, in fact, original, so ultimately even if the design is the same as, or very similar to, an earlier design, this does not necessarily mean that the design is not original – any similarities could be purely coincidental. That said, if the design is very similar to an earlier design, the onus of proving originality will usually be shifted onto the right holder.
- That the Claimant is the owner of the Design Right, which usually involves providing evidence of the chain of title from the actual Designer to the Claimant. This can be straightforward, but where there are no written agreements in place, it can be very difficult to prove how the Design Right belongs to the Claimant. For this reason, the importance of recording the chain of title in signed, written documents cannot be over-stated.
- The the design has been copied. This involves proving that the design in question came before the alleged infringement; that the alleged infringer had access to the design (to be able to copy it); and that the alleged infringer actually copied the design. With regard to the date of creation, this can usually be proven easily by reference to dated design drawings, first marketing etc.. However, proving that the alleged infringer actually had access to the design and that the design has been copied can be difficult. If the alleged infringing design is the same as, or very similar to the design in which Design Right is asserted, then the inference can be one of copying, in which case, the onus can shift to the Defendant to prove that the alleged infringing design was created independently. However, if the alleged infringing design is quite different to the design in which Design Right is asserted, then it may nevertheless be the case that the design as a whole, or certain aspects of it have been copied, but it will be up to the Claimant to prove this.
- Absence of a license. Under UK law, a design can be reproduced toward the end of its term, that is to say, during the “licenses of right period”. The alleged infringer simply needs to pay a royalty to the Design Right owner, and during the licenses of right period, the Design Right owner cannot obtain an injunction to prevent reproduction. There are also cases where there has been a licence given, an implied license (e.g. by way of a promise, verbal agreement, acquiescence or estoppel), or other circumstances (such as a break in the chain of title, or a transfer of ownership of a company), which might mean that a right to reproduce the design has been given to the alleged infringer. In these cases, the facts will need to be assessed in detail.
As can be seen from the foregoing, although Design Right arises automatically, actually enforcing it can be difficult due to the various evidential hurdles that exist. However, small Design Right cases can now be heard in the “small claims track” of the Intellectual Property Enterprise Court (IPEC), which now makes Design Right more accessible to individual Designers and SME’s.