Design and copyright

A SUMMARY OF SERVICES FHS CAN OFFER:

• Advice on registrability of designs including arrangement of pre-filing searches.


• Filing for applications for registered designs in the UK and European Community.


• Advice on existence of copyright and unregistered design rights in the UK and European Community.


• Advice on steps required to secure and record copyright and unregistered design rights in relation to clients' product drawings and marketing literature.


• Enforcement of our clients' registered and unregistered design rights and copyright against infringers and defending our clients when accused of infringement of other parties' rights.


• Ability to instruct associates worldwide in filing and enforcement of design and copyrights overseas and in defending allegations of infringement of copyright and design rights overseas.


• Advice on licensing and other forms of commercial exploitation.

How does design and copyright protection work?
Legal protection for the shape and appearance of industrially produced articles is a complex field, but essentially is provided for by registered and unregistered design rights and, in a more limited way, by copyright.

Law changes have introduced EU-wide registered and unregistered design rights to complement the similar national rights already available in each individual EU country. Copyright protection remains available under individual national laws.


Registered Designs
UK national protection can be granted by registering the design at the UK Design Registry for features that are novel and have 'individual character'. Such designs are allowed protection for up to 25 years once granted and the protection is relatively well defined compared with that provided by unregistered design right.

To be novel, the design must not be 'published' by having been applied to articles made publicly available or publicly disclosed prior to the application date. However, a valid design application can be filed within a 'grace period' of one year, following the public disclosure of the design by the designer.

Once registered, the owner obtains an exclusive right to prevent others from making, importing, selling or hiring articles in the UK having the same or a substantially similar design. Similar Community-wide protection is now obtainable by filing an application at the Community Designs Office in Spain.


Community Registered Designs
Community registered designs can provide strong and uniform protection throughout the European Union. A single application is filed to cover the whole EU.

Advantages of this route include: simplified formalities, being able to possibly include several designs in one application (such as a whole range of similar products), and being able to keep the design undisclosed for up to 30 months after filing, to avoid competitors learning of it.

Community registered designs confer on their holders the exclusive right to use the design in question and prevent (up to a maximum of 25 years) any third party using it in the EU without consent.

The fees for a Community design are reasonable and compare favourably with the overall costs of national registration in all EU countries. It is much cheaper to apply for Community registered design protection rather than to seek protection through the national systems in several countries.

Any future enlargement of the European Union will mean that the geographical area covered by Community registered design protection will be even greater.


Unregistered Design Right
Designs for articles can be protected by UK unregistered design right when they are 'original', but this protection is generally less than that provided by a design registration. However, unregistered design right arises automatically, and does not require any registration, although proving the date of its coming into existence can be difficult.

A design cannot acquire unregistered design right for:

• construction principles (may be covered by patents);


• features of shape which allow the article to match or fit another article;


• surface decoration (may be covered by copyright).

UK unregistered design right expires 10 years from the end of the calendar year in which articles made to the design were first sold or 15 years from the end of the calendar year in which the design was first recorded, whichever is the earlier. However, in the last five years, anyone can apply as of right to receive a licence from the owner upon reasonable terms.

A similar Community-wide unregistered design right is available, but it lasts for only three years from first public disclosure of the design. Further, the design must be 'new' and have 'individual character' rather than being 'original'.

The owner of UK/Community unregistered design right has the exclusive right to make articles or drawings in the UK/Community respectively according to the design. But this is not an absolute right, since in order to infringe it, a third party must copy the design. If a third party produces the design independently, without copying, then there is no infringement.


Copyright
The scope of UK national copyright protection for industrial designs is now very limited. If there is copyright in the design drawings, that copyright cannot be used to protect articles made to those drawings, unless they are designs of a typeface.

However, surface decoration does receive copyright protection for 25 years from marketing, as do articles exploited industrially where the articles are of 'artistic craftsmanship' (e.g. crafted furniture), sculptures or architectural items.

Again, copyright is not an absolute right and infringement occurs by way of copying, evidence for which may be difficult to obtain.


The above represent general principles/guidelines only and should not be taken as legal advice. If you need more information or require advice, please contact us.