IPEC ruling on unregistered design protection: is this enough?
Written by Ellis Sweetenham on 14 December 2016« Return to Reading Room
The UK Intellectual Property Enterprise Court has recently considered a case where the scope of Unregistered Design Protection was discussed.
This is a level of protection which many people are unaware of, however this does not protect every design and therefore registered design rights need to be considered too if you are looking to protect a design.
UK unregistered design rights will automatically protect the shape and configuration of your design for 10 years after it was first sold or 15 years from when it was created, whichever is the earliest. You would need to register your design to protect a pattern or two dimensional designs.
To take advantage of this protection, you need to show evidence that your design was created before any other similar design.
The decision before the IPEC considered if the ‘eXtreme locker’ could rely on unregistered design rights.
For a design to be protected, it needs to be original. In the judgment, HHJ Hacon, the judge considering the case, deemed the design original following the admission from the Defendants that five elements of the design was original, including:
- The overall dimensions and proportions
- The shape and dimensions of the raised section on the top
- The shape and dimension of the ribs at the side
- The shape of the border and inset squares at the rear
- The shape and dimensions of the inset sections at the base
The design was deemed original even though it was admitted it was loosely based on an existing design, with some substantial changes to deem it original.
This case required a high level of evidence in relation to how the design was developed, where it originated from and whether it should be protected under the unregistered rights.
A way to reduce the requirement of this evidence is to register your design.
This can be done through the UK Intellectual Property Office.
A registered design can protect the appearance, physical shape, configuration and decoration of a design. This is a higher level of protection than what is given from an unregistered design right.
In addition, the length of time in which the design can be protected is extended with a full design right. An unregistered design right as stated above only lasts for 10 years where as a registered design right can be protected for up to 25 years, if it is renewed every 5 years.
As with an unregistered design, it needs to be original and cannot be offensive or contain protected emblems or flags. You cannot use a design right to protect the functionality of a design. You would need to explore Patent protection for this.
Protecting your design through registration will allow any infringement issues or legal action more straightforward.
For more information regarding design rights, contact Lawdit Solicitors today.
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