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Designs can be registered or unregistered in both the UK or in the wider European Community.
Registered and unregistered Community design rights are similar to UK registered design rights, whereas UK unregistered design (often referred to as simply “design right”) is somewhat different. At first sight the definitions are quite similar. But the basic distinction is that the first apply to the design itself whereas UK unregistered design right applies specifically to the design of an article.
The duration of the various design rights varies according to specific circumstances but in general: UK and Community registered design rights lasts for up to 25 years; unregistered Community design lasts for 3 years from the date it was first made available to the public within the Community; and UK unregistered design (known as Design Right) lasts either 10 years after the first marketing of articles that use the design, or 15 years from creation of the design - whichever is earlier. For the last 5 years of that period the design is subject to a Licence of Right. This means that anyone is entitled to a licence to make and sell products copying the design.
UK Registered Designs give you exclusive rights in a design, in the UK, for up to 25 years. You can stop people making, offering, putting on the market, importing, exporting, using or stocking for those purposes, a product to which your design is applied. You can protect two-dimensional designs or surface patterns as well as shape and configuration with a registered design.The main criteria for protection are that it must be new and have individual character, although there are several exceptions to qualifying for protection.
By comparison, Design Right gives you automatic protection for the internal or external shape or configuration of an original design, i.e. its three-dimensional shape. Design right allows you to stop anyone from copying the shape or configuration of the article, but does not give you protection for any of the 2-dimensional aspects, for example surface patterns. There are several exceptions to qualifying for protection including surface decoration.
We can help you to identify and protect your designs, advise on the best form of protection and making an application and, once the application has been filed and/or granted, we can help you exploit and protect your design.
Exploitation of registered and unregistered design rights:
Confidentiality agreement / Non-disclosure agreement One of the requirements for design registration is novelty (although there is a period of grace applicable to applications which allows for test marketing to ascertain if a design is worth protecting). To prevent issues with registration it may be wise to keep the design relatively low key until the registration application has been made. It may be prudent to make use of confidentiality agreements (also known as non-disclosure agreements or NDAs) to prevent others from generally disclosing the design.
It might be hard to prove that a copy of your design has not been independently created. Confidentiality agreements (or non-disclosure agreements, or NDAs) are contracts relating to mutual or one-way disclosure of information between two or more parties, which usually outlines how such information can be used or stored, and if and when such information may be disclosed to third parties.
Advantages for discloser:
- Low cost protection of your sensitive and confidential information
- Keeps secret potentially valuable designs
- Can prevent competitors from financially gaining from your business, at the expense of your business
- Creates right to sue for compensation and for an injunction to prevent further breaches, if it become necessary
Advantages for receiver:
- Provides means to receive information to understand and assess a target business and/or product
- Can assist you to make an informed decision as to the disclosers proposals
Design right owners may not wish to use their own designs, or may wish to allow another or others to use the design. The designer may be more interested in designing than manufacturing and marketing, or they just may not have the facilities or resources for manufacture. A license is used to grant the permission to use a design right on another.
A license may be general or limited. License fees can be factored into a license to allow for regular income for the designer and this may be linked to the sales or profits of the designs. Licenses are useful as the designer still retains ownership of the design and can impose terms and conditions on the use of the design whilst receiving an income.
- A design right may be assigned (sold). This does mean that the design with no longer be owned by the designer but a higher price is likely than for a license. For the buyer, an assignment is more preferable, subject to any conditions contained in the assignment.
Ailsa is an experienced solicitor specialising in Commercial and Intellectual Property law.
To contact Ailsa you can call her direcly or call our new enquiries number 0330 058 4011 ext. 2724
Consultant Solicitor Commercial and
Intellectual Property specialist