These include the introduction of two new Community-wide rights:

1. The Unregistered Community Design protects almost all new two and
three-dimensional designs from copying for a period of 3 years.
It arises automatically without any need to file a registration;

2. The Community Registered Design allows one registration to protect a
design throughout Europe for a period of up to 25 years.
This is a monopoly right, so there is no need to prove copying.

Of particular interest to on-line companies, these new rights will cover the get-up of a website, computer icons and typefaces. The protection afforded to designers has been enhanced by these new laws, and all designers need to be aware of the need to register their new designs.

This fact sheet outlines the legal framework surrounding design for information purposes only. It covers design rights and explains these rights within the context of particular types of design. Legal advice should always be sought in these matters.

Registered “Design”

A registered design is a monopoly right for the appearance of the whole or a part of a product resulting from the features of, in particular:
The lines, contours, colours, shape, texture, materials of the product or its ornamentation.

To qualify for registration, your design must:

1. be new which means that it must not be the same as any design which has already been made available to the public, and
2. have individual character which means that the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any design which has already been made available to the public. In assessing individual character, we take into account the degree of freedom of the designer in creating the design.

Designs cannot be registered that are concerned only with how a product works, or for parts of complex products that are not visible in normal use, or contrary to law or morality.

Registration can last for a maximum of 25 years and is a property that, like any other business commodity, may be bought, sold, or licensed. A registered design is additional to any design right or copyright protection that may exist automatically in the design.

Applications for design registration in the UK should be filed at the Designs Registry within the Patent Office in London or Newport. The applicant may be the author of the design or the person who, as employer or as the commissioner of the design, acquired ownership of it, or someone to whom right in the design has been assigned. An application fee is required

An applicant can also apply to register a corresponding design in a large number of foreign countries. These foreign design applications are backdated to the UK application date (known as the priority date) if they are filed within six months from the date of filing the application in the UK. If application is made beyond this period, it is very unlikely that the foreign design applications will be successful.

Benefits

A registered design provides the exclusive right to make, import, export, use or stock any product to which the design has been applied or is incorporated, or to let others use the design under terms agreed with the owner, in the UK

It gives the right to take legal action against others who might be infringing the design and to claim damages. The fact that a design is registered may be enough to deter any potential infringement;

A financial asset whose value could increase and a recognised intellectual property right which protects the design from being copied by competitors for up to 25 years;

It can be synonymous with branding of the company's products and image;

Design right

Design right is an automatic intellectual property right which applies to original, non-commonplace designs of the shape or configuration of products.
Design right is not a monopoly right but a right to prevent copying, and lasts until 10 years after first marketing products made to the design, subject to an overall limit of 15 years from creation of the design. A design right is property that, like any other business commodity, may be bought, sold or licensed.

Designs must be the shape or configuration of an product. Two-dimensional designs, such as textile or wallpaper designs, will not qualify, although these qualify for copyright and possibly registered design protection. Also the design must not be commonplace, so well-known, ordinary, routine designs will not acquire design right.

Design right is like copyright in that the protection arises automatically when the design is created.

You do not have to apply to register design right, but it may be wise to keep a note of when the design was first recorded in material form and when articles made to the design were first made available for sale or hire. This information may be useful if someone challenges your rights in the design or if you believe someone is infringing your rights and you wish to take the alleged infringement to court.

Design right is an ‘exclusive right’ for five years after first marketing and then becomes subject to licences of right for the remaining five years of its term. This means that, in general, during the first five years if design right is infringed by unauthorised trading in such products. The design right owner has the right to take civil action in the courts, seeking damages, an injunction or any other relief available for the infringement of a property right.
During the final five years, anyone will be entitled to a licence to make and sell products copying the design. However, the rights owner will not be obliged to make design drawings or know-how available to the copier.

Exceptions

Design features enabling one product to be functionally fitted or aesthetically matched to another get no protection. These so-called ‘must-fit’ and ‘must-match’ exceptions have been provided to ensure that competing designs for spare parts cannot be kept out of the market. These exceptions mean that competitors cannot be prevented from copying any features of a protected design that enable their own design to be connected to or matched with existing equipment designed by someone else. However, competitors will infringe design right if they copy features of a protected design where there is no need to do so.
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UK Jurisdiction only

Unlike copyright, design right is effective only in the United Kingdom. Protection may be available in other countries under, say, petty patent or registered design systems, but usually any protection will not be given automatically and must be applied for.

Copyright - Two Dimensional Designs

Copyright is relevant to all original two dimensional works such as drawings, paintings, engravings, photographs, posters, graphic works or other such artistic works.
Copyright only protects what is shown on the drawing etc. and it does not protect the general principle of the idea.
This means that it would not be an infringement for someone else to use the same idea as long as the form in which the idea was expressed was not copied.
Copyright protects only against copying of a work and not against the independent creation of the same work by another person.

Copyright confers on the owner the right to control the exploitation of the original work. The right covers copying or reproducing, adapting, publishing, performing and broadcasting of the work or a substantial part of it.

When the work is created, copyright arises automatically and so does not have to be registered or paid for. The copyright exists but it can be very difficult to prove in a court of law the date on which that copyright was created.
It is therefore good practice for any designer or artist to keep a “creative” diary which details all the steps taken in the development of their ideas.
They should regularly sign and date original drawings, photographs of models and any other similar information and then have these witnessed and dated by someone a court would later accept as independent and reliable. This witness should be someone the designer trusts and who can be relied on to maintain the secrecy of those documents. The witnessed originals should then be deposited in a safe place and treated as valuable.

Copyright can be licensed or assigned outright to third parties, inherited and dealt with like any other piece of property. Generally, copyright lasts for the lifetime of the 'author' plus 70 years. There are certain exceptions and, as in all areas of intellectual property rights, professional guidance should be obtained if there is in any doubt.

Copyright is extended automatically to all Berne Copyright Convention countries. Copyright protection is also extended automatically to all Universal Copyright Convention countries provided that the standard UCC copyright notice is placed on the article or design. The notice should consist of three elements, namely, the symbol © which is the capital letter C contained within a circle, the name of the copyright owner and then the year of first publication of the work (e.g. © Fred Bloggs 2002).

The owner of copyright is usually the author of the work, but if the author is an employee employed to create the copyright work in the course of his or her duties, the employer will normally own it. Generally a freelance artist retains the copyright even in a commissioned work, though there are exceptions to this rule.

Design Right - 3 Dimensional Designs

For three dimensional designs such as a new teapot shape, then Design Right replaces copyright for the protection. This allows the owner to control the exploitation of his or her original design. The right covers making articles to the same or substantially the same design, and dealing in them. As with copyright it protects an author only against copying of the design and not against the independent creation of the same design by another person.

The period of protection for design right is 15 years from the embodiment of the design in a design document or prototype, or 10 years from first marketing of the design, whichever is the shorter period. After the first 5 years from the start of marketing, licences to reproduce the design must be granted to anyone prepared to pay a reasonable royalty.

Design right comes into force automatically and a similar procedure as described in the section on copyright above can be used for establishing ownership. There are no marking requirements but preferably a mark similar to that used for copyright should be adopted, e.g. Design Right Fred Bloggs 2002. The design right can also be licensed in the same way as a copyright.

Unlike the situation with copyright, freelance designers lose their design right to the person commissioning a design from them.

Registered Design - 2 & 3 Dimensional Designs

This form of protection is available in aesthetically appealing designs which are either two dimensional or three dimensional. It applies to features of shape, configuration, pattern or ornament which appeal to the eye.

Protection is excluded for purely functional products and there is no protection for features whose shape is dictated by the need to match or fit other articles. In order for a design to be registered, it should be new at the date of application for registration.

Registered designs give the owner the right to control the exploitation of the design. It is not necessary to prove copying. Rights last for 25 years if renewed fees are paid. The renewal fees are payable every 5 years.

A full description of registered design rights is at the start of this sheet.

Passing Off

The law of Passing 0ff is aimed against a person or company misleading or deceiving the consumer as to the origin of the goods, products or services by offering them in a very similar get up or design to one that is already on the market and has an established and considerable reputation.
Provided you can satisfy certain criteria, the law protects a designer by preventing other companies "passing off" their goods or services as those of another. However, rather than relying on the common law right of passing off, it is much more advisable to protect your name, logo, musical jingle or even distinctive shape, by way of a trade mark registration.

Trade mark registrations represent a relatively inexpensive way of obtaining a monopoly right in the UK (and elsewhere) giving you the exclusive use of your name, etc, in your area of business. Provided you keep using your trade mark, a registration enables you to prevent others offering goods or services for sale under the same or similar mark.

What is more, you can register a mark as a trade mark before you launch a business or have any goodwill to protect thereby allowing you to establish a brand identity without fear of it being immediately adopted by others, something which the law of passing off cannot do.

You must be careful not to step on the toes of others in the market and adopt their mark, brands or trading style. To do so, could result in immediate injunctive relief being sought to prevent your unauthorised use.
Trademarks is a separate area of intellectual property and is covered in depth elsewhere.

Confidentiality

Prior to the publication of a design or other work it is possible to protect it by the law of confidentiality.
If the work is submitted to a person by its owner and that person is made aware that the work is being shown in confidence, that person may not use or disclose the work without the consent of the owner for so long as it remains unpublished.
Once the work has been published by or with the consent of the owner, or has come into the public domain without disclosure by the person to whom it was shown, that person cannot be restrained from disclosing it or using it unless a copyright or other Intellectual Property Right can be relied on by the owner.

Follow Up

The Patent Office at http://www.patent.gov.uk/design/legal/index.htm
provides an excellent source of legal Acts, etc about design, as well as guides to the process of registering.