Did you know that there are approximately 232,000 designers in the UK, according to the Design Council, and last year the UK Intellectual Property Office granted just 4000 registered designs? It is, therefore, not rocket science to come to the conclusion that the majority of the UK’s designers rely on unregistered design rights and informal rights! So what can be done to maximise protection under unregistered design and what does unregistered design right actually mean?
The productivity of this incredible UK design army, mainly made up of micro and small businesses, enables UK businesses to spend a staggering £33 billion on design and design services, adding 2.4% to the UK’s GDP. There are 55 different design disciplines/sectors whose numbers include many product designers who rely on either registered or unregistered design rights, so it is very important that designers are equipped with tools of self help to protect their creative work.
In a nutshell, unregistered design right (UDR) in 3D articles arises automatically so long as the design is original, hasn’t been copied from someone else’s design and is not “commonplace” in the particular design field at the time it was designed. It gives automatic protection for the internal or external shape or configuration and, at the moment, lasts in the UK for either 10 years after first marketing the products or 15 years after the creation of the design, whichever is earlier. After 5 years, the design is subject to a Licence of Right which means that anyone is entitled to a reasonable licence upon the payment of royalties to make and sell the products. In the EU, unregistered design right only lasts for 3 years but covers a broader range of criteria such as shape, contours, lines, colours, texture or ornamentation. So, the good news is that for 3 years you have both UK and EU protection.
Don’t forget too, that copyright is an unregistered intellectual property right, so designs including images, artwork, surface decoration and greetings cards, for example, all fall under the heading of unregistered rights. Remember, in the UK you cannot register your copyright whereas in the USA you can.
Don’t be misled by any services which say “Designs Protected” as often this can be very misleading. Depositing designs with any unofficial third party does not add to any IP rights nor does it offer “design protection”. What it does do, however, is offer a means of recording the date on which the designs are received by the third party organisation. It does not confirm anything other than this! The bottom line is that no one can say they are “protecting” your designs but what they can confirm is the date on which designs are received which, in ACID’s experience is invaluable evidence should a design audit trail need to be provided if relying on unregistered rights. More especially if it is by a respected third party and respected IP name within design such as ACID.
What is Registration?
ACID has been very careful not to confuse anyone into thinking that our Design Databank service is official registration, it is not. Nor do we issue numbered certificates because this could potentially mislead designers into thinking that they had “officially” registered their designs. We never describe this as a “registration service” either. This could mislead respondents into thinking it is an equal alternative, with some online companies claiming to ‘register copyright’ which can also cause misunderstanding. ACID is a proactive supporter of official registration as a first option and the key difference between registered and unregistered right is that registration gives a monopoly right for 25 years, renewable every five years, and you have a numbered certificate stating that you “own” that design and you don’t have to prove copying. So, if you possibly can, register new designs if they are going to be valuable to your bottom line!
“So, if you are a designer relying on any unregistered IP right, (copyright or design right), and your designs are copied you must be able to prove they were copied. That is where the ACID Design Databank (holding over 300,000 copies of original designs) becomes invaluable.”
Using the ACID Design Databank
Those who send copies of their designs to the ACID Design Databank (whether copyright or design right) sign a statement that they are fully aware that submission does not add to their IP rights and that this is not an official registration. The ACID Design Databank is a free membership benefit and part of an ongoing education and awareness process to make people aware of official EU or UK registration as a first choice. The DDB provides independent evidence of the designs existence on a particular date i.e. when they are received by the ACID office, should this be needed to prove copying for those relying on unregistered UK or EU design rights. Designers who have this information to hand in a potential infringement issue are usually ahead of the game against their copyist opponents who are rarely able to provide a compelling design audit trail. A design audit trail is difficult to create in hindsight when a company is challenged.
“Fundamentally, the ACID Design Databank (DDB) provides a design audit trail and encourages designers to keep evidence of the evolution of their designs, from the seed of an idea to marketplace. Many ACID members use their marketing material to communicate to their competitors that they have sent copies of their designs to the DDB adding to an effective, communicated anti copying policy.”
The Temple Island Experience
In one of the first cases to be heard at the new Patent County Court, ACID members Temple Island Collection scored an early victory against New English Teas in an intellectual property case. The dispute was about the infringement of its iconic “Red Bus” image, a stylised photograph of a red Routemaster bus depicted on a greyscale image in front of the Houses of Parliament. Patent County Court Judge Birss allowed a written statement from ACID confirming that the designs had been submitted to the Design Databank on a certain date which contributed to the design audit trail behind the image.
Many designers, who cannot afford to register all their designs, rely on unregistered design right when initially checking the market out to see if a particular design is a market leader and revenue producer. If the answer is “Yes”, they have a 12 month window from first marketing to register their designs in Europe. This is great value because it offers protection for 25 years in 27 member states.
Be aware! If your design has been marketed for over a year, you cannot register in the European Union!