Design Basics

Jane Lambert

We use the noun design in two senses. We talk of "designer jeans" but also of "engineering design" and architecture. We even talk about designing services. The one relates to appearance and the other to function. There is of course overlap. A well engineered bridge or the aerodynamic lines of an aircraft or sports car are usually things of beauty.

The law draws a similar distinction.  The "appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation" can be registered with the Office for Harmonization in the Internal Market ("OHIM") or the Intellectual Property Office ("IPO") as registered Community designs ("RCD") for the whole of the EU or as registered designs for the UK alone so long as they are new and have individual character.  Registration of a design confers the exclusive right to use it and to prevent any third party not having his consent from using it" in the territory for which it is registered. That includes "in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes." Designs are registered for 5 renewable terms of 5 years each making a total of 25 years. This regime is suitable for items with a long production run such as kitchen equipment and furniture where a product's appearance is important.

There are of course goods like toys and clothing with a much shorter shelf life where a 25 year or even a 5 year term is quite unnecessary.  For the design of such items there is automatic protection against copying for up to 3 years throughout the EU from the date on which the design was first made available to the public as unregistered Community designs ("UCD").

Functional designs are protected in the UK by an intellectual property right that is almost unique to this country known as unregistered design right.  Right now design is defined as "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" but that definition  is to change from 1 Oct 2014 to "the design of ......  the shape or configuration (whether internal or external) of the whole or part of an article". The important point is that the design does not have to look good (though of course it can) and protection extends to the mechanical parts or circuitry of the article as well as its external shape. The design does not have to be new or have individual character and design right comes into being automatically just as soon as the design is embodies in a prototype or recorded in  a drawing or CAD file but the design does have to be original in the sense that it was not copied from an earlier design and was not commonplace in the design field in question at the time of creation. Design right protects not the design concept or technology as such but a particular shape or configuration from copying. It is at least theoretically possible for two people to come up with the same design in which design right subsists so long as neither copies the design f the other. Design right lasts for up to 10 years after products made to the design are placed on the market but for the last 5 years of the term anyone can apply to the design right owner for a licence to make products to the design as of right.

Design right does not cover every aspect of the design of a product and in particular it does not protect "surface decoration". For wall paper, fabrics and other two-dimensional designs designers rely on indirect protection under the law of copyright.  Essentially the art work for the design is treated as an artistic work in which copyright subsists for the life of the author plus 70 years and making copies of the design is essentially making copies of the artwork.

At present actions to restrain or recover compensation for infringements of a registered design or RCD in England and Wales have to be brought in the Patents Court or the Intellectual Property Enterprise Court ("IPEC") which are part of the Chancery Division of the High Court of Justice. Claims for UCD, unregistered design right or copyright infringement can be brought in IPEC or any other judge of the Chancery Division or in certain county courts where there is a Chancery district registry of which there are none in the East Midlands. From the 1 Oct 2014 it will be a crime intentionally to copy a registered design or RCD so as to make a product exactly to the design or with features that differ only in immaterial details to the registered design.

Design law is a very complex area of the law but it affects a lot of businesses in the fashion, furniture, household goods, pottery and related industries. If you want to understand it better you should come to our workshop on IP at Grantham College on 26 Sept 2014 at 14:00. We shall also discuss the laws that protect innovation in branding, technology and works or art and literature. After the talks you can have free one-to-one discussions with our speakers. I look forward to meeting you there.