In intellectual property, unregistered design rights provide automatic protection for certain aspects of a design, offering a cost-effective solution for creators who do not want to invest in registering their designs. This article explores unregistered design rights in the UK, including their scope, duration, challenges, and the differences between unregistered and registered design rights.
What Are Unregistered Design Rights?
Unregistered design rights protect the three-dimensional aspects of a design automatically when the design is created or disclosed to the public. Unlike registered designs, they do not cover surface decoration or two-dimensional patterns under UK law, although supplementary unregistered design rights (introduced post-Brexit) extend protection to such features.
These rights are especially valuable for small businesses or designers who need immediate protection without the costs or administrative efforts involved in registration.
What is the Scope of Protection?
Unregistered design rights in the UK protect specific aspects of a design, primarily focusing on the shape and configuration of three-dimensional objects. This protection is automatic and applies only to features that are novel and non-common place in the relevant design field. The rights extend to non-trivial parts of articles, ensuring that protection is not granted for overly broad or generic design claims.
What Can Be Protected?
- The shape or configuration of a 3D design, including individual components that contribute to the overall uniqueness.
- Novelty and originality are essential criteria, meaning the design must not be commonly used or widely recognized in its industry.
Exclusions from Protection
Unregistered design rights do not cover:
- Surface Decoration: Patterns, logos, and ornamentation remain unprotected under standard UK unregistered design rights.
- Functional Features: Methods or principles of construction, as these are governed by other forms of intellectual property.
- Must Fit and Must Match Features:
- Must Fit: Parts designed solely for connection with other components.
- Must Match: Features reliant on the appearance of another product to form an integral part.
Post-Brexit Supplementary Unregistered Design Rights (SUDR)
In response to the UK’s departure from the EU, Supplementary Unregistered Design Rights (SUDR) were introduced to address the loss of Unregistered Community Design Rights (UCD). SUDR protects surface decoration, including patterns, prints, and ornamentation, offering broader coverage than traditional unregistered rights. This protection lasts for three years from the date the design is first disclosed to the public, ensuring immediate yet time-limited safeguards for designers in the UK.
Duration of Protection
The protection period depends on the type of unregistered design right:
UK Unregistered Design Right (UK UDR)
- Protects three-dimensional designs.
- Lasts for the shorter of:
- 10 years from the first sale of the product.
- 15 years from the creation of the design.
- During the final 5 years, designers must grant a license of rights upon request, enabling others to use the design while generating royalties.
Supplementary Unregistered Design Right (SUDR)
- Protects surface ornamentation and unique prints.
- Lasts 3 years from the date the design is first disclosed to the public.
How Do Unregistered Design Rights Arise?
Unregistered design rights are automatic. There is no need to apply or pay a fee. The rights arise:
- When the design is created and recorded in a design document (e.g., drawings, photos, prototypes).
- Upon public disclosure in the UK for SUDR.
Ownership lies with:
- The designer, unless the design is created as part of an employment contract or a commissioned work where ownership can be assigned to the employer or commissioner.
Challenges of Relying on Unregistered Design Rights
- Proving Ownership: Unlike registered rights, there is no official record to prove the existence, date, or ownership of the design. Designers must maintain accurate records, including signed and dated drawings or photographs.
- Enforcing Rights: Enforcement requires proof of intentional copying for commercial purposes. Legal action must be initiated by the owner, which can be costly and time-consuming.
- Limited Protection: Only protects three-dimensional features under UK UDR. Shorter protection period compared to registered rights.
- Post-Brexit Challenges: Loss of EU-wide Unregistered Community Design Rights (UCD). Designs disclosed outside the UK may lack protection under SUDR.
Differences Between Registered and Unregistered Design Rights
| Aspect | Registered Design Rights | Unregistered Design Rights |
| Scope | 2D and 3D features, including surface ornamentation. | Primarily 3D designs; surface ornamentation only under SUDR. |
| Proof of Ownership | Official registration provides proof. | Designers must provide evidence of creation and ownership. |
| Duration | Up to 25 years with renewals. | 10-15 years (UK UDR); 3 years (SUDR). |
| Infringement | No need to prove copying; exclusive monopoly right. | Requires proof of intentional copying. |
| Cost | Registration fees apply. | Free and automatic. |
Enforcement of Unregistered Design Rights
To enforce unregistered design rights:
- The owner must initiate legal action to prevent copying or unauthorized use.
- Claims can be made against:
- Intentional copying for commercial purposes.
- Recording a design for reproduction without authorization.
- Defences against infringement include:
- Use for private, experimental, or educational purposes.
- Good faith preparations to use the design before its registration by another party.
Best Practices for Protecting Unregistered Designs
Unregistered design rights provide automatic protection, but enforcing them requires evidence of ownership, originality, and creation date. Following these best practices will help safeguard your designs and strengthen your position in potential disputes.
Document Your Designs Thoroughly
Maintain detailed records of your design’s creation process. These can include:
- Signed and dated design sketches, drawings, or blueprints.
- Photographs, prototypes, or models showcasing the design.
- Written descriptions explaining the design’s unique features. Store these records securely and consider having them certified by a solicitor or intellectual property (IP) attorney to establish credibility.
Public Disclosure
To activate protection under Supplementary Unregistered Design Rights (SUDR), disclose your design publicly in the UK. This ensures eligibility for SUDR, which extends to surface decoration, patterns, and ornamentation. Keep clear records of when, where, and how the design was disclosed, such as product launches, exhibitions, or publications.
Monitor and Enforce Rights
Regularly monitor the market for potential infringements. If you identify unauthorized copying, act quickly to assert your rights. Gather evidence of the infringement, such as product comparisons or marketing materials, and consult an IP professional to guide enforcement.
Understand Limitations
Unregistered design rights only protect three-dimensional features (except under SUDR). They are time-limited and require proof of copying for enforcement. If your design has long-term commercial potential or includes valuable surface decoration, consider registering it to extend and strengthen protection.
Seek Professional Guidance
Consult an IP expert to navigate the complexities of unregistered design rights. They can advise on documenting your designs, enforcing your rights, and whether registration would be a beneficial step.
Conclusion
Unregistered design rights provide a practical, cost-effective solution for the immediate protection of designs in the UK. While they offer valuable safeguards, their limited scope, duration, and enforcement challenges make them less robust than registered design rights. Designers with innovative or commercially valuable creations should weigh the benefits of registering their designs to ensure comprehensive protection.
By understanding the intricacies of unregistered design rights and their limitations, UK businesses and creators can better safeguard their intellectual property and navigate the complexities of design law.
