Currently there are four different regimes protecting designs in the UK.
1. Continuing Unregistered Design Right
Before the UK left the EU, a design disclosed in the UK could automatically qualify for protection as an Unregistered Community Design (UCD). UCDs still exist for designs first disclosed in an EU Member State. The protection this right provides is pan-EU and lasts for three years. UCD protects the appearance of a design or product, whether it be 2D or 3D, and includes its shape, colour, texture, material and ornamentation.
Designs first disclosed in the UK no longer benefit from this protection.
However, designs protected as UCDs before 1 January 2021 are still protected in the UK by virtue of the newly created Continuing Unregistered Design right (CUD). CUD mirrors the protection granted by UCD. These designs will continue to be protected as CUDs in the UK for the remainder of their three-year term. This right was created to ensure that proprietors of existing UCDs didn’t find themselves suddenly worse off and unable to rely on UCD protection in the UK.
2. Supplementary Unregistered Design Right
Supplementary Unregistered Design Right (SUD) is another new right created post-Brexit. It provides the same automatic protection as a UCD for designs first disclosed in the UK, although it is only valid and enforceable in the UK, rather than across the EU.
SUD is created by first disclosure of a design in the UK. If one were to disclose a design in the EU first, then that design would qualify for UCD protection rather than SUD. As a result, businesses and designers need to think carefully about when they disclose their new designs.
3. Design Right (or UK Unregistered Design Right)
UK Unregistered Design Right (UK UDR) is another type of unregistered design. Its scope of protection differs from CUD and SUDs. It provides protection for the shape and configuration of 3D articles (i.e. it does not protect 2D designs, materials, colour etc). It lasts for the lesser of 10 years from the date of first marketing of an article made to the design or 15 years from the creation of the design document.
The qualifying criteria are different for UK UDR as it is not based on disclosure in the UK. Qualification is limited to residents in the UK (or a limited number of qualifying countries) and UK businesses (or businesses formed in a limited number of qualifying countries).
UK UDR sits alongside SUD and a product may benefit from protection by both regimes. For example, the shape of a shoe might be protected by UK UDR and the colour, surface decoration and materials used might be protected by SUD.
4. Registered Design Right
You can also apply for a UK Registered Design Right (UK RDR). UK RDR grants a monopoly in the appearance of the whole or part of a product resulting from the features of the lines, contours, colours, shape, texture or materials of the product or its ornamentation. It can protect both 3D and 2D designs. Importantly, and unlike the unregistered rights mentioned above, UK RDRs do not require the owner to show that the design has been copied for infringement to arise. The initial term of protection for a UK RDR is 5 years, but it can be renewed so that protection may last up to a maximum of 25 years. The design must be new and have individual character.
Recent enforcement issues in the UK
Because of the multiple unregistered designs regimes in the UK (mentioned above), parties are able to rely on these automatic unregistered rights against infringements that may occur in the UK. These are extremely useful rights in many circumstances, particularly for businesses operating in industries with a fast turnover or high volumes of products where consistently applying for design registrations is not practical e.g. fashion, FMCG. However, these rights do have certain limitations such as shorter duration of protection, strict rules to qualify for protection, and, in the case of UK UDR, an inability to protect surface decoration, colour etc.
For that reason, businesses and designers are encouraged to apply for registered design protection if a design might become particularly valuable or long-lasting. There are numerous benefits to registered design protection, further details on which can be found in our IP toolkit for designs.
It is important to assess carefully the nature and scope of the requested design at the application stage as this will have significance if one tries to enforce it against an alleged infringer later on. Historically, the UK Courts have been known to interpret registered designs quite narrowly. The design depicted in the registration needs to be detailed enough to be novel over any prior art (i.e. other pre-existing designs of your own or belonging to third parties that are similar) but broad enough to catch future infringements which may have differences. This can be tricky as it is likely you will not know all the instances of prior art, and of course you will not know what future infringements might look like.
Although any images (photographs, CAD drawings, line drawings etc) are admissible ways of representing the design sought in an application, practitioners will typically recommend using line drawings to depict your registered design. The famous Trunki case (Magmatic Limited v PMS International Group PLC [2016] UKSC 12) considered the differing scope of protection that can be attributed to line drawings vs other more detailed depictions such as CAD drawings. The Trunki registered design was in the form of a CAD drawing and this was materially important when assessing the similarity of the alleged infringement. CAD images can easily show subtle shadings and contours, as well as decoration such as colours and ornamentation. This narrows the scope of protection. Conversely, as the judge said in Trunki, “…a line drawing is much more likely to be interpreted as not excluding ornamentation than a CAD image.” The benefit of using line drawings has recently been reaffirmed in the IPEC case of Lutec (Lutec v Cascade Holdings [2021] EWHC 1936 (IPEC)) where two wall lights were held to infringe the registered design belonging to Lutec. Lutec’s registered design was a relatively simple line drawing depicting the shape of a light and did not include a depiction of surface decoration. As such the judge held that certain differences in the infringing products, including a ridged appearance on the surface of the lights were not differences on which the Defendants were allowed to rely.
As registered designs are relatively easy to obtain and are registered without examination, there can sometimes be a tendency to apply for them without taking care as to the specific depiction of the design. These cases (among many others) highlight the importance of paying close attention to your design application. There is no one size fits all approach and Marks & Clerk can advise the best way forward for your particular design.
Although much easier and cheaper to obtain than trade mark registrations and, certainly, patents, we appreciate that filing for registered designs still involves a cost. However, an analysis of recent UK case law suggests that going through this process is worth it. If we take a look at a handful of decisions from the last few years where designs were held to be valid and infringed:
- Earlier this year M&S successfully sued Aldi for design infringement in respect of a light up Christmas gin product. This was a registered design case only even though the product was first introduced in the Autumn of 2020 so UCD/UK UDR would likely have subsisted. This is also an example of a case where detailed pictures of the product were used for the design registration (rather than line drawings) – this was necessary to depict the artwork around the bottle and the glitter within. A good example of how the best way forward for a design application should be assessed on a case by case basis (M&S v Aldi [2023] EWHC 178 (IPEC));
- Another successful infringement case was the 2022 ASR Interiors furniture case. Again, only registered designs were relied upon (ASR Interiors v AWS Trading [2022] EWHC 372 (IPEC));
- The 2021 Lutec case discussed above is another example of a successful registered designs only infringement case; and
- In 2020 the Rothy’s ballerina flats shoes case was successful on registered design infringement. What is particularly worthy of note is that it also ran a UCD infringement argument. The UCD was held valid but not infringed. If Rothy’s did not have its registered design it would have lost this case relying solely on UCD (Rothy’s v Giesswein Walkwaren [2020] EWHC 3391).
While there are, of course, exceptions – for example, the Original Beauty clothing case successfully established UK UDR and UCD (no registered designs) (Original Beauty Technology Company Limited v G4K Fashion Limited [2021] EWHC 294 (Ch) – out of the designs cases that went to trial in the last three years, the majority that were successful were those where the claimant(s) were relying on registered designs. There may be a number of reasons for this, for example, in order to successfully establish unregistered design infringement one must establish both a right to the design and copying. This places a higher evidential burden on the claimant and one that does not exist in a registered design infringement claim. But perhaps the biggest advantage of registered designs is one that is not measurable in court statistics and just becomes clear from experience of working with them as an enforcement tool: a registered design is more likely to stop a claim of design infringement needing to get to court. With clarity as to the scope and ownership of a design, they act as a deterrent to infringement and broadcast to the world what the design owner claims as their own.
Designs law is a complex area of law that features a number of issues outside of the scope of this overview. We are currently acting on various design infringement matters on behalf of clients. If you would like more detailed advice then please contact us.
