Mewes [Public domain], via Wikimedia Commons
7 Aug 2016
In everyday language. we talk of design as something that is functional as in the shape of the fuselage of an aircraft or the arrangement of components in a circuit or as something aesthetic such as a garment or accessory or an item of furniture. That distinction is reflected in the law that provides different regimes for the protection of functional and aesthetic designs.
Functional designs are protected in the United Kingdom by unregistered design right under Part III of the Copyright Designs and Patents Act 1988. A design is defined by s.213 (2) as "the design of ...6 the shape or configuration (whether internal or external) of the whole or part of an article." There are a number of exclusions from that definition of which surface decoration is the most important. Design right subsists automatically in an original design and confers
"the exclusive right to reproduce the design for commercial purposes—
(a) By making articles to that design, or
(b) By making a design document recording the design for the purpose of enabling such articles to be made."
Once articles made to the design are put on the market design right lasts for 10 years during the last 5 years of which anyone in the world (including an infringer) can apply to the design right owner for a licence as of right. If the applicant and the design right owner cannot agree terms for such licence the applicant may ask the Comptroller-General of the Intellectual Property Office ("IPO") to settle those terms.
Although there is no reason why design right could not subsist in an aesthetic design new designs having individual character may be registered with the IPO for the UK alone as registered designs or with the European Union Intellectual Property Office ("EUIPO") as registered Community designs for the whole EU including the UK for so long as we remain a member (see Design Registration FAQ 22 Aug 2016). Design for these purposes means
"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."
Registration confers "the exclusive right to use it and to prevent any third party not having his consent from using it." "Use" covers 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 may be registered for up to 5 renewable periods of 5 years each.
Any design that could be registered with the IPO as a registered design or with the EUIPO as a registered Community design enjoys automatically up to three years protection against such use throughout the EU as an unregistered Community design ("UCD") provided such use results from copying. UCD are particularly useful for the fashion, toy, novelty and other industries whose products enjoy only short-term appeal.
The artwork for fabric designs, wall coverings and other surface decoration may be protected by copyright as original artistic works. Copyright also protects work of artistic craftsmanship.
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