Designs and copyright can be very effective in helping the proprietors to protect their markets, for example by preventing others from trading in products with the same or a similar appearance or adopting the same or similar looking packaging. Like other forms of property, these intellectual property rights can be bought, sold and inherited. Furthermore, they can be licensed to generate an income (royalty payment) and/or used as security against a loan. Consequently, they can be among a company’s most valuable assets.

Particularly in the case of unregistered design right and copyright, where there is no registration process and thus no official record, it is essential that the proprietors keep the original documents and drawings that show how, when and by whom a design was created and developed and/or the date on which a copyright work first existed.

Applications for registered designs are generally filed on a country-by-country basis where protection is desired. Corresponding applications should be filed within six months so that they can claim “priority” from the first application to be filed. However, the Hague Agreement provides an International Design Registration system whereby it is possible to file a single application to secure protection in a number of contracting countries.

Unregistered design right is not widely available outside of the United Kingdom and the European Union.

Copyright arises automatically in many countries, although in some (such as the USA) registration is possible. The United Kingdom is a member of several international conventions including the Berne Convention for the Protection of Literary and Artistic Works and the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations. Copyright material created by nationals or residents of the United Kingdom is protected in each country which is a member of those conventions by the national law of that country.

Copyright protects original literary, dramatic, musical and artistic works, published editions of works, sound recordings, films and broadcasts. It comes into existence automatically upon the creation of a new work.

The definitions of “literary” and “artistic” works mean that copyright encompasses, for example, instruction manuals and technical reports; computer programs; diagrams, drawings and photographs of products; and trade marks that consist of or contain a logo or device.

Copyright protects the work itself and not the underlying concept or idea. It is not a monopoly right and so copying of the work by the alleged infringer must be proved.

According to the type of work involved, the duration of copyright protection can vary from a minimum of 25 years to a maximum of 70 years from the death of the author.

An unregistered design right (UDR) is not a legal monopoly, but gives the proprietor the right to stop others from copying the design concerned. UDR is therefore not infringed by another party that creates the same or a similar design independently.

United Kingdom UDR arises automatically when a design is created. It protects any new design for the whole or a part of a product, provided that the design is not “commonplace”. Surface decoration is excluded from protection and so two-dimensional products, such as the patterns on textiles and wallpaper, are not covered by United Kingdom UDR.

Community UDR (which extends to all of the 27 member countries of the European Union) comes into existence automatically when a new design is first made available to the public within the European Union. It protects any design, whether two-dimensional or three-dimensional, which could be the subject of a registered Community design (the criteria for which are set out above).

Design features that enable a product to be connected to another, or to match the appearance of another (the “must fit” and “must match” exceptions referred to above), are also excluded from both United Kingdom and Community UDR protection.

A registered design gives the proprietor a legal monopoly, i.e. the exclusive right to stop others using that design (regardless of whether they have copied it or claim to have created the same or a similar design independently).

In order to be registrable in the United Kingdom, a design must have:-

i) novelty, i.e. it needs to differ from all previously known designs anywhere in the world by more than “immaterial details”; and

ii) individual character, i.e. it must create a different “overall impression” on the “informed user” (typically the end user of the product) to that of all previously known designs anywhere in the world.

Designs that are dictated solely by the technical function that the product performs cannot be registered, nor can those that must be of a particular shape and size in order to match the appearance of, or to connect to, another product (the so-called “must match” and “must fit” exceptions). Designs contrary to public policy or accepted principles of morality are also excluded.

A Community design registration is a monopoly right that gives protection in each of the 27 member countries of the European Union. The criteria for registrability are the same as those set out above.

An application for a registered design should preferably be filed before the design has been made public. The United Kingdom and Community registration systems both provide a “grace period” of 12 months within which an application can be filed following the disclosure of the design by the designer. Such a disclosure may prevent valid applications being filed subsequently in other parts of the world, however, since many countries do not allow a grace period.

The registration process is straightforward and more than one design can be included in the same application. Applications for United Kingdom registered designs are filed at the UK Intellectual Property Office; those for a registered Community design go to the Office for Harmonisation in the Internal Market (OHIM). In both cases, drawings or photographs of the design or designs are required and an official fee is payable. A check is made to ensure that the application satisfies the formality requirements, but there is no search for earlier designs. The application will normally proceed to registration within a couple of months. The publication of the design can be deferred if the applicant so wishes (for up to 12 months from the filing date for a United Kingdom registered design; for up to 30 months for a registered Community design).

The validity of United Kingdom and Community design registrations can be challenged by third parties; most commonly on the grounds that the design lacks novelty or individual character.

It is the external appearance or shape of a product or a part of a product. A design may arise from the lines, contours, colours, shape, texture and/or material of a product and/or its ornamentation. Designs can be either two-dimensional or three-dimensional and the definition includes graphic symbols (such as computer icons), logos, packaging, screen displays and typefaces.

There are three kinds of protection potentially available for a design:-

• Registered Designs
• Unregistered Design Rights
• Copyright

They are not mutually exclusive and so a single product may be protected by all or some of them.