• Rosie Burbidge

Unregistered designs - super useful rights which are unappreciated by designers


Some designs last longer than others

Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were published last week. My key takeaway is that the designs community does not appreciate the value of designs - particularly unregistered designs. This post aims to change that.


Unregistered vs unregistered designs

In the report, unregistered designs were rated at the bottom of the list of useful rights for the designs industry. However, in practice it is usually the most useful and versatile right. The report confirmed that unregistered design rights are more commonly litigated and have a much higher success rate than registered designs. 


Strangely enough, the authors of the report expected registered designs to be much more useful than unregistered rights. If government expectations are out of line with the commercial reality, it is not surprising that the designs industry does not appreciate unregistered designs.


I conducted a much less sophisticated review of IPEC cases for my old firm, Rouse, back in 2012, at that time unregistered design rights were successful in every reported case. The pattern does not appear to have drastically changed in the intervening years


Unregistered designs in a nutshell

Across the EU, unregistered community designs or UCD protect the visual appearance of the whole or part of a product. This can include the product’s shape, texture, surface decoration and logos.


UCDs arise automatically provided that the design is new, has “individual character” and is first published in the EU. To have individual character, a design must (i) not be commonplace and (ii) have a different overall impression to earlier designs.


UCDs apply across the whole of the EU and last for three years from the date of publication. They are useful for consumer goods industries but the short shelf life can pose problems for longer term goods.


Registered designs

Fortunately, businesses have up to one year from publication in which to register the design as a registered community design or RCD. There are also separate national registries for designs.


RCDs can last for up to 25 years provided they are renewed every five years. In practice, the sooner you register a design, the better.


Think carefully about exactly what you register as a design - this could be a drawing, photograph or CAD or be in colour, grey scale or black and white. Any details will limit the scope of protection but make it harder to invalidate.


UK unregistered design right

Finally, the UK also has its own unregistered design right which focuses more on industrial designs and only protects the shape and configuration of a product. However, it has a more generous term of protection of ten years from first marketing.


#design #litigation #unregistereddesign #rights #IPrights #registereddesign #dispute #protection #UCD #RCD

© 2020 by Rosie Burbidge

All content on this website is provided for your personal edification and delectation but it does not constitute legal advice. If you would like legal advice regarding any of the issues raised on this site, please contact Rosie: rosie.burbidge@gunnercooke.com

  • Black LinkedIn Icon
  • Black Twitter Icon
  • Black Instagram Icon