GUIDANCE NOTE

REGISTERED AND UNREGISTERED DESIGN RIGHTS

1. REGISTERED DESIGN RIGHT (“RDR”)

RDR is governed by the Registered Designs Act 1949 (“RDA”).
The main advantage of the RDR is that it gives the owner a monopoly right. If a design is registered and an
infringing act occurs, the owner of the RDR need not jump the hurdles of proving copying or causation (as
with copyright and UDR). As such, the right is easier and cheaper to protect than the unregistrable rights.
A design may be registered as a UK RDR at the UK Intellectual Property Office or as an EU RDR at the Office
of Harmonization for the Internal Market (OHIM). The same criteria apply for both registration regimes, as a
result of amendments made to the RDA by the Community Designs Regulations 2005.
1.1. Designs protected by RDR
The RDR applies to “the appearance of the whole or part of a product resulting from the features of, in
particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.”
(s.1(2) RDA).
The above terms would cover, for example, the design of a chair as a whole, and/or its arms (“the whole or
part of a product”), the design of an Alessi lemon squeezer (“lines, contours, colours, shape”), the pattern
on a dinner service (“ornamentation”), and the pattern on wallpaper or textiles (“texture or materials”).
A “product” is defined by s.1(3) RDA as “any industrial or handicraft item other than a computer program”
and includes in particular, “packaging, get-up, graphic symbols, typographic type-faces and parts intended
to be assembled into a complex product.”
1.1.1. This includes the following:
 Surface decoration
 Artistic and non artistic 3D articles
 2D drawings
 Component parts, but only if visible during normal use of the complex product
1.1.2. However, it does not include:
 Hidden inner workings
s.1B(8)(a) RDA – designs of parts are only registrable if “visible during normal use of the complex
product”
 “Must match” exception
This exception applies to parts of a complex product, not to the complex product as a whole (which
may still be registrable).
s.1C(1) RDA – For “features solely dictated by the (complex) product’s technical function” (e.g. a
corkscrew). In such cases, the designer has no freedom in the design and it is exempted from RDR.
 “Must fit” exception
s.1C(2) RDA – For “features…which must necessarily be reproduced in their exact form and
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dimensions so as to fit” the complex product so that it can perform its technical function (e.g. the
curves of the clamp on a bicycle headlamp which is designed to fit around the handlebars)
 Designs contrary to public policy or morality (s.1D RDA)
1.2. Requirements for RDR
1.2.1. Novelty
A person wishing to register a design right must compare the design to all existing designs
(registered and unregistered) made available to the public anywhere in the world. The requirement
of novelty is not fulfilled if it is identical to another design or if it differs from another design in
immaterial details only (s.1B(2) RDA).
The novelty of a design is also defeated by any public disclosure by the person wishing to register it
prior to the application for registration (s.1B(5)+(6) RDA).
1.2.2. Individual character
In addition, a person wishing to register a design right must compare it to any similar existing
designs and consider if it creates a different overall impression in the eyes of the informed user.
(s.1B(3)RDA).
In determining the individual character of a design, the degree of freedom of the author in creating
the design is taken into consideration (s.1B(4) RDA)
1.2.3. Registration
 Registration process takes 3-4 months
 Application Form DF2A (UK Intellectual Property Office website http://www.ipo.gov.uk/design/d-
applying/d-apply.htm)
 The fee is £60
 Be aware that third parties with an interest may apply to cancel the registration under s.11ZA+B
1.3. Ownership
The general rule is that the author (creator) of a design is its first owner (s.2(3) RDA). However, designs
created in the course of employment are owned by the employer (s.2(1B) RDA) and (unlike the position
with copyright), commissioned designs are owned by the commissioner (s.2(1A) RDA).
1.4. Infringement
There are two points to consider when establishing a claim for infringement.
1.4.1. Has the defendant committed an infringing act?
s.7(2) RDA provides a non-exhaustive list:
 Making a product in which the design is incorporated or to which it is applied
 Offering such a product or putting it on the market
 Importing or exporting such a product
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 Using such a product

 Keeping stocks of such products for any of these purposes
The act is only infringement if made for commercial reasons.
1.4.2. Does the defendant’s design produce a different overall impression on the informed user from the
registered design?
1.5. Remedies
The remedies available are not specified in the RDA but are the same as for any other IP right:
 Injunction
 Damages / account of profits
 Order for destruction / delivery up
However, note that damages are not available against an innocent infringer as defined in s.9(1) RDA.
2. UNREGISTERED DESIGN RIGHT (“UDR”)
UDR, like copyright, exists without the requirement for registration. It is provided for by Part III of the
Copyright Designs and Patents Acts 1988 (CDPA) as interpreted by case law. It typically protects the
design of such items as machine parts and purely functional objects. The burden of proving that the right
exists and has been infringed by copying and the causal link means it is not as easily litigated as the RDR.
The EU UDR was introduced by the Community Designs Regulations 2005 (which also introduced the
EU RDR). Confusingly, the criteria for protection as an EU UDR are the same as for an EU RDR / UK RDR.
The EU UDR arises automatically in respect of eligible designs made in the EU after 6 March 2002.
2.1. Designs protected by UDR
UDR applies to “the design of any aspect of the shape or configuration (whether internal or external) of the
whole or part of an article” (s.213(2) CDPA). The term “article” is not further defined in the CDPA and can
be distinguished from the “product”, which is protected by the RDA.
2.1.1. UDR may subsist in the following:
 Non artistic 3D articles
 Hidden inner workings
2.1.2. UDR does not protect:
 Artistic 3D articles
 2D drawings
 Method or principle of construction
s.213(3)(a) CDPA
 “Must fit exception”
s.213(3)(b)(i) CDPA
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 “Must match” exception

s.213(3)(b)(ii) CDPA
 Surface decoration
s.213(3)(c) CDPA
2.2. Requirements for UDR
UDR will automatically subsist in a design (as described above) if it also satisfies the criteria laid down in the
Farmers Build case.
2.2.1. Originality
The design must be original in the copyright sense (i.e. not copied).
2.2.2. Not commonplace in the relevant design field at the time of its creation
s.213(4) specifies this criteria and is a question of fact to be decided by the court.
2.2.3. Fixation
The design must be recorded in a design document or embodied in an article (s.213(6))
2.3. Ownership
The general rule is that the designer is its first owner (s.214(1) CDPA). However, designs created in the
course of employment are owned by the employer (s.215(3) CDPA) and (as with RDR, unlike the position
with copyright), commissioned designs are owned by the commissioner (s.215(2) CDPA).
2.4. Duration
Under s.216 CDPA, the UDR will last for either

2.4.1. 15 years from the end of the calendar year in which the design was fixed, either by being recorded
in a design document or embodied in an article (whichever is first); or
2.4.2. 10 years from the end of the calendar year in which sales of the article started if the design is
commercially exploited within 5 years of its creation.
2.5. Infringement
Copying and causation must be proved. The defendant’s design or article must be made exactly or
substantially to the claimant’s design. This is a question of fact, to be decided by the court on an objective
comparison. The two infringing acts are:
2.5.1. Making articles to the design (s.226(1)(a) CDPA); and
2.5.2. Recording the design in a design document if made for the purpose of making an article
(s.226(1)(b) CDPA)
It is secondary infringement to import or deal with an infringing article if the defendant knows or has reason
to believe that the article is infringing (s.227 CDPA).
2.6. Remedies
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The remedies available are not specified in the CDPA but are the same as for any other IP right:
 Injunction
 Damages / account of profits
 Order for destruction / delivery up

Yasmin Joomraty
Laurence Kaye Solicitors
© Laurence Kaye 2007
T: 01923 352 117
E: laurie@laurencekaye.com
www.laurencekaye.com
http://laurencekaye.typepad.com/

This guidance note is not intended to be exhaustive and it does not constitute or substitute legal
advice, which should be sought on a case by case basis.
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