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Different types of design protection

Emily Teesdale External Link of Abel & Imray External Link explains the different types of design protection available in the UK and the advantages and disadvantages associated with them.

Question

"I see that it is possible to get unregistered design rights without having to file an application and pay any fees, so why should I consider registering a design?"

Answer

Whilst it is, of course, true that UK unregistered design right (UDR), and indeed Community unregistered design right (CUDR), can provide valuable protection, it is important to realise the systems may not provide adequate protection in a lot of circumstances. In these cases, it is best to also have registered design rights (RDR) in place.

In order to appreciate the pros and cons of the different types of design protection, let us have a look at the major differences between them:

What is the protection provided?

UDR and CUDR protect you against infringers who copy your design to produce articles exactly or substantially to the design. In other words, you have to prove copying and show that the two designs are substantially similar (i.e. they give the same overall impression). If you have RDR, you do not have to prove copying. This is very important as it is notoriously difficult to prove copying in court. There is also a rebuttable presumption of validity of a registered design.

How long does protection last?

RDR lasts up to 25 years (upon payment of renewal fees every 5 years), whereas UDR only effectively lasts for 10 years from the end of the year of the first sale of an article. UDR also provides for "licenses of right" in the last 5 years of the term. Hence, it only gives an effective period of 5-6 years in which copying can be prevented. CUDR only lasts 3 years.

Other factors

Assuming that your company is a UK company, you would be entitled to quality for UDR but this is not always the case. If your company is not based in the EU, Hong Kong or New Zealand you may not be entitled to UDR. However, CUDR would be available.

There are also some limitations to what in what can be protected by UDR. For example, surface decoration is not protectable, although it is protectable by CUDR.

Conclusion

So you can see that registered design protection has two significant advantages over automatic unregistered design rights (UDR and CUDR):

  • RDR is not reliant on proving copying, and
  • RDR has a much longer duration of protection.

So, ideally, you should have both at your disposal.

Therefore, registered design protection should be applied for, preferably prior to any public disclosure but,in any case, within 12 months of such disclosure.

Disclaimer - Please note that the above article is not intended as legal advice. Abel & Imray accept no responsibility for any actions that are undertaken as a result of reading the above article. If you have any issues relating to intellectual property we recommend you contact a Chartered Patent Attorney or Registered Trade Mark Attorney. Details of how to contact a local Attorney can be found on the Chartered Institute of Patent Attorneys website External Link or the Institute of Trade Mark Attorneys website External Link.