Unregistered Designs

In the EU, unregistered European Union designs protect the appearance of a product for three years from the date on which the design is deemed to have been made available to the public within the European Union. Again, the protection offered by these rights is limited to being able to prevent copying by a third party and does not cover independent creations where no copying was undertaken.

In the UK, designs may be automatically protected under two different regimes.

First, “supplementary unregistered designs” mirror the rights provided by an unregistered European Union design, but for designs first disclosed in the UK. However, these rights are only valid in the UK, rather than across the EU.

Second, “UK unregistered design rights” provide protection for a shorter period of 15 years from the end of the calendar year in which the design was first recorded and 10 years from the end of the calendar year in which articles made according to the design were first made available. UK unregistered design rights only protect the shape and configuration of 3-dimensional objects, and exclude other features like surface decoration and colour. Furthermore, during the last 5 years of protection, the proprietor must grant a licence if requested by a third party. In this sense, the effect of the design right is reduced in the final 5 years and can no longer be used to completely prevent copying, but it can still be used to generate royalties. Finally, and importantly, only designs by residents in a “qualifying country” qualify for UK unregistered design right. These qualifying countries include the UK, and a number of UK former protectorates (including Hong Kong and New Zealand).

Relying on unregistered design rights presents risks surrounding disclosure, where first disclosure in the UK or the EU may invalidate automatic protection in the other. Unregistered design rights also have relatively short terms, particularly EU unregistered design rights which are only for 3 years. Consequently, we generally advise our clients, based on the limited nature of these automatic unregistered rights, to register their designs to secure appropriate protection, at least for commercially important designs. There is no need to panic if a first disclosure has already been made, because many major jurisdictions such as the UK, Japan, USA, and the EU provide a 12-month grace period from the earliest disclosure in which registered design applications may still be validly filed. However, some countries have a shorter grace period, and some countries, such as China, have no such grace period.