UK unregistered design right (UDR) can be a pretty valuable asset in your IP portfolio, but it may be that you’ve never really considered how it could be of use to you. It’s often said that UDR resembles the overlooked, younger sibling of the IP family and tends to be forgotten about – but the fact is it can actually be quite a beneficial means of protecting your business.
What are UDRs?
So what are they? Well UDRs are the “design rights” that were brought in under the Copyright, Designs and Patents Act 1988 (CDPA) and, rather confusingly, are quite distinct from “registered design rights”, which are an instrument of the Registered Designs Act. In an attempt to uncomplicate matters, we often simply refer to “designs rights” to cover both types – and since design rights under the CDPA don’t require registration, we refer to these as “unregistered” design rights instead (i.e. UDRs).
What do they protect?
UDRs share many characteristics with copyright – they exist automatically once a design is in some type of permanent or recorded form and the scope of protection is likewise essentially a right to prevent copying. However, whilst 3D objects are generally excluded from the scope of copyright unless they are “artistic works”, UDRs cover the shape or configuration of any original three dimensional design. UDR can therefore protect the appearance of a purely functional product with no aesthetic quality. This advantage is balanced out by a shorter period of protection: either 10 years after the design was first sold or 15 years after it was created (if no articles incorporating the design are sold within 5 years).
It is important to note a couple of other limiting factors – UDR does not extend to surface decoration and also won’t protect any features that are made to fit or are dependent on the appearance of another article (the so called “must fit” and “must match” exceptions). Otherwise, a design must simply be “original”. This term is not defined in the CDPA and at first glance, again, shares a similarity with copyright (where works are essentially original if they have not been copied). However, for UDR originality is a slightly bigger hurdle, as the CDPA does go so far as to say that a design is not original if it is commonplace in the design field in question at the time of its creation. Therefore, to some extent, this introduces the requirement for an element of novelty.
Why are they useful?
Ok, all fine so far, but why shouldn’t you overlook UDR – there seems to be a good deal of overlap with other IP rights, so what are the advantages? Well essentially it provides protection in an area where copyright can’t help you. UDR can protect 3D products which aren’t deemed to have the necessary aesthetic quality to be considered “artistic works” for the purposes of copyright. And whilst registered design right can obviously also be useful, this involves application costs that you might not be willing to fork out. In addition, some jurisdictions will not accept applications for registered designs that have been disclosed before the application was made, and although the UK and EU both have 12 month ‘grace’ periods, these deadlines can be easily missed. As UDR has no registration requirement, there is no risk that you will lose your rights by forgetting to register.
If that isn’t enough to convince you, an example of one scenario where UDR can play a useful role might sway you – copycat products. These can be a nightmare for businesses who have invested significant amounts in their branding and marketing campaigns. But often trade mark rights can be ineffective to prevent a lookalike from reaching the shelves. This is because in the vast majority of cases consumers are simply not confused by copycat products, and are well aware that the item they are purchasing is not the branded product. UDR can step in to fill this gap in protection as there is no requirement for confusion on the part of the public. You simply have to prove that your design has been copied – which a copycat product by nature will almost inevitably have done.