Briefing note - Registered Designs, Excluded Subject Matter and Infringement

In order to qualify for registration the features of shape, configuration, pattern or ornamentation of the design in question must be new, have an individual character, and not fall into the excluded subject matter.

Exclusions

Methods of construction, and features of shape or configuration that are determined solely by the function that the article must perform or are determined by the appearance of another article which the article is intended to be used in conjunction with are not registrable. Where aesthetic characteristics of a design are not usually taken into account by purchasers or users of the type of article to which the design is applied, the design is also not registrable subject matter.

When a design is made up of two or more replaceable parts, only those parts of a design that are visible during normal use are registrable.

Otherwise known as “originality”, the requirement that a design is new and has an individual character is judged against designs made available to the public before the application date (the ‘prior art’). In the event that the design differs only in immaterial respects to the prior art, the design cannot be said to be original. A design is original where it leaves overall impression that is different to any other design falling into the prior art. In assessing the overall impression, the degree of freedom for the designer is taken into account.

Disclosures and Prior Art

The prior art contains all designs made available to the public, generally speaking prior to the application date for the design. It includes designs that have been:

1. published
2. exhibited
3. used in trade
4. otherwise made available to the public
5. except where:
   1. the design could not have become known to a persons involved in the sector where the design would be used;
   2. confidentiality has been maintained;
   3. where 12 months has not elapsed since its disclosure.

The prior art is comprised of instances of the design in the sector, rather than products existing in the sector. If a previous design exists in the EEA, it is said to anticipate the later design.

Individual Character

A new design is said to have an individual character when it leaves a different overall impression on an informed user from previous designs. The degree of freedom and limitations caused by functional restraints when the designer formulated the design will be taken into account when assessing the individual character of the design, which means that slight variations to the prior art will have a lesser effect on the registrability of the design. Obviously, the scope of the protection is also reduced.

Purely functional designs are not protectable as they are seen to be an unfair application of design rights.

Complex Products are defined as products composed of at least two replaceable component parts, where the product is capable of being disassembled and reassembled. Only visible features of complex products will be taken into account to assess individual character of component parts. The features must be visible when the product is used in normal operation.

In order to maintain novelty, disclosures may only be made with an obligation of confidence on the recipient, otherwise novelty is lost if it is made more than 12 months prior to the application date.

Exclusive Rights and Infringement

Registration of a design grants the registered proprietor the exclusive right (in respect to the articles to which the design was registered, and similar designs) to make or import the products for sale or for use in a business. Where a third party exercises this right without the licence of the registered proprietor, that third party infringes the rights of the owner.

Persons making anything that allows the article to be made also infringes the exclusive rights of the owner of the design, and includes where component kits when assembled would infringe the design.

Should a design be properly classified as a textile reduced protection applies under the UK Act. For such items, infringement claims may only be made for features of ornamentation. Handkerchiefs, shawls, bathmats, table cloths, towelling, fixed settee covers and blankets amongst others are considered categorised as textiles under the Act.