Intellectual Property Rights: registered designs
The term “design” is defined in S1 (2) Registered Designs Act 1949 as:
the appearance of the whole or a 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.
A registered design provides the owner with a monopoly right to the design or appearance of the whole or part of a product resulting from the features of and in particular the lines, contours, colours, shape, texture and material of the product. The registration of designs thus aims to protect the appearance of a product including its shape and any surface decoration or ornamentation rather than the function of a product.
The current requirements for registration are that a design:
- must be new - it must not be the same as any design which has already been made available to the public; and
- must have an individual character - the overall impression it produces on an informed user of the design must differ from the overall impression produced on such a user by any design which has already been made available to the public.Registration gives the owner the exclusive right to make, import, sell or hire an article in respect of which the design is registered. This is a monopolistic right which enables the registered owner to bring proceedings for any breach including an unauthorised drawing or mould that would enable an article to be made which infringes the design. If, however, the registered owner fails to exploit a design, a third party can apply to the Patent Office for a compulsory licence.
Registered designs are assets within the meaning of TCGA92/S21(1).
The main act governing the law on UK registered designs is the Registered Designs Act 1949 which consolidated and expanded earlier legislation. The criteria for registration are still relevant when considering the validity of a pre 1989 registered design. Certain legislative changes since then mean that designs registered after 1 August 1989 must meet new criteria. The Registered Designs Act 1949 was also amended by the Registered Designs (Amendment) Rules 2001 (SI 2001/3949) which were intended to harmonise UK registered design law with other EC member states. The amendments apply to designs registered after 9 December 2001.
When considering the CG treatment of a registered design it is important to begin by determining which version of the Design Act applies because different rules apply in relation to the criteria for registration and the duration of registration.
After establishing the facts you will need to consider whether a registered design is a wasting asset within TCGA92/S44(1), see CG76700+.
Registered designs are protected for 25 years from the date of registration and are capable of being assigned or licensed.
The original owner of a registered design will normally be its author or designer except where it was commissioned or created by an employee in the course of employment when the commissioning party or employer will be treated as the owner.
Registered designs may also be protected by copyright law if they are “artistic works” within S1 (1) Copyright, Designs and Patents Act 1988, see CG68250.
Guidance on obtaining valuations of intangible assets including registered designs is given at CG68300+.
Guidance on the circumstances in which an unregistered design may be protected as a design right is given at CG68240.