Jane Lambert
In everyday language the word
design is used in two senses. We talk of designer jeans and furnishings but also of engine and web design. When used in the first sense the word refers to the appearance of things. In the second sense the word refers to the shape or configuration of an article often so that the article can perform a function. We call designs in the first category
decorative, ornamental or even
aesthetic designs and those in the second category
functional designs. Most legal systems including ours protect decorative and functional designs in different ways.
That has not always been the case. Until the 31 July 1989 most functional as well as decorative designs were protected by copyright in the United Kingdom and many Commonwealth countries. Theoretically s.3 of the
Copyright Act 1956 did not protect designs as such, but the engineering or production drawing from which an object (which could be a machine or a component for a machine) was manufactured. So long as they were not copied wholly from an antecedent work, such drawings qualified for copyright protection as original artistic works. Copyright subsisted in those drawings for a very long time, namely the life of the author plus 50 years. If the object that had been made to the drawing had been copied then so too had the drawing, albeit indirectly, The sanctions for copyright infringement were draconian. In addition to injunctions. orders for delivery up and compensatory and additional damages each infringing copy was deemed to belong to the copyright owner and an infringer who had sold such such copies also had to pay damages for conversion.
The difficulties of protecting functional designs by artistic copyright were exposed by the decision of the House of Lords in
British Leyland Motor Corporation and Others v Armstrong Patents Company Ltd and Others [1986] 2 WLR 400, [1986] UKHL 7, [1986] RPC 279, (1986) 5 Tr LR 97, [1986] FSR 221, [1986] 1 All ER 850, [1986] ECC 534, [1986] AC 577 where a motor manufacturer relied on copyright to prevent a replacement parts manufacturer from making exhaust pipes for its motor cars. In order to prevent monopolization of the after-market the law lords developed a non-statutory exemption to the Copyright Act 1956 conferring a right to repair.
Shortly after that appeal Parliament passed the
Copyright, Designs and Patents Act 1988 which came into effect on 1 Aug 1989. S.51 (1) of that Act provided:
"It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design."
At a stroke that provision brought to an end copyright protection of functional designs. However,
Part III of the same Act introduced a new intellectual property right known as design right which subsisted in original designs. "Design" for these purposes was defined by
s.213 (1) of the 1988 Act as:
"the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article."
This right could be infringed by making articles to the design and making articles to the design was defined by s.226 (2) as
"copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly."
Although design right is very similar to copyright there are a number of important differences. First, the term is very much shorter:
- up to 10 years from the date upon which articles made to the design are first offered for sale or hire; or
- up to 15 years from the date the design was first recorded in a design document or prototype if articles made to the designer are not offered for sale or hire in the first 5 years of that period.
Secondly, in the last 5 years of the term anyone in the world including an infringer can apply for a licence to do any act that would otherwise infringe design right as of right. Thirdly, as very few countries adopted similar legislation the citizens of very few countries outside the EU are entitled to claim design right protection for their functional designs.
S.213 (3) (c) of the Act excludes "surface decoration" from the definition of "design" for the purposes of Part III. Thus, the only way of protecting fabrics, wall coverings and the like remains copyright.
Designs that are new and have individual character may also be registered at
OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs) for the EU (including the UK) under the
Community Designs Regulation (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1). Designs registered with OHIM under this Regulation are known as
registered Community designs.
The Community Designs Regulation also establishes a new intellectual property right for the whole EU known as unregistered Community design. Designs that are new and have individual character and could therefore be registered with OHIM as registered Community designs or indeed with the IPO under the Registered Designs Act 1949 are protected from copying for up to 3 years from the time they are first made available within the EU. This unregistered right is particularly useful for the fashion, toy and other industries where the shelf life of a design is very short.
To recap there are five ways of protecting designs in the UK:
- functional and indeed some ornamental designs are protected in the UK alone by design right pursuant to Part III of the Copyright, Designs and Patents Act 1988;
- artwork recording designs of fabrics, wall coverings and other surface decoration continues to be protected by copyright;
- designs that are new and have individual character can be protected in the UK by registration under the Registered Designs Act 1949;
- such designs could also be protected throughout the whole EU by registration as registered Community designs; and
- such designs can also be protected for up to 3 years throughout the EU without registration as unregistered Community designs.
