In the latest IP Doctor article, IP lawyer Niall Head-Rapson of McDaniel & Co answers your questions on unregistered rights

In the latest article, IP Doctor Niall Head-Rapson from McDaniel & Co. discusses unregistered rights.

  • Do you know what automatic unregistered intellectual property rights you have in your product? 
  • Do you know how and when they occur and how long they last?

I have heard of copyright but I thought it was just for books

Copyright can protect a wide variety of things such as books, paintings, cartoon sketches, music, photographs films and plays. All of these come about because of somebody’s though, skill and judgment in their creation. There may be a number of different and separate copyrights subsisting together in everyday products. For example take a music CD. The lyrics to the song would have a separate copyright as would the music and the actual recording of the song and the music together would be protected as a sound recording. Also any graphics on the CD cover and text inside the cover (for example giving a history of the band) may also be individually protected.

It could be that you have copyrights in your product that you do know not about and it would be advisable to speak to a lawyer.

So what is unregistered design right?

There are two forms of unregistered design right, a UK version and a European Community version.

The UK version protects the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, provided the design is original and non-commonplace in the design field in question at the time of its creation. In reality it protects only 3D aspects of products and not things such as surface patterns and the materials a product is made from.

The European Community version protects the appearance of the whole or part of a product and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product, provided the design is new and of individual character. This right therefore protects more features of a product than the UK version i.e. colours and surface patterns, but is more susceptible to attacks on its subsistence.

Can a product contain both copyright and design right?

Potentially yes. Although to some extent UK design right was introduced to prevent copyright being asserted to protect industrial designs, such as spare parts, there is in some limited circumstances still an overlap between the rights. If a design is a work of artistic craftsmanship and/or a sculpture then it could be protected by artistic copyright. Furthermore, its 3D shape and configuration could be protected by UK unregistered design right and its overall appearance, including colours and materials, by Community Unregistered Design right. In those circumstances the product could have up to 3 different rights subsisting.

In addition, a product may be protected by UK design right for its shape; and copyright may apply to its surface patterns or decoration if they can exist independently from their application to the 3D shape. An example could be the design of the mug (shape protected by design right) and the drawing of a cow applied to it (surface decoration which could exist without being applied to the mug i.e. it could also be applied to a t-shirt or bag).

Is there an unregistered version of a trade mark?

Yes. If you sell a product or service under a particular brand or ”get-up” then over time you could develop a goodwill and reputation in respect of that brand or get up so that the public will associate goods or services bearing those features as coming from a particular source and/or having particular qualities. Customers will look to those features to help them differentiate different companies’ products and be confident they are getting a certain quality. If somebody else then begins using the same or a similar name or get up for similar products people could be confused into thinking that their products are your products or that you are in business together. In those circumstances,  you may have an action for what is known as “passing off”.

Is it possible to take legal action relying on unregistered rights?

Yes.  However unregistered rights such as copyright and design rights only protect against copyists so that if someone has produced a similar looking product without copying, there is no case to answer. The burden is always on you to prove your case if relying on unregistered rights and that can include proving you did create the design you say has been copied and when. Therefore it is important to try and retain all documentation that goes into the production of your product in case it is needed at a later date. Try to ensure this documentation is signed and dated so that a paper trail exists.

How do I know which world territories recognise my unregistered rights?

It can often be difficult to know without seeking legal advice. It is always recommended to do so. However,  Community Design right is applicable in all 27 member states of the EU. UK design right is limited territorially to the UK (and a handful of countries offering reciprocal protection). Copyright on the other hand can be far wider ranging because of various international conventions and treaties which most countries in the world are party to and which offer reciprocal protection to contracting states.  So for example a book that is copyright in the UK will be protected in France. Difficulties can arise when it comes to copyright works which have been industrially exploited as often the level of protection offered can be left to individual countries. Advice should always be sought.

This article was first published 6.8.10