UK: Recent Developments in the Law of Registered Designs Likely to be of Interest to the IT Sector

Two recent developments in English law relating to registered designs are likely to be of interest to the IT sector, especially to those engaged in web design and the design of graphical user interfaces for software.

On 9 December 2001 the UK Regulations implementing the European designs directive (98/71/EC) came into force. As a result UK law now expressly provides that graphic symbols and type-faces, as well as “get-up” in general can be the subject of registered design protection, although this development had been anticipated to some extent by the High Court’s decision in October in the case of Apple Computer Incorporated v Design Registry.

Background

Under the previous system of registered design law, deriving from the Registered Designs Act 1949, registered design protection was available only for design features applied to an article by an industrial process, meaning that any registration was limited to the specific article or articles for which it was sought, and that an industrial process needed to be identifiable. The new law dispenses with the need for an industrial process, and differs in that it is the design itself which is registrable, meaning that protection extends to any product to which the design is applied.

The Court’s decision in Apple

The issue of the registrability of computer icons under the old law was tested in the Apple case, at least insofar as the icons concerned were features of a pre-loaded computer operating system. The case concerned Apple’s appeal from the decision of the Design Registry to refuse registration for user interfaces generated by its operating system represented as icons which appeared periodically on a computer display.

The Court overturned the Registry’s decision, holding that Apple’s interfaces were registrable on the basis that the computer screen was an article, and that the icons were part of its design built into the software as part of an industrial process.

Although this decision was made under the old law, the Court made reference to the designs directive in concluding that there was no valid “floodgates” argument against registrability, given that the Directive envisaged that designs of this type could be registered.

The position under the new law

The new law defines a potentially registrable design as the appearance of the whole or part of a product. “Product” is defined for this purpose as “any industrial or handicraft item other than a computer program”, including in particular get-up, graphic symbols and typographic type-faces.

The extent of the exclusion of computer programs has yet to be tested, but initial guidance from the Patent Office is that this is understood to be limited to the lines of code and functionality of a program itself, and that icons and other graphics produced by a program may be considered protectable as graphic symbols.

Comparison with existing forms of protection

It has long been possible to seek protection for get-up, graphic symbols and type-faces in copyright law, registered trade mark law and the law against passing off, the availability of each depending on the circumstances. Each of these forms of protection will continue to be available where they apply, but registered design law may provide a valuable additional form of protection.

Many IT professionals will be broadly familiar with the main features of copyright, given that historically this has been the main type of intellectual property relevant to computer software and graphics. Copyright protection still has an advantage over a registered design in that it arises automatically, and effectively costs the owner nothing to obtain. However, a registered design can provide a stronger form of protection, because it is a monopoly right which will be infringed by anyone who makes unauthorised use the design, whether or not he copied the designer’s work. In order to prove copyright infringement it is necessary to establish copying, which is not always easy, especially if it cannot be shown that the alleged infringer had seen the work which he is accused of having reproduced. Another advantage of a registered design is that, because it is contained in a public register, it is much easier for the owner to assert that he is the owner of the right.

The requirement for the design to be “new”

As a registered design is a monopoly right, however, there are greater hurdles to be overcome before the right can be obtained. In order to be registered the design in question must both be new and “have individual character”. A design will only be “new” for this purpose if no identical design, or no design whose features differ only in immaterial details has been made available before the priority date of the application. The priority date will normally be the date on which the application is made, although there is provision for applications to derive priority from a similar application made abroad.

The implication of this is that it is potentially fatal for an application for a registered design, or a design once registered for there to have been anything identical (or differing only in immaterial details) made available to the public anywhere in the world at any time prior to the priority date. (It is worth noting that this is another respect in which the new regime will differ from the one which it replaces, as the previous law only concerned itself with designs which had been made public within the UK.)

This requirement of worldwide novelty will be familiar to those working in fields where patents are commonly applied for, but will probably be something new to most working in graphical design. The new law on registered designs is not as strict as the patent regime, however, as the applicant for a registered design has a twelve month “grace period” after which he has made a design public during which to apply for a registration. This may be valuable to applicants, as it will provide an opportunity to “test the water” as to the likely commercial success of a new product before spending money on an application, although it may be fatal to a subsequent application if during the grace period a third party publishes a similar design which has been generated independently.

The need for “individual character”

Even if a design is “new”, in order to be registrable it must also have “individual character”, meaning that small differences from pre-existing designs will not be sufficient to qualify the design for registration.

The test for whether a design has individual character is whether the overall impression it produces on the informed user differs from the overall impression produced by pre-existing designs. The law additionally provides that, in determining the extent to which a design has individual character, the degree of freedom of the designer in creating the design is to be taken into consideration, presumably meaning that the less the freedom of design in the field in question is restricted by functional considerations, the greater the degree of individuality which needs to be achieved for the design to be registrable.

The rights of the designer and his client

Another interesting respect in which the law as regards registered designs differs from copyright law is in relation to the respective rights of a contractor and his client. As in the case of copyright, where a design is created by an employee in the course of his employment, the rights in the design will belong to the employer. However, registered designs differ from copyright in that, where a work is commissioned for money or money’s worth from a contractor who is not an employee, it is the commissioning client who will automatically be the first owner of the right to apply for design registration.

This will be welcome news to those who retain outside contractors to perform web design or other design work for them. However, it should be noted that a registration can be declared invalid if the registration constitutes an unauthorised use of a copyright work, so the client of a designer still needs to take care that the designer has assigned to the client the copyright in a design which the client may wish to register.

As far as the designer is concerned, it is important that, where the commercial intention is that the rights to the design should be retained by him, there be a written contract assigning those rights back to the designer to the extent that they have vested in the client, as otherwise the designer may find that he has lost the right to apply for a registered design.

Duration of registered design right

Once a design is registered, protection subsists for an initial period of five years from the date of registration. After that it can be renewed, subject to payment of the necessary fee, for up to a further four periods of five years, giving a maximum total period of protection of 25 years.

"© Herbert Smith 2002