Unregistered Design Right Protection In The UK: A Genuine Asset

UK unregistered design rights are an important commercial asset and can provide effective and valuable protection in many business sectors. This has been illustrated over the past year with our client Kohler Mira successfully enforcing design rights.

Registered designs applied for at the UK Intellectual Property Office (UKIPO) are effective in the UK whilst Community registered designs (RCDs) are enforceable in all European Union countries. UK and Community registered designs can be renewed for up to twenty-five years.

A lesser known right is unregistered design right (UDR). This right comes into existence automatically and protects any aspect of the shape and configuration of an article or a part of an article. The shape and configuration protected may be any part of the article, whether internal or external.

A recent series of decisions about the infringement of the UK unregistered design right of Kohler Mira's electric shower has reinforced the value of this type of design rights to IP owners. This case is a good example of how far the courts are prepared to go to protect UDRs and demonstrates that UDRs can be successfully enforced even when there is no proven infringement of registered design rights.

In the case in question, Kohler Mira Ltd v Bristan Group Ltd [2013] EWPCC 2, Kohler Mira Limited filed a claim for infringement of two Registered Community Designs (RCDs) and three UK unregistered design rights subsisting in an electric shower unit. Both of Kohler Mira's Community design registrations were held to be valid but not infringed by Bristan's products. However, Bristan was held to have infringed Kohler Mira's UK UDRs in the electric shower unit.

Bristan's alleged infringing products had some features in common with the RCDs; however it was found that they lacked the features that, in the judge's view, contributed most to the individual character of the RCDs. Thus the judge found that the RCDs gave a different overall impression and were not infringed by Bristan's shower unit products.

A UDR is infringed when a third party copies the design so as to produce articles exactly or substantially to that design. In order to enforce UDR it is necessary to show that the design is original, i.e. that the shape and configuration of the protected product is not the same as any products that have been publicised before the design was created. It is also necessary to establish that the UDR has been copied. This seems onerous but the courts...