Design in UK Law

UK unregistered design right, in contrast to copyright, has a relatively short duration. Protection lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first. If articles made to the design are put on sale within the first 5 years from the end of that calendar year, then the design right lasts for only 10 years from the end of the calendar year of first sale.

PMS contends that the design corpus includes all designs which qualify as prior art under Article 7(1) of the Regulation and are not excluded by either the obscure designs exception or the confidential disclosures exception. Magmatic disputes this, and contends that the design corpus consists of the designs with which the informed user is likely to be familiar.

As Aldous J observed in the passage I have set out in the Klucznik case, there is a difference between an enquiry into whether the item copied forms a substantial part of the copyright workandan enquiry whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right protection. On that test it may not be enough to copy a part, even a substantial part. Regard has to be had to the overall design which enjoys design right.

"This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action, or, more usually, the service of the statement of claim. This means that a plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right."

The House of Lords decided in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 that the question of substantiality is a matter of quality rather than quantity. That question, as it seems to me, must be answered by reference to the reason why the work is given copyright protection. In literary copyright, for example, copyright is conferred (irrespective of literary merit) upon an original literary work.

It seems to us that the Judge has in effect come to the conclusion that in the field of furniture all that is needed to qualify as a work of artistic craftsmanship is a sufficient originality of design to qualify as a design under the Designs Act. It seems to us to give no sufficient effect to the word "artistic" in the definition in the 1956 Act. Mere originality in points of design aimed at appealing to the eye as commercial selling points will not in our judgment suffice.

In the light of the decision of the CJEU in Easy Sanitary, it is not necessary, in my view, for it to be established that the informed user would know of an item of prior art for it to be considered as part of the design corpus.