UK unregistered designs meaning

How to use this Checklist This Checklist flags issues that frequently emerge when negotiating and drafting the following agreement types: Design licence—pro-licensor Design licence—pro-licensee For further reading on design licensing, see these Practice Notes: Introduction to designs UK registered and unregistered designs Licensing intellectual property rights For example character merchandising agreements, consult the Precedents: Character merchandising agreement—pro-licensor and Character merchandising agreement—pro-licensee. For details of the key terms commonly found in a manufacturing agreement and designs licence, see: Manufacturing agreement and design licence—checklist. This Checklist can also, where appropriate, operate as the foundation for a straightforward non-binding heads of terms. For guidance on doing so, see Precedent: Heads of terms—commercial contracts. For support on negotiating an IP licence clause, refer to Practice Note: Negotiation guide—intellectual property licence clause. Checklist schedule for proposed licence of designs Points to consider • Further information • Notes (if any) (A) Key commercial considerations...

How to use this Checklist This Checklist flags typical issues that arise when negotiating a manufacturing agreement and a design licence, helping you focus on key points at each stage. For further information on the licensing of designs, consult the materials below and see the following Practice Notes: Introduction to designs UK registered and unregistered designs Licensing intellectual property rights For standalone design licences, consult Precedents: Design licence—pro-licensor and Design licence—pro-licensee. See also: Licence of designs—checklist. For character merchandising arrangements, refer to Precedents: Character merchandising agreement—pro-licensor and Character merchandising agreement—pro-licensee. Where suitable, this Checklist may serve as the basis for a brief, non-binding heads of terms. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts. Checklist schedule for proposed manufacturing agreement and design licence The following notes apply to the key commercial considerations identified and outlined herein. Notes Parties Parties: verify each party’s legal status and whether any third parties...

Consider the nature of the IP right From a lender’s standpoint, use this checklist to pinpoint key points when taking IP as security and the steps to implement it... Identify the IP right and applicable law; patents, trade marks, registered designs and copyright can be mortgaged or charged... Select security: a legal mortgage (assignment plus redemption and exclusive licence‑back) offers stronger control than a fixed charge; for charges, restrict disposals and hold an executed undated assignment in escrow (verify foreign recognition)... Confirm ownership, term, existing security, licences and third‑party interests; demand warranties and title evidence, especially for unregistered rights... Assess validity and maintenance: search prior rights, check renewals and genuine use, monitor infringement, review litigation; obtain professional opinions where needed... Value the right and routes on default (licensing or sale); add complementary assets if required... Cover associated rights and materials: unregistered marks/goodwill (only with the business), unregistered designs, database right, know‑how/confidential information, domain names, and software/source code with escrow... Register...

This Flowchart provides an overview of a UK design infringement action. The right invoked may arise from any of the UK design rights that sit alongside one another: UK registered designs (including re-registered designs) UK unregistered designs (sometimes referred to as ‘design right’) supplementary unregistered designs For added guidance on these rights, see the Practice Note: UK registered and unregistered designs...

View or print a full-size PDF version:...

Original news Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC), [2014] All ER (D) 130 (Jun). After the Patent County Court (as it then was) found that the defendant had infringed the claimant’s UK unregistered design rights, the Intellectual Property Enterprise Court held that the claimant should receive a sum equivalent to a royalty of 6.7% of the price at which the defendant sold the infringing shower units to its customers. Moreover, exercising its discretion with reference to policy considerations, the court ruled that the defendant could not invoke the defence of innocence under the Copyright, Designs and Patents Act 1988, s 233(1), when it was advanced for the first time during the damages inquiry. Briefly, what was the background to this judgment? This ruling concerns a damages inquiry following last year’s liability decision—Kohler Mira Ltd v Bristan Group Ltd [2013] EWPCC 2, [2013] All ER (D) 213 (Jan). The inquiry was conducted by HHJ Hacon on 29 April 2014 in the IPEC. The...

The major changes being introduced by the EU, specifically the EU design legislative reform package adopted by the Council of the EU on 10 October 2024 These measures comprise Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs (recast), together with the amendment to Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024, which modifies Council Regulation (EC) 6/2002 on Community designs and repeals Commission Regulation (EC) 2246/2002. The package is poised to open fresh opportunities and prompt new considerations for almost all businesses active in the EU or interacting with its markets. This Law360 analysis highlights the principal updates and their practical implications for companies, setting out workable ideas on how to plan strategically for the transition. A further feature of the reform is the updating of certain core terminology to reflect the architecture and reach of the refreshed legal framework. By way of illustration, the term ‘community design’ will...

In this issue: Trade marks/passing off Designs IP and technology IP rights and competition law Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Advocate General opines that misleading use of assigned trade mark consisting of designer’s surname may warrant revocation action (PMJC v [W] [X]) EU law allows a trade mark to be revoked where the proprietor’s use would mislead consumers about the nature, quality or geographical origin of the goods concerned. This principle has been considered for marks made up of the surname of the designer who first created the products, particularly once that designer is no longer involved with the company owning the marks. In Emanuel v Continental Shelf, Case C-259/04, it was decided that simply cutting the link between a designer and the trade mark owner does not, by itself, make the mark deceptive or liable to revocation. Some took...

What design protection is available in the UK? Design rights safeguard the shape, configuration or appearance of the whole or any part of a product or article, rather than its functional features. The purpose of design law is to specifically deter others from making products that closely follow the design or otherwise produce the very same overall impression as the original design. The design rights currently available in the UK are as follows: namely UK registered designs (including re-registered designs and re-registered international designs) UK unregistered design right (also known as design right) Supplementary unregistered design right (SUD) Each of these rights differs in qualifying criteria, scope and the duration of protection. For more information, see Practice Note: Comparison tables for design protection available in the UK. Before Brexit, the UK designs regime was substantially harmonised with the EU regime then. The Designs Directive (Directive 98/71/EC) harmonised the requirements for national registered design protection across the EU. It was...

Lookalike products and dupes are, by their nature, difficult for brand owners to deal with. They are designed to imitate, or to evoke, a famous or trending product, yet frequently avoid any clear branding cues for which the brand owner might hold registered rights. For example, a lookalike might mirror entirely the colour palette, overall appearance and tactile feel of the packaging of a renowned product, while adopting a different trade mark to sidestep liability. The difficulty in policing such products arises because, under UK law, there is no single, dedicated IP right tailored to address them. Instead, brand owners typically must piece together a mosaic of protections—copyright, passing off, and trade mark and design infringement—to prove the components of a claim against a copycat item. Makers and designers of lookalikes and dupes are, moreover, commonly sophisticated. They take care to steer clear of obvious trade marked brand names, choosing rather to reproduce more commonplace or generic features such as the overall design, visual impression and feel of a...

Why use artificial intelligence in design? As AI technologies, in particular generative AI, become more widespread and accessible, almost every sector is experiencing changes, opportunities and challenges, and design is indeed no exception. Employed for brainstorming, ideation and early concept development, AI can serve as a powerful aid, helping designers move past creative blocks and investigate a much wider range of visual possibilities. It can also raise efficiency: with generative AI, designers can quickly produce numerous variants and multiple design options at scale. That pace can accelerate the creative process and encourage further experimentation, potentially yielding highly innovative results. Nevertheless, bringing AI into design workflows introduces several legal risks that cannot be ignored. This Practice Note examines how IP practitioners advising design clients should respond to the rising use of AI across the industry by identifying and discussing these risks in detail. It considers ownership of IP rights in computer-generated designs and works lacking a human author, difficulties in protecting designs created wholly or partially by AI, and the...

The purpose of a claim form A claim form is the document that initiates proceedings. It sets out key details for the case, including: the court reference number to appear on all later court documents; the parties involved in the proceedings; the relief sought or what is being claimed; particulars of the claim (including any claim for interest); and contact details for the claimant, usually the claimant’s solicitor. The procedural requirements on how and where to commence proceedings are in CPR Part 7. General guidance on what a claim form should contain is provided in the Practice Note: Claim form—the contents. This Precedent is accompanied by material containing suggested wording for claims concerning infringement of UK registered designs, UK unregistered designs and/or supplementary unregistered designs. The Precedent also highlights the specific issues to consider when completing a claim form for these proceedings. The attached N1 claim form is illustrative only...

Case No. [ insert claim number ] IN THE HIGH COURT OF JUSTICE BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES INTELLECTUAL PROPERTY LIST (ChD) [ INTELLECTUAL PROPERTY ENTERPRISE COURT (IPEC) OR PATENTS COURT ] BETWEEN: [ insert full name of claimant ] Claimant and [ insert full name of defendant ] Defendant REPLY AND DEFENCE TO COUNTERCLAIM REPLY Preliminary Points Unless indicated otherwise, in this Reply and Defence to Counterclaim any paragraph references are to those in the Defence and Counterclaim. The Claimant contests the Defendant’s allegations and contentions in the Defence and Counterclaim in their entirety, except to the extent that they amount to admissions. The Claimant's Rights Registered Design Paragraph 5 is denied. The Registered Design is neither currently nor at any material time has been invalid for the reasons advanced in the Defence and Counterclaim [ and/or in the Grounds of Invalidity...

Introduction: This questionnaire concerns the intellectual property (IP) audit overseen by [ contact name ] in [ identify department ]. IP covers intangible business assets, described further below, including: copyright works software confidential information databases trade marks (brands and logos) domain names patents inventions designs Reasons for the audit: The purpose of this audit is to [ review our business's IP and the measures taken to protect it. ] This review is required for [ risk management, legal compliance, accounting and tax planning ] purposes. Companies and territories covered by the audit: The audit applies to [ insert company name ] [ and [ identify other group companies covered by the audit ] ] in [ the UK ] [ and [ identify other jurisdictions within the scope of the audit ] ]. Your role: Please set out which IP is used by your [ department OR business ] and...