udr

Question 1

What is “design” in the context of UDR?

Answer 1

“design” means the design of the shape or configuration (whether internal or external) of the whole or part of the article

Question 2

UDR does not subsist in…

Answer 2

(a) a method or principle of construction
(b) a surface decoration
(c) features of shape or configuration of an article which:

(i) enable the article to be connected to, placed in, around, or against another article so that either articles may perform its function
(ii) are dependent upon appearance of another article of which the article is intended by the designer to form an integral part

Question 3

The design is not original if…

Answer 3

it is commonplace in a qualifying country in the design filed in question at the time of its creation

Question 4

UDR subsists in a design only if the design qualifies for UDR protection by reference to:

Answer 4

(a) the designer or the person by whom the design was employed
(b) the person by whom and country in which articles made to the design were first marketed

or in accordance with any order under S221

Question 5

UDR does not subsist:

Answer 5

(a) in a design which consists of or contains a controlled representation within the meaning of the Olympic Symbol Protection Act 1995
(b) unless and until the design has been recorded in a design document or an article has been made to the design
(c) in a design which was so recorded, or to which an article was made, before commencement of this part of CDPA

Question 6

Who is the designer?

Answer 6

the person who creates it

but in the case of a computer-generated design, it is the person by whom the arrangement necessary for the creation of the design are undertaken

Question 7

Who is the first owner of the UDR?

Answer 7

The designer, unless the design is created in the course of employment.

If a design qualifies for UDR protection as per S220 (first marketing), the above does not apply and the person by whom the articles in question are marketed is the first owner of the UDR.

Question 8

When does UDR expire?

Answer 8

15 years from the end of the calendar year in which the design was first recorded in a design document or an article was made to the design, whichever first occurred.

Or:

If articles made to the design are made available for sale or hire within 5 years from the end of that calendar year, 10 years from the end of the calendar year in which that first occurred.

Anywhere in the world by or with the licence of the UDR owner.

Question 9

Who is the “qualifying person”?

Answer 9

(a) an individual habitually resident in a qualifying country, or
(b) a body corporate or other body having legal personality, which
(i) is formed under the law of UK or other qualifying country, and
(ii) has in any qualifying country a place of business at which substantial business activity is carried on; but no account shall be taken of dealings in goods which are at all material times outside that country

References to “qualifying person” include the Crown and the government of any qualifying country.

Question 10

What is the “qualifying country”?

Answer 10

(a) the UK
(b) a country to which the part extends by virtue of an order under S255 (none)
(c) another member state of the EU
(d) to the extent that an order under S256 so provides, a country designated under that section as enjoying reciprocal protection

Question 11

Joint design, not created in the course of employment

Answer 11

Qualifies for UDR if any of the designers is a qualifying person

But only those designers who are qualifying persons are entitled to UDR

Question 12

Design in the case of a joint employment

Answer 12

such design qualifies for UDR if any of the employers is a qualifying person

but only those employers who are qualifying persons are entitled to the UDR

Question 13

Design which does not qualify for UDR under 218 or 219

Answer 13

May qualify for UDR if the first marketing of articles made to the design:

(a) is by qualifying person, and
(b) takes place in the UK, a member state of the EU, or another country to which this part extends by virtue of an order under s255

If the first marketing is done jointly by two or more persons, the design qualifies for UDR if any of those persons is a qualifying person.

In such a case, only the qualifying persons are entitled to the UDR.

Question 14

UDR -primary infringement

Answer 14

A person who, without the licence of the UDR owner does or authorises another to do, anything which is the exclusive right of the design right owner, i.e. to reproduce the design for commercial purposes:

(a) by making articles to that design, or
(b) by making a design document recording a design for the purpose of enabling such articles to be made

Reproduction of a design by making articles to that design means copying the design so as to produce articles exactly or substantially to that design.

Reproduction may be direct or indirect and it is immaterial whether any intervening acts themselves infringe the UDR.

Question 15

UDR - secondary infringement

Answer 15

UDR is infringed by a person who, without the licence of the UDR owner:

(a) imports into the UK for commercial purposes, or
(b) has in his possession for commercial purposes, or
(c) sells, lets for hire or offers or exposes for sale or hire in the course of business,

an article which is and which he knows or has reason to believe is, an infringing article.

Question 16

UDR - infringing article

Answer 16

An article is an infringing article if its making to that design was an infringement of the design right in the design.

An article is also an infringing article if:

(a) it is has been or is proposed to be imported into the UK, and
(b) its making to that design in the UK would have been an infringement of the design right in the design or a breach of an exclusive licence agreement relating to that design,

but not an article which may be lawfully imported into the UK by virtue of any enforceable EU right within the meaning of S2(1) of EC Act 1972.

Infringing article does not include a design document, notwithstanding that its making was or would have been an infringement of a DR.

Where it is shown that an article is made to a design in which a DR subsists or has subsisted at any time, it shall be presumed until the contrary is proved that the article was made at a time when DR subsisted.

Question 17

The court may award additional damages “as the justice of the case” may require. What will be considered?

Answer 17

• flagrancy of the infringement

- any benefit accruing to the defendant by reason of the infringement

Question 18

primary infringement - innocent infringement

Answer 18

If, at the time of the infringement, the defendant:

did not know and had no reason to believe that a DR subsisted in the design to which the article relates,

the plaintiff is not entitled to damages against him, but without prejudice to any other remedies.

Question 19

secondary infringement - innocent infringement

Answer 19

If a defendant shows that the infringing article was

innocently acquired (person acquiring the article did not know or had no reason to believe that it was an infringing article)

by him or a predecessor in title of his,

the only remedy available against him in respect of the infringement is

damages not exceeding a reasonable royalty in respect of the act complained of.

Question 20

UDR - exemptions to infringement

Answer 20

(a) act which is done privately and for purposes which are not commercial
(b) an act which is done for experimental purposes
(c) an act of reproduction for teaching purposes or for the purpose of making citations, provided that:
(i) mention is made of the source, and
(ii) the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design

Question 21

UDR - licences as of right

Answer 21

Any person is entitled as of right to a licence to do in the last 5 years of the design right term anything which would otherwise infringe the DR.

The terms of the licence shall, in default of agreement, be settled by the comptroller.

The SoS may, if it appears necessary for him, in order to:

(a) comply with an international obligation in the UK, or
(b) secure or maintain reciprocal protection for British designs in other countries

by order exclude from the operation of the provisions relating to licences as of right designs of a description specifies in the order or designs applied to articles of the description so specified.

An order must be made by statutory instrument and no other order shall be made unless a draft of it has been laid before and approved by resolution of each HoP.

Question 22

UDR - indication of licences as of right

Answer 22

A person who has a licence as of right in respect of a design shall not, without the consent of the DR owner:

(a) apply to the goods which he is marketing or which he proposes to market, in reliance on that licence, a trade description indicating that he is a licensee of the DR owner, or
(b) use any such trade description in an advertisement in relation to such goods

A contravention of the above is actionable by the DR owner.

Question 23

UDR - exclusive licensee and the DR owner

Answer 23

In an action for infringement of the DR in which they have concurrent rights:

cannot proceed with the action without the leave of court unless the other is either joined as a plaintiff or added as a defendant

if joined/so added, not liable for costs in the action unless he takes part in the proceedings

The above does not affect the granting of an interlocutory relief in the application of any of them.

The below applies whether or not the DR owner and the exclusive licensee are both parties to action.

The court shall, in assessing damages, take into account:

(i) the terms of the licence
(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement

No AoP shall be directed if an award of damages has been made, or an AoP has been directed in favour of the either of them in respect of the infringement.

The court shall, if AoP is directed, apportion the profits between them, as the court considers just, subject to any agreement between them.

The DR owner shall notify any exclusive licensee having concurrent rights before applying for an order for delivery up of an infringing article. The court may, on the application of the licensee, make such an order as it thinks fit having regard to the terms of the licence.

Question 24

copyright work in which UDR subsists - infringement

Answer 24

236: where copyright subsists in a work which consists of or includes a design in which a DR subsists, it is not an infringement of DR in the design which is an infringement of the copyright in that work

Question 25

copyright, design document

Answer 25

It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than artistic work or a typeface to make an article to the design or to copy an article made to the design.

Also not an infringement of the copyright to issue to the public or include in a film or communicate to the public anything the making of which was not an infringement of that copyright.

Design - shape or configuration (whether internal or external) of the whole of part of an article, other than surface decoration, and

Design document - any record of a design, whether in the form of a drawing, written description, photograph, data stored in computer or otherwise.