Protection of Designs by Other Rights

For the UK, in addition to registration, designs can be protected by unregistered design right, copyright, trade marks, and passing off. This page links to selected relevant UK decisions.


UK Unregistered Design Right
This right was created by Part 3 of the Copyright, Designs and Patents Act 1988, with effect from 1989. It is essentially like copyright, except that it only lasts for 10 years (of which the last 5 are licensed “of right” to any party, for a reasonable royalty). It applies only to three dimensional shapes. Purely functional designs are protected, as well as aesthetic ones. There are explicit exclusions for features which must fit with those of other articles (“must-fit”), and for features which must fit with those of other articles of which the article is intended to form an integral whole (“must-match”). It is only available to designers from the EU or a few other countries offering reciprocal protection.
Scholes Windows Ltd v. Magnet Ltd
Mark Wilkinson Furniture Limited v. Woodcraft Designs (Radcliffe) Limited
Ultraframe (UK) Ltd v. Eurocell
A Fulton Company Limited v Totes Isotoner (UK) Limited
Guild v Eskandar Ltd
Lambretta v Teddy Smith

Copyright
Copyright used to be widely available until the Copyright, Designs and Patents Act 1988 (CDPA), which took protection away from designs of product shapes and configurations (but not surface decoration), except where the design is the design of an "artistic work". The relevant possible types of "artistic work" are sculptures, engravings and works of "artistic craftsmanship".
Hi Tech Autoparts Ltd v Towergate Two Ltd (No. 1, No. 2)
Metix (U.K.) Ltd v. G.H. Maughan (Plastics) Ltd
Guild v Eskandar Ltd
Lucasfilm v Ainsworth
The Flashing Badge Company v Groves
Lambretta v Teddy Smith

Passing Off
Passing off is a common-law action against deceptive or confusing unregistered trade mark use which causes damage to the reputation of a trader. It can apply to the shape of goods, but it is very rarely successful on that ground alone. Large sales alone are not enough to prove goodwill (Jarman & Platt v Bargett; failed even where the product had “virtually captured the market”). You also need to show that the shape itself is identified with the source (e.g. Toofies case - chewing gum in the shape of dentures). Mere copying of a shape of goods alone does not amount to a misrepresentation (Benchairs v Chair Centre) – must prove that the public is deceived as to origin). But a “capricious addition” to the basic shape may be protectable (Williams v Bronnley). Successful shape of goods cases are “very rare” (Hodgkinson & Corby v Wards Mobility)
Reckitt & Colman Products Ltd v Borden Inc (No.3)
Hodgkinson & Corby Ltd v Wards Mobility Services Ltd (No.1)

Trade Marks
Trade mark protection for three dimensional marks is possible, but is made difficult by Art. 3(1)(e) of the Trade Marks Directive which excludes signs which consist exclusively of:
  • the shape which results from the nature of the goods themselves, or
  • the shape of goods which is necessary to obtain a technical result, or
  • the shape which gives substantial value to the goods

Also, the shape should come to function as a trademark (i.e. develop a secondary meaning as a trade mark), and should be distinctive. The leading cases are all ECJ cases, namely:
Philips Electronics NV v Remington Consumer Products Ltd (C299/99) [2003] R.P.C. 2, [2002] E.T.M.R. 81
Linde AG's Trade Mark Application (C53/01) [2003] R.P.C. 45, [2003] E.T.M.R. 78
Winward Industrie Inc's Trade Mark Application (C54/01) [2003] R.P.C. 45, [2003] E.T.M.R. 78
Rado Uhren AG's Trade Mark Application (C55/01) [2003] R.P.C. 45, [2003] E.T.M.R. 78
Benetton v G Star (C-371/06)
Henkel's Trade Mark Application (C-218/01)

Some UK cases are:
Nestle v. Unilever