1 March 2012

UK Registered Designs - how far do they go?

I sometimes describe registered designs to clients as suffering from middle child syndrome when it comes to intellectual property rights stuck between big brother patents and younger sibling trade marks, with copyright being a close cousin and spoilt only child. Design law gets less attention and suffers from a lack of harmonisation worldwide; it's law being made up of bits of the other three. It's tagged on to a dominating patent regime of some countries, part of copyright and/or, as in the case of the EU, being controlled by its Trade Marks Office.

It does not always get completely disregarded and, for example, the UK is looking to improve its registered design system at the moment.

Some countries do not have design legislation and in some it is often assumed that a UK registration covers some countries automatically. Some of these assumptions come from the UK IPO website - or from private firms who advise based on this information. Therefore, I have explored how up-to-date the IPO's information is and provide my findings here. Independently, I have passed these on to the IPO so, if they agree, they can update their own website pages.

Of note is that Registered Community Designs ("RCDs") will not, except in a few cases, have the same effect as a United Kingdom Registered Design in these jurisdictions. This is a similar situation as with respect to UK Trade Marks and their Community Trade Mark counterparts.

Many of the countries that have introduced local design legislation provided for 12-month transitional periods for owners of UK Registered Designs to apply locally. I believe these periods have now concluded, where applicable.

Legislation introduced in 2002 brought design registration to Anguilla. Unfortunately, the law is is not available on-line without paying a fee.

Antigua and Barbuda now has independent design legislation.

Bermuda has a design law that allows for automatic protection of UK registrations but also allowing for purely local applications.

It is believed UK registrations will be automatically protected in the British Indian Ocean Territory.

The Falkland Islands also provide for automatic protection. Note the UK IPO's advice, "The Supreme Court of the Falkland Islands is empowered to declare that rights in a UK design have not been acquired in the Falkland Islands on any grounds for cancellation existing under UK law, including publication of the design in the Falkland Islands prior to the UK registration." This provision tends to be replicated in other jurisdictions providing automatic protection.

Fiji also provides for automatic protection. However, it is possible, and would indeed seem recommendable if this country is of commercial interest, to advertise the design rights already obtained in the UK in a Fijian newspaper.

Gambia now has its own law after implementing regulations were brought in during 2010.

Both Gibraltar and Grenada have laws providing for automatic protection.

With respect to Gibraltar, its status with the EU under Article 299(4) of the Treaty of Rome should allow for automatic protection of RCDs. However, there have not been amendments to Gibraltar's local Designs Act to reflect this and, as such, I believe it would be unwise to rely on RCDs being enforceable in Gibraltar.

Guernsey is a 'secondary' design jurisdiction and re-registers designs including those from the United Kingdom and Registered Community Designs.

Guyana also provides for automatic protection although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana (e.g. in the UK only), a registered design owner would be prevented from taking action. This could be a fair defence in many of the other jurisdictions too.

UK Design legislation is extended to the Isle of Man (by the British Government not the Manx Government) to provide automatic protection. Obviously, this has been amended to reflect a Registered Community Design covering the UK. Therefore, I am confused by the IPO's statement that RCDs do not cover the Isle of Man as my interpretation is that they would.

Jersey is a re-registration jurisdiction. Only a UK National Registered Design can be registered locally; no provision is made for RCDs.

UK Registered Designs are automatically protected in Kiribati.

Malta now has independent design legislation and being part of the European Union is also protected through a RCD.

United Kingdom Designs (Protection) Act No. 181 of 1887 is not available on-line but is understood to be the local legislation providing for automatic protection of UK Registered Designs in Montserrat.

St Helena is another with the fairly standard "recognise UK Registered Designs automatically" law.

I cannot see that St Kitts and Nevis has a design law to allow for either automatic protection of UK Registered Designs or for independent local applications.

St Lucia and St Vincent and the Grenadines now allow for independent design registration and UK Registered Designs will not have effect.

I cannot see that there is any design legislation in the Seychelles at all, let alone any that would give provision to automatic protection of a UK Registered Design. However, it is possible to register copyrights.

Sierra Leone offers an unclear situation through my on-line enquiries (I've not bothered my associate in Freetown at this stage). I cannot locate a design law which would allow for automatic protection of a UK Registered Design. It is possible to designate Sierra Leone in an ARIPO design application but in the absence of any design legislation, questions should be asked of its enforceability. Sierra Leone had plans for a new IP law in late 2008 but I do not believe this came into force.

UK Registered Designs extend automatically to the Solomon Islands.

Swaziland operates its own national design registration system now.

Tanzania is made up of two separate IP jurisdictions, Tanganyika (the mainland) and the island of Zanzibar. The mainland seems to lack design legislation but provisions within its Patent Act provide for automatic protection of UK Registered Designs. When it comes to Zanzibar, local independent legislation is in place.

My interpretation of the Tuvalu Chapter 62: United Kingdom Designs Protection would be that it provides for automatic protection of UK Registered Designs but I make this statement with a disclaimer. The UK IPO seems to think a local re-registration application is necessary.

In his over six years in power, Idi Amin CBE ("Conqueror of the British Empire") obviously forgot to repeal Uganda's United Kingdom Designs Protection Act. This remains in force to this day and provides for automatic protection of UK Registered Designs.

Vanuatu's design law is in a state of limbo - and for the same reason as its trade mark counterpart i.e. an absence of implementing regulations - is not yet in operation and it is therefore not possible to file for designs at this time.

The situation with the British Virgin Islands as described by the UK IPO would appear to be the same situation as exists in Bermuda (above).

After all this, I will provide a concluding table which I must stress is based on my interpretations and the taking of some information at face value.

Jurisdiction
UK
RCD
Anguilla
No
No
Antigua and Barbuda
No
No
Bermuda
Automatic
No
British Indian Ocean Territory
Automatic
No
British Virgin Islands
Automatic
No
Cayman Islands
No
No
Falkland Islands
Automatic
No
Fiji
Automatic
No
Gambia
No
No
Gibraltar
Automatic
Automatic but
questions remain
Grenada
Automatic
No
Guernsey
Extendable
Extendable
Guyana
Automatic
No
Isle of Man
Automatic
Automatic
Jersey
Extendable
No
Kiribati
Automatic
No
Malta
No
Automatic
Montserrat
Automatic
No
St Helena
Automatic
No
St Kitts and Nevis
No
No
St Lucia
No
No
St Vincent and the Grenadines
No
No
Seychelles
No
No
Sierra Leone
No
No
Solomon Islands
Automatic
No
South Georgia and the South Sandwich Islands
No
No
Swaziland
No
No
Tanzania (Tanganyika)
Automatic
No
Tuvalu
Automatic
No
Uganda
Automatic
No
Vanuatu
No
No
Zanzibar
No
No

Many readers will be aware of the excellent value of the RCD system - 27 countries protected for a basic official fee of €350. The UK itself also provides for cost-effective design registration with the basic official fee being only £60 (about €70). Global owners of design rights may wish to ensure they obtain protection at not only the European Community level but also at the UK level, particularly if protection is required in parts of the Americas, Africa or the Pacific. RCDs and UK Registered Designs are both obtained very quickly.

As always, any comments or questions are welcomed.