Q&As

What are the requirements for establishing secondary infringement of UK unregistered design right and what practical steps can practitioners take when seeking to prove that an act of secondary infringement has taken place?

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Produced in partnership with Chris Thomas and Robert Cumming of Appleyard Lees
Published on LexisPSL on 30/08/2019

The following IP Q&A produced in partnership with Chris Thomas and Robert Cumming of Appleyard Lees provides comprehensive and up to date legal information covering:

  • What are the requirements for establishing secondary infringement of UK unregistered design right and what practical steps can practitioners take when seeking to prove that an act of secondary infringement has taken place?
  • Requirements for a valid UDR
  • Infringement
  • Subsistence
  • Pleading a claim
  • Proving Copying
  • Proving knowledge
  • Checklist

Infringement of UK unregistered design right (UDR) requires proof of subsistence or validity of the UDR and proof of copying.

Requirements for a valid UDR

An unregistered design right (UDR) is a property right which exists in the design of the shape or configuration of the whole or part of an article (section 213(1)–(2) of the Copyright, Designs and Patents Act 1988 (CDPA 1988)).

For a UDR to subsist, a design must be original, in the sense that it must not have been copied and it must also not be commonplace in the field of design at the time of its creation (CDPA 1988, s 213(1) and (4)). The test that a design must be original and not commonplace is not a high bar. In Action Storage Systems Ltd v G-Force Europe.Com Ltd, paras [19] and [34], Judge Hacon stated:

‘…anything in the creation of the design requiring more than slavish copying will result in that design being original (para 19) … it will not be often that the design of an entire article is found to be commonplace (para 34)…’

A UDR cannot subsist in:

  1. designs for a method of construction

  2. for the features of an article which enable it to be connected to another article to perform a function, or which are dependent upon the appearance of another article of which it is intended to form part

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