If you commission others to create designs for use in your business, then you need to be aware of important changes in ownership rights which come into effect from 1st October 2014.
Until now, those who paid designers would automatically own any unregistered design right (UDR) or rights to apply for registered design rights (RDR) in the UK. This is unlike the situation for copyright and European Community design rights under which the first owner is the designer himself, unless the business paying for the work has a written agreement for the designer to sign over the relevant rights, ideally before undertaking the work. (Unfortunately failing to do this has proved a trap into which the unwary have repeatedly fallen.)
However, from 1st October 2014, ownership of UDR and RDR will be brought into line with copyright and the European system. The ‘fall back’ protection for commissioned designs will therefore be gone for design works created after 1st October (unless a contract for the design was entered before that date).
So what’s the answer?
Well, it’s essential that you make sure any design work commissioned by your business is backed up with a contractual transfer of all relevant intellectual property rights (now including UK design rights). This may be in the terms of a one-off contract, your standard terms and conditions of purchase, or even consultancy agreements with freelance designers. If that transfer is not in your paperwork, then you are likely to find you will be paying for something that you only have (at best) very limited rights to use, and potentially, even fewer rights to pursue against a competitor who tries to replicate your product or a designer who sells the design to them.
In summary, don’t get caught out with this one, and make sure your ‘legals’ are in order so you get the benefit of what you pay for.
There are also other important changes to design law coming into force next month, including new offences, defences and modification to criteria for design protection in the UK. For more information, contact our specialist Intellectual Property team!
Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email firstname.lastname@example.org.