You may instinctively think that if you have commissioned and paid a designer to create a design (e.g. for a new product) that you would own the UK rights in that design. Prior to 1 October 2014 you may well have been right.
The general position was that the first owner of a UK Registered Design Right (“RDR”) or a UK Unregistered Design Right (“UDR”) was the designer unless (1) the designer was an employee (in which case the employer would likely be the first owner) or (2) the designer was commissioned to create the design (in which case the commissioner would likely be the first owner).
When the Intellectual Property Act 2014 (“IPA 2014”) came into force on 1 October 2014 the exception relating to commissioners of designs was removed meaning that the first owner of a commissioned piece will now most likely be the designer (unless, of course, they are an employee).
This change brings the law into line with the EU system and UK copyright law but it does mean that those in the business of commissioning designs should look very carefully at their contracts with their third party designers to ensure that the RDRs and UDRs are validly and properly assigned to them. RDRs and UDRs are likely to be relevant to items as diverse as agricultural tools, containers and packaging and items of clothing.
We have seen many cases where, in relation to copyright, the commissioner of a website or logo will realise perhaps too late that they do not actually own the copyright that they thought they did. This has caused them significant problems and expense in the long term trying to unravel the situation. We foresee much the same problem being repeated in relation to UK design rights.
There are transitional provisions relating to designs created before 1 October 2014 and commissioning contracts entered into before 1 October 2014.
The IPA 2014 has also introduced a number of other provisions including:
- raising the bar for a design to be within the scope of protection as a UDR and
- making it a criminal offence to make a deliberate copy of a RDR or Community registered design.
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