Author: Sarah Conroy, partner, Beale and Company Solicitors In order to encourage innovation and creativity in design by engineers, designers must be able to avail of some form of protection for their designs. There would be very little point in encouraging innovation if competitors could use new designs immediately. At the same time, such protection should not last indefinitely, as there is a social imperative involved in allowing the use of such designs after a period of time has elapsed. There are various protections available in the copyright, patent and trademark legislation for designs. However, in terms of protection for designs created by engineers, the Industrial Designs Act 2001 is most relevant in this regard. Not all designs are registrable, nor will any registration last indefinitely. The 2001 Act provides that in order for a design to be registrable, it must be “new” and must have “individual character”. In order for a design to be considered new, there must have been “no design identical to it” previously made available to the public before registration. Whether a design is deemed to be “identical” to another design depends on whether its features “differ only in immaterial details”. INDIVIDUAL CHARACTER The individual character of a design is assessed according to whether the overall impression produced on informed users differs from the overall impression produced on such users by a design that has been made public before. In assessing individual character, the degree of freedom of the author of the design and developing the design shall be taken into consideration. A design that relates to a component part of a complex product shall only be considered to be new and have individual character if it remains visible during normal use of the complex product, and if the visible features fulfil the requirements as to novelty and individual character, as outlined. If a design has a conflict with a prior design, it will not be registrable under the Act. If the features of the appearance of a product are dictated only by its technical function, it will not be registrable – in particular in a situation where they are necessarily reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it has applied to be mechanically connected to or placed in,  around or against another product so that either produce may perform its functions.  However, if a design serves the purpose of allowing multiple assembly or the connection of mutually interchangeable products within a modular system, this is registrable. WHO CAN REGISTER A DESIGN? The author of a design is the person or persons who create the design. The author is the first owner of the design, unless the design is created by an employee in the course of their employment – in this case, the employer is the first owner. This will apply in the case of an engineer employed in a consulting engineering practice. There are various exceptions to the rules above, based on which the Controller of Industrial Designs can refuse an application for registration:

• where the design is contrary to public policy or principles of morality;
• where it constitutes an infringement of a copyright work under the Copyright and Related Rights Act 2000; or
• where the design consists of something that would not be registered by virtue of certain sections of the Trademarks Act.

In terms of classification of designs, industrial designs are classified for the purposes of registration under the Locarno System of Classification. This allows for the selection of one or more categories into which a particular design can be placed. The protection of rights in the design expires five years after the date of registration, but it can be renewed on four more occasions for a period of five years. REMEDIES There are various remedies available in a situation where a design is infringed, for example:

• damages (including aggravated damages);
• injunction;
• account of profits;
• order for seizure of the infringing goods or products; or
• prevention of the importation of infringing goods.

There are also a number of criminal penalties that can be imposed in circumstances where there has been infringement. Most design documents and models would be considered to be literary and artistic works, as defined in the Copyright and Regulated Rights Acts 2000. These would qualify for copyright protection for the term of life of the author, plus 70 years from the date on which they are created. Copyright protection is restricted to the shape and contours of designs, other than artistic works. In addition, if the work is not exploited on products by the owner or with his or her authorisation, full copyright protection will prevail. If designs and/or design models are not registered, they continue to attract copyright protection unless they are designs exploited as products. This restricts copyright protection in the shape and contour of designs other than artistic works, allowing others to use the designs for this purpose. Furthermore, if the design document or model is not exploited as a product by its owner, the owner can claim full copyright protection. REGISTERED COMMUNITY DESIGN The Office of Harmonisation of the Internal Market (trademarks and designs) operates a parallel system of registration, which involves registered community designs. This gives the proprietor a single registration, which is valid in all 27 countries of the EU. Registered community designs are protected for a period of five years. They can then be renewed four times, giving a maximum life of 25 years’ protection. There is also a system of protection of unregistered designs, which comes in to existence by making the products incorporating the designs available to the public within the community and its right limited to three years. It also forbids the use of copies of original designs. There is a system of protection for unregistered community designs. If a product incorporating a design has been made available to the public for a three-year period after such publication, the use of copies of the original designs is forbidden. This is particularly relevant in industries such as fashion or footwear, where designs are changed every season. There are a number of overlapping systems of protection for designs. Authors of designs should ensure that they have adequate protection in place to ensure their designs remain their property for an appropriate period. Sarah Conroy is a partner in Beale and Company Solicitors. She provides advice to a number of large engineering firms on matters of relevance.