Articles

22/03/2010

You have rights. You just might not know it.
Michael Stevenson

This article originally appeared in Bristows' Aerospace Focus.

You may be familiar with this scenario. Your tender proposal which took up a sizeable chunk of your time was unsuccessful.  Though annoyed you move on. Then you notice that some of the proposals submitted in the tender, for example your designs for a new product or for a specific feature or component of that product ended up being used by the successful bidder. What, if anything, can be done in such circumstances?

Of course, if they are in place, you can enforce any confidentiality clauses in the tender proposal. However, with respect to intellectual property, it is a common misconception that in order for any action to be taken with regard to the rights in the designs/plans, that those rights should have been formally registered.  Whilst that is true for patents (and to some degree trade marks), your plan or design could be protected by copyright and the lesser known rights: UK unregistered design right (UKUDR) and Community unregistered design right (CUDR). These rights could come into play automatically on the creation of a design document.

Copyright exists in original artistic works, which are defined to include graphic works (including any painting, drawing, diagram, map, chart or plan).  Subject to certain exceptions, copyright in such works will last for the life of the creator plus another 70 years.

UKUDR gives protection to original designs, which are defined as any aspect of the shape or configuration of the whole or part of an article.  UKUDR lasts for 15 years from when the design was first created (or, if relevant, 10 years from the end of the first year in which sales of the design were commenced, whichever is the shorter).  CUDR protects designs defined broadly as the "outward appearance of a product or part of it which results from the lines, contours, shape, texture, materials and its ornamentation" for three years.   

To infringe copyright, UKUDR or CUDR, it is necessary to prove that the artistic work or design was copied directly or indirectly, i.e. derived from the original works.  The copying can be deliberate or "subconscious", where a designer who is familiar with the prior work/design uses it in the preparation of a later work/design.  Establishing whether there has been copying depends on the circumstances of the case.

So those design plans you submit for a tender may be protected not only by copyright but also by UKUDR and CUDR.  A third party who uses your design or elements of it without your consent could be in breach of your rights and, accordingly, you may have grounds for compensation from them.  All three rights are unregistered and kick in at the time of creation of the particular work so they require no extra action on your part for those rights to exist (provided the designs are original etc).  Use these rights to protect your original works from being poached for use by cheaper competitors who do not invest in innovation or design.

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