Copyright, Designs and Patents Act 1988, section 220

Qualification by reference to first marketing

Part III Design Right

(1)F703A design which does not qualify for design right protection under section 218 or 219 (qualification by reference to designer... or employer) qualifies for design right protection if the first marketing of articles made to the design—

(a)F704is by a qualifying person ..., and

(b)F706takes place in the United Kingdom [F705orF705] , another country to which this Part extends by virtue of an Order under section 255, ....

(2)If the first marketing of articles made to the design is done jointly by two or more persons, the design qualifies for design right protection if any of those persons meets the [F707 requirementF707] specified in subsection (1)(a).

(3)In such a case only the persons who meet [F708that requirement F708] are entitled to design right under section 215(4) (first ownership of design right: entitlement of first marketer of articles made to the design).

F709(4). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Definitions used in section 220 7

design

1 (1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include—

(a)a method or principle of construction, or

(b)features of shape or configuration of an article which—

(i)are dictated solely by the function which the article has to perform, or

(ii)are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Defined in Sch.4 para.38 · see it in the full Act

(2) In this Part “design” means the design of ... the shape or configuration (whether internal or external) of the whole or part of an article.

Defined in s.213(2) · see it in the full Act

“design” has the meaning assigned to it by section 1(1) of this Act ;

Defined in Sch.4 para.38 · see it in the full Act
designer

(1) In this Part the “designer”, in relation to a design, means the person who creates it.

Defined in s.214(1) · see it in the full Act
employer

“employee”, “employment” and “employer” refer to employment under a contract of service or of apprenticeship;

Defined in Sch.4 para.38 · see it in the full Act

“employee”, “employment” and “employer” refer to employment under a contract of service or of apprenticeship;

Defined in s.263(1) · see it in the full Act
marketing

(2) References in this Part to “marketing”, in relation to an article, are to its being sold or let for hire, or offered or exposed for sale or hire, in the course of a business, and related expressions shall be construed accordingly; but no account shall be taken for the purposes of this Part of marketing which is merely colourable and not intended to satisfy the reasonable requirements of the public.

Defined in s.263(2) · see it in the full Act
article

“article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

Defined in Sch.4 para.38 · see it in the full Act
qualifying person

“qualifying person” means—

Defined in s.217(1) · see it in the full Act

(5) In determining for the purpose of the definition of “qualifying person” whether substantial business activity is carried on at a place of business in any country, no account shall be taken of dealings in goods which are at all material times outside that country.

Defined in s.217(5) · see it in the full Act
country

“country” includes any territory;

Defined in s.263(1) · see it in the full Act

Cases considering section 220 4

Tech 21 UK Ltd v Logitech Europe SA

[2015] EWHC 2614 (Ch) · 15 September 2015

The court considered first marketing by a qualifying person as a possible basis for design right, but found no good arguable case that Logitech owned the right alleged. (see paras [107]; [119]-[123])

Total Electrical Solutions UK Limited & Anor v Nortek Electrical Circuits Limited

[2025] EWHC 725 (Ch) · 7 March 2025Defines

The court notes the qualification route based on first marketing of articles made to the design. (see para [29])

I-Smart Developments Limited v Currentbody.com Limited

[2024] EWHC 2889 (IPEC) · 15 November 2024Defines

The provision was identified as the alternative pleaded basis on which the first marketer of articles made to the designs might claim UK unregistered design rights. The court did not decide entitlement on the applications. (see para [15])

What each judgment says about section 220 is in the case-law panel in the full Act.

Amendments and notes

7 notes from legislation.gov.uk

Amendments

  1. F703Word in s. 220(1) omitted (1.10.2014) by virtue of Intellectual Property Act 2014 (c. 18), ss. 2(2)(g), 24(1) (with s. 2(3)); S.I. 2014/2330, art. 3, Sch.
  2. F704Words in s. 220(1)(a) omitted (1.10.2014) by virtue of Intellectual Property Act 2014 (c. 18), ss. 3(4)(a), 24(1) (with s. 3(6)); S.I. 2014/2330, art. 3, Sch.
  3. F706Words in s. 220(1)(b) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 8 para. 11(b)(ii); 2020 c. 1, Sch. 5 para. 1(1)
  4. F705Word in s. 220(1)(b) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 8 para. 11(b)(i); 2020 c. 1, Sch. 5 para. 1(1)
  5. F707Word in s. 220(2) substituted (1.10.2014) by Intellectual Property Act 2014 (c. 18), ss. 3(4)(b), 24(1) (with s. 3(6)); S.I. 2014/2330, art. 3, Sch.
  6. F708Words in s. 220(3) substituted (1.10.2014) by Intellectual Property Act 2014 (c. 18), ss. 3(4)(c), 24(1) (with s. 3(6)); S.I. 2014/2330, art. 3, Sch.
  7. F709S. 220(4) omitted (1.10.2014) by virtue of Intellectual Property Act 2014 (c. 18), ss. 3(4)(d), 24(1) (with s. 3(6)); S.I. 2014/2330, art. 3, Sch.