Unregistered Design Rights: Seraphine vs. Mamarella

Unregistered design rights form an integral part of intellectual property law. It is especially relevant in the fashion industry where innovation and design are key to business success.

In the UK, unregistered design rights offer protection to creators even without formal registered design protection. The recent High Court case between Seraphine Limited and Mamarella GmbH sheds light on the complexities and critical nuances of enforcing these rights across borders.

Understanding Unregistered Design Rights in the UK

Unregistered design rights in the UK provide protection for the shape and configuration (but not the surface patterns) of objects.

These rights automatically protect designs for up to 15 years from when the design was created or 10 years after the design was first recorded, whichever is shorter.

The key advantage is that the designer does not need to register their design to gain protection, which can be crucial in industries where products are rapidly developed and marketed.

Unregistered design rights safeguard your creations, ensuring others cannot use them without consent.

During the last five years of protection, the designer must grant a ‘licence of right’ if requested, allowing others to use the design.

The appearance of a product, including its shape, colours, texture, materials, and ornamentation, is protected in the UK for three years from the date the design is made public. This is known as ‘supplementary unregistered design right’ (or ‘continuing unregistered community design (UCD)’ if the design was made public in the UK or the EU before January 1, 2021).

Criteria for Protection

To qualify for unregistered design rights in the UK, a design must have individual character and not commonplace in the design field in question at the time of its creation. The design must also be recorded in a design document or be the subject of an article that has been manufactured.

A qualified person can be a citizen or resident of the EU. they can also be from specific non-EU qualifying countries that provide reciprocal rights to UK nationals, notably New Zealand and Hong Kong.

A company can also be recognised as a “qualified person.” The “design document” should be a recorded representation of the design and can vary in form, such as a drawing, photograph, model, prototype, written description, computer data, or disc data. The owner of the design right is typically the designer, or their employer or commissioner if relevant.

The Seraphine vs. Mamarella Case: A Detailed Overview

The legal battle between Seraphine, a maternity wear producer, and Mamarella, a retailer, serves as a significant case study. The dispute centres around allegations that Mamarella infringed on Seraphine’s unregistered design rights by selling similar maternity clothing after their trading relationship ended in 2022.

Background of the Case

Seraphine commenced legal proceedings against Mamarella in June 2023, initially attempting to serve the lawsuit in Germany without court permission, citing the 1928 Convention between His Majesty and the President of the German Reich regarding Legal Proceedings in Civil and Commercial Matters. However, Mamarella contested the validity of this service, leading to complex jurisdictional debates.

The Legal Arguments and Decision

At the heart of the case was whether Seraphine could serve Mamarella out of jurisdiction under CPR 6.33(2B)(b) without the court’s permission, which hinges on whether a contract had an exclusive jurisdiction clause.

The disputed “2021 terms document” included such a clause, suggesting any legal disputes would be under the exclusive jurisdiction of English and Welsh courts.

The judge, Michael Tappin KC, evaluated the arguments focusing on the applicability of the jurisdiction clause in the contracts under which Mamarella ordered goods. The decision highlighted the importance of contract terms and how they are applied to ongoing business relationships.

Key Judicial Quotes

  • “The real issue between the parties which falls for determination is whether Seraphine was entitled to serve the proceedings out of the jurisdiction without the permission of the Court.”
  • “Seraphine relies on CPR 6.33(2B)(b): The claimant may serve the claim form on a defendant outside of the United Kingdom where, for each claim made against the defendant to be served and included in the claim form – (b) a contract contains a term to the effect that the court shall have jurisdiction to determine that claim;”

Ultimately, the judge ruled in favour of Seraphine, affirming that the proceedings could be served out of jurisdiction based on the contractual terms agreed upon by both parties.

Implications of the Case

This case underlines the significance of clear contractual terms, especially regarding jurisdiction and the applicability of terms in cross-border commercial relationships. It also emphasizes the role of unregistered design rights in protecting designs without formal registration, crucial for industries like fashion where designs are rapidly produced and marketed.

How can Expert Commercial Law assist with unregistered design rights?

Expert Commercial Law have a panel of experienced intellectual property law solicitors with a track record of success in unregistered design cases. A solicitor from our panel can be invaluable in helping with an intellectual property dispute, providing the highest levels of service and legal advice.

Our solicitors also help with commercial claims, such as trade mark disputes, breach of contract and CCJ removal

Please note, we are not a firm of solicitors; however, we maintain a panel of trusted and regulated high profile legal experts. If you contact us in relation to a commercial law case, we will pass your case onto a panel firm in return for a fee from our panel firms. We will never charge you for passing on your case to a panel firm.

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Please note, we are not a firm of solicitors; however, we maintain a panel of trusted and regulated legal experts. If you contact us in relation to a commercial law case, we will pass your case onto a panel firm in return for a fee from our panel firms. We will never charge you for passing on your case to a panel firm. 


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