A number of changes to design law in the UK will come into force on 1 October 2014. These changes are being introduced by the Intellectual Property Act 2014 and are largely intended to implement a number of the recommendations arising from the wide ranging Hargreaves Review of Intellectual Property which took place in 2011. We outline some of the key changes below.
New criminal offence for intentional copying of registered designs
Until now, criminal offences for intellectual property infringement have been restricted to copyright and trade marks in the UK. One of the most significant changes in the Act is the introduction of a criminal offence for the intentional copying of a UK or Community registered design in the course of a business. A person will commit an offence if they intentionally copy a registered design without the consent of the registered owner of the design, so as to make a product exactly to that design, or with features that differ only in immaterial details from that design. The person must know, or have reason to believe, that the design is a registered design. It will also be an offence to deal with such a product. The penalty will be a fine and/or up to 10 years’ imprisonment.
This new offence clearly has potentially very significant ramifications for businesses and designers alike. However, there is a defence which is likely to be of great practical significance: it is a defence if a person charged with the new offence can show that they reasonably believed that the registration of the design was invalid, or that it was not infringed.
We therefore recommend that businesses/designers seeking to launch a product which they believe might infringe a registered design should first obtain a lawyer’s written opinion on infringement and/or validity which can be cited as evidence (should it ever be needed) that the business/designer reasonably believed that design was invalid and/or not infringed.
Ownership of commissioned UK registered or unregistered designs
Under the current law, any commissioned UK registered or unregistered designs are owned by the commissioner and not the designer. This differs from the current position in copyright law and Community design law, where commissioned works are first owned by the author/designer. Under the Act, UK registered or unregistered designs in commissioned works will now be owned by the designer, unless specified otherwise in commission contract. This is of significant practical importance, since businesses will have to ensure that contracts entered into after the coming into force of the Act provide for a transfer of ownership from designers to the commissioner, if that is desired.
UK Unregistered Design
There have been a number of changes to the law of UK unregistered design, which include the following:
- UK unregistered design rights currently protect the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. Under the Act, the words “any aspect of” are to be deleted. The intention behind this change is to prevent the ‘cropping’ of the asserted design to just those small or trivial parts that may have been replicated in the allegedly infringing design.
- Furthermore, it is a requirement for protection that unregistered designs are ‘original’, that is not commonplace. The Act has amended the definition of ‘commonplace’, clarifying that a design must not have been commonplace in a particular geographical area, namely the UK, EU and certain additional countries with reciprocal agreements with the UK.
- The Act also introduces new defences to unregistered design right infringement equivalent to those found in the law of registered UK and Community designs; namely defences which allow use of a design in relation to activities which are for non-commercial private purposes, experimental purposes, teaching and citation purposes, and using equipment on non-UK registered ships or planes which are temporarily in the UK.
Prior use of UK registered designs
The Act has introduced some protection, similar to that available for registered Community designs, for those who start to use a UK registered design which is subsequently registered by someone else. The Act will allow the person who started to use the design (or made serious and effective preparations to do so) to continue to use that design without infringing the later registered design, as long as the first design is only used for the same original purpose and was not copied from the subsequently registered design.
One of the most significant changes in the Act is the introduction of a criminal offence for the intentional copying of a UK or Community registered design in the course of a business.
Looking further – future amendments
Currently, designs registered under the Hague System for the International Registration of Industrial Designs can only obtain protection in the UK if they opt for EU wide coverage. The Act paves the way for the UK to join the Hague System in its own right, so applicants will be able to save on filing fees if there is no need to obtain EU wide coverage. The UK IPO has stated that this is unlikely to take place before the end of 2015.
The UK IPO also intends to introduce a designs opinions service, which will provide non-binding opinions on questions of design law. The scope of this advice service has not yet been finalised, however it is very likely to include opinions on infringement of registered designs. The UK IPO intends to introduce this service in 2015.
The Act is not a wholesale reform of design law in the UK but will introduce a number of notable changes and refinements. Several of these changes are likely to be of significant practical importance to businesses and designers. In particular, the new criminal offence of intentional copying of registered designs increases the importance for businesses of obtaining a legal opinion if the business has reason to suspect that they may be infringing a registered design.