Crucial changes to UK design law
On 1 October 2014, a variety of advancements to UK design law will come into effect. The changes – bought about by the Intellectual Property Act 2014 – have been chiefly considered as a result of the Hargreaves Review of Intellectual Property which took place in 2011.
Design law has often been perceived as overly complicated.
As the UK Intellectual Property Office admits: “Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust.”
Whilst previously the commissioner of the design was deemed the owner of it, the Act changes this position in regarding the designer as the first owner of the design (unless otherwise stated in the commission contract). The transformation in the law will mean that businesses who wish to have the commissioner as the legal owner of the design will now need have provisions in any contracts entered into after the 1st of October 2014 that provide for this. The New Criminal Offence One of the more noteworthy developments bought about by 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. The offence will be committed by an individual if they deliberately copy a registered design without the required permission of the registered owner of the design, and the resultant product made is either exactly the same as that design, or varies immaterially from that design. The individual know, or have reason to believe, that the design is a registered design. The only defence to this offence will be for the individual to show that they reasonably believed that the registration of the design was unsound, or that it was not contravened – this may prove very useful for an individual who is potentially caught by the new offence, as the consequence of a guilty verdict for this offence will be a fine and/or up to 10 years’ imprisonment.
Considering the above, it would be advisable for businesses and/or designers who are looking to unveil a product (and suspect that product could infringe a registered design) to, at the outset, secure legal advice on validity and/or infringement.
At the moment, UK unregistered design rights cover the design of any aspect of the shape or configuration of the whole or part of an article. However, under the new definition in the Act the words “any aspect of” the design will be removed, making it less probable that an action would be brought against an individual if their design seems to have duplicated a small or trivial part of someone else’s design.
Additionally, it is a prerequisite for protection that an unregistered design is ‘original’ (not commonplace). The new law has altered the definition of ‘commonplace’, stating that a design must not have been commonplace in a specific geographical region; that is the UK, EU and specified other countries with mutual agreements with the UK.
Furthermore, the definition of ‘qualifying persons’ has been altered to ‘those who are economically active in the EU and other qualifying countries’. Thus, to qualify for UK design right protection as the designer you must:
- Be resident in the UK, or one of the other qualifying countries, as a matter of course, or
- Your business must have been formed in any of the qualifying countries, and it must do a significant amount of business in any of the qualifying countries.
If these requirements are not met, however, an individual may nevertheless be eligible if certain other criteria are met – legal advice should be sought on this point if there are reservations as to if an individual is eligible.
New defences to infringement
The Act also brings about new defences to unregistered design right contraventions which are comparable to those already available for breaches of registered UK and Community designs.
These are the defences which permit the utilisation of a design with regard to activities which are for non-commercial private reasons, education and citation purposes, experimental functions, and employing equipment on non-UK registered ships or planes which are for the time being in the UK.
Former use of UK registered designs
Lastly, the Act will offer a limited amount of security (akin to that offered for registered Community designs) for those who embark on using a UK registered design which is later registered by another individual. The Act will permit the individual who started to use the design to remain using that design without violating the subsequent registered design, providing that the first design is merely used for the original function and was not derived from the consequent registered design.
We will have to wait and see whether, in practice, the reforms will meet the target of making UK design law more straightforward for businesses. However, it can definitely be agreed that several of the changes will provide much needed harmonisation of the UK law on designs with EU design law and existing trademark, patent and copyright law.
As a quick tip for the future – additional reforms (which are not projected to transpire until 2015 at the earliest) include:
- online access to information with regard to registered designs;
- the establishment of a non-binding opinion service for designs;
- alterations to the appeal process for designs; and
- plans for the UK to join the Hague system for international design registrations.
More change is underway!