UK government evaluates proposals for design rights-holders to provide notice of rights by marking products with a website address.
The design protection scheme in the UK is an important part of the intellectual property framework and the UK economy. A recent report from the UK Intellectual Property Office cited designs as being responsible for 10% of investment in intangible assets. In recent years, industry representatives have voiced concerns regarding the static nature of design legislation and its failure to reflect the digitalisation of this area of the market. In July this year, the UK government finally responded to this issue; releasing a consultation regarding proposed changes to the Registered Designs Act 1949 (the "RDA”).
Protection Provided by the RDA
The RDA currently allows design owners to give constructive notice to the public as to the registered nature of their designs by stamping products with the word “registered”, and the relevant design numbers. Labelling products in this way prevents potential infringers from later claiming that they were unaware of the design’s registration and thus escaping liability for damages using the "innocent infringement" defence.
The antiquated system of manual labelling of products results in considerable time and resources being wasted each time a registration is altered or lapses. As claiming protection falsely is an offence under UK law, many rights-holders who have insufficient resources to keep these details up to date for a wide-range of products are forced to avoid providing constructive notice altogether.
Aim of the Consultation
The consultation, open for submissions from 17 July to 10 August 2015, was intended to review the current mechanism for labelling registered designs.
Following the webmarking of patents introduced last year by the Intellectual Property Act 2014, the Consultation sought feedback from industry users regarding proposals to allow rights-holders to mark their products with a website link containing the relevant registration information. The Consultation focused in particular on the potential financial impact of such changes upon holders of registered design rights and third parties.
Responses to the Call for Evidence
The ten responses to the Consultation came from a range of sources which included lawyers, design-rights holders and industry representatives. All of the responses voiced positive reactions to the proposals, with many citing the potential changes as long overdue.
The majority of the feedback submitted focused on the administrative complexities in the current marking system, with one representative body commenting on how businesses have been forced to abandon marking products due to the difficulties in keeping information correct and up to date. Responders felt that the changes would help companies of all sizes as small business lack the resources to handle the administrative complexities of the current system, whilst larger companies are faced with a broader range of protected products which require regular updates. Many users also commented on the extra space for registration information afforded by a webpage.
Some comments honed in on essential website characteristics if such a system is introduced, including the requirement for the website to be available free of charge, the need for the webpage to clearly link the product with the relevant rights, and the importance of the website being kept up to date without any technical failures which prevent the public from accessing the registration details.
The government's report following the call for evidence states that the government is looking to incorporate the proposals into the current designs legislation in the UK. The government has made clear that, at present, there are no plans for this policy to be extended to unregistered designs.
Rightsholders should keep a close eye on these changes, which will make it easier to mark products, and therefore make it harder for infringers to successfully claim that they were unaware of a registered design.