Amendments to the UK design law regime came into effect on October 1st 2014. Businesses should be conscious of a number of significant changes under the Intellectual Property Act 2014, as well as further changes which are due in 2015. These changes came into effect pursuant to the Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 and Community Design (Amendment) Regulations 2014.
In line with EU legislation and copyright law in the UK, the Intellectual Property Act 2014 (the ‘Act’) now specifies that unless there has been an agreement to the contrary, a designer will own the rights to his design. Businesses commissioning designs should ensure that they address in any contractual relationship whether all future rights are assigned to the business. The rule will not apply to designs created prior to October 1, 2014, or under contract between a designer and a commissioner entered into prior to that date.
There have been changes in relation to requirements for qualifying for unregistered design protection. The reference to ‘any aspect’ of the design has been removed. The effect of this amendment is that a whole or part of a design is still protectable, but trivial aspects of a design will not qualify.
Other changes in relation to unregistered designs include clarification of the definition of design, which must now be original within a ‘qualifying country’ (the UK, EU or certain territories with a trading relationship with the UK), rather than in the ‘relevant design field.’
Criminal Offences for Copying of Registered Designs
New criminal offences have been established for intentional copying and use of registered designs, as well as knowingly making commercial use of copied designs. Commercial use includes importing, exporting, stocking or marketing copies of a design. The infringer must have known or had reason to believe that the design was registered. These provisions are intended to discourage flagrant copying and are punishable by a fine, imprisonment up to 10 years or both. Accidental, incidental or unintentional copying will not fall within the scope of the criminal sanctions.
New Defences to Infringement
Use of an unregistered design for private, non-commercial, experimental or educational purposes is now a defence to infringement under the Act. For educational purposes, the design must be attributed and the use fair and not prejudicial to the ordinary exploitation of the design, in order for the defence to apply. Experimental use allows a business to use a design in order to establish how it was created.
A further defence now available is innocent concurrent use of a registered design. This defence covers good faith use and commercialisation of a registered design, or preparation to do so, without knowledge of the design, which is subsequently registered by a third party. The party invoking this defence may carry on using the design, but only in the marketing of the relevant product in its exact form.
Account of Profits for Innocent Infringement
UK registered design proprietors will now be able to claim compensation from innocent infringers by way of an account of profits.
Exception for dual-registered community design and copyright
The Act brings into force an exception whereby a party who uses a registered Community design with the permission of the owner will not be liable for infringement of the copyright in the work. However, this exception does not apply to unregistered designs.
Enhanced UKIPO Services in 2015
The UK Intellectual Property Office will provide additional services in 2015, including a ‘designs opinion service.’ This will be an inexpensive facility to provide non-binding opinions on possible design disputes, similar to the service offered for patents. There will also be improved record keeping online in relation to UK design applications.