The Intellectual Property Act 2014 (Act) comes into force on 1 October 2014 and this article highlights some of the key changes relating to designs.

Introduction

The Intellectual Property Act 2014 (Act) comes into force on 1 October 2014 and this article highlights some of the key changes relating to designs.

The purpose of the changes is to reform the UK design law in order to simplify and strengthen design protection so that the system can best meet the needs of businesses and because this is an area of law which makes a significant contribution to the UK’s growth and innovation - an estimated £33.5 billion was spent on designs in the UK in 2008.

Background

Before analyzing the key changes brought in by the Act it is useful to point out that there are five ways to protect designs in the UK: the UK Registered and Unregistered Design Right, the Community Registered and Unregistered Design Right and Copyright.

These five independent rights have in effect created a multi-layered system of protection which was once called an "absurd maze" by Professor William Cornish. Having legislated on the substantive law of designs (excluding the UK Unregistered Design Right), the EU legislature left the UK Parliament only a limited room for manoeuvre. Member States could legislate on issues of procedure and remedy.

Key changes to design law which will come into effect on 1 October 2014

Ownership of designs

The owner of a commissioned design will be the designer or the author, and not the commissioner. This change brings design law into line with copyright law and places the emphasis on the contractual arrangement between the parties. Going forward, it is therefore imperative that commissioners have contracts transferring ownership from the designer to the commissioner if that is what the parties intend.

Right of prior use

Under the new law, if A starts using a design in good faith and later finds out that B has registered that same design, A can continue using the design only in the same way A is already using it – or had already made "serious and effective" preparation to use it – at the time the design was registered. By doing this, the law is allowing the co-existence of the two rights.

New definition of Unregistered Design Right

The British legislature has amended the definition of the UK Unregistered Design Right by deleting the term 'any aspect' from the definition. The new definition now reads "the design of the shape or configuration (whether internal or external) of the whole or part of an article", which brings it more into line with the Community Unregistered Design.

The meaning of originality has also been restricted geographically. So under the new law a UK Unregistered Design needs to be original and not commonplace in the design field in the UK or the EU (or in a qualifying country).

Strengthening design protection

It will be a criminal offence to intentionally copy a registered design or to knowingly use an intentionally copied registered design. Once again, the aim here is to bring design law more in line with copyright and trade mark law, and to give Trading Standards and design owners the tools that they need to prosecute counterfeiters.

The offence carries with it the same kinds of penalties that already exist for copyright and trade mark offences, namely a fine and/or a prison sentence of up to ten years. This change will provide an additional deterrent to those who copy designs and will increase the options for enforcement if a design is copied.

Proposed changes to Design Law for 2015: The Hague System

The International design registration system is administered by WIPO - The World Intellectual Property Organisation. Currently those seeking an International design registration through the Hague system can only include the UK in their application if they opt for the EU-wide coverage. This can make protection more expensive than it need be. For example, if the applicant does not want to protect their design across the whole of the EU. The Act paves the way for the UK to join the Hague System in its own right allowing businesses to choose the UK in their International design application. This is unlikely to happen before the end of 2015, after a consultation.

These changes somewhat simplify and strengthen design protection in the UK and bring design law more in line with other areas of Intellectual Property Law, but they do not go far enough in simplifying our multi-layered system of protection.