In response to the Hargreaves Review, which was critical of the ‘patchwork of protection’ afforded to designs in the UK, the Government has now set out its proposals for amending the law relating to UK registered designs (UKRD) and unregistered design rights (UDR).
The main proposals are:
Criminal sanctions for the deliberate copying of UKRD and registered Community designs (but not community unregistered designs) will be introduced. A defence will exist in respect of unintentional infringement of registered design rights. The introduction of criminal sanctions for deliberate copying of registered designs is intended to bring the law into line with that which currently applies to counterfeiting and piracy of copyright protected audiovisual products in the UK.
It is also thought that the civil enforcement will become more effective if infringers realise that their actions may result in criminal sanctions;
The ownership provisions for UKRDs and UDR will be amended such that the designer, and not the party which commissioned the design, will be the initial owner (i.e. as is the case for Community designs and copyright);
The qualification requirements for ownership of UDR will be relaxed to include parties of any nationality provided that, broadly speaking, they either live in the EU, carry out business in the EU or market articles made to the design in the EU. This will open UDR up to, for instance, US-based designers;
The definition of what can be protected by UDR will be amended to prevent design owners from ‘cropping’ the design alleged to be infringed in order to catch other designs which are dissimilar when viewed as a whole and only in similar in respect of the cropped part;
A “prior use” defence will be introduced in respect of UKRD, mirroring the existing defence for Community designs, and a ‘private and non-commercial purposes’ defence will be introduced for UDR;
The period of deferment of publication for UKRD design applications will be extended to allow an applicant to delay publication for up to 30 months;
The UK IPO will provide a voluntary, non-binding Design Opinions Service to give opinions on potential infringement and invalidity issues; and
The UK will join the Hague Agreement, a system allowing designers to obtain protection in several countries by filing a single application.
These proposed amendments are set out in the IP Bill currently before Parliament.
The Government’s report can be found here:
For update on the progress of the IP Bill, see: