Many changes to UK design law are due to come into effect on 1 October 2014. The changes arise from The Intellectual Property Act 2014 with the general aim of simplifying this area of law, as discussed in our previous articles. As the UKIPO puts it:
“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.”
Key features of the reform are:
- Introduction of criminal sanctions for intentional copying of a registered design without consent from the design owner
- Ownership of a commissioned design no longer automatically transfers to the commissioner
- Limited protection provided for prior users of a design which is later registered by another
- Simplification of who is able to qualify for unregistered design protection
- Restriction of the use of unregistered design protection for “parts of parts”
- Provisions for non-infringement of unregistered designs for certain private, non-commercial, experimental or educational purposes
- Liability for innocent infringement of registered designs will be based on profits (not damages)
A booklet explaining the changes in more detail and outlining potential implications for businesses has been produced by the UKIPO and can be accessed on the Government's website.
Only time will tell whether, in practice, the reforms meet the aim of simplifying UK design law for businesses. However, at the very least, many of the reforms bring the law on designs more closely into line with European design law and existing patent, trademark and copyright law so, from that perspective, they provide welcome harmonisation.
Further planned changes are not expected to come into force until 2015 at the earliest. These include the introduction of a non-binding opinion service for designs, online access to documents relating to registered designs, changes to the appeal procedure for designs and provisions for the UK to join the Hague system for international design registrations.