The amendment of UK design legislation is a hot topic within the UK Intellectual Property Office (UK IPO) at the moment with the wide ranging consultation on reforming the UK legal framework for designs launched in July this year. However, the conclusions of an earlier consultation launched in December 2010 have recently been published. The consultation addressed the differing financial liabilities which may arise as a result of innocent infringement of UK registered designs on the one hand, and community designs having effect in the UK on the other.

The resulting changes to the law will increase the financial remedies available to the holders of UK registered rights and ensure design rights are afforded equal protection - regardless of whether they are effective in the UK, or throughout Europe.

Background

At present, the Community Designs Regulations 2005 (the Regulations) provide a financial remedy to a claimant when there has been an unintentional infringement of its community design in the UK (community designs are designs effective across the EU in both registered and unregistered form). This is because the Regulations do not currently contain any provisions exempting an innocent infringer from liability.

This is in contrast with the provisions for UK registered design infringement set out in the Registered Designs Act 1949 (the Registered Designs Act) which states that: "in proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing that the design was registered".

The UK IPO considered that the differing statutory regimes in relation to unintentional infringement were anomalous and launched a consultation.

The consultation

To address the inconsistency, the UK IPO proposed the adoption of one of the following two options:

  • to amend the Regulations so that innocent infringement of a registered or unregistered community design in the UK cannot give rise to an order to pay damages, or an account of profits (thereby following the Registered Designs Act practice); or
  • to amend the relevant provisions of the Registered Designs Act to allow proprietors of UK registered designs to obtain an order for damages, or an account of profits resulting from the unintentional infringement of a UK registered design (thereby following current community designs practice).

The proposals

Having weighed up the responses to the consultation, the UK IPO now proposes to amend the legislative provisions of the Regulations and the RDA 1949 to allow for recovery of an account of profits from an innocent infringer but not damages, which could be a greater sum potentially. The changes will cover infringements for UK registered designs and both registered and unregistered community designs in the UK.

Analysis

The UK IPO has sought to strike a balance by providing for financial remedies in relation to unintentional infringement, but capping the remedy at the level of the infringer's own profits. The compromise is a sensible one. Design rights can be better protected if those who regularly deal with designs are incentivised to check that the design they are using does not infringe.

A legal framework which allows an innocent infringer to retain profits made from an infringing act is likely to reward those who make a conscious decision not to check the register. Conversely, there is substantial value in being able to create new designs without fear of suffering substantial penalties for innocently infringing someone else's rights. By limiting the remedy to a claim for an account of profit, the UK IPO successfully addresses both issues.

Innocent infringement of other Intellectual Property (IP) rights

While the designs legislation for unintentional infringement is being harmonised in the UK, differences remain in respect of other IP rights. Remedies for unintentional infringement of copyright and unregistered design right in the UK do not include a remedy of damages and no remedies are available for innocent infringement of a patent. However, there is no distinction between the remedies available for innocent and intentional registered trade mark infringement.

The UK IPO commented in the response document that "the differences between the available financial remedies for unintentional infringement of different IP rights reflects the nature of the right and the complexity involved in searching for prior rights and prior art and interpreting the results". On this basis the UK IPO feels that the approach taken to designs is a proportionate, balanced and fair outcome to designers and users of designs.

Timescale for changes

The UK IPO has said that it proposes to introduce these new changes as soon as possible. However, the implementing legislation will need Parliament's approval and so it is likely to be around April 2013 at the earliest. We will in due course confirm when the changes will take effect.