The Intellectual Property Act 2014 came into force on 1 October 2014. Along with changes to patent law, e.g. to enable to UK to implement the Unitary Patent Court Agreement, there are a number of important changes to design law.
Somewhat controversially, the intentional copying of a registered design is now a criminal offence whereas previously, like patents, this had only been a civil offence. Civil law still covers whether an accused design infringes a registered design, but a criminal sanction has been added for designs which are intentionally copied. There are, however, a number of safeguards, which provide defences if the design was copied accidentally, incidentally or unintentionally; if there were good reasons to believe the registered design was not being infringed; or there were good reasons to believe the registered design was invalid.
For commissioned designs (both registered and unregistered), the default owner (unless a contract states otherwise) is now the designer and not the commissioner, as was previously the case. This brings the UK position into line with the European and copyright systems. It is therefore important both for designers and commissioners to be aware of the ownership status of designs created after 1 October 2014 and to draw up appropriate agreements to clarify the intended ownership of designs, if necessary.
The definition of an unregistered design has been slightly narrowed, with removal of the reference to “any aspect” of a design. This means that while a whole design and parts of design can still be protected, a small cropped area, i.e. a part of a part which forms a trivial part of a design, is no longer afforded any protection.
For unregistered designs, the eligibility criteria to qualify for protection under this right has been simplified. Once particular change that has been made, for designs which are created in a foreign jurisdiction which is not a “qualifying country” (including EU member states and a number of small countries with a traditional relationship with the UK) and for which the design right protection can be obtained by the first marketing of an article to the design in the UK or other qualifying country, is to remove the requirement that this first marketing must be exclusively authorised. It is too soon to say whether this will mean that it is now a race to be first to market a product in a qualifying country in order to secure the unregistered design right. This opens the intriguing possibility of a loophole being opened which enables an unauthorised party to first market a product in the UK or other qualifying country to obtain the unregistered design right, and thus a foreign company may lose the right to sell their own products in the UK.
Although not yet established, the Act provides provisions for the creation of a non-binding Designs Opinions Service by the Intellectual Property Office, similar to the service offered for patents.