On 1 October the Intellectual Property Act 2014 (the “IP Act”) brought in a number of changes to intellectual property law in the UK. This article focuses on the provisions relating to design law which are aimed at simplifying and strengthening design protection for the UK’s design sector. Set out below is a summary of some of the key changes and how they might affect your business.
It is now a criminal office to copy a registered design deliberately. Similar penalties are already in place in relation to trade marks and copyright.
The idea is to provide a stronger deterrent against blatant copying and encourage businesses to register their designs.
There are measures to ensure businesses are not caught by the offence inadvertently: it will not be an offence to use an infringing design accidentally or incidentally.
If the same design is developed independently by two parties, one then registers the design and discovers that the other party is using it, under the old law that other party would have infringed the design.
The IP Act provides a defence for parties who have designed and started commercialising a design, or made serious and effective preparations to do so, but later finds that it has subsequently been registered by another party.
This means that a third party may use a design registered by you if that third party satisfies the requirements set out above. Equally, if you are accused of infringing another party’s registered design, you may have a defence if you came up with it independently before it was registered.
Before the IP Act came into force, if you commissioned a third party to produce a design for you, you would have owned that design. This differed from EU design law and UK copyright law. The new position is that the person commissioned to create the design will own it.
The aim is to make the law consistent with EU and copyright law. The effect is that if you commission a third party to create a product design, you must ensure you (or the business) enters into a written agreement with the designer which assigns the design rights to you or the business.
Note that this does not affect the relationship between employers and employees. Where a person creates a design in the course of employment, the design automatically belongs to the employer. The IP Act does not change this: the change relates to the business on one hand and a third party (not an employee) on the other.
Scope of Protection
The protection previously granted by unregistered design right extended to “any aspect” of a design. This was thought to make the scope of the right very unclear to third parties, making the risk of infringement difficult to assess. The IP Act removes the right to claim “any aspect” of a design.
It should make it easier both for designers, and third parties, to establish what is covered by any unregistered design right.
Qualification for Protection
In order to qualify for unregistered design right protection a design must be “original” which means not commonplace in the design field at the time it was created. The former law did not specify where the design should be commonplace. This often led to arguments about whether or not a design was protected.
The IP Act defines “commonplace” as being known in the UK, the EU or a number of other countries which have particular arrangements with the UK.
This should make it clearer for designers and third parties to know whether a design is protected and, by extension, whether it has been infringed.
For more detail on the changes to design law see www.ipo.gov.uk/hargreaves-ipbill-designs.pdf
For a detail about changes to patent law see www.ipo.gov.uk/ipbill-patents.pdf
2015 and Beyond
A number of additional changes set out by the Act are expected to come into force during 2015. We will update you in due course.