Important changes to the legislative regime for the protection of designs come into effect in the UK today (1 October 2014). Businesses need to be aware of 5 key changes under the Intellectual Property Act 2014 (the Act), plus some additional changes which will follow in 2015.
Under the Intellectual Property Act 2014 (Commencement No.3 and Transitional Provisions) Order 2014 and Community Design (Amendment) Regulations 2014, the following changes take effect from 1 October 2014:
- Ownership of designs: The Act brings ownership of designs in line with EU design law and UK copyright law by expressly providing that, in the absence of a written agreement to the contrary, the owner of a design is the designer. This does not apply to designs created before 1 October 2014, or created on or after 1 October 2014 under contract between the designer and the commissioner entered into before 1 October 2014. Businesses who commission designs will need to ensure that written agreements are in place to ensure that all future rights are correctly assigned.
- Criminal offences for internationally copying and using registered designs:New provisions will align protection for registered designs with other registered IP rights, acting as a deterrent against blatant copying. The provisions also extend to knowingly (but not accidentally) making use of copied designs in the course of trade, including by importing, exporting, stocking or marketing products embodying the design. The offences carry penalties of a fine or prison sentence of up to 10 years, or both, and are likely to be of interest to consumer and luxury goods businesses as part of their regional anti-counterfeiting strategy.
- New defences:
- Private, non-commercial uses of unregistered designs: The Act provides a defence to infringement of unregistered design right where the use is for private, non-commercial, experimental or educational purposes. In relation to education, the defence will only apply if the design is sufficiently attributed, the use is fair and does not unfairly prejudice the ordinary exploitation of the design. These defences are similar to those which currently apply with respect to copyright infringement in the UK.
- Innocent concurrent use of UK registered designs: The Act provides a defence for using and commercialising a design, or making material preparations to do so, in good faith without knowledge of a third party’s subsequently registered design. A person benefiting from the defence will also be in a position to continue using the design, although this is limited to the continued marketing of the exact product. The scope of the defence is likely to be subject to detailed consideration by the courts in coming years, but will be of particular interest to industries where commercialisation and launch of designs have long lead times.
- Account of profits for innocent infringement: Owners of UK registered designs will benefit from the option to claim compensation for innocent infringements, based on an account of profits. This mirrors the financial remedies currently available for unintentional infringement of a registered Community design in the UK.
- Limitations of dual registered community design and copyright protection:The Act introduces an exception where use of a registered Community design with the permission of the owner (for example, under licence) will not infringe the copyright in the work. This brings UK law into line with the existing regime for dual protection of artistic works as UK registered designs and copyright works. The exception does not, however, apply to unregistered designs.
Further changes in 2015
The Act facilitates the introduction of additional services at the UK Intellectual Property Office, including a new “designs opinion service” for the provision of low-cost, non-binding opinions on potential design disputes and improved online records for files relating to UK registered design applications which will be of assistance in litigation.
The Act also paves the way for the UK to join the Geneva Act of the Hague International design registration system as an individual member. UK businesses currently have access to the Hague system to protect designs in the EU as a whole. Once the UK has joined as an individual member, the Hague system will provide greater flexibility for initial protection and extensions of protection.