The Intellectual Property Act 2014 introduced a number of changes into UK design law, some of which entered into force in October. The primary change concerns a change to ownership of a design – whereas previously the commissioner of a design was the owner of the design, ownership of any design created under commission on or after 01 October 2014 will rest with the designer (not the commissioner).
So, if you are a designer, the rights in any design will be owned by you even if someone else commissions you to create the design. However, if you’re employed as a designer to create designs as part of your job, the rights in any design will be owned by your employer. Additionally, any contractual obligation (even those in place before 01 October 2014) will supersede this legal transfer of ownership, so you must ensure that any contract to which you are bound fully and accurately transfers ownership in the way that you intend.
Another change relates to the introduction of limited protection to anyone who, in good faith, starts to use a design but later finds the design is registered. In any other circumstance, the use of the design would be considered an infringement of the registered design. If you do use a design that you were not aware was registered, you can continue to use the design, but only in the same way you were already using it, for example at the same commercial level as you were using it at the time the design was registered. This provision shouldn’t be seen as a route to evade infringement. Designers should also make provisions to ensure that third parties are adequately informed of the existence of design rights, for example by marking articles embodying the design with the design application/registration number.
Under a further change, you might also be committing a criminal offence by intentionally copying a design registered in the UK or the EU without the owner’s consent and whilst knowing (or having reason to believe) the design is registered. A criminal offence is committed when copying is carried out intentionally, which must be proved ‘beyond all reasonable doubt’. This change will provide an additional deterrent to designers against third parties who copy designs, and will increase the options for enforcement available to designers were a design has been intentionally copied.
If you are relying on unregistered design rights to protect your designs, you should also be aware of a change relating to the definition of unregistered design right. A design will now be defined as the design of the shape or configuration (whether internal or external) of the whole or part of an article; meaning that a whole design (and the component parts of a design) can be protected by unregistered design right, but fragments of a design (or fragments of a component part) cannot be protected. Again, this provision should not be used to try to evade infringement, but does allow for cropped fragments of designs to be used without infringement.
A change to acts exempted from infringement has also come into force, which allows you to use a design without infringing it: for private purposes which are non-commercial; for experimental purposes; for teaching purposes or for making citations (so long as the copying is fair, does not compromise exploitation of the design, and the source of the design is referenced); and using or repairing equipment on non-UK registered ships or planes which are temporarily in the UK. However, these exemptions will be construed very narrowly and so care should be taken to ensure that you are strictly acting within the specified exemptions if infringement is to be avoided.
These changes are intended to make it easier for people and businesses to understand what is protected under design law. However, the threat of criminal penalties and right to continue use of designs will likely be of concern to designers who are now exposed to previously unrecognised sanctions and an ebbing of design right. Clearly, great care should be taken by designers when using existing or creating new designs to ensure that you do not fall foul of any of these legislative changes.