Under the Bill, as in the case of UK unregistered design rights, commissioning a design will no longer mean automatic ownership of the design. It will be necessary for the commissioner to obtain a written assignment of the design.
Right of prior use
A person who, before the date on which the design application was filed or its priority date, used a registered design in good faith or made serious and effective preparations to do so may continue to use the design for the purposes for which, before that date, he had used it or made the preparations to use it. However, this does not apply if that person had copied his design from the design which was subsequently registered.
This right of prior use is personal and may not be licensed or (unless the design was used, or the preparations for its use were made, in the course of a business, and the right is assigned or transmitted with the part of that business) assigned. It is effectively a defence only.
Finally, this is a defence only to claims of infringement of UK designs registered after the Bill becomes law.
What constitutes “serious and effective preparations” for use may well give rise to significant disputes.
The Bill allows for the making of requests to the designs registrar for opinions on specified matters relating to UK registered designs.
It is likely that these opinions will relate to the validity of registered designs and whether they are infringed. These would be non-binding and allow parties to assess the strength of their case before incurring the cost of legal proceedings.
Criminalisation of design infringement
The making and sale of counterfeit goods is already a criminal offence under copyright and trade marks legislation. This has now been extended to the deliberate copying of UK and Community registered designs.
The Bill provides that a person will commit a criminal offence if, in the course of business and without the consent the registered proprietor of a registered UK or Community design:
- copies the design so as to make a product exactly or substantially to that design, and does so knowing, or having reason to believe, that the design is registered; or
- offers, puts on the market, imports, exports or uses such a product, or stocks it for one or more of those purposes, knowing, or having reason to believe, that the design has been copied without the consent of the registered proprietor.
Applications for UK and Community registered designs are not examined for validity, with the result that many invalid designs are registered. In order to address the concern that invalid registered designs may result in criminal proceedings, the Bill provides that it is a defence to show that one reasonably believed that the registration of the design was invalid. It is also a defence to show that one did not infringe the registered design.
ACID (the Anti-Copying in Design group) which lobbied for over 18 years for criminal sanctions against design infringement welcomed this. The Guardian reported an IPO spokesperson stating that the measure would act as a deterrent to those ‘perpetrators of blatant design infringement’. However, the International Chamber of Commerce UK showed some reluctance about the criminal sanctions in a press release warning that there are “…real concerns within [their] membership that criminal sanctions will have a chilling effect on innovation”.
As noted in our earlier posts, the Bill may be subject to amendment as it receives parliamentary scrutiny and it remains to be seen when the Bill will become law.