In August 2012, the IPO also proposed "equalising" the sanctions available for unintentional infringement of UK registered design and Community design right in the UK. Under current legislation, damages or an account of profit are available for unintentional infringement of a Community design, but not for unintentional infringement of a UK registered or unregistered design. Following a consultation on how harmonisation could be achieved, the IPO is proposing:
- to permit the owner of a UK registered design to seek an account of profits but not damages from an unintentional infringer of the design; and
- to prevent the owner of a Community design from seeking damages from an unintentional infringer of the design.
The IPO has stated that it will introduce the required legislative changes "as soon as possible".
Whilst these changes harmonise the remedies available for unintentional infringement of Community, UK registered designs and copyright, innocent infringers of other IP rights will still be treated differently. Neither damages nor accounts of profits are available against innocent infringers of patents whilst it is possible to seek all financial remedies from innocent infringers of trade marks. However, the IPO recognises that this situation reflects the nature of the different types of IP rights and the relative complexity involved in searching for prior rights.
The IPO considers the proposed design provisions to be a "fair and balanced outcome" as an unintentional infringer of a design "may need to pay the holder of the right some or all of the profits that he has made from using that person’s intellectual property. On the other hand, unintentional infringers would not be liable for damage claimed to have been caused to the right holder. In this way the unintentional infringer’s liability would be effectively capped at the level of his own profits."
Practically, this removes one of the advantages of a Community design registration over a UK registration. Companies may also benefit from not having to put a design notice on their product, which until now has been a prudent measure to prevent infringers claiming lack of knowledge of the design and thereby avoiding financial remedies.