Changes to UK Design Law

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As a result of the Intellectual Property Act 2014, changes to the design laws in the United Kingdom will start to come into effect from 1 October 2014. This update is designed to highlight some of the main changes.

Unregistered Design Right

Unregistered design right provides you with the right to prevent others from copying your design in the UK. It protects the whole or part of an article, but does not give you protection for 2 dimensional aspects such as surface decoration. The right arises automatically (there is no need to apply for registration) and lasts for either 10 years from the first marketing of an article made to that design, or 15 years after the creation of the design, whichever is earlier.

What has changed?

1. The designer will be deemed the first owner of the design

Previously, the commissioner was deemed the owner.

What does the change mean?

As an employer you continue to own the rights to any design your employees produce in the course of their job, unless their employment contract says otherwise.
As a self-employed designer or independent designer you will now own the design you create, unless there is a contract in place which says otherwise.
As a commissioner of designs you will now no longer own the design unless there is a contract in place with the designer which says otherwise.

2. The definition of an unregistered design has been altered

“Design” is now defined as ‘the design of the shape or configuration (whether internal or external) of the whole or part of an article.’

What does the change mean?

The definition used to incorporate ‘any aspect of the shape or configuration’. This has now been removed making it less likely an action would be brought against you if your design appears to have copied a trivial part of someone else’s design or ‘a part of a part’. However, it remains an infringement to copy part of an unregistered design.

3. The definition of design has been clarified

For the design to be original, the design must not be commonplace in a ‘qualifying country’.

What does the change mean?

If you want to claim UK unregistered design right in a design, that design must not be commonplace in the specific geographical area of the UK, EU and some additional countries with reciprocal arrangements*.

4. The definition of a qualifying person has been amended to ‘those who are economically active in the EU and other qualifying countries’

What does the change mean?

As the designer or the employer of a designer, to qualify for UK design right protection, you must:

• Be resident in the UK, or one of the other qualifying countries, as a matter of course, or
• Your company must have been formed in any of the qualifying countries AND do a substantial amount of business in any of the qualifying countries.

If you do not meet these requirements you may still be eligible if you meet certain other criteria.

5. New exceptions to infringement of unregistered designs have been introduced

What does the change mean?

Certain, specific activities will no longer infringe unregistered design right:

• Use for private, non-commercial, purposes
• Use for experimental purposes
• Use for teaching purposes, provided the use is fair, you quote the source of the design and you are not compromising the ability of the owner to exploit the design.

Registered Design Right

Registered design right protects the appearance of the whole or part of a product resulting from the features, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation. As the name implies, you have to make an application to register the design. The proprietor of the registration has the exclusive right to exploit that design in the UK for up to 25 years.

What has changed?

1. The designer will be deemed the first owner of the design

This mirrors the change to unregistered design right discussed above.

2. Intentional copying of a registered design is now a criminal offence

The Act has introduced a criminal offence for the intentional copying of a UK or EU registered design. This brings the penalties into line with those available in relation to copyright and trade mark infringement.

What does the change mean?

If you have intentionally copied a registered design, without the permission of the owner, the penalties for that offence are now a fine or prison sentence. It is also an offence to knowingly use an intentionally copied design in the course of business to profit from that copying. This includes using, marketing, exporting, importing or stocking the design in the course of trade.

3. New exceptions to infringement of copyright in registered designs have been introduced

The act expands the exception from copyright infringement already available to registered UK designs, to registered Community designs.

What does the change mean?

An authorised user of a UK or registered Community design will not infringe any copyright in the design.

4. Applicant does not need to be the owner of the design

The act removes the requirement for the applicant of a registered design application to be the proprietor of the design.

What does the change mean?

You can apply for a registered design even if you are not the owner of the design.

5. New good faith exception to infringement

The act now allows a third party who, in good faith, started to use a design prior to it being registered by another, to continue to do so.

What does the change mean?

If you started using a design prior to it being registered by a third party, you can continue to use that design, but only in the manner you have already been using it.

6. Simplified international registration

The act grants power for the Secretary of State to implement the Geneva Act of the Hague Agreement in the UK.

What does the change mean?

You can now seek protection for your design in the UK via the Hague international registration system. Previously, you could only obtain protection in the UK by selecting protection for the entire EU in the Hague international registration system.

* Qualifying countries are UK, all twenty eight countries of the European Union and countries with reciprocal arrangements with the UK, including, Anguilla, Bermuda, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Channel islands, Falklands Islands, Gibraltar, Hong Kong, Isle of Man, Montserrat, New Zealand, Pitcairn, Henderson, Ducie and Oeno Islands, South Georgia and the South Sandwich Islands, Turks and Caicos Islands.

Category: Latest Insights | Author: Sarah Darby | Published: September 2014 | Read more