Trademarkroom Guide on Recent Design Law Changes.

Design law is often considered messy, complex and confusing, and small businesess that do not have the time or the financial resources to disentangle it, can often lose out. The IP bill is introducing a number of new measures, and making some changes to the existing law, in order to make design law simpler, clearer and more robust.

The Intellectual Property Act 2014 received Royal Assent on the 14^th of May 2014. The Act includes measures which will help modernise and clarify the Intellectual Property framework whilst simplifying and improving design protection.

The IPO have provided guidance which intends to help explain to designers, employers and businesses the changes to design law and sets out which of these will come into effect on the 1^st of October 2014 and which are expected to come into force in 2015.

Each amendment will be considered in turn:

1)      Design Ownership:

If you are an employer you continue to own the rights to any design your employee produces in the course of their employment. If you are self-employed or an independent designer then you own the rights to your design, even if someone else commissions you to create it, unless a contract, which says otherwise, is in place. Finally, if you commission someone else to create a design you do not own the right in a design unless the contract says so.

This guidance applies to all designs created on or after the 1^st of October 2014.

2)      Prior use of a design:

The law now gives some limited protection for those who, in good faith, start to use a design, but subsequently realise someone else has registered that same design before they have done so.

Provided that the design is only used for the same original purpose, the person who first used the design is now not liable for infringement; provided that the design was not copied from the subsequently registered design.

3)      Copying of an original design:

The Act introduces a criminal offence for the intentional copying of a UK or EU registered design. This gives registered designs the same level of protection as copyright and trade marks.

To be found guilty someone must intentionally copy a design, without the consent of its owner, whilst knowing (or having reason to believe) the design is registered. This intentional copying must also result in making a product exactly like the design in question or where a design has only been very slightly altered (the relevant law refers to this as “with features that differ only in immaterial details”).

It is also an offence to knowing use an intentionally copied design in the course of a business to profit from that copying. This includes using, marketing, exporting, importing or stocking the design in the course of business.

The offence applies to any intentional copying of a Registered Design that takes place on or after the 1^st of October 2014.

Other changes happening in October 2014

The definition of unregistered design right has been narrowed slightly. The change removes the reference to ‘any aspect’ from the definition of an unregistered design. This effectively means that whilst a whole design and parts of a design can be protected, a ‘part of a part’ cannot.

In addition, the meaning of ‘originality’ within the definition of unregistered design has been refined. To be capable of being protected by means of unregistered rights, a design should be ‘original’. To be considered original, a design should not be ‘commonplace’, i.e. should not be broadly known in the design field in question at the time of its creation.

Eligibility requirements defining who may claim UK unregistered design rights have also been streamlined. For your design to qualify for protection under UK unregistered design right, there is certain criteria which must be fulfilled. These are based on:

-          Your relationship with ‘qualifying countries’; and

-          Whether you are a designer, whether you employ the designer, or if neither of these apply whether you are the first person to market the products made to the design.

Also of relevance are the circumstances under which you would not infringe someone else’s UK unregistered design: There are certain, very specific, activities that allow you to use someone else’s design without infringing it. These activities are:

a) For private purposes which are non-commercial.

b) For experimental purposes.

c) For teaching purposes, or for making citations (that is, referencing someone else’s work), as long as this is fair, does not compromise the ability of the owner to exploit the design themselves, and the source of the design is quoted.

d) Using equipment on non-UK registered ships or planes which are temporarily in the UK; or importing spares to repair them, or actually carrying out such repairs.

Then guidance provided by the IPO has also outlined the expected future changes to the law. These include:

-          Extending the international design registration system

-          Introducing the inspection of certain design documents electronically

-          Changes to the procedures for appealing against IPO’s decisions on designs.

-          Introducing a Design Opinions service.

Harry Jeffries