Owners of existing UK and Community designs, and creators of new designs, should note changes to the laws governing UK registered and unregistered designs that came into force on 1 October 2014.
The changes include a new criminal offence. The main changes are as follows:
- Criminal offence: it will be a criminal offence to intentionally copy a UK or Community registered design, which the infringer knows is registered, in the course of a business without the owner’s permission. The copy must be identical or differ from the original only in ‘immaterial details’. However, it will be a defence if the infringer can show it reasonably believed the registration to be invalid (ie the design should never have been registered in the first place) or that it has not been infringed
- New designs: if someone commissions a designer to create a design, intellectual property (IP) rights in the design used to belong to the commissioner. This contrasts with other IP rights, which belong to the creator, not the commissioner, unless they agree otherwise between them. From 1 October, new designs will belong to the designer, not the commissioner, unless they agree otherwise
- Criteria for unregistered Design Right: the criteria for when UK unregistered Design Right applies have changed. Previously, unregistered Design Right protected ‘any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’. The new rules protect ‘the shape or configuration (whether internal or external) of the whole or part of an article’. The effect is to stop owners of Design Right from asserting their rights over just one small – perhaps trivial – part of their design, rather than the overall design
- Unregistered designs: these must still be ‘original’ (not commonplace) but the new law clarifies that they need only be original in the UK and EU (and a limited number of territories that have treaties with the UK in relation to IP rights)
- New defences: there are new defences allowing use of unregistered designs for non-commercial private purposes, experimental purposes, teaching and citation purposes, and using equipment on non-UK registered ships or planes which are temporarily in the UK
- Continued use if same purpose as before registration: a person who was using a design, or had made serious and effective preparations to do so, before you registered your UK design can continue to use that design despite your subsequent registration of it, provided they only use it for the same purposes as before your registration. This brings UK registered design law into line with Community design law
Further changes are expected, and we will update you as they become imminent.
Recommendations
- Businesses launching products incorporating new designs should check they are not identical or too similar to existing designs, or that one of the defences applies, otherwise they risk a criminal conviction
- Businesses commissioning designs should ensure the designer assigns the IP rights to them, or it will be owned by the designer
The contents of this article are for the purposes of general awareness only. They do not purport to constitute legal or professional advice. The law may have changed since this article was published. Readers should not act on the basis of the information included and should take appropriate professional advice upon their own particular circumstances.