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Queen’s Speech Reveals Design Law Reform High on the Agenda

Queen’s Speech Reveals Design Law Reform High on the Agenda

Published: 29.05.13 at 11:51

The Queen's Speech 2013 revealed that the UK Government would introduce an Intellectual Property Bill (the Bill). The Bill was subsequently introduced into the House of Lords on 9 May 2013 and (at the time of writing) the second reading is due to take place on 22 May 2013. This piece summarises the main changes that are sought through the Bill and associated consultations relating to UK Design Law reform.

Background

The Bill follows recommendations and consultations on the reform of design law (as well as wider intellectual property) over the last two years, most notably:

Current Design law

The legal framework for designs consists of a myriad of UK legislation, EU legislation and case law.  There is a distinction between registered designs and unregistered design rights (UDRs).

UK registered designs are governed by the Registered Designs Act 1949. Designs are given a broad legal definition covering the appearance of the whole or part of a product, and must be registered with the UK Intellectual Property Office (IPO) in order to gain protection.

UK UDRs protect any aspect of the shape or configuration of an article.  They arise automatically (in accordance with the Copyright, Designs and Patents Act 1988) provided certain qualifying criteria are met. These criteria are complex, based on nationality and the location where the design is first marketed. This has caused some uncertainty on whether protection is afforded to those outside of the EU.

Further, the Consultation papers acknowledge the potential for trivial claims of infringement where a minimal part of a UDR is copied.

If protection is sought in all countries of the EU, there is an alternative protection of registered and unregistered Community Designs. Divergences between the scope and enforcement of UK registered designs, EU registered designs and EU and UK UDRs has been a source of confusion. 

The UK Government recognised that designs were a potential area of growth and that there was a need for reform.

Three clear aims of the reforms

Simplifying and harmonising UDR law

The Bill clarifies the qualification criteria for UDRs, notably placing a focus on the location from which a person runs its business. As the law currently stands, in order to be a "qualifying person" for the purposes of UDRs, a body corporate must both be formed under the law of a qualifying country and have in any qualifying country a place of business at which substantial business activity is carried on.  This is particularly relevant where the company is the employer of the designer.

Under the Bill, it will only be necessary for a body corporate to have a place of business in any qualifying country.  This means that a company incorporated in a non-qualifying country e.g. outside of the EU, can still be a qualifying person for the purpose of UDRs.

The Bill also redefines UDRs. This redefinition seeks to remove the words "any aspect of" from the definition of UK UDRs to prevent claims being based on very small parts of articles.

The reforms seek to bring a more uniform approach to ensure that there are no conflicting rights under UK and EU law.

As the law currently stands, where a design is created in pursuance of a commission, the person commissioning the design is the first owner of any design right in it.

If the Bill is enacted, this will no longer be the case. Under the Bill, unless the design was created by an employee in the course of his employment (in which case the employer will own any design right), the owner will be the individual designer, even when the design was commissioned. 

This brings the ownership of UK design rights into line with the ownership of Community Designs.  What this will mean is that any person commissioning a design must obtain written assignment of the design rights from the designer.

The Bill also proposes the introduction of certain permitted acts which brings UK UDR into line with patents and registered designs which have similar or corresponding exceptions. These new exceptions to infringement include acts done privately and for non-commercial purposes, acts done for experimental purposes and an act of reproduction for teaching.

Enforcement of registered designs

The government consultations recognised that stronger protection is needed against deliberate copying and therefore the Bill introduces criminal penalties for those deliberately copying registered designs in the course of business.

As a method of lowering costs of enforcement, the Bill seeks to create a voluntary, non-binding Designs Opinions Service where an objective perspective on the strength of a case is provided before commencing legal proceedings.

Provision of information on design protection

The Bill seeks to enable access to hard or electronic copies of the register of designs and associated documents whenever a person needs it. 

In addition, the Consultation Papers and Hargreaves Report emphasised the need for greater education to facilitate better understanding of design law.  It will therefore be interesting to observe how the reforms proposed in the Bill will be communicated in pursuit of a more educated community.

A focus on their goals

The Bill proposes some welcome reforms to make the design right legal framework in the UK clearer. The clarification of rights and harmonisation between UK and EU rights should encourage creative communities to innovate knowing they will be consistently protected, as well as providing them with flexibility in their method of design protection.

This article was written by Michelle Lau, BPTC part-time, BPP Law School.

Photograph (some rights reserved) by UK Parliament

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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