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Changes to the architecture of design law – starting today

Yellow pencil on top of architects design Print publication

01/10/2014

From 1 October 2014, various key sections of the Intellectual Property Act 2014 (the Act) will come into force. The Act brings about a significant evolution in various aspects of intellectual property law. This article highlights some of the major changes to design rights which come into force from today.

Unregistered design – scope

The Act removes the words “any aspect of” from the definition of a design in section 213(2) of the Copyright Designs and Patents Act 1988 (being “the design of any aspect of the shape or configuration (whether external or internal) of the whole or part of the article”).

By removing the words “any aspect”, the UK Intellectual Property Office (UK IPO) hopes to reduce litigation over more trivial design infringements. This change applies from 1 October 2014.

Unregistered design – ownership

The Act will change the position of ownership of unregistered designs in terms of commissioned works. Previously, the commissioner was the owner of commissioned unregistered designs; however, from 1 October, the law will be brought into line with registered designs and copyright and the creator of the design will be the owner of it (i.e. the designer).

This provision does not apply to designs created before 1 October 2014, nor will it apply to designs which are commissioned before 1 October 2014.

This will have an important effect on individuals and companies who commission designs. Having the correct contractual arrangement in place will be key in securing ownership of those designs.

Unregistered design – qualifying for the right

The rules governing the eligibility for/qualifying for an unregistered design will be changed and simplified. From 1 October, in order for an individual to qualify they must be habitually resident in a qualifying country. For a body corporate (or other legal personality) it must be formed under the law of a part of the United Kingdom or another qualifying country, and has in any qualifying country a place of business at which substantial business activity is carried on.

The rules governing the ‘first marketing’ qualification will also be changed. The requirement for a design to be “by a qualified person who is exclusively authorised to put such articles on the market in the United Kingdom” has been broadened to simply being by a “qualified person”. The result of this will be that many more designs will be protected by first marketing.

Unregistered designs – private use

There are currently exemptions from liability for infringement for registered designs, but the position for unregistered designs is unclear. From 1 October, the Act will bring exemptions from liability for private acts, experiments and teaching, mirroring the provisions currently in place for registered designs.

Registered design rights – criminal penalty

A criminal penalty will be introduced in respect of registered designs.  From 1 October, an offence is committed if a person, in the course of business, intentionally copies a registered design, which they know, or have reason to believe is a registered design, so as to make a product exactly to that design or immaterially different. A person guilty of the offence faces imprisonment not exceeding 10 years, or a fine, or both.  There are defences available: if a person had reason to believe that the registered design was invalid; or if a person shows, or reasonably believed that they did not infringe the rights in the registered design.

Designs Opinions Service

The UK IPO will be introducing a Designs Opinions Service, similar to the current Patents Opinions Service.  It estimates this will be launched in late 2015.  Opinions will be offered on various design right issues such as design validity and infringement.  This will help avoid potential litigation on design matters.  The UK IPO anticipates the service will cost approximately £200 for an opinion (similar to the cost of the Patents Opinions Service).  As with the Patents Opinions Service, opinions will be non-binding.

New routes for appealing against UK IPO decision on registrations and invalidations of trade marks

The current Registered Designs Appeals Tribunal will be replaced with an Appointed Person and the High Court. The ‘Appointed Person’ system will be similar to the current system with patents. It provides a less formal, less costly route of appeals than those to the High Court. The High Court will be available for further appeals and may be deemed more appropriate in some cases. This change is likely to take effect from April 2015.

If you have any questions relating to the change in design law, please feel to contact one of our specialist intellectual property solicitors.

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