The future of UK design: clearer, easier, stronger

This morning the UK Intellectual Property Office made available a user-friendly update on what is happening to design-related issues in the Intellectual Property Bill, currently discussed in the House of Commons [‘IP Bill’, on which see earlier posts of Kats Darren(s) here and here].

As readers may recall, one of the IP Bill’s goals is to modernise UK design law in light of the recommendations provided for by the Hargreaves’ Review of Intellectual Property and Growth of 2011, available here. The report observed that, although “design constitutes the largest contribution to overall intangible investment in the UK economy”, too many overlapping rights with diverging scopes of protection, user-unfriendly databases, insufficient enforcement, expensive judicial proceedings and untailored exceptions make design law in the UK messy and ineffective.

“Here’s how we are going to fix it!”, the UK IPO summarised in today’s document:

Messy design!

(1)       Clearer scope of protection for UK unregistered designs

UK unregistered designs’ scope of protection currently covers “any aspect of the shape or configuration (whether internal or external) of the whole or part of an article” [s.51(3) of the Copyright, Patents and Designs Act 1988, the ‘CDPA’]. The reform would intend to remove “any aspects of”, so to simplify the law as to what such right covers. “Very small cropped areas” will not be protected, says the IPO, but the “whole or part” option still remain available for right holders, in compliance with Article 1(a) of the Community Design Directive 98/71.

(2)       Designers, not commissioners, own it

The default owner of a design will be the designer, not the commissioner, while employers will still own the rights to any design that “employees produce as part of the job and under the terms of their employment contract”. A modification will be introduced by removing the words “in pursuance of a commission or” from s.215(1) CDPA, which currently reads “The designer is the first owner of any design right in a design which is not created in pursuance of a commission or in the course of employment”. This amendment brings UK design law closer to the EU framework [and, in particular, to Article 14 of Community Design Regulation 6/2002] and could further help designers to face some issues that normally arise during design tenders, as outlined in the Hargreaves’ report.

(3)       Criminal offence for deliberate infringements

Hargreaves’ Review reported concerns as to SME designers being “routinely copied by major High Street retailers”, suggesting that this may be because “unlike copyright, which is supported by criminal sanctions and is therefore of interest to police and trading standards officers, design rights only offer civil sanctions”. In response, the IP Bill includes criminal penalties upon the model of those that already exist in copyright and trade mark law. Those penalties, however, will only extend to those who have blatantly and deliberately copied a registered design [no jail for discrete and naive infringers, Merpel deduces].

A design jail.

(4)       New exceptions for unregistered designs

Exceptions for “private acts, experiments and teaching” currently provided by s.244A CDPA for registered designs will be extended to unregistered ones. “Commercial use of designs will still require the permission of the rights holder”, specifies the IPO.

(5)       User-friendly online database

Currently, detailed contents of existing registered designs are accessible only via a formal request to the IPO. “A package of measures in the Bill will reduce bureaucracy” and “a key change would allow the IPO to publish design documents online so they can be reviewed more easily”, the IPO promises [like for Community designs in the good old days of the earlier version of OHIM’s website, Merpel says].

(6)       Opinions service upon infringement and other design-related issues

This is an interesting one. Says the IPO: “A new ‘Design Opinions Service’ will be introduced to provide a low cost, non-binding and impartial view on potential design disputes, such as infringement of a design, or even ownership of a design right”. “Legal action can be costly, and an opinion may give you an indication of whether you are likely to be successful if you take further action” whenever “there is uncertainty about whether your design is too close to someone else’s and therefore may infringe upon it, or whether an unregistered design right exists for a product”.

Such opinions will not be binding on requestors, third parties and, over all, possible judges. Instead, it is imagined as a way to reduce designers’ legal costs [and, ideally, legal proceedings themselves] through technical and legal analysis from experts who would likely not be involved in possible actions.

Beyond the very clever idea of providing designers with cheap and impartial suggestions, what might be interesting is the way in which those opinions could be used and how they could be regarded to within possible proceedings. Will they serve like ex parte technical expertise, like currently occurs in Italy with non-binding opinions rendered by the Italian Design Association? And, from another standpoint, what if the IPO suggests that an infringement is taking place but the court adopts the opposite conclusion?