Clause 13 of the Intellectual Property Bill will probably go through. What next?

The "Denver" claimed as a work of artistic craftsmanship in Hensher v Restawhile  [1976] AC 64
Source Centre for Intellectual Property and Information Law, Virtual Museum

Despite the submissions of Sir Robin Jacob, leading academic lawyers, the IP Federation, the IP Bar Association and the other intellectual property professions HM government seems determined to force through criminal sanctions for registered design and registered Community design infringement. Why HMG has set and indeed held to this course in the face of almost unanimous opposition from those who know most about intellectual property is a mystery but there it is. Governments do silly things sometimes of which the Dangerous Dogs Act is but one example.

What happens next
I have done all that I can as a citizen to persuade HMG to think again by 

• explaining in this blog why this proposal is a very bad idea, 
• lobbying my MP and even 
• remonstrating with the Minister in person when we shared a platform last week.

But it is not really my battle. Criminalizing registered design infringement does not affect me personally except perhaps as a consumer in that it may feather bed designs such as the "Denver" chair and sofa shown above which were once alleged to be works of artistic craftsmanship. I have therefore given some thought as to the possible consequences (and indeed opportunities) of the proposed legislation.

Invalidation
A registered or registered Community design cannot be infringed if it is invalid.  Unlike the United States where designs are protected by patent law, there is no substantive examination of applications for design or Community design registration in Newport or Alicante. Consequently, there are a lot of designs on both the UK and Community registers that ought not to be there. S.11ZA of the Registered Designs Act 1949 provides a number of grounds upon which a registered design may be declared invalid.   Art 25 of the Community Design Regulation lists the grounds upon which a registered Community design may be invalidated.  Applications for declarations of invalidity of registered designs may be made to the Registrar (that is to say the Intellectual Property Office) under s.11ZB of the Act and applications for declarations of invalidity of registered Community designs may be made to OHIM (Office for Harmonization in the Internal Market) under art 24 (1) of the Regulation. Registered and registered Community designs may also be declared invalid by the Patents Court or Intellectual Property Enterprise Court though the costs of applying to those courts would be higher. Recoverable costs in the Intellectual Property Office are regulated by Tribunal Practice Notice 2/2000.

Opinions
A rather more sensible provision of the Intellectual Property Bill is clause 11 which would extend the IPO opinions service to registered designs,  The clause would insert a new s.28A into the Registered Designs Act 1949 giving the Secretary of State power to make provision for the Registrar to give an opinion on specified matters "relating to—

(a) designs registered under this Act;
(b) designs of such other description as may be specified."

If, as is likely, the "specified matters" include validity of a design registration this would be a low cost alternative to invalidation. Though the Registrar could not remove a design that he considers to be invalid from the register under this provision it could perhaps provide a defence under the proposed s.35ZA (4):

"It is a defence for a person charged with an offence under this section to show that the person reasonably believed that the registration of the design was invalid."

What grounds could be more reasonable to found a belief that a registration was invalid than an opinion to that effect of an IPO examiner?

Threats Actions
S.26 of the Registered Designs Act 1949 will remain in force. That section provides:

"Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the right in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in the next following subsection."

Those remedies are a declaration that the threats are unjustifiable, an injunction against the continuance of the threats and damages.

The threats do not have to be explicit to fall within the scope of this section. Anything that would lead a reasonable person to conclude that proceedings will follow non-compliance will suffice. An action may lie not not just against the party on whose behalf a threat was made.  It may also lie against a solicitor, patent attorney or indeed anyone else who utters the threat.  At present the only proceedings caught by this section are civil proceedings because these are the only proceedings that are available at present but if clause 13 goes through I do not see why s.26 should not extend to threats to bring those too.   This section may be an important safeguard against intimidation of departing employees or competitors.

Judicial Review
The proposed s.11ZB would require trading standards officers to enforce the new legislation but the resources of trading standards departments were limited even before austerity. I remember a meeting of the Licensing Executive Society in Leeds in 2005 or 2006 which was addressed by a local trading standards officer. I can't remember the exact figure but the sum of £25,000 has stuck in my mind which I think was his annual budget for counterfeiting and piracy prosecutions in the whole of West Yorkshire. Now it is unlikely that local authorities which are already strapped for cash and are likely to be looking for further savings will increase the budgets of their trading standards officers to take account of this new responsibility. Decisions on priorities are a matter for discretion and I can certainly see battles ahead in the Administrative Court as to how that discretion is to be exercised. Colleagues in my chambers who do public law and local government work are likely to be very busy.

Training
So, too, will some of my junior colleagues such as Alexander Rozycki who is following clause 13 closely and is likely to be one of the first experts in registered designs prosecutions. In the New Year we shall be holding training sessions in London and other cities on IP crime solicitors who expect or would like to do more of that kind of work.  If you would like to put your name down for one of those courses call George Scanlan on 020 7404 5252 during normal business hours or send him a message through out contact form. We will, of course, also be training our solicitor and patent attorney clients and connexions on the other provisions of the Bill.

Ill Wind
Although criminalizing registered design infringement is unlikely to do much for designers or British industry as a whole, it could be very good news for the Bar and the rest of the legal industry. Intellectual property law does not exist solely for the benefit of intellectual asset creators. It is supposed to strike a balance between their interests and those of their competitors and consumers. When that balance gets out of sync - as it did before 31 July 1989 when artistic copyright protected all sorts of rubbish for the life of the designer plus 50 years - it is not good for manufacturing but it can be very good for lawyers. Lord Younger and his Coalition colleagues are no doubt acting with the best of intentions but they should be careful of what they wish for.