Call for Views on Designs

Oskar Schlemmer's Bauhaus Emblem

 

Jane Lambert

On 25 Jan 2022, the Intellectual Property Office ("the IPO") announced a call for views on the legal protection of designs in the United Kingdom (see the IPO Press release IPO launches call for views on designs system 25 Jan 2022). This call for views follows a survey aimed at people who do not consider themselves experts on  IP but who have an interest in designs and their protection which closed on 11 Feb 2022.  The reason for the review is that the UK has left the European Union and has an opportunity to change its design law.

The Current Law

In Design I wrote:

"In everyday language. we talk of design as something that is functional as in the shape of the fuselage of an aircraft or the arrangement of components in a circuit or as something aesthetic such as a garment or accessory or an item of furniture. That distinction is reflected in the law that provides different regimes for the protection of functional and aesthetic designs."

I added that functional designs are protected by unregistered design right under Part III of the Copyright Designs and Patents Act 1988. The design that is protected by that statute is  "the design of ... the shape or configuration (whether internal or external) of the whole or part of an article." New designs having individual character can be protected as registered designs by registration with the IPO or as supplementary unregistered designs. Designs that could have been registered are protected throughout the EU as unregistered Community designs. These continue to be protected in the UK for the remainder of their terms as continuing unregistered Community designs (see Jane Lambert How Brexit has changed IP Law  17 Jan 2021 IP after Brexit).

Finally, artwork for fabric designs, wall coverings and other surface decoration may be protected by copyright as original artistic works.  Copyright also protects works of artistic craftsmanship.

Importance of Design

According to the Call for views on designs,  the design economy generated £85.2bn in gross value added (GVA) to the UK in 2016 which was equivalent to 7% of the nation's GVA.  Departure from the EU gives the UK new flexibilities and opportunities to define its domestic design regime in order to give British industry a competitive edge and encourage foreign investment.  

Searches and Examination

The Registered Designs Act 1949 was amended to comply with Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ L 289, 28/10/1998 P. 0028 - 0035).  The Directive makes no provision for the examination for novelty or individual character of applications for design registration.  Consequently, neither does Act.  That is not the case in all countries.  In the United States, for example, designs are protected by design patents which are granted after examination (see Design Patent Application Guide US Patent and Trademark Office),  One of the topics on which views are sought is whether the UK should reintroduce novelty searching, as well as a corresponding examination on novelty and individual character.

According to the Call for Views, artificial intelligence could be used to assist the search examiner.  This could be accompanied by a pre-application AI tool which would be similar in function to the Trade Mark pre-apply service.  Another proposal is to introduce a two-tier registration system as in Australia which would allow applicants to register designs for initial protection but require them to submit their designs for examination before they can bring an infringement action.  Yet another proposal is to introduce an opposition procedure as exists for trade marks.   The IPO asks:

"1. Do you have views on whether the IPO should change examination practice for designs? Do you think it would be useful to introduce any of the options outlined? These include prior art searching, a two-tier system, use of AI tools, bad faith and opposition periods. Are there other options not outlined?"

Simplifying the Law

The Call for Views summarizes existing design law which I have covered above, discusses overlapping protection of designs by copyright, design registration, unregistered design rights and supplementary and continuing Community unregistered designs and canvasses views on requiring disclosure of claims to unregistered design protection.   The questions on this topic are as follows:

"2. Do the different and overlapping ways of protecting the appearance of a product present any issues to creators and users of the system? If you think the system could be simplified, we would like your views on how to do this.
3. Are there inconsistencies between the design rights that need to be addressed e.g. qualification requirements, spare parts exemption? Are there terms in the Registered Designs Act which would benefit from clarification or guidance e.g. “get up”?
4. Please share any issues you or your clients have experienced in relation to the changes to disclosure requirements for unregistered designs since the end of the transition period (31 December 2020). Would any of the options outlined, such as simultaneous disclosure, address this issue? Are there any other ways of addressing the lack of reciprocal recognition for unregistered designs in the UK and EU? If so, please provide details on how they may work in practice."

Future Technologies

The Call for Views states that the government is keen to future proof the designs framework to ensure that the UK remains a world leader.   It identifies a number of challenges such as the increasing use of AI to create designs, the development of dynamic designs the use of designs in a digital environment, including avatar content in online gaming and graphical user interfaces for mobile devices and 3D printing.   The IPO asks:

"5. How can the current system better meet the needs of a digital environment and future technologies? Are areas such as digital designs and 4D printed products adequately protected by the current system?
6. Do you think it would be useful to introduce any of the options outlined? These include extending supplementary unregistered design to cover computer generated designs, filing of digital representations and ceasing accepting physical specimens. What are your views on the protection of computer-generated designs?"

Deferment of Publication

An applicant for registration of a design may defer publication of the design for up to 12 months. If it is not published within that time it is deemed to be abandoned.  The purpose of deferment is to reduce the risk of a design being copied before it is marketed.   The IPO seeks views on extending deferment for 18 months in line with the practice for patents or 30 months in accordance with the Hague Agreement.  Respondents are asked:

"7. Should UK law have an express deferment provision and how long should it be?
8. What information, if any, should be published in relation to a deferred design? Is there a need for specific provisions for prior use or to deal with co-pending applications?"

Criminal Liability for Design Infringement

The Intellectual Property Act 2014 inserted a new s.35ZA into the Registered Designs Act 1949 which made it a criminal offence to infringe a registered design in certain circumstances.  Together with most other intellectual property practitioners and much of British industry, I argued strenuously against that provision (see The Intellectual Property Bill 28 May 2013).  The government ignored the expert advice and introduced the measure anyway.  A post-implementation review dated 12 May 2020 reported that one individual had pleaded guilty to offences under the Trade Marks Act 1994 and the Registered Designs Act 1949 for possessing counterfeit mobile phone accessories. He was fined £300, his company was fined £1000 and costs of £946.50 were awarded.  Current government policy is that there is insufficient evidence to support the introduction of criminal penalties for unregistered design infringement and the introduction of any new criminal offences in future would need to be carefully considered, and based on detailed and robust evidence.  . However, the government is aware of a range of views on this issue and is open to hearing those views as part of this exercise.   

The public is asked:

"9. What are your views on the effectiveness of the UK’s enforcement framework? How could it be improved to help small businesses and individual designers enforce their rights?
10. What has been your experience of the introduction of criminal revision for registered designs? What are your thoughts on extending criminal sanctions to unregistered designs and what economic evidence do you have to support your view?"

Responses

The IPO's press release states that the government is seeking views and evidence from users of the system so that we can ensure the UK’s designs framework works for the businesses, consumers and professionals that use it.   Respondents may use this response form.  Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.