Out-Law News 2 min. read

Criminal offence for design rights infringement should only apply where actions are 'intentional', MPs propose

Criminal penalties for infringing registered designs should only be available where the infringement is "intentional", according to proposals backed by MPs in the UK.

The proposal is one of a number of amendments to the Intellectual Property Bill that was recommended by MPs following a third reading of the Bill in the House of Commons.

"These amendments would have the effect of ensuring that it is clear on the face of the legislation that the act of copying must be a considered act, and that it does not include unconscious copying," according to explanatory notes published alongside the amendments backed by MPs in the House of Commons. "[One particular amendment] would clarify that the type of copying to which the criminal sanction applies is intentional."

The draft Intellectual Property Bill was first published by the UK government in May last year and contained plans which, if supported, would introduce the potential for criminal sanctions to be issued against those that make unauthorised copies of registered designs for the first time. It had consulted on the plans in 2012.

If a design, whether UK or Community registered, is copied without the permission of the rights holder "in the course of a business ... so as to make a product exactly or substantially to that design", and that infringer knows, or has reasons to believe, that a design is registered, the copier would be liable for the criminal act of unauthorised copying, the original drafting of the Bill stated.

Under the draft backed in the Commons earlier this week, such criminal liability would only apply where the infringement was intentional. In addition, the scope of the offence would apply where a product has been copied without a rights holders' permission "exactly to that design" or copied "with features that differ only in immaterial details from that design".

The original Bill also outlined plans to make it a criminal offence where someone, in the course of a business, offers, puts on the market, imports, exports or uses a product, or otherwise stocks it for one of those purposes, where the product has copied exactly or substantially a registered design without rights holders' permission. The offence would apply if the person engaging in such activity knows, or has reasons to believe, that a registered design has been copied without consent so as to make the product exactly or substantially to the protected design.

The amendments backed by MPs recommend that such secondary acts only be classed criminal offences where the activity is carried out intentionally. They also support the extending of the offence to circumstances beyond exact unauthorised copying to include copying with "features that differ only in immaterial details from the design".

Those accused of unauthorised copying of designs would be able to avoid liability for either the primary or secondary offences if they could show they "reasonably believed that the registration of the design was invalid" or that they did not actually "infringe the right in the design".

The amended Intellectual Property Bill will now be scrutinised again by the House of Lords. If they support the changes then the Bill would then be able to be formally approved for introduction in UK law.

Expert in design rights Emily Swithenbank of Pinsent Masons, the law firm behind Out-Law.com, said: "It is to be welcomed that the 'immaterial details' test that is set out under the Registered Designs Act and which is used to assess the novelty of designs has been included in the last version of the Bill for determining when criminal sanctions will be imposed. Requiring infringements to be 'intentional' will also ensure accidental copiers cannot receive stiff criminal penalties."

"However, designers often take inspiration from products already out there on the market when creating their own designs.  In the interests of innovation it will be incumbent on courts to ensure that ‘intentional’ is interpreted to cover instances of blatant copying only to ensure designers don't apply undue caution when seeking to work around existing designs" she added.

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