Government considers introducing criminal sanctions for infringements of design rights

Out-Law News | 24 Jul 2012 | 2:51 pm | 5 min. read

Design rights infringers could face criminal sanctions under plans being considered by the Government.

The Intellectual Property Office (IPO) has published a consultation (60-page / 976KB PDF) detailing proposals to reform the design rights framework in the UK.

As part of those reforms changes could be made to UK law to introduce criminal sanctions as a possible punishment for infringers of registered UK or Community design rights. The IPO said that it has no plans to introduce criminal punishments for infringements of unregistered designs.

The IPO said its intention would be to make it a criminal offence if a person "'had knowledge or reason to believe' that what they were doing was infringing a design right", whilst prosecutors would also need to prove this "beyond a reasonable doubt". These standards would help make it likely that "the provision would only be applied to those cases where copying is deliberate and persistent and the evidence convincing," it said.

Introducing criminal penalties under the design rights framework would bring the regime into line with copyright and trade mark laws and have been called for by designers, the IPO said. However, it stopped short of committing to drafting new laws that would introduce the potential sanctions until further evidence is gathered on the impact such a measure would have on enforcement bodies, such as Trading Standards.

The IPO said that the members of the design industry believe that criminal sanctions would act as a "deterrent" against infringers. Currently, although infringers can be pursued for damages through the civil courts, which also have the power to issue injunctions preventing infringing designs from being sold, infringers can routinely escape liability, it added.

"Deliberate infringers of design often fail to take any notice of the requests to cease (thereby escalating the infringement) and if taken through the civil courts will often play the system by opening and closing companies to evade liability," the IPO's consultation document said. "An advantage of action in a criminal court is said to be that it will lead to the offender having a personal criminal record that will follow him around irrespective of the corporate vehicle he chooses."

Designs can be protected by both copyright and design rights. Design rights protect the appearance of functional products and automatically protect original, non-commonplace designs of the shape or configuration of products from the time they are created. Design rights can also be registered with the UK's Designs Registry providing the designs are new and have individual character.

A design registration can last up to 25 years, although it has to be renewed every five years within the 25 year period. They give designers a monopoly right to the appearance of the whole or part of a product resulting from its features, including the lines, contours, colours, shape, texture and materials used, or its ornamentation.

Unregistered UK design rights apply to eligible designs for up to 15 years from the year that the design is first recorded in a document or an article made to the design or 10 years from the year in which articles according to the design are sold or hired. UK unregistered designs protect the shape and configuration of the design where these are original.

Designers can also gain pan-EU protection for up to 25 years by registering a Community design with the Office for Harmonisation in the Internal Market (OHIM). Those that register a Community design have "the exclusive right to use it and to prevent any third party not having his consent from using it". The OHIM, like the Designs Registry, will only register a design if it is new and has individual character.

Unregistered Community design rights also exist but only offer protection against copying for three years.

In its consultation document the IPO outlined plans to "simplify" design law. It said it would not bring the term of protection for unregistered UK designs into line with that of unregistered Community design, but that it could reduce the "scope of protection [a UK unregistered design right] affords".

Currently unregistered design rights apply to "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." The IPO said it could remove the 'any aspect' wording to reduce the ability of designers to "stifle innovation" by others if there is evidence to support the plan.

"For every design creator hindered by the current scope of the UK unregistered design right, there might conceivably be others using the wide protection offered to their designs in order to grow and boost the UK economy," it said. "But we have no information on this question or whether, overall, UK unregistered design right is good or bad for the UK economy."

The IPO is also consulting on the possibility of introducing a new defence against infringement of UK registered designs. It said it could create a defence that would enable alleged infringers to claim that they used a design "in good faith and without copying" prior to the date a registered design was applied for. Such a defence can currently be claimed by alleged infringers of registered Community designs.

Plans to change the law to enable private and non-commercial usage to be made of unregistered UK designs are also being considered. In addition, a new exception that allows for "acts done for experimental purposes" in relation to unregistered UK designs has also been proposed.

The IPO said those changes "might stimulate fresh innovation, or further self education."

Plans to correct the "anomaly" in how design law and copyright law "overlap" have also been proposed. The IPO said it wants to change a provision under the Copyright, Designs and Patents Act so that UK businesses that are "given permission to use a design registered in the EU" are not in breach of UK copyright law. Currently only "acts carried out with permission from the owner of a UK registered design are therefore permissible in relation to artistic copyright" under UK copyright law.

Further plans were also detailed to change UK law to recognise that the "designer is ordinarily regarded as the first owner" of design rights, and not the person that commissions the design.

The IPO said that it also may establish a new "notification" system to inform applicants for registered designs about potential conflicts to the validity of their designs. It said that some stakeholders in the design sector currently believe that "a significant percentage of registered designs are invalid" because their novelty has not been properly scrutinised at the application stage.

"Conducting a search of earlier registered designs and notifying the applicant of the results and, potentially, owners of those earlier designs, might help provide the applicant with better knowledge of what registered designs might already be in the marketplace," it said. "We are keen to understand whether this knowledge would be worth having."

The IPO added that it could also make every document filed in respect of registered designs viewable online to allow for easier and more frequent inspection of registrations held by others.

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