New criminal offence for design rights infringement to take effect from October

A new commencement order has been introduced to implement provisions contained in the previously enacted Intellectual Property Act. It means that rules that establish new criminal offences for design rights infringement will take effect from 1 October.

The Intellectual Property Act received Royal Assent in May.

Under the Act, it is a criminal offence to intentionally copy, without the permission of the rights holder, a registered design "in the course of a business ... so as to make a product exactly to that design, or with features that differ only in immaterial details from that design" where the infringer knows, or has reason to believe, that the design they have copied is a registered design.

It is also a criminal offence to put on the market, import, export, use, or stock for one of those purposes, an intentionally copied registered design without permission where the infringer knows, or has reason to believe, the design they have copied is registered. Use of such a copied design "for a purpose which is merely incidental to the carrying on of the business" will not be deemed a criminal offence under the new laws.

Those charged with criminal infringement can defend against those claims if they can show they "reasonably believed that the registration of the design was invalid" or that they have either not infringed the right in the design or "reasonably believed" they did not do so.

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "Criminalisation of registered design rights infringement brings those provisions into line with equivalent provisions in the copyright and trade mark environment and therefore provides Trading Standards and Police Intellectual Property Crime Unit (PIPCU) with additional powers to deal with counterfeit goods which would otherwise slip through the net."

"It is a good day for rights holders that the law has been updated in this way. It will be interesting to see how these new powers are invoked by the enforcement authorites because that will give some indication of the measure of success of the new provisions," he said.