New UK design consultation ‘long overdue’

The consultation, published earlier this month, comes as the government looks to “modernise UK design protection and strengthen Britain’s position as a global design powerhouse”. It is seeking views from across the design community, from “independent creators and luxury brands to tech firms and legal professionals”, to help shape future reforms.

According to the consultation “strong intellectual property protection, including design rights, creates the legal foundation that enables British designers to compete and innovate. It allows them to license their works and take action to stop others copying them without their permission.”

It adds: “The UK has a complex patchwork of overlapping rights, which can create confusion for design businesses including the small firms that make up 92% of the sector. This can leave many unclear about which protections apply to their work or how to navigate the system”. The consultation also highlights the “new complexities” created by Brexit as “designs can no longer get automatic protection in both UK and EU markets.”

Gill Dennis, an intellectual property expert at Pinsent Masons, said: “Designers and IP professionals are likely to welcome the government's preferred option of scrapping the complex and unwieldy UK unregistered design right, retaining just a consolidated supplementary unregistered design which would protect both aesthetic and functional elements of a design”.

“This reform is long overdue. It will ensure broad consistency between the requirements for registered and unregistered design protection in the UK - and broad harmonisation with the EU - making life significantly more straightforward for designers seeking protection cross-border.” 

Dennis continued: “The government's preferred approach of allowing the boundary between copyright and design protection to develop incrementally through case law is disappointing. Designers need certainty on the rights that they have and can enforce. Despite the Waterrower case cited by the government, the dividing line between copyright and design arguably remains unclear and is still up for grabs”.

“This is an area that needs legislative intervention. Indeed, the judges themselves have called for that on such an important policy question,” Dennis said.

The consultation, which runs until 27 November, focuses on nine key areas of reform.

They include the government’s commitment to “fighting design theft” with a proposed reintroduction of search and examination powers either where a design is suspected of lacking novelty or individual character or before a design registration can be enforced; and to the introduction of a ‘bad faith’ provision into design law, similar to that for trade marks, to curb anti-competitive practices around seeking design protection.

An additional proposal is to provide a mechanism which allows third parties to formally oppose a design registration or submit comments to the IPO about whether a registration for any particular design should be allowed.

Other aspects concern making the design system fit for the digital age through legal changes clarifying that graphical user interfaces and animations can, in principle, be design protected. Application processes for digital designs would be streamlined particularly around the images and file formats permitted to form part of design applications. Design owners would also be given the green light to use descriptions of their designs to clarify the scope of protection they say they have for the benefit of third parties. Separately, as previously reported, the government is also recommending that designs created solely by AI should not get design protection.

Further streamlining of application processes is proposed which would apply to designs of all types. This could involve harmonising certain time limits, evidencing priority claims more easily and making it more straightforward and quicker to rectify the designs register should that be necessary. The introduction of an 18 month deferment period is also proposed.

Rob Vile, also an intellectual property expert at Pinsent Masons, said two other parts of the consultation were “particularly noteworthy”.

The first concerns the consultation’s call for evidence on whether criminal sanctions for infringement should be extended to unregistered designs. Criminal sanctions were introduced for unauthorised copying of registered designs in the UK in 2014.

Vile said: “The practicalities of introducing criminal sanctions in this way are unclear - the bar for introducing new criminal sanctions is very high, and tying such serious criminal consequences to the infringement of rights which are not formally recorded on a register and so difficult for infringers to have knowledge of is likely to be both difficult and controversial. The deterrence effect of criminal penalties may, however, be welcomed by many in the industry, particularly smaller designers who lack the resources to seek civil redress against persistent infringers. 

The second is the potential inclusion of registered design claims in the small claims track (SCT) of the Intellectual Property Enterprise Court (IPEC).

“The SCT is intended to deal with straightforward IP claims with a value of £10,000 or less and registered design claims were deemed too complex in nature at the inception of the IPEC in 2012 for the simplified procedures of the SCT,” he explained.

“However, over a decade later, the prevalence of dupes and the emergence of social media platforms as sales channels have made infringing goods from around the world more accessible.”

“Permitting rights owners to enforce their registered design rights in the SCT would be a step in the right direction, enabling speedy and cost-effective redress This would be particularly so for SMEs and companies in the retail and FMCG [fast-moving consumer goods] sectors, where trends come and go quickly, requiring companies to maximise profits while their design remains popular.”

“When combined with potential criminal penalties for the infringement of both registered and unregistered designs, designers would be significantly empowered to both deter and stop infringements, making the UK an attractive jurisdiction for the design sector.”

Among the other aspects of the consultation are how the UK’s design industry can retain its position as a significant global player, especially following Brexit – with designs now no longer getting automatic protection across both UK and EU markets through single disclosure.

“Given the wide-ranging nature of the consultation there is a sense that the UK government is taking full advantage of its post-Brexit legal freedoms to thoroughly review both the roots and branches of the design framework,” said Dennis.

“It is, therefore, somewhat ironic that the government has indicated that harmonisation with the EU's own recently modified designs system is in many cases desirable. The government has to ensure that the reformed UK system is no less attractive to designers than the EU in order to ensure that the £97 billion that the design sector currently contributes to the UK economy is not lost.”

Another area in which the IPO recognises that reform is needed is clarification around the territory in which first disclosure of a design would automatically cause UK supplementary unregistered design (SUD) protection to arise, in particular whether disclosure in the UK, EU or anywhere in the world should be the prerequisite to obtaining automatic SUD protection The government has not expressed a preference on this, leaving it to designers to respond on what the future position should be based on the practicalities of undertaking business cross-border.

“According to the government, these proposals could lead to the most significant transformation of UK design protection in decade,” said Dennis. “We urge designers of all sizes and means to engage with this consultation to help set the right course for the future so that the UK’s design industry can flourish.”