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Reforms to allow products to be marked with web addresses to denote presence of registered design rights

Businesses will be able to mark their designs with web addresses in future as a means of flagging to others the registered design rights they hold in those products, the UK government has said.

The Intellectual Property Office (IPO) said (14-page / 410KB PDF) the proposal won strong support from respondents in a consultation it held on the idea. New legislation to introduce the changes will be brought forward "as soon as possible", it said.

Under the reforms designers will have the option of displaying a web address on products protected by registered design rights. The website will need to be free to access and "clearly associate the product with the number of the registered design right(s)", the IPO said.

A UK registered design confers a 25-year monopoly right in the design, and in similar and partially-reproduced designs. Similar protection is given to Community registered designs. Registration gives the owner the exclusive right to make articles incorporating the design, and sue for infringement even where the defendant did not actually copy the design.

The unwitting infringer of a UK registered design may currently, however, be able to avoid paying any damages if they can prove that the infringement was unwitting, and that they had no reasonable grounds for supposing that the design was registered under the terms of the Registered Designs Act. The onus is on those accused of infringement to prove objectively that its actions were innocent. 

Registered design right owners already have the option of marking products protected by those rights with the word ‘registered’ and the relevant registered design numbers. This 'constructive notice' can help the owners of those designs defeat any claims that infringements were 'innocent'.

However, it is an offence to falsely claim that a design in any product is a UK registered design or Community design right. Due to the fact that design rights may lapse or be revoked and owing to the cost in remaking products to change markings, some registered design right owners do not currently provide constructive notice.

The IPO acknowledged that "the current arrangements are cumbersome and do not easily allow for updating when details of registrations change". It said that its web address proposal will help owners of registered designs alter details about their rights on a simpler and more affordable basis.

"This measure should allow businesses greater choice and flexibly and have a quickly realisable tangible benefit," Baroness Neville-Rolfe, UK minister for intellectual property, said. "I am pleased to note that the views of the respondents are clear: businesses choosing to avail themselves of the new option to provide notice of registered design rights by webmarking will be able to realise benefits in terms of time and cost savings."

"Third parties should also benefit from increased transparency and ease of access to the most up to date information. This measure will also bring registered design rights in line with patents, and allows a similar approach to that successfully taken in the USA. I therefore believe that this is a good outcome, supporting UK enterprise in whatever markets they operate," she said.

The IPO said that it would consider allowing businesses to denote both their registered design rights and patent rights in a product through "a single internet link". Patent owners can already mark their products with a web address at which details of their patent rights are available.

The option of 'webmarking' will not be available to owners of unregistered design rights under the plans, it said.

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