The IP Bill has been granted royal assent and the new Act is due to come into force in October. It brings with it changes to the law on design rights.
Design rights protect the shape of an object, the materials it is made from, and its surface decoration, for example, the shape of a bicycle or a microscope, the fabric and structure of a dress as well as packaging i.e. a unique bottle shape. They also protect two-dimensional creations such as the decoration on a tea pot, the design on a fabric, and an organisations logo or symbol. Design rights protect innovation alongside copyright, patents and trade marks and can be a useful right where these don't apply. They are cheap to acquire, or even free, and apply in all industries from fashion to engineering.
The government has recognised that these rights are important to business and will become more so. In recognition of this the aim of the new Act is to simplify UK design rights, bring them into line with current European Community law and ensure that the IP framework supports innovation and business.
The changes which will have the greatest practical effect for business (rather than practitioners) are:
- Once the Act has come into force the designer will be the first owner of a design. This is a very important change. Business owners and managers may not know whether something is protected by copyright or design right - not surprisingly, as this is a complex question - and they may not understand that the answer will affect ownership. This confusion, exacerbated by the fact that both design right and copyright can exist in the same article, can mean that an organisation believes that it owns the rights to e.g. software or a logo, where it does not. With the position clarified and aligned with copyright, managers and owners will always know that if they want the business to own the rights in a product commissioned from a third party then there must be an assignment. This is something that is commonly overlooked where external consultants or sub-contractors are engaged to create websites, software, technical products, packaging or logos. In most cases, it is worth making sure that matters of ownership are dealt with. If they are not, it can cause problems when an organisation wants to change or amend its website, license or adapt a piece of software, register its logo as a trade mark, or if a business is preparing to be sold.
- Designers based outside the UK will now be able to claim design rights by making their products available to the public in the UK (i.e. by exhibiting them in a trade show, advertising them or selling them), provided they are first made available in the UK and not in another country. This cuts through some previously complicated rules about who can own design rights in the UK and recognises the international nature of business.
- In order to support innovation and investment, the Act provides that certain uses of designs will not now infringe. First, an individual may privately copy a design for their own use. However, this has led to concern over the rise of 3D printing that people will be able to acquire products for free simply by printing them! Secondly, a teacher may use a design in lessons. For example, a woodwork teacher might want to demonstrate to pupils how to build a modern chair recently sold by a famous furniture retailer. They will be able to do so in the context of their teaching without fear of infringement. Finally, if someone has invested in the use of a design in good faith, with a view to developing it or exploiting it, that person can continue to use it even after someone else has registered the design provided they do so in the same way as before registration. This means that the investment is not wasted and the registered design owner has all the usual protections.
- The UK Intellectual Property Office will provide a design opinion service where, for a fee, it will examine a dispute and provide its view. This opinion is not binding and is only for guidance. For example, a jewellery designer will be able to ask the UK Intellectual Property Office whether his design for a bracelet has been infringed by a one produced by a competitor. In complex matters, where lawyers are being used, an opinion from the UKIPO is unlikely to be of help. However it may be useful for resolving disputes where neither side wants to spend money litigating and where they would like to come to an agreement provided they know what the position is.
- Finally, the Act introduces a criminal offence for the deliberate copying of a registered design. Criminal offences already exist in relation to copyright and trade marks and are useful in the fight against counterfeiters. Now, as organisations will be relying increasingly on design rights, it is important that this is available. Criminal provisions are enforced by Trading Standards, a government agency, and it is important to find the relevant Trading Standards office and present the case to maximise the chance that they will want to take action. If Trading Standards will pursue a criminal case of infringement, this will be an extremely cost-effective method of enforcement as the costs are born by the tax payer and not by the rights owner.
Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.