The IP Act received Royal Assent on 14 May 2014 and is due to come into force in October 2014. It addresses a range of issues and in particular brings in a number of changes that align UK design right law with the EU Regulation.
The government has stated that the purpose behind the IP Act is to make design law more relevant to business, to simplify design law and to ensure that the IP framework supports innovation, to help improve enforcement of designs and the understanding of the design rights of others. Further, it aims to improve the processes associated with the Design Framework, such as better provision of information.
The changes are as follows:
UK unregistered design right
- It removes "any aspect" from the definition of a design. However, the definition will still include "of the whole or part of an article."
- It amends the definition of original to "commonplace in any qualifying country" (no longer anywhere in the world).
- The designer is the initial owner of the design, not the commissioner.
- It introduces qualification by first sales in the UK thus giving protection to designers wherever they are based.
- It introduces exceptions to infringement for private copying, teaching and experiments.
Registered Community design right
- It introduces the defence under s53 of CDPA 1988 to infringement of a Community registered design so that it is not an infringement of copyright in a work is not infringed by carrying out an authorised act in relation to a corresponding registered design.
UK registered design right
- The designer of the designs is the initial owner, not the commissioner.
- It introduces a limited defence where a third party acts in good faith in the use of a design that is subsequently registered by another.
- It provides provision for the UK to put in place access to the Hague Agreement (an International design registration system).
- It allows the IPO to more easily make changes to details on the register and make electronic documents available to the public.
- It amends remedies against innocent infringers so that a proprietor of a UK registered design can seek from an innocent infringer some or all of the profits made from the infringing activity but not any wider form of financial damages (currently there are no financial remedies available against an innocent infringers of UK registered design right).
- It introduces a UK design opinions service provided by the IPO. This will be useful to SMEs or unrepresented parties.
- It enables the registrar to issue directions relating to the use of forms and the change of hours of business.
UK and Community registered design right
It introduces a criminal offence for deliberate copying of registered designs. This offence only applies to designs registered prior to the copying. The copying must be in the course of business. It must be proven that the defendant knew or had reason to believe that the registered design had been copied. This will be useful in dealing with counterfeits, particularly as Trading Standards can be involved.
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