Design consultation responses: Deadline this week!

With less than a week to go before the deadline for submitting responses to the Government’s consultation on designs (27 November), we thought we would highlight some possible responses to a few of the key issues.

At just short of 100 pages long, there is a danger that many interested parties will decide not to respond on the basis that it would be too time-consuming and onerous. However, there is no need to reply to every question. Indeed, some of them, such as those in the Miscellaneous section, are relatively uncontentious and so should go ahead in any event. We will therefore only consider a few of the more significant proposals.

Reform of unregistered design rights and copyright

Designs in the UK are currently protected by a patchwork of different rights, some of which arise automatically (unregistered design right, supplementary unregistered design, copyright) and some which require registration at the UKIPO (registered designs, trade marks, patents). With different subsistence, qualification and infringement criteria, this has resulted in a complicated legal system which only specialist lawyers can hope to fully understand.

This consultation affords a once in a generation opportunity to radically reform the system, in particular with the option to replace the two existing unregistered design rights with a new single right, more closely aligned to the registered design system (which itself is based on the EU registered design system). This would have the benefit of making the application of the new right easier for design businesses to understand.

However, we have seen the potential problems of trying to model a system which anyone can use without the need to seek legal advice. The Supreme Court’s decision in the Trunki case highlighted the risks of not having the best form of design representations registered (e.g. black and white line drawings, CAD drawings, full colour photos etc). This resulted in the UKIPO changing the guidance on their website to advise applicants of the benefits of taking legal advice before filing.

Accordingly, it may not be possible to draft a new single right which is sufficiently simple that it effectively avoids the need for some of the exceptions which already apply to the various existing unregistered rights (e.g. “must fit”, “must match”, “surface decoration”, purely functional designs etc). Each of those exceptions were introduced for good reasons to deal with specific concerns (for example, the “must fit” exception in order to avoid manufacturers having monopolies in spare parts for their products). Some businesses will therefore prefer to retain some of the complexities of the existing system to ensure that no loop-holes are inadvertently introduced, and will accept that they will need some legal assistance with protecting and enforcing their rights.

There is therefore a balance to be had between making a design system which is easy for all design businesses to understand, and one which achieves the correct balance between encouraging and protecting innovation and creatively on the one hand, and consumer choice and fair competition on the other.

The position is further complicated by the current state of UK copyright law. There remains considerable uncertainty in its application to design-led products as a result of the tension between our current UK copyright statute, which is based on a closed list of copyright works, and the EU approach which recognises copyright for any type of work which is original and is sufficiently well-defined. Recent UK court decisions have not clarified the position, finding for example that a piece of fabric was a work of artistic craftsmanship whereas a wooden rowing machine was not. This would be a good opportunity to amend our copyright legislation to make the position clear one way or the other.

Design searches

For a design to be validly registered, it has to be “new” and have “individual character” (meaning that it does not give the same overall impression to the informed user as any earlier design). At the moment, the UKIPO will not undertake any searches to check whether these criteria are met by new design applications. The Government is now considering whether, and if so to what extent, any searches should be undertaken.

One of the attractions of the current design registration system is that it is low cost (from £50 for one design) and quick to obtain a registration certificate (a matter of weeks). This would change if searching was introduced prior to registration.

However, a staggering almost 10% of all registered designs are invalidly registered – e.g. they represent a pre-existing design. Some of these applications are deliberately filed by fraudsters trying to claim a monopoly in someone else’s design. The only current way of removing such registrations is for someone (usually the owner of the earlier design) to apply to the UKIPO to have the registration cancelled, which takes time and money, and requires designs owners to monitor the register for fraudulent filings. 

The position could be partially resolved by giving the UKIPO the power to conduct its own searches where it suspects that an application is fraudulent or obviously invalid. I would also propose the introduction of a new fast track invalidation procedure for obviously fraudulent filings. This would merely require the submission of a photograph or image of the earlier design together with evidence confirming it predates the application. The UKIPO would then forward that information to the applicant and invite them to respond. If no response was received (which is very often the case with formal cancellation actions under the present system), the design would be declared invalid. This would reduce the amount of information which the UKIPO would have to consider in a cancellation action, and would be much cheaper and quicker for design owners.

It is also currently possible to ask the UKIPO to search the register to look for existing registrations which look similar to an image of a particular design which is submitted to them. However, very few such search requests are ever made and the Government is asking whether this option should be scrapped. I strongly suspect that the lack of awareness and understanding of the registered design system is the main reason for the low take up, as even the number of design registrations is woefully low given the number of design businesses operating in the UK and the valuable protection which a UK registered design affords. Nevertheless, I would be in favour of removing any form of novelty search options because I suspect that many design businesses would misinterpret the results of the search. This is because a design will not be new or have individual character if it is too similar to any existing design registration regardless of the type of product in respect of which an earlier design was registered. For example, if someone requests a search for the design of a lamp base in the shape of a bottle, the UKIPO may only search against designs registered in respect of similar types of products to lamp bases. The search may not reveal any designs of concern if there were no similar designs registered in respect of those types of products. However, that search may not reveal the existence of a very similar design which has been registered in respect of bottles. This could lead to a design being put into production in reliance on a “clear” search which subsequently infringes.

Simultaneous publication in the UK and another country

Another area of uncertainty which the Government is looking to fix is the question of which law applies where a design is first published in the UK and another country at the same time, for example if it is launched on a website. EU law currently only offers unregistered design protection to designs which are first published in the EU, which immediately caused an problem for UK design businesses post-Brexit which currently remains unresolved. Rather than requiring design businesses to decide whether to launch their designs in the UK or the EU, the Government is considering recognising first disclosure anywhere in the UK or the EU, or alternatively anywhere in the world, as enabling the creation of the supplementary design right. I would be in favour of the latter – there is no obvious reason why a distinction should be made between disclosures within or outside the EU, given the global nature of design businesses, and it may encourage more of them to exploit their designs in the UK.

Other important provisions

There are other proposals which could have major impacts on design businesses in particular sectors, for example how to deal with AI-generated designs. While there is no room in this article to cover all those options, I would be very happy to respond to any particular enquires on those other areas.