Simplification and partial harmonisation of UK design laws on the way

The Government has this morning issued the results of its consultation on possible changes to UK design law. This exercise must have been the hardest piece of homework set on design law since the introduction of the UK unregistered design right in 1989. So how did they do?

As is often the case, some parts of the homework were simply too difficult, and other parts required an extension of time before the Government could reach a definitive answer. However, there are some valuable changes on the way (although many will require Parliamentary time, which could be a whole new challenge).

Registered designs

Firstly, the UKIPO will be given the power to undertake searches against new applications for registered designs, so that it can reject new applications of its own accord if they are clearly anti-competitive. At present, almost 10% of registered designs are estimated to be invalid because they are identical to previous designs, and many of these are likely to be fraudulent filings. However, they can only be removed from the designs register if someone has the money and inclination to apply to the UKIPO to cancel them. This will be an important step, given the role a fraudulently-obtained registered design can play in the process of wrongfully removing a competitor’s product from online retail sites using their take down procedure.

Unregistered designs – supplementary unregistered design and UK unregistered design right

The UK currently has two very different unregistered design rights, both of which arise automatically. The supplementary unregistered design right is the post-Brexit UK equivalent right to the unregistered EU design, which only lasts for 3 years but can protect both 2-dimensional and 3-dimensional aspects of a design. The UK unregistered design right on the other hand can last up to 15 years, but only protects 3-dimensional aspects. The ideal solution would have been to merge these into one new unregistered right, but that was an impossible ask given the very different advantages and disadvantages of the two rights. Accordingly, what the Government will do is to align the duration of the two rights so that they will both last for the same period, although it will undertake further work before deciding whether this period should be 10 years or not. It will also change the rules governing qualification for each right, so that the same rules will apply to both. These simplifications will be very welcome, and hopefully a first step toward future consolidation of the two rights.

Place of first marketing

The Government is also planning to change the law so that it will be possible for a UK designer to obtain supplementary unregistered design regardless of where they first launched their design. At the moment, designers are faced with considerable uncertainty over their entitlement to UK supplementary unregistered design and unregistered EU design depending on whether they first launched their design in the UK or in the EU, and what the position is when a design is first launched on a website.

No criminal offence for unregistered design infringement

Although there are criminal provisions for infringement of copyright, the Government decided that there was not “sufficiently robust evidence” to justify the need to introduce a criminal offence of unregistered design right infringement. However, it will remain a criminal offence to intentionally copy a UK registered design.

Overlap between copyright and design right

This was another issue which fell into the “too hard to answer” box, which was unsurprising given the ongoing uncertainty over which types of designs may or not be protected in the UK by copyright as works of artistic craftsmanship. The Government therefore decided to leave it to the UK courts to try to find the answers (something which the Courts have in turn suggested is not their role, saying that it is a matter for legislation!). 

Future legislation

We therefore look forward to seeing how quickly these announced changes can actually be put into practice. Not all of them will require primary legislation, but some will clearly require sufficient backing to make Parliamentary time for them to pass into law. One disadvantage of a staggered approach to making changes to design law is the risk that we could once more end up with different aspects of design law being buried within different statutes, rather than every aspect of design law being found in one piece of legislation. Watch this space for announcements of the next homework deadlines!