IPO publishes responses to consultation on reform of UK designs legal framework

The UK Intellectual Property Office (IPO) has published responses to the consultation on the reform of the UK designs legal framework. The responses were submitted by a range of interested parties, including design-focused small and medium-sized enterprises and legal representatives. They were largely supportive of the UK government’s proposals to simplify current legislation and harmonise UK and EU regimes, and to update and revise dispute resolution, enforcement and sanctions procedures.

Further to the commission of the Hargreaves Review in 2010, the UK government has been subject to a commitment to develop policy proposals in the field of design rights. The Hargreaves Review highlighted the contribution that designs make to the British economy and recommended that further investigations be conducted, and policy proposals developed, with a view to reforming the UK design legal framework, “particularly in light of the fact that different industries relied upon [design rights] to different degrees and in different ways”. On this basis, the UK IPO published a consultation in July 2012 that outlined proposals for amendments to current legislation and procedure.

The proposals aimed to:

• promote understanding of design rights and avoid disputes;
• simplify legislation relating to ownership of, and qualification for, design rights; and
• improve the provision of information about design rights.

A summary of responses to the consultation was published on January 9 2013.

The consultation outlined several proposals designed to aid rights holders’ understanding and to minimise disputes. These included:

• criminal sanctions for deliberate copying;
• alternative routes of appeal for design registrations and invalidations;
• mandatory prior rights searches; and
• the introduction of a non-binding UK IPO opinion service.

In particular, respondents favoured proposals that would cut costs, such as the introduction of an authorised person as an informal, cheaper alternative to appeal before a court of law. Likewise, respondents valued a designs opinion service as a “cost-effective alternative to litigation” and a valuable aid when deciding whether or not to pursue disputes more formally. While certain respondents were wary of the level of experience the UK IPO would have in offering such a service, the majority supported the proposal and agreed that decisions must be non-binding in order to ensure that costs remained low.

The consultation also outlined proposals to simplify design rights legislation and, additionally, to harmonise certain elements of UK rights - such as the requirements for qualification of protection, ownership of designs and deferral of publication of design applications - with EU provisions.

In particular, respondents favoured the harmonisation of UK and EU legislation, and consensus demonstrated that greater parity between the two systems would alleviate current difficulties concerning the qualification requirements of citizenship, habitual residence and place of first marketing that typically affect non-European companies choosing to invest in the United Kingdom. Further, harmonisation leading to the recognition of designers, rather than commissioners, as the owners of designs was well received. Responses indicated that such changes would reduce the costs associated with establishing ownership and lead to greater certainty between the two regimes, “making the law easier to understand [and reducing] confusion”.

Respondents supported the retention of the UK unregistered design right (UDR) as it could be “relied upon where all other forms of protection were exhausted”. It was not felt that the scope of protection offered by UDR was too wide, and therefore either “disadvantaged others” or “prevented fair competition”. On the contrary, respondents indicated that UDR offered important business flexibility.

Respondents’ opinions were divided as to whether the test for 'commonplace' provided sufficient certainty in the UK market. Whilst certain responses noted that the current test was already too confusing, others indicated that it provided a more “clear-cut and industry specific assessment” than, for example, a general test for novelty. Several respondents felt that the definition of 'commonplace' should be extended globally, to reflect the international nature of many businesses. Others, however, feared that extending the scope of 'commonplace' to any extent would lead to undue confusion, for example, by assuming that UK designers are aware of all designs within a wider area, such as the European Economic Area or globally.

Further, the consultation outlined significant proposals in relation to the provision of information:

• the introduction of online inspection of documents;
• a general increase in the information provided on registered design applications; and
• simplifications to requirements to record changes in ownership.

The majority of respondents favoured quicker, easier and more efficient searches and agreed that provision of online documentation would improve current procedure. This sentiment was echoed with regard to a general proposal for the supply of more information about applicants. Certain respondents, however, were wary that requirements for too much information may make the system “more bureaucratic and costly”. Information identifying the designer was thus not considered to be particularly helpful; identifying the date of first publication or reliance on any grace period was considered a more relevant necessity. In general, respondents favoured the provision of any further information on an optional rather than mandatory basis, but certain responses were sceptical about how successful this would be since “if the provision of the information was not mandatory, then it was unlikely to be supplied”.

The responses to the consultation provide important indications of the direction in which UK design right legislation is likely to develop. In particular, the proposals that received the greatest support are likely to be codified in any future legislative amendments.

Hiroshi Sheraton, McDermott Will & Emery UK LLP, London