UK IPO proposes amendments to design legislation

Following a consultation on amendments to the UK design legislation, the UK Intellectual Property Office (UK IPO) proposes to remove the limitation on liability for innocent infringement of UK registered designs and to equalise the remedies available for innocent infringement of UK and Community design rights (CDRs).

The consultation on amendments to the UK design legislation was launched on December 1 2010 and closed on March 21 2011. The purpose of the consultation was to equalise remedies available in the United Kingdom for innocent infringement of UK registered designs and CDRs. Financial remedies are available currently for innocent infringement of a CDR, but are not available for innocent infringement of a UK registered or unregistered design.

The consultation proposed two options: either to limit the liability of those who infringe CDRs unintentionally in line with the UK law, or to remove the limitation of liability in respect of unintentional infringement of UK registered designs. According to the results of the consultation, the UK IPO concluded that it was “not desirable” for there to be different remedies available to rights holders for innocent infringements of registered UK design rights or CDRs.

The UK IPO has now proposed to introduce rules that will allow the owners of UK registered designs to claim an account of profits, but not damages, from an innocent infringer of the design. In this way the unintentional infringer’s liability would be capped effectively at the level of its own profits. The UK IPO said that the decision to make these changes represented a “fair and balanced outcome”.

Additionally, the UK IPO has proposed to harmonise the existing financial remedies for the innocent infringement of CDRs with this approach.

The changes as proposed by the UK IPO will address the issue of discrepancy between financial remedies available for innocent infringement of the UK registered designs and the CDRs. This discrepancy had resulted in it being viewed generally as more advantageous for companies to obtain Community, as opposed to UK, design registrations for their more important designs. The proposal to allow account of profits and not damages appears to strike the right balance.

Whilst it makes sense for an innocent infringer to surrender any profits made as a result of its unintentional infringement, many would agree that it would be unfair to impose a liability for damages, which could be substantial, in the absence of infringer’s knowledge of wrongdoing.

Hiroshi Sheraton, McDermott Will & Emery UK LLP, London