The UK government is reviewing how industrial and product designs are protected in the UK. The review relates to registered and unregistered design rights relevant to a wide range of sectors including fashion, homeware, cars, toys, iPads, mobile phone icons and graphical interfaces.
These are competitive, fast-moving areas where it is important that protection can be obtained swiftly and cost-effectively before the market moves on.
Strengthening UK registered designs – search and examination
Currently, the UK Patent Office does not search for prior conflicting designs when it receives an application. The onus is on the applicant to carry out searches and analysis to check whether the design is new and sufficiently different from the prior art to qualify for registration. This means that in practice many designs on the register are, in fact, vulnerable to cancellation. The introduction of a search and examination procedure – potentially including both pre-existing registered designs and a more general internet search – is likely to strengthen the registered design rights on the register. The consultation suggests that the costs of the procedure could be mitigated by using AI tools and/or a two-tier procedure whereby the search was only carried out at the point of enforcement. However, it seems inevitable that both costs and the time to register would increase. The latter could be a real disadvantage in a fast-moving market and increased costs could in practice weaken protection for small businesses and individual designers.
Simplifying and avoiding overlapping rights
There are currently four different types of design protection in the UK: registered design, supplementary unregistered design (SUD1), continuing unregistered design2 and UK unregistered design right. Designs may also qualify for copyright protection in some instances. These rights are of different duration and the conditions for protection differ: for example, UK unregistered design right protects only 3D designs whereas registered design and SUD protect both 2D and 3D designs. On top of this, there are different rules about who may own them, for example a residence qualification applies for UK unregistered design right but not for SUD or registered designs. This confusing situation arises principally from the overlaying of the EU designs system onto the existing UK system. In addition a pre-Brexit CJEU decision3 extended the scope of copyright protection for designs, and the UK courts have not yet taken a clear position on this issue. The consultation asks for suggestions about how the system could be simplified and made more consistent, but does not appear to be suggesting a complete overhaul.
Unregistered designs – conflict between the EU27 and UK regimes
Changes resulting from the UK’s departure from the EU have unfortunately resulted in conflicting disclosure requirements forcing designers in some instances to choose between SUD protection in the UK and unregistered Community design protection in the EU27. This arises because the Community design right is only available where first disclosure was made in the EU27 whereas the SUD is only available where first disclosure was made in the UK. So, for example, a fashion house exhibiting in London first will be denied protection in the EU27 whereas a fashion house exhibiting in Paris first will be denied protection in the UK. It has been suggested that simultaneous disclosure by live streaming in both territories could be a practical solution to this, but this has not been tested and some commentators are sceptical. A reciprocal agreement between the UK and the EU27 to recognise disclosure in each others territory is needed but so far this has not been forthcoming. It is to be hoped that both the UK and EU27 will recognise the insularity of such a limited approach to disclosure, not only to benefit their own designers but also to encourage international investment. Why not be bold and allow the rights to arise on first disclosure anywhere in the world?
This section of the consultation refers to the increasing use of AI to create designs, the development of dynamic designs and the use of designs in a digital environment. The government states that it wishes to encourage the use of AI tools and to create the right balance between protecting human created and AI created designs. Both the UK registered design and the UK unregistered design rights contain provisions on who is to be treated as the creator of a design generated by a computer. The consultation asks whether there is a benefit in continuing to protect computer generated designs and whether the current framework is fit for purpose in this respect.
Enforcement and costs
The consultation seeks to tease out the barriers designers face in practice when enforcing their designs and identifies the cost of enforcing (and defending) rights as a likely barrier, without, however, offering suggestions for solving this. It also raises the question of criminal sanctions. These were introduced in 2014 for intentional infringement of registered designs, but only a small number of criminal cases have been brought since then. The consultation calls for views on criminal sanctions also.
Have your say!
The consultation emphasises that following Brexit there is no longer a need to harmonise with the EU, allowing the UK new flexibilities and opportunities to define its domestic design regime in a way that will both support UK designers and encourage overseas investment. The views of all interested parties are sought by 25 March 2022.
Access the consultation here.
1. Introduced at Brexit to mirror the unregistered community design right available in the EU27;
2. Granted at Brexit to existing unregistered Community design owners to compensate for loss of the UK part of their unregistered Community design right.
3. Cofemel Case C-683/17 25 October 2019