The UKIPO recognises that the current design framework is highly complex, involving three different types of unregistered rights (two of which originate from EU law) in addition to registered designs, and possible overlap with copyright. These different rights protect different aspects of a design, with different qualification requirements, terms of protection, restricted acts, exceptions, and limitations. With increased freedom to re-shape the domestic legal landscape post-Brexit, the UKIPO sought views on whether simplification of the system (including by way of removing or consolidating some of the different rights) might encourage more effective use of design rights and help safeguard the UK’s position as a leading hub for European design innovation.
There is a need for simplification and reform, but with caution, and with clear policy objectives. The short-term focus should be on educating key stakeholders about how best to deploy and navigate the existing rights, providing further clarity where possible. Any reforms should avoid watering down or devaluing existing UK design rights, or radically departing from the EU regime without good reason.
- Despite the extent of overlap, the current system provides strong protection which is beneficial for most design businesses. The difficulty arises from the differences in detail between the various regimes which can be very difficult for non-lawyers to understand (and for lawyers to explain clearly!). This can put off many businesses from seeking to take advantage of design rights at all, or prevents them from doing so effectively.
- Many designers, especially smaller businesses and start-ups who do not have easy access to legal advice, often do not consider design protection strategies until infringement is already happening, and it is too late to seek registration. Some fail to keep adequate records to evidence the originality of their design rights for enforcement purposes, which can severely undermine an otherwise strong infringement claim down the line.
- We therefore believe the industry would benefit from significantly more investment into raising awareness on design rights (both unregistered and registered), particularly for those designers who are not legally represented.
We agree generally that some aspects of the design regime should be consolidated and simplified, except where there are clear policy reasons for treating certain types of designs differently. Consolidation could pave the way for reducing the number of unregistered rights in the longer term. In the medium term we would favour improving the current framework instead of radically changing it. We also consider that a UK design framework that stays broadly consistent with the EU would facilitate international trade and help maintain the UK’s leading position in the European design industry.
We anticipate that some of the following reforms will be considered and discussed as part of the consultation process:
- Introducing a disclosure requirement for UK design right to standardise the term of protection to 10 years (and reconsidering whether mandatory licences in last 5 years are still beneficial);
- Revisiting whether the complex nationality/residency requirement for UK design right are still justified, especially if a UK disclosure requirement is introduced;
- Making the spare parts and “right to repair” exemptions consistent across all design rights;
- Reviewing the UK design right principle of ‘originality’ and whether this could be brought more in line with the concepts of ‘novelty’ and ‘individual character’ (or vice versa);
- Reviewing the legal tests of infringement and whether the principles of ‘substantiality’ and ‘overall impression’ could be harmonised into a single test that would be simpler for design businesses to understand and apply;
- Standardising (as far as possible) the infringing acts for both types of unregistered designs, threats provisions and the liability of “innocent” infringers
Reviewing the UK designs framework – UKIPO’s Call for Views
The legal protection of design rights in the UK is no picnic. As IP practitioners and design businesses will be all too well aware, UK design law comprises a myriad of IP rights, both registered and unregistered, protecting different types of designs and with a varying scope and term of protection. This framework has been further complicated by the introduction of new UK “spin off” design rights post-Brexit, and other changes to the legal landscape. It is no surprise, therefore, that the sheer complexity of design law is often cited by design businesses (particularly those without legal representation) as a key reason for not taking full advantage of the protection that is available to them. The UKIPO is alive to the need for simplification of the system, and the opportunities presented by Brexit to re-shape domestic design law for the future.
Between January and March 2022, the UKIPO ran a ‘Call for Views’ consultation on the reform of the UK designs framework. It invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system. The consultation has now closed, and we will monitor and report on further developments as they arise.
Over the next few weeks, CMS will be exploring some of the topics covered by the consultation, and will be considering the key themes that are likely to emerge as the focus of further discussion. Please get in touch if any of these issues directly affect your business and you’d like to discuss them in confidence with our Designs team.
To view the articles in this series, click here: Part 1; Part 3; Part 4; Part 5; Part 6; Part 7