Author: Sarah Merrifield
16 September, 2014
UK registered design law is changing with effect from 1 October 2014 when the Intellectual Property Act 2014 comes into force. The principal changes relate to the ownership of designs and the infringement of registered designs. In addition, a new designs opinion service will be introduced at the UK Intellectual Property Office. The Act also addresses aspects of the law on unregistered designs. These are covered in our accompanying Bulletin “Intellectual Property Act 2014: Changes to Unregistered Design Law”.
Ownership of designs
Previously in UK design law, a newly created design was owned by the designer, unless the designer was either employed or commissioned to produce the design, in which case, the employer or the commissioner became the owner. It is still the case that an employer will own a design produced by its employees as part of their job. However, in the case of commissioned designs, ownership of the design will remain with the designer unless there is a contract in place to transfer ownership to the commissioner.
This will apply to both UK registered and unregistered designs, and brings the UK law in line with that governing EU registered and unregistered designs.
Therefore, a person who commissions an independent designer to produce a design for them must ensure that ownership is discussed at the outset and any transfer of the design to the commissioner is set out in a contract.
Infringement of Registered Designs: right of prior use
A new right of prior use will be introduced. This means that if someone uses a design which is subsequently registered by someone else, or makes serious and effective preparations to use the design, then they may continue to use the design and that use will not constitute an infringement of the registration.
However, the prior use must have been in good faith and the design must not have been copied from the design subsequently registered.
In addition, there are limitations on exactly what the prior user is allowed to do. The continued use must be for the same original purpose and there are only limited circumstances in which the prior use right can be transferred to another party.
Infringement of Registered Designs : criminal sanctions for intentional copying
The Act introduces a new criminal offence for intentional copying of registered designs. This will apply to both UK and European Community registered designs.
After 1 October 2014, if a person, in the course of business, intentionally copies a registered design, or uses a product which is an intentional copy, and does so knowing or having reason to believe that the design is registered and without the consent of the registered design’s proprietor, then that person will commit a criminal offence. If found guilty, the person may be imprisoned or fined.
However, it must be proven “beyond all reasonable doubt” that the copying of the design was intentional. In their defence, a person charged with the new offence may also argue that they reasonably believed that the registration was invalid, or that their act does not in fact infringe the registration, or that they reasonably believed that their act would not infringe.
There are also exceptions for accidental or incidental use. For example, if a party buys a product in good faith and does not know or has no reason to believe that the product was an intentional copy of a registered design, then no offence is committed. Also, if a business uses a product which is an intentional copy, but that use is merely incidental to the business concerned, then no offence will be committed.
The criminal offence is concerned with whether intentional copying has occurred. However, even if there is no intentional copying, a civil action for infringement of a registered design may still be brought.
Designs opinion service
The UK Intellectual Property Office already provides an opinion service for patents whereby opinions can be requested on questions of validity of a patent relating to novelty or inventive step, and on questions of infringement of a patent. A similar service is now to be introduced relating to designs, although it may not be available until late in 2015. It will be possible to request opinions on the validity and infringement of registered designs, and issues relating to unregistered design rights. The opinions provided will be non-binding but low cost and impartial. It is hoped that this service will assist in avoiding and resolving disputes concerning designs.
For further information, please contact Sarah Merrifield or your usual Boult Wade Tennant adviser.