In this second of three Bulletins, we consider the key proposals of the Intellectual Property (IP) Bill in relation to UK registered design law.
The Hague Agreement is an international system for registering designs. Currently protection in the UK via the Hague Agreement is only provided under an EU designation. Proprietors may prefer to avoid designating only the EU as the invalidation of such a designation will take effect across the entire EU. The IP Bill makes provision for the UK to accede to the Hague Agreement such that proprietors can designate the UK only.
Ownership following a commission
At present when a design is created following a commission for money or money’s worth, the commissioner will be the first owner of the design under UK registered design law. However, this is contrary to EU registered design law under which the designer is the first owner regardless of whether the design is the result of a commission. The IP Bill will amend the Registered Designs Act 1949 such that the designer will be the first owner if the design is the result of a commission, bringing UK law into line with EU law.
Right of prior use
The IP Bill will introduce a right of prior use. A person who uses a registered design in good faith, or made serious and effective preparations to do so, before the date of filing of the registered design application will be able to continue to do those acts without infringing the registered design.
Currently there is no criminal offence for infringing a UK registered design. The IP Bill includes a provision such that a person will be guilty of a criminal offence if they deliberately copy a UK or EU registered design. The infringer may receive a fine and/or a jail sentence of up to ten years.