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4 October, 2017

As a result of aspects from the Digital Economy Act coming into effect on 1 October 2017, UK legislation now expressly provides for the use of virtual marking on products covered by a UK registered design.

Under current legislation, an infringer of a UK registered design (UKRD) who can prove that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the UKRD existed, can be exempted from paying damages in respect of the infringement.

Before 1 October 2017, the legislation made it difficult for an infringer to claim innocent infringement of a product covered by a UKRD if the product was marked with the word “registered” alongside the relevant design number.

From 1 October 2017, the legislation now additionally recites the possibility of marking a product covered by a UKRD with an internet link which leads to a webpage containing information on the product and its associated design number(s). Such ‘virtual marking’ is valid so long as the provided internet address is:

a) accessible free of charge; and
b) clearly associates the product with the relevant design number(s).

A similar virtual marking provision has been in place for UK patents since 1 October 2014, and our previous bulletin in relation to this can be found here.

This new legislation is definitely a step forward for owners of UKRD rights, since by expressly permitting virtual marking in the context of these rights, it should be easier for owners to maintain, and consumers to access, an up to date list of UKRD rights pertaining to a product.

Somewhat confusingly, the Digital Economy Act did not similarly amend UK legislation to expressly allow for virtual marking in the context of products covered by a registered community design (RCD). Despite this legislation not being changed however, it seems difficult to imagine how an infringer of a product covered by an RCD would be able to claim innocent infringement, in a bid to avoid paying damages, where the product contains a prominent virtual marking which fulfils the above criteria a) and b). This is because, noting the tests for innocent infringement of an RCD and a UKRD are otherwise similar, the infringer would have to explain how they were not aware of the existence of the RCD, despite the product having a prominent virtual marking providing a link to the RCD.

For further information on the use of virtual marking on products, please contact Sarah Merrifield or your usual Boult Wade Tennant adviser.