In brief
- The UKIPO has published the Government's response to its consultation on changes to the UK design framework.
- Rights owners should be aware of the key proposals in the response and factor in likely changes when looking at their design development, protection and enforcement strategies.
- The consultation identified a number of issues of concern including abuses of the design registration system, the need to modernise and simplify the framework, and cost effective and efficient enforcement of designs.
- The response presents some firm proposals on some issues, with further work to be done in order to inform other policy development.
Introduction
The Government has set out its aim to modernise design protection in the UK and make it easier for rights owners to understand and enforce their design rights.
Key proposals include targeted search and examination of registered design applications, a statutory 30-month deferment period, clearer protection for animated and digital designs, and changes to the disclosure rules for supplementary unregistered designs. In other areas, further policy work is planned including on how best to simplify unregistered design protection and the treatment of computer-generated designs. The Government has also decided to leave the overlap between design rights and copyright to be developed through case law.
With several changes dependent on sufficient parliamentary time to introduce relevant legislation, the response largely signals the direction of reform rather than effecting an immediate overhaul. In this article, we examine the key proposals and the issues that remain outstanding.
Dealing with anti-competitive design filings: targeted search and examination process
A core concern raised in the consultation focused on anti-competitive registrations, with increasing reports of applicants registering designs for well-known products, or products that don't belong to them, and looking to rely upon these registrations to obtain takedowns of legitimate products on online platforms. This issue can (in part) be attributed to the fact that it is very easy to register a design, with the UKIPO currently lacking the powers to object to a design that is not new.
Having considered a number of different options (while trying to maintain the current registration system's low cost and speed), the Government intends, when parliamentary time allows, to give the registrar a power to conduct a search and examination of designs during the application process on grounds of novelty and individual character. This will be a targeted power, to be used only in defined circumstances (with the criteria to be determined). In practice, the expectation is that search and examination will only be necessary for a proportion of design applications.
This will be a welcome development to rights owners faced with tackling 'bad faith' type design filings, to which point, the Government will also consider whether to introduce a specific bad faith provision for design applications. However, it recognises the potential uncertainty this may bring and so plans to undertake further work to define what types of behaviour would constitute bad faith and how the evidential hurdle will be met, before reaching a final decision.
Given the decision to proceed with targeted search and examination, proposals for an observation and opposition process will not proceed. However, in light of comments made by many respondents, the Government will consider further proposals for a fast-track invalidation process (which many consider to be a more cost-effective way of dealing with the issue).
Deferment: new statutory deferment period of 30 months
Deferment allows a designer to keep their design from being published on the register whilst preparing to commercialise it. The current rules on deferment are a matter of practice, rather than being set out in legislation and the deferment period of 12 months is not in line with the longer period provided in the EU and Hague design systems.
The Government plans to legislate to introduce a statutory 30-month deferment period. This will bring the UK in line with the EU and Hague, making it easier for UK businesses to protect their designs outside of the UK. The deferment process will also be harmonised with the EU/Hague. The deferment period will start from the earlier of the priority date or the filing date of the application, and the current practice of deferring both registration and publication of the design will be maintained. The Government will also extend prior use defence provisions to include deferred design applications.
GUIs and animated designs: modernisation
A key aim of the consultation was to ensure that the UK design framework reflects modern design and advances in technologies. The Government plans to legislate to amend the definition of both a design and a product to clarify that designs containing an animation or a transition can be protected as registered designs. It will also consider technical solutions to allow video and 3D file formats, as part of the UKIPO's digital transformation programme.
The UKIPO has already published guidance for applicants seeking to register icons, GUIs, web pages and other digital designs (discussed in our article: Protecting digital designs in the UK: a practical guide to the UKIPO's clarified registration practice).
These changes will align with those in place at the EU level, with the EUIPO recently reporting that over 100 EU designs had been filed using new digital formats in the first three months of its reform package being implemented.
Computer-generated designs: further policy work needed
Both registered and unregistered design law provide for protection for computer-generated designs, i.e., designs that are generated by a computer with no human author or designer (though this is not available in relation to supplementary unregistered design). UK copyright law also provides protection for computer-generated works.
The Government has deferred a decision on whether to remove provisions relating to computer-generated designs pending further policy work. Respondents provided wide-ranging views on the topic and the Government plans to monitor AI use in the design industry, consider approaches across other IP rights (for example, the Government is minded to remove protection for computer-generated works) and engage with stakeholders and international partners. For now, there will be no change to the current framework of protection for such designs.
Unregistered designs: harmonisation (but not at expense of protection)
This was clearly one of the most difficult issues the consultation was called to resolve, and discussions and policy work will continue. Many respondents wanted to maintain the current approach to unregistered designs, but the Government is keen to simplify the complex patchwork of protection. The Government has decided not to abandon UK unregistered design right, which is welcome news, given the flexibility that this form of protection provides. Instead, the plan is to consider options for harmonising the UK unregistered design and supplementary unregistered design (SUD) regimes to remove some areas of complexity.
At a minimum, this harmonisation project would cover qualification requirements and the term of protection. The term of protection for a UK unregistered design is up to 15 years, and three years for a SUD. Whilst the Government favoured a harmonised term of five years, most respondents were in favour of a longer term of 10 years. The Government has noted the support for a 10-year term but will first assess the economic impact of extending the current three-year term for SUD.
In addition to this minimum level of harmonisation, the Government will consider the impacts of harmonising other aspects such as provisions relating to repair/spare parts, infringement and defences, and visibility in use.
However, on the equally complex subject of the overlap between designs and copyright, the Government is taking no action presently, instead allowing clarity to develop through case law. There remains some significant doubt as to the basis upon which applied design products can be protected under copyright law in the UK, benefitting from the (significantly) longer term of protection afforded by copyright. Deferring this assessment in favour of case law developments runs the risk of this controversial area of law remaining at a standstill or perhaps becoming all the more complex, unless and until an appropriate case is heard at the relevant level.
Disclosure of unregistered designs: global disclosure sufficient
Another complex issue dealt with in the consultation concerns the post-Brexit framework for a SUD to be created, and the requirements for disclosure of the design. There is no mutual recognition of the rules around disclosure of unregistered designs in the UK/EU Trade Co-operation Agreement (TCA) and one interpretation of the current framework is that a design which is first disclosed in the UK can be protected in the UK through a SUD, but not in the EU; and one that is first disclosed in the EU cannot be protected in the UK. There is some doubt as to whether this is a correct interpretation of the law, but design-led businesses operating in both territories have undoubtedly found themselves in a difficult position. One solution has been to seek to rely upon simultaneous disclosure in both the UK and the EU using online means such as streaming, though this remains untested legally.
Whilst the Government acknowledges there is a view (shared by many commentators) that a single disclosure is capable of unregistered protection in both territories, it has decided (given the current uncertainty) to take action and intends to provide for a SUD to be created following first disclosure of a design anywhere in the world where it has come to the attention of the relevant trade circles in the UK. It will also consider whether to incorporate a grace period, which would require the relevant design to be subsequently disclosed or put on the market in the UK within a certain period of time.
Adopting a global disclosure test will give UK designers freedom of choice as to where they operate or first show their designs without worrying about losing design protection in the UK.
However, the proposal does not of course address the converse scenario (i.e. designs disclosed in the UK will not automatically benefit from EU design protection). This could encourage rights owners to first disclose their design in the EU to ensure that they benefit from protection in both territories.
Enforcement of designs
Given the recognised challenges for cost-effective enforcement of designs, the Government will explore measures for an expansion of the Small Claims Track jurisdiction in the Intellectual Property Enterprise Court (IPEC) to cover straightforward, lower value registered design cases.
However, the Government has decided against introducing criminal sanctions for unregistered design infringement. Criminal sanctions for registered design infringement were introduced in 2014. Since then, there have been persistent calls for the criminal regime to be extended to cover unregistered designs. However, there has also been forceful opposition to this suggestion, and the Government has decided against introducing this in the wake of insufficiently robust evidence. In particular, it does not consider that the intervention is necessary or proportionate.
Miscellaneous changes
Finally, the consultation response contained a series of changes to improve and modernise the design registration process, all of which are progressing (and which will align practice with trade marks and patents and with international regimes).
What next?
The next stage will involve legislation on relevant issues, when parliamentary time allows, alongside further policy work on the issues left open by the response (including bad faith filings and harmonisation of unregistered design rights). Designers and design-led businesses should monitor the detail and timing of the reforms, particularly the proposed rules around disclosure, and consider how these may affect their filing, launch and enforcement strategies. We will provide further updates on developments in the design framework as they happen.
How can Mishcon de Reya help?
The Mishcon de Reya IP team can help you develop design protection and enforcement strategies tailored to your business, and assess how the proposed reforms may affect your design portfolio and product launches. If you would like to identify opportunities to engage with further proposed changes to the design framework, please also get in touch to discuss.