The UK's departure from the European Union has provided the UK Government with some freedom to reshape the domestic designs regime, be that with changes to the regulations for registered designs, to unregistered design rights or to related rights such as copyright. The UK Government wants to ensure that the UK's designs regime both supports the requirements of designers and encourages overseas investment. Ongoing negotiations in respect of trade deals with international partners need to take the opinions of related parties into account. This is likely to give the UK a competitive edge.
To facilitate this, the UKIPO ran a "Call for views on designs" between January and March 2022, to which they received 57 formal responses and 288 responses to a survey. Based upon commonly recurring feedback from clients, Marks & Clerk LLP was one of these responders.
On 12th July 2022, the UKIPO published their Executive Summary in respect of their "Call for views on designs".
From the data released by the UKIPO, it is clear that there was a wide spread of different types of interested parties for the call for views, including responses from designers (5), design consultants (2), academics (2), legal firms and professionals (17), legal trade bodies and professional bodies (7), other trade bodies (10), small and medium size enterprises (SMEs) (9), large enterprises (4) and one other (unspecified). The responses to the designs survey, however, had a different shape - they came predominantly from lone designers (58%) and small businesses employing fewer than 10 people (22%).
Design is an economically important and growing sector of the UK economy. According to the Design Council, it was worth £97.4 billion gross value added (GVA) in 2019, up from £85.2 billion in 2016. In 2020 the sector employed 1.97 million people, 1.62 million of whom were professional designers. Any changes to the designs regime in the UK will thus be impacting a lot of people.
From the responses, the UKIPO summarises that their customers value the speed and value offered by the UK registered designs system. Overall, it appears that the balance of opinion was that customers do not want changes in relation to prior art searching to undermine this, although it was not clear cut. Those in favour of examination thought it would increase certainty of validity of design protection, but those against such searching raised concerns about potential delays and increased costs of registering designs, and were also concerned about the difficulty of performing a comprehensive/reliable search due to the existence of unregistered designs - such designs cannot be found in online searches, whereby they questioned whether any real benefit would arise.
On a formal procedural point, and one we see regularly from clients, several respondents requested that the UK joins the World Intellectual Property Organisation's (WIPO) digital access system (DAS) for designs. This is a system that would simplify the provision of a certified copy of a priority application - something that the EUIPO already offers.
The UKIPO will be considering options for both searches and the use of the DAS system in the future.
As for simplifying the designs system, the UKIPO concluded that "the general view from respondents was that the different overlapping forms of design protection makes the UK system complex and that it should be simplified". However, it was clear that customers do not want any such simplification to result in lower levels of protection! The most complex part of the designs regime is considered to be the three different types of unregistered design protection following Brexit. A simplificcation of this to just one seemed to be a common theme. Looking into the overlap with copyright was also considered to be important.
Likewise, complexities with first disclosures - and the resulting differences in where unregistered design protection can exist (EU versus UK), was also considered to be a problem to be resolved, particularly in the fashion industries, as even simultaneous disclosures in multiple jurisdictions still does not have any certainty in its effectiveness as a mechanism to secure protection in both the UK and the EU, as it remains untested by the courts!
The scope for using the design regime to protect future technologies was another area of discussion. Ensuring protection covers aspects of 3D printing, such as source files, is certainly a challenge, as are digital twins.
Ownership questions for AI inventions were also considered but the majority seemed to consider the current situation to be satisfactory.
There was also a call to allow 3D representations for defining the scope of protection on a registered design, in place of the current reliance on just 2D drawings or samples.
It was also observed that the ability to defer publication of a registered design was widely accepted to be appropriate, although perhaps harmonising with the EUIPO's 30 month period was considered worthwhile by some respondents.
Finally the summary looks at enforcement - with a significant number of respondents considering enforcement in the UK to be expensive. That cost seemed to create two points of view on effectiveness of enforcement - some were of the view that the enforcement regime is effective, but others considered it ineffective as it only favours those with significant financial resources! Suggestions for designs to be part of the small claims track (SCT) of the Intellectual Property Enterprise Court (IPEC), or an opinions service from the UKIPO for designs, were brought forward as these could help combat some of those cost concerns. However, whether there should be criminal sanctions for unregistered design infringement was an area with mixed feelings. "Some respondents were strongly in favour of extending criminal sanctions to the intentional infringement of unregistered designs. Others were equally strongly opposed to doing so." Interestingly, the majority (80%) were already aware that criminal sanctions exist for the intentional copying of a registered design.
The Consultation has thus raised a lot of points. However, will changes be forthcoming? No one yet knows, but certainly the feedback has brought a number of the issues faced by designers and manufacturers to the attention of the UKIPO, so watch this space!
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