The Intellectual Property Act – Designers, Are you aware of Changes afoot for October 2014?

08.07.2014 (comments: 0)

Design and IP law is complex and can be confusing, even for IP specialists. The IP Act, which received Queen’s Assent on 14 May 2014, inches some way forward in much needed reform; most notably, in criminal provisions for intentional registered design infringement. So what does it all mean and how will the changes affect designers, strengthen or reduce design protection and improve enforcement? The IPO say that the new Act will come into force from October 2014, with all measures implemented by late 2015.

The IPO have recently published helpful guidelines but ACID remains perplexed and disappointment, however, that Government missed a huge opportunity to support the majority of designers both in the UK and EU by omitting the intentional theft of unregistered designs.  After all, the vast majority do not register their designs. In light of the recent Trunki case, many designers, too, may be questioning the value of registration when it seems like a minefield to find out what a registrant can rely on. Unlike patents or trade mark registrations, designs are unexamined. The lack of evolving guidelines for design registration fall short of much needed clarity. To this effect, ACID has written to the Supreme Court to request re-examination of this case to clarify what to many are still confusing guidelines as to what can and can’t be relied on in design registration.

 

Introduction of a criminal offence for intentional design infringement

If you have a registered design and someone intentionally copies it without consent they could be found guilty of a criminal offence and liable to up to 10 years in prison.  The act gives Trading Standards officers similar powers of enforcement for design offences as those already available to them in respect of copyright and trade marks. Prior to this, as design infringement was not a crime (unlike copyright), there was no ability to seek the help of Trading Standards officers. Those whose unregistered designs are infringed may still pursue enforcement through the civil courts (The Intellectual Property Enterprise Court IPEC or Small Claims Track). In the majority of cases taking legal action does not mean progressing to Court, the majority of ACID settlements have been based on unregistered design rights and have often been resolved by a simple Letter before Action or Cease & Desist

 

Commissioning designs – who owns them?

Unless there is a specific contract to the contrary (or you are an employer whose designer produces designs as part of their employment contract) the designer will now own the design not the commissioner.

 

Scope of an unregistered design reduced

The scope of an unregistered design (UDR) has been narrowed and the IP Act removes the “any aspect of”. Currently UDR covers any aspect of the shape or configuration of the whole or part of a design. The IPO say that this will simplify the law as it should make it clearer for designers and third parties to establish what is covered by the unregistered design right.

ACID members can benefit from a free Design Databank which has been developed into ACID Marketplace offering an independent record of the designs existence on the date they are received and two further options of inviting design buyers to view or open viewing supported by an IP tracking system.  Marketplace is a safer online platform where design buyers can register online for free to view the newest and latest designs created by ACID members and forge new business relationships.  ACID Marketplace is supported by an enhanced ACID Design Databank and tracking system developed from ACID’s IP Tracker. This is an exciting new benefit to our members – a fantastic, safer online platform = a positive conduit between designers and design buyers where prospective design buyers can register to view and interact with designers! Marketplace provides a personal online exhibition zone, but at a fraction of the price of an exhibition stand – AND YOU CONTROL WHO VISITS THE STAND!

 

The introduction of a Designs Opinions Service

To help you resolve a potential design dispute, The IPO’s new Designs Opinions Service will offer a non-binding and impartial view on the merits of design disputes which is intended to help designers take an informed view on further litigious decision making. It will cost £200.  ACID members have benefited for many years from such a service from our Legal Affiliates during the initial free advice period on offer. The only difference to the advice given is that the ACID service is free.

 

The Hague System

Currently it is possible to register designs nationally, and in the EU through OHIM (covering 28 member states) or individually in different countries. When the UK becomes a signatory of the Hague Agreement it will be possible, with one registration, to register in all those territories (62) which have signed the World Intellectual Property Organisation’s Hague Treaty.

 

Summary

In accordance with the Impact Assessment objectives the introduction of criminal provisions for intentional registered design infringement is intended to:

 

1. To reduce the scale of registered design infringement by acting as a deterrent;

2. To increase protection for the holders of registered designs; and,

3. To better punish perpetrators of blatant registered design infringement.

 

We wholeheartedly agree and this has been the polar axis of our 15 year campaign. Taken together, these measures could help designers and businesses to better protect and commercialise their design property and contribute more effectively to economic growth in the UK.

Most importantly, become ‘IP Savvy’. Here are some of the most common IP myths and howlers!

 

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