Intellectual Property Enterprise Court (IPEC) – Whilst ACID is supportive about improvements which have been made to the actual process of handling cases, grass roots reality does not chime with the current Government understanding of “cost and time effective access to enforcement” which is a real barrier to designers/makers who are consistently copied. Cases can take many months or in some cases years to reach the IPEC and a recent case study demonstrates this. In an award winning kitchen company case against an alleged copyist, the costs were over £20,000 (20% of their profit) and the legal correspondence had taken over 18 months. X said “I am sure many companies similar to ourselves would think twice about spending this money before even getting to Court to enforce our rights”. This and many other case studies reinforce the point that being able to benefit from the IPEC improvement in processing a case is the luxury of the few not the many. The legal business model and design business model are not compatible for lone, micro and SME who cannot afford protracted legal correspondence to get to Court. This is what copyists rely on.

Another company which has invested heavily in design to compete internationally was copied 23 times in 24 months. They have taken the decision it is not cost or time effective to pursue a legal route to justice because of the scale of investment in legal costs required to take action through the courts. This scale of copying has the potential to affect growth and job security.

IP Enforcement – Some major retailers consistently copy lone innovators and the strategy is deliberate; copying innovative designs once they see proven market success. Many then commission Chinese manufacturers to reproduce them cheaply. Often lookalikes have been subtly changed so that it is very difficult to legally challenge. Their lawyers deliberately stonewall any legal challenge and perpetuate litigation making it almost impossible for the small designer to afford to continue to take legal action, let alone reach a final court hearing.

Access to Justice – ACID has received endorsement from its Council to create a robust naming and shaming campaign to raise awareness about endemic copying.

Continues to escalate and at a strategic level more training of online trading platforms needs to be done to simplify the process of take down and track down. The process for take down is still lengthy and over complicated for many. In one ACID case study it took 23 emails over a period of a month to remove one infringing product. Apart from the debilitating effect on lone and micro businesses, this will eventually break them.

Design-led SMEs – Online Infringement – In response to the increase in online infringement ACID has created a specially designed Online Enforcement Service (ABES) through Snapdragon. Concerned about the difficulties SMEs faced with trying to navigate an often impenetrable route to take down of infringing products online which was not only costly in terms of time taken off their main focus of growth creation but debilitating.  Most major brands are lucky enough to have their own in-house brand protection resource or they are able to fund take down by some of the well known brand enforcement agencies. However, there was nothing available for these small companies and so ACID decided to provide a user friendly white label brand enforcement services through Snapdragon for its members. ABES (ACID Brand Enforcement Service) was launched with endorsement from the UK Intellectual Property Office and PIPCU.

Following a report and recommendations by Professor Dinusha Mendis⁽²⁾, Government policy is to “wait & see”. ACID believes the approach should be, “Is IP law fit for purpose to deal with enforcement of IP through 3D printing?” Currently there are no criminal penalties for unregistered rights infringement and there is a need to do implement this. In 2014 in the UK intentional copying with immaterial differences of a UK or EU registered design became a criminal offence (IP ACT 2014). This followed many years of campaigning by ACID. Unfortunately, ACID’s main objective was to make the copying of an unregistered design a criminal offence as the majority of UK designers rely on unregistered design. The UK Government did not agree claiming that it would be difficult to create criminal liability for the copying of an unregistered IP right, even though there have been criminal offences in respect of copyright (also an unregistered right) since the 1840, and the current maximum penalty for criminal copyright infringement is ten years.

3D printing is proving a boon to organised criminals who are exploiting this ground-breaking technology to counterfeit on an industrial scale in near perfect quality. However, unless UDR copying is made a criminal offence there are no criminal powers available to stop organised criminals, unless a prosecution for fraud or conspiracy is pursued.  Accordingly, Government needs to plug this gap in the law which will have the same impact on manufacturing as the internet did on the creative industries.

3D Printing – hailed by many as the fourth industrial revolution, 3D printing was the subject of a recent Anti Copying in Design (ACID) conference  which brought together industry experts to discuss and debate the opportunities and intellectual property challenges in the future as thought leaders. On counterfeiting and copyright infringement DCI Mick Dodge of the Policy Intellectual Property Crime Unit (PIPCU) said “with 3D printing machines readily available to consumers this is a “one stop shop” for criminal activity. But where is the legislation? I cannot act or enforce without a law to enforce – I need some legislation to work with to create an investigation strategy?  Only time will tell whether 3D printing infringement becomes the next apocalypse but from now on we would like to take these valuable discussions forward.”

Intentional Infringement of a Registered Design now a crime/Trading Standards – ACID’s Chief Counsel has held a training day with 45 Trading Standards Offices to ensure they are aware of the recent legislative changes.  Although we have no hard evidence, we believe that since the introduction of the IP Act and the introduction of criminal provisions for registered design infringement this has had a positive impact and fewer cases have been reported. This would indicate that extending this to unregistered designs would also have a significant impact. Introduce criminal provisions for Unregistered Design Rights’ infringement and we would like to see analogous provisions to Section 107 and 110 of the CDPA introduced to UDR especially as UDR grew out of copyright laws and has more in common with copyright laws than registered designs laws.

Post-Brexit copyright will be about nuanced changes made to existing protection. But for design, Brexit offers an existential threat because of the possible loss of EU laws. UK designers will be severely disadvantaged if they lose EU unregistered design rights, on which the majority rely.EU design laws, both registered and unregistered, protect the individual character of a design in particular as they relate to the shape, texture, contours, lines, colours, ornamentation and materials of the design. UK UDR protects only the shape and configuration of a design. Entire design sectors such as fashion, lighting and furniture rely on the EU scope to protect their 3D designs; UK law alone cannot protect 3D designs whose individual character is defined by shape, texture, contours, lines, colours, ornamentation or materials. If these EU laws are not transposed into UK law post Brexit, design protection for many design sectors will be lost. Accordingly, this is a potentially calamitous issue for many design sectors.

ACID has submitted evidence Government & IPO to substantiate their concerns and is pressing Government to introduce a new law which mirrors the protection afforded by EU unregistered design, replacing existing UK Unregistered design to put UK designers on a level playing field with their EU counterparts in terms of IP protection.

ACID has submitted this report to the IP Crime Group. For the last 2015 – 2016 report see here