At the request of USA IP “Czar” Vishal Amin, Dids Macdonald, OBE and Nick Kounoupias visited the American Embassy in London to brief Mr Amin and his team on UK design and intellectual property issues in the context of post-Brexit trade negotiations and also for him to better understand the challenges facing the UK design community.

UK design output is significant, currently contributing £85.2 billion to the UK’s GDP and employing 1.5 million people in design and design skills but the majority are lone, micro and SME. This is a growing sector and, potentially, a positive international calling card for the UK in future trade deals. The UK is a world leader in design capability.

Talks continued outlining the current IP challenges:

• Design law is complex in the UK with 5 different types of design protection – copyright in artistic craftsmanship (rare and still not legally determined), registered and unregistered UK and EU designs and registered UK and EU designs. Odd man out is UK unregistered design which protects the shape and configuration of a 3D designs whilst the others protect the shape, ornamentation, colour, lines, contours, texture and materials.
• The majority of UK designers rely on unregistered UK and EU design rights. Post-Brexit, unless an agreement is negotiated between the UK and EU27, UK designers will lose the 3-year protection afforded by EU unregistered design right which is created automatically so long as certain criteria are met. This will be potentially calamitous for UK designers and will leave them open to infringement.
• Despite 3.5 years of repeated requests and evidence to support the need for guidance on the above, the UK Government thus far has not been forthcoming. For a design to be protected by EU and UK unregistered design, post Brexit, a framework for simultaneous publication is required. Government’s advice is to seek legal advice which, in this case, is neither good enough nor appropriate.
• Provisions have not been included in the current Withdrawal Bill other than the promise of a new Supplementary UK only unregistered design right which will offer the same protection as an unregistered EU right. Similarly, EU27 will not automatically have EU unregistered rights’ protection in the UK.
• Design rights differ in various countries. For example, in the USA there are design patents and industrial design protection, in China it is the same. Australia, New Zealand and Japan do not have unregistered design rights protection. Global inconsistency in design protection in scope and term provide ongoing challenges.
• Difficulties facing UK designers in enforcement both through the cost and time prohibitive (for the majority) Intellectual Property Enterprise Court system and online with inconsistencies in access to effective take-down processes in online platforms and marketplaces. In many cases it is impossible to keep pace with the prolific online infringement which currently occurs. Currently the IPEC Small Claims Track does not deal with registered design cases which is anomalous, 7 years after Hargreaves’ recommendations and seems at odds with the current push on registering designs as an effective deterrent.
• The UK differs from the US in that it does not have an aggressive enforcement strategy and whilst IP as at the top table in the US, here in the UK, the IP Minister also has responsibility as a Minister of State for Universities, Science, Research and Innovation and is not part of the cabinet. In the US the IP Czar has direct dialogue with the President. ACID had written to the Rt Hon Boris Johnson on his appointment as Prime Minister urging him to appoint a dedicated IP Minister who had cabinet responsibility.
• In the 2014 IP Act, spearheaded by an ACID campaign, the intentional infringement of a registered design was made a crime punishable by up to 10 years in prison. Individual company directors were also liable. Whilst this was a significant reform it did not go far enough by including the deliberate infringement of an unregistered design which, in the absence of a national, proactive enforcement strategy would have provided design SMEs with a real deterrent. Work goes on to try and achieve this now. In the 2014, clarity was given to the status of commissioned designs so that unless specifically assigned, the designer owns commissioned designs, not the commissioner.
• 3D Printing – In the context of the history of technology, it suggests that organised criminals will jump onto any new technology as soon as it becomes affordable and easy to use to engage in illegal activity which generates funds which they can then apply to other criminal enterprises.  Organised criminal gangs get involved in these illegal activities and so become of interest to statutory enforcement bodies. The problem for ACID and why it is of an issue is because these operations involve the perfect cloning of 3-dimentional objects which are owned by our members. This means that organised criminals have the potential to make money on the back of an infringement of our members rights using this new technology. The only way to block this is to make this a criminal offence for them to engage in this mass copying and that cannot be done without the criminalisation of unregistered rights infringement.
• Using the Trunki v PMS International case as an example of an ACID member “David against Goliath” design infringement, reference was made to the decision at the Supreme Court against Trunki on what would appear to be a legal technicality. In a further recent case involving PMS International v The Beverley Teddy Bear Company, referred by Judge Hacon to the CJEU, it was hoped that this may determine the law regarding first publication of EU unregistered design rights. However, the case was settled out of court.
• Intellectual property is considered a “property” right in the UK whereas in the EU mainly, it is a human right, therefore, there is a philosophical difference and approach to infringement
• In the EU, if design protection fails, many EU countries’ designers can fall back on Unfair Competition which is unavailable in the UK.

Background information

“Vishal Amin is an American attorney and government official who currently serves as Intellectual Property Enforcement Coordinator. This position, sometimes referred to as “IP Czar”, was created by an act of Congress in 2008 in order to help the U.S. government combat online piracy.^[1][2][3] Prior to assuming his current role, Amin was senior counsel on the House Judiciary Committee. Vishal J. Amin is located in the executive office of the president.

The Trump administration takes the US intellectual property enforcement coordinator’s role in new directions, building on past administrations but trying to address ways it has not been effective in the past, according to the annual report of the coordinator, released yesterday.

The 200-page annual report of the IPEC to Congress is available here [pdf]. The report details actions taken by the Trump administration in the last year, ranging from numerous meetings with governments, private sector, and others, changes to rulemaking, enforcement actions and legal cases including a World Trade Organization challenge against China, educational and training activities worldwide, hearings and more. It mentions coordination with the World Intellectual Property Organization, and also discusses efforts to fight cybercrime, including on the Dark Web. The report further describes law enforcement activities at the local, regional and national level, as well as across federal agencies. The Departments of Justice and Commerce have joined together to set up now five regional IP Law Enforcement Coordinators, training local judges, lawyers, and law enforcement. The five offices are in Hong Kong; Sao Paulo, Brazil; Bucharest, Romania; Bangkok, Thailand; and Abuja, Nigeria”.

“WASHINGTON — When President Trump and President Xi Jinping of China sat down to talk trade last year at the Group of 20 summit meeting, their negotiations were framed by a highly charged topic: The White House’s insistence that China routinely steals American technology and intellectual property.

The Trump administration has repeatedly levied accusations of theft at China, invoking a term that offends the Chinese. Mr. Trump regularly says that China has “ripped off” the United States. Recently, Vice President Mike Pence said China’s security agencies had “masterminded the wholesale theft of American technology,” and Larry Kudlow, Mr. Trump’s top economic adviser, said in a G-20 preview that “issues of intellectual property theft must be solved.”

The language employed by the Trump administration sometimes lumps together distinct but related issues, such as the trade deficit the United States runs with China, technology transfer deals negotiated by American companies and espionage intended to advance China’s economic rise”.