Over the last 20 years+ ACID has become the leading UK Design and IP voice on intellectual property issues which affect not only its members but the broader design community. We speak to Government, key influencers and policy makers to ensure that the best possible IP enforcement framework is in place to allow IP creators’ ideas to be monetised to achieve growth.

The UK design sector punches well above its weight and worth over £85.6 billion and employs 1.6 million of this 1m in non-design industries. The majority of design businesses have less than 10 employees, 60% have less than 4 employees. Taking legal action is still the luxury of the few if their designs and other IP are infringed with little cost or time friendly means of enforcement.

During the political hiatus of 2019 focus on IP issues has been derailed because of lack of parliamentary will, time and IPO engagement. However, ACID work has continued with the following with updates on progress

• EU Designs Consultation

Following the EU Design Directive and the EU Design Regulation and their entry into force in 2001/2002, the EU Commission started a review of the EU design law regime.

The Commission has commissioned an economic review and a legal review of the design system in the EU, which were published in 2015 and 2016. ACID along with others responded, nothing has been heard to date.

• IPO Enforcement Group

This working group will help the IPO achieve its aim of identifying if and what issues right holders and businesses face protecting their IP when using the current IP enforcement framework. The IPO intends to do this through a call for evidence and gathering real life case studies.

This will form part of the commitment the Government made in its enforcement strategy to comprehensively review the IP enforcement framework. The working group will be established to:

• Provide knowledge and experience to inform this research project by providing examples of issues right holders face when using the enforcement framework.
• Help in framing the questions for the call for evidence and securing real life case studies through their networks and experiences.
• Aid the collection of real-life case studies to evidence the use of IP enforcement framework
• Support the IPO in successfully completing this project.  

The IPO group has been set up under the chairmanship of Sir Robin Jacob with Terms of Reference. They met in September. The attached are the meeting notes. The next meeting will be held in November (dtba). ACID will provide case studies to demonstrate some issues of their members and, where possible, provide suggestion solutions.

• Unregistered Design Protection in EU27 post Brexit

Evidence has been submitted since 2016 and ACID, has on a consistent basis approached Government for clarity. Thus far this has been unforthcoming.

Confirmation by Minister no action until post Brexit then not certain.

Recent case submitted to CJEU and here, see IPKat review

• Alliance for Intellectual Property Strategy – ACID input

ACID is a member of the Alliance for Intellectual Property and Dids Macdonald is Vice-Chair. ACID has submitted a design and IP Strategy which will form the basis of the Alliance for intellectual Property Strategy 2020+ This will be acted upon during the forthcoming year and beyond

• ACID responds to request for feedback from IPO regarding IP ACT 2014

Background

In April 2013, the IPO published a list of responses to a public consultation exercise entitled “The Consultation on the Reform of the UK Designs Legal Framework” to which ACID and others responded. The IPO is conducting a Post Implementation Review of design related measures which were brought in by the IP Act 2014 and requested views on some of them. For example:

1. Revision of scope of design protection.
2. Amendments of design ownership provisions.
3. Introduction of criminal sanctions for the deliberate infringement of a UK or EU Registered Design

They also wanted to know whether we felt the measures have been of benefit as a stakeholder, or our members agreed. They are also interested to know if any of the measures have not worked well.

ACID Response – summary

We welcomed many of the provisions in the 2014 IP Act and, especially, criminal provisions for the intentional infringement of a registered design and believe this has had a significant deterrent effect on copying. Unfortunately, it did not go nearly far enough by including criminal provisions for the intentional infringement of an unregistered design

• We would like to see harmonisation of UK design law so that the test of proving individual character for the infringement is the same as for UK registered designs and the test for EU registered and unregistered design law
• If the test for UK UDR subsistence moves to individual character rather than being commonplace in the design field in question, then there is no reason why registered designs Infringement. should be criminalised and not for unregistered.
• Replace the UK unregistered design right set out in Section 213 of the Copyright, Designs and Patents Act 1988 (and which only covers shape and configurations of a product) to create a new unregistered UK design right to mirror EU rights’ protection.
• We welcome the technical and process improvements to registration and are encouraged to see that there has been a significant increase in registrations. However, the fact remains that the majority of UK designers rely on unregistered EU and UK rights. Currently, with Brexit on the horizon, deal or no deal, UK designers will be even more vulnerable with the loss of EU27 protection unless there is clarity on publications. To date there has been no IPO guidance on this matter despite 3.5 years of ACID representations to Government
• ACID and many others are disappointed with the recent expensive and time-consuming IPO research into establishing a robust methodology of design rights infringement. Its findings provide no new insight, nor does it provide solutions especially as it did not include the real and increasing threat that online design infringement challenges effect SME designers. It would appear to be the basis only for further research and ACID has already made a request that this includes a cross section of designers. We have offered connection between and cooperation with our ACID Council but to date this has not been acted upon.
• We believe there should be increased focus on mediation as a real alternative to litigation.
• Currently there are no criminal provisions available for statutory enforcement bodies to prosecute counterfeiters who infringe an unregistered UK design to support criminal activity through 3D printing, such as the production of guns, now prolific in the USA.

For the full response to the feedback since implementation of the IP Act.

• The Design Act

Over the last 20 years ACID has become the leading UK Design and IP voice on intellectual property issues which affect not only its members but the broader design community. We speak to Government, key influencers and policy makers to ensure that the best possible IP enforcement framework is in place to allow IP creators’ ideas to be monetised to achieve growth.

THE DESIGN ACT is a new coalition brought together by Anti Copying in Design (ACID). The founding members are the British Institute of Interior Designers, (BIID) The British Contract Furnishings Association (BCFA), The Association for the Creative Industries (AFCI), The International Lighting Association (LIA) and the Design Business Association (DBA).

As a result of Brexit, a political hiatus and the election, the plan is to launch this officially in the beginning of 2020

• ACID IP Infringement Survey

39 people responded to the survey, but I don’t think all organisations sent it. Is it possible for those who have not sent it to send asap. Unless we have evidence, we cannot substantiate the need for change. I will prepare some case studies for submission to the IP Enforcement Group.

When the Consultation emerges, ACID will provide a varied set of case studies. Attached is a format if you can also send out with the Survey.