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Designers – A Call to Action to Respond to Government’s Consultation on Small Claims IP Court to Include Registered Designs

An alternative to the High Court for intellectual property cases called the Intellectual Property Enterprise Court (IPEC) was introduced as a specialist court. Whilst being a speedier and less costly route than the High Court, it is still out of reach to most lone, micro and SME designers in terms of cost and time. The IPEC has two sets of procedures or “tracks”. They are:

Surprisingly, the Small Claims Track (SCT) only deals with unregistered designs, copyright, UK or EU registered trademarks, passing off, UK or EU unregistered design rights:

  • The amount in dispute must be less than £10,000
  • The remedy sought must be damages for infringement, an account of profits, delivery up or destruction of infringing items, and/or a final injunction to prevent infringement in the future

Unsupportively, for those designers who have taken the time, expense and trouble to register their designs, registered designs still cannot be heard in the SCT. The IPO’s reasoning for not including them, were because it was thought that the cases were more complex. There were also concerns about the potential level of evidence filed in registered design cases, as well as the use of expert witnesses. However, there has been a long-held view by stakeholders that registered designs should now be included in the SCT.

Dids Macdonald, OBE., CEO of Anti Copying in Design said “We were delighted that after years of campaigning, a Small Claims Track was introduced in 2012 but aghast that it did not include registered designs which is anomalous since the IPO regularly espouse the increase in number of design registrations in support of SME’s. On the other hand, however, they have not carried out a common-sense supportive reform to include registered designs before now. And even now, there must be a consultation process for something that should have been done years ago, especially when the Hargreaves Report had said, generally, that “designs” had been “neglected”. However, as always, we are grateful to the IPO for listening to us and others and we will work with them positively to ensure that this becomes a reality”.

It is obvious to most that the arguments for supporting the introduction of registered designs in the SCT would be a step forward in support of the UK’s fantastic designs:

  • In the current system unregistered and registered design protection for the same product need to be enforced separately
  • That IP rights holders who cannot afford to enforce a registered design right in the multi-track are excluded from seeking legal redress in a legal dispute
  • The additional financial burden on rights holders who are currently required to use the multi-track for registered designs
  • That the registered design system is promoted to designers as being better than relying upon unregistered rights, in particular for SMEs, yet once those registered designs are secured, they are excluded from the SCT

CALLING ALL DESIGNERS TO RESPOND TO THE CONSULTATION

The IPO are seeking your views to help assess the feasibility of including registered designs in the IPEC small claims track.

They need to understand stakeholder experiences of the Intellectual Property Enterprise Court in relation to registered and unregistered designs. This call for views asks about your experience of enforcing your designs and any issues you have experienced. Please provide as much detail and evidence as you can of your experience. This will help the government understand the issues and will help inform the next steps.

An example of a registered and unregistered design right case in IPEC in the design for a beer glass – Utopia Tableware Ltd v BBP Marketing Ltd: s [2013] EWHC 3483 (IPEC); [2014] ECC 34.

To help the IPO assess the issues and decide on the next steps we would like you to answer the following questions. Please provide as much information as possible.

  1. Have you previously used the small claims track to enforce an unregistered design? If so, please provide details of your experience.
  2. Have you been involved in a dispute over a registered design that would have been suitable to be heard in the IPEC small claims track? If so, please provide details of your experience and the approximate damages sought.
  3. Have the costs associated with legal action in IPEC’s multi-track prevented you from enforcing your registered designs? If so, please provide details and costs.
  4. If registered design cases could be heard in the small claims track, would you use this route to enforce your design? Why would you use/not use it?
  5. Do you have any concerns about including registered designs in the small claims track? If so, what are they?
  6. Do you think there would be any impact on the court system in the UK if registered design cases were heard in the IPEC small claims track? If so, what would that be?

Please include any additional comments or examples, if you have them.

Respond to the Call for Evidence by filling in the response template on the landing page. Email the template to enforcement@ipo.gov.uk.