Earlier this month important design right provisions came into force by virtue of the Intellectual Property Act 2014 (the “Act”). The overall aim of the Act is to make both UK and Community design rights simpler, easier to understand and more user-friendly in terms of their enforceability.
Here we highlight two main aspects of the legislation which are worth noting:
The big news is that the Act has introduced criminal sanctions where there has been intentional copying of registered designs.
Where a person (or indeed a company) reasonably believes that a (registered) design copied was invalid or that no design rights were being infringed, such reasonable belief may be used in defence of an action for infringement. The Act does not stipulate what might amount to reasonable belief in this context, which means that care should be taken where inspiration for a design is “borrowed” from another design. In some cases, if you are minded to err on the side of caution, obtaining counsel’s advice may be a good idea, so as to show that you have made endeavours to establish such reasonable belief.
It is important to note that the Act imposes sanctions not only on the party perpetrating the copying but also on any entity which offers, markets, imports, exports, uses or stocks the design, so long as such entity has had reason to believe that the design in question was a registered design and the copying was intentional.
As indicated above, the sanctions can be very serious. Should a person or a company be held guilty of copying a design, having - at the time of the copying - the knowledge (or reason to believe) that the design was indeed registered, that person or company (and this includes company directors!) faces potential imprisonment and/or a significant fine. Imprisonment may be for a maximum of 10 years.
The Act also aligns the UK position concerning ownership of unregistered designs with the rules governing Community designs, so that - unless there is agreement to the contrary - the first owner of a UK unregistered design is the designer him or herself and not the entity who has commissioned it.
For businesses, the implications are clear – make sure that you have a contract in place with any designer whom you instruct to create design work on your behalf, so that all intellectual property rights (including unregistered designs) are assigned to your business.
If you would like to discuss any of the issues in this article, please contact Mark Openshaw-Blower or any member of the Commerical and IP team.