Design

UK and EU legal divergence likely as United Kingdom consults on future of its national designs regime – Commentary

Why consult now?
Simplifying designs system
Disclosure requirements
Response to future technologies
Taking enforcement action
Making registration system user-friendly
Comment

Is the United Kingdom’s national designs framework fit for the future? This is the question at the heart of a current consultation by the UK Intellectual Property Office (UKIPO). The consultation closes on 25 March 2022, and the UKIPO will announce the outcome some weeks later. The government’s ambition is for the United Kingdom to be the “best place in the world to innovate” and so significant reforms to the designs regime, to the benefit of designers, are expected.

Why consult now?

A review of the United Kingdom’s designs framework is long overdue. It is widely acknowledged that the law is overly complex, which is seen as a potential barrier for designers to effectively protect their creations.

In addition, following the United Kingdom’s departure from the European Union, the United Kingdom is no longer subject to EU law. This means that there is no longer a requirement for harmonisation with EU law and practice of the EU Intellectual Property Office (EUIPO). In its consultation document, the UKIPO highlights the post-Brexit opportunities to define and improve the domestic designs regime, independently of the position in the European Union, to ensure it is flexible and up to date.

The UKIPO anticipates that a designs system which better supports UK designers will encourage greater creativity and innovation, and overseas investment in the United Kingdom, giving the United Kingdom a competitive edge in the designs space. According to the UKIPO, “great design helps UK products stand out, demonstrate quality and find consumers in a competitive global marketplace”. The UKIPO also highlights the importance of the design economy in the United Kingdom, reporting that in 2016 this generated £85.2 billion (equivalent to 7%) in UK gross value added.

Simplifying designs system

There are a number of themes in the consultation. One of the primary themes is around simplification of the designs system to make it more accessible and attractive to designers.

A key criticism of the system as it currently stands is the lack of clarity around the rights available to designers. There are currently six different types of design protection in the United Kingdom, namely UK registered design, re-registered design, supplementary unregistered design, continuing unregistered design, re-registered international design and UK unregistered design right. A UK registered design gives a designer 25 years of exclusivity over the 2D (eg, texture or ornamentation) or 3D (eg, shape and contours) appearance of the whole or part of their product. The UK unregistered design right is more limited in scope and enables a designer to prevent a third party from copying the shape or configuration of their design article (but not its surface decoration) for up to 15 years.

After Brexit, the registered Community design and the unregistered Community design no longer cover the United Kingdom. Three new rights were created to fill the short- and long-term gaps. For the short term, continuing unregistered designs were established to enable designs that were protected pre-Brexit in the United Kingdom by unregistered Community design to maintain that protection until the expiry of the remainder of the three-year term. As time elapses, these rights will become less relevant and then extinct altogether. For the long term, existing registered Community designs have become re-registered designs in the United Kingdom, and to fill the gap left by the post-Brexit unavailability of the unregistered Community design, the supplementary unregistered design has been created. This provides the same scope of protection as previously given by the unregistered Community design but with protection limited to the United Kingdom. Finally, international designs designated to the European Union before the end of the Brexit transition were converted to re-registered international designs in the United Kingdom.

Copyright can also be superimposed onto this framework. Currently in the United Kingdom, a product may benefit from copyright protection in addition to design protection where the product is an original artistic work. The duration of copyright protection is highly preferred to designers, lasting for the life of the creator plus an additional 70 years.

The sheer number of overlapping rights available to protect a design, exactly which aspects of a product they protect, and the differing qualification criteria, term and scope of protection can be very difficult for designers to fully understand if they are not legally represented. This often deters them from using the designs system altogether and creates considerable complexity for those designers wanting to carry out freedom to operate searches. The UKIPO is seeking views on how simplification can be introduced, and asks an open question to those responding to the consultation around how they think this might be done. Designers are also encouraged to share their views on whether inconsistences around the available rights need to be addressed (eg, exceptions to or limitations on each right) and to comment on whether they would benefit from guidance around the nuances of each of the rights (eg , exactly what “get-up” can be protected by UK registered design, as this is not defined in the relevant legislation).

Disclosure requirements

A further practical issue that the UKIPO is exploring is around disclosure of a design and the availability of unregistered protection. Now that the United Kingdom has left the European Union, the place where a design is first disclosed has become critical in determining whether the design is protected as either a supplementary unregistered design in the United Kingdom or an unregistered Community design in the European Union. This is a headache for designers wanting design protection right across Europe, including the United Kingdom. Currently, they have to choose which market is most business-critical for them and disclose there first, but this means that they lose out on unregistered design protection in the other territory. In the consultation, the UKIPO asks designers to share any adverse experiences created by this disclosure dilemma and suggest how the issue might be addressed in the future. One option discussed by the UKIPO is to enable simultaneous disclosure of the design in both territories, via live-streaming or similar, resulting in the design being protected by both UK and EU rights.

Response to future technologies

The UKIPO says that it is keen to “future-proof” the United Kingdom’s designs framework and ensure it is flexible enough to accommodate future technologies, highlighting in particular the increasing use of artificial intelligence (AI) to create designs. The UK government has been vocal about its ambitions to establish the UK as a world leader in AI and so the UKIPO seeks views on whether the current designs framework sufficiently encourages the use of AI tools by designers.

Designers will only be incentivised to develop and use AI tools if they have exclusivity over the AI’s design output, enabling them to recoup their financial investment in the technology. Currently, UK registered design and UK unregistered design right protection is available for AI-created works, but not supplementary unregistered design protection. The UKIPO seeks views on whether this position should be maintained and extended to supplementary unregistered design too. This is a controversial question as many believe that only designs that have human input should obtain IP protection.

In response to the needs of an increasingly digital environment, the UKIPO asks whether it should change its practice of requiring 2D representations in design applications and begin to accept them in digital format, enabling representations to be viewed in virtual 3D and dynamically. This would be particularly relevant for animated digital content and graphical user interfaces where registered design applicants currently have to submit a number of snapshots to accurately capture the animated sequence they want to protect.

Taking enforcement action

The UKIPO asks designers (particularly individuals and small businesses) to share their experiences about enforcing their design rights, or defending any allegations of infringement made against them in the UK courts. The UKIPO wants to know more about perceived barriers to doing either, including costs, and asks designers to suggest how enforcement and defense could be made easier.

The UKIPO has also proposed introducing new criminal penalties for unregistered design infringement. Criminal sanctions for intentional registered design infringement were introduced in 2014 and the UKIPO is considering whether criminal liability for infringement should be mirrored in relation to both registered and unregistered rights. The UKIPO has made it clear, however, that robust supporting evidence is required before criminal liability for unregistered design infringement will be introduced.

Making registration system user-friendly

Mindful of the need to make the registered designs system more user-friendly, the UKIPO asks questions of designers specifically around the application process. Designers are asked whether novelty searching and an examination of novelty and individual character should be reintroduced. The UKIPO stopped undertaking these in 2016 in line with EUIPO practice.

In addition, the UKIPO seeks views on the deferment of the publication of designs. At present, an applicant may defer publication for up to 12 months. This enables a designer to secure the earliest possible filing date while preserving the confidentiality of their design. The UKIPO seeks views on whether legal clarification of the deferment provisions is needed, and whether the deferment period should be extended to 18 months.

Comment

The consultation is comprehensive, covering a broad range of issues. The outcome should be watched with interest. Designs are very likely to become the first IP right where the law in the United Kingdom and the European Union will truly diverge following Brexit. In parallel with the UK consultation, the European Union is also consulting on reforms to its designs system, making the prospect of divergence even more likely.

For further information on this topic please contact Gill Dennis or Florian Traub at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.

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