The Intellectual Property Bill – proposed reforms of UK Design Rights

Further to our earlier post on the Intellectual Property Bill's proposed amendment of the Freedom of Information Act, other key provisions of the Bill relate to registered designs and unregistered design rights.      

This follows the publication in 2011 of the Hargreaves Review of Intellectual Property - a government commissioned report by Professor Ian Hargreaves which considered the current UK IP framework.  The report stated that the UK framework needed updating and led to the government’s Consultation on the Reform of the UK Designs Legal Framework.  The government’s response to the consultation, published on 30 April 2013, included many of the proposals appearing the Intellectual Property Bill.

The key provisions of the Bill relating to UK unregistered design rights are as follows:

Minor features no longer protected

It is proposed that design rights will protect only the internal or external shape or configuration of the whole or part of an article, and no longer “any aspect” of that shape or configuration. 

Originality geographically limited

Currently a design will not be “original”, and will not be protected by design rights, if it was commonplace in the design field in question at the time of its creation.  This field was not limited geographically.

Under the Bill, the design will only not be original if it was commonplace in a “qualifying country” (i.e. the UK, various British colonies and territories, other EU member states and New Zealand).   

Therefore, the fact that a product may have been on the market for years in a non-qualifying country (e.g. the USA or Australia), will not prevent a competing design from being protected by UK unregistered design rights.

Commissioning no longer means ownership

As the law stands, where a design is created in pursuance of a commission, the person commissioning the design is the first owner of any design right in it.

If the Bill is enacted, this will no longer be the case.  Under the Bill, unless the design was created by an employee in the course of his employment (in which case the employer is the first owner of any design right), the first owner will be the individual designer, even when the design was commissioned. 

This brings the ownership of UK design rights into line with the ownership of copyright and Community design rights.   What this will mean is that any person commissioning a design must obtain written assignment of the design rights from the designer (something which is already advisable).

Qualifying corporations

In order to be a “qualifying person” for purposes of the subsistence of UK unregistered design rights, a body corporate must both be formed under the law of a qualifying country, and have in any qualifying country a place of business at which substantial business activity is carried on.  This is particularly relevant where it is the employer of the designer.

Under the Bill, it will only be necessary for the body corporate to have in any qualifying country a place of business at which substantial business activity is carried on.  This means that a company incorporated in a non-qualifying country can still be a qualifying person.  

Exceptions to infringement

The Bill proposes the introduction of certain permitted acts (which do not infringe design rights), the most relevant of which are the following:

• an act done privately and for non-commercial purposes
• an act done for experimental purposes
• an act of reproduction for teaching purposes or for the purpose of making citations provided that:
  • the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design, and
  • mention is made of the source.

This brings UK unregistered design rights into line with patents and registered designs, where the legislation contains similar or corresponding exceptions.

As noted in our earlier post, the Bill may be subject to amendment as it receives parliamentary scrutiny and it remains to be seen when the Bill will become law.  In a later post, we will look at the proposed changes to UK registered designs.