Consultation on UK Design Protection Launched

The UKIPO has launched a consultation on the protection framework for designs with the aim of creating a framework that is fit for the future and incentivises innovation led growth taking into account that the UK’s designs law no longer needs to be harmonised with EU law.

Registered designs - search and examination
In 2006 the UKIPO stopped checking for newness and individual character so as to harmonise with the EUIPO’s practice in those respects. Views are sought on whether the UKIPO should start designs searching again and examine for novelty and individual character and if so how and to what extent. Advances in technology may allow for searches to be mainly done with AI tools and these could even be available for pre-application checks. Should searches be limited to exact matches only, with individual character remaining unexamined? Should the current examination framework remain as the first tier of a two-tier system that requires a full search for novelty and individual character before enforcement actions can be made – like Australia? Should a bad faith provision be introduced so as to make it harder for third parties to register pre-existing unregistered designs that are not their own? Should an opposition period be introduced.

Simplifying the designs system
There are currently four different types of overlapping design protection in the UK. Namely:

• registered designs, protecting the 2D and 3D appearance of the whole or a part of a product for up to 25-years;
• UK unregistered design right (“design right”), protecting internal or external shape or configuration (but not surface decoration) of the whole or a part of a product for the lesser of 15 years from when the design was first made or recorded in a design document, or 10 years from when it was first sold.
• supplementary unregistered design, created to provide the equivalent of an unregistered Community design and protects the 2D and 3D appearance of a product for 3 years from when the product is first disclosed in the UK; and
• continuing unregistered design, which provides UK protection for products protected in the UK as unregistered Community designs before 1st January 2021 for the remainder of their 3-year term (and to which the UK is bound by the Withdrawal Agreement).

In addition to design protection, a product may benefit from copyright protection if it is considered an original work of artistic craftsmanship within copyright law. Copyright in original artistic works lasts for the life of the creator, plus 70 years.

These rights can overlap for a given product and different aspects of a product can be protected by only some of those rights. They also have different qualification requirements, terms of protection, restricted acts, exceptions, and limitations. Unlike registered designs and design rights supplementary unregistered designs do not an exception to designs protection for spare parts. For the supplementary unregistered design there is no residency requirement, while for the design right there is a residence qualification. Should these differences be retained or should supplementary unregistered designs be subject to a spare parts exception and a residency requirement? It is noted that this complexity can inhibit investment in and the use of designs due to doubts regarding freedom to operate.

Disclosure of supplementary unregistered designs
Supplementary unregistered design protection is not available if the design is first disclosed outside the UK. Similarly, protection as an unregistered community design requires first disclosure in Europe. Although untested in Court it is possible that simultaneous first disclosure in the UK and EU will allow for both supplementary unregistered design protection and unregistered community design protection. Should UK design protection be available for first disclosures that are live streamed?

Future technologies
Does the use of AI tools affect who is the creator of a design? Currently for both registered designs and UK unregistered design rights, but not the supplementary unregistered design, there are specific legal provisions on who is considered the creator of a design generated by a computer. Should dynamic designs be protectable? The UKIPO has published guidance on the protection of transformable designs. In most cases, 4D printed products could be protectable as a transformable design. Should some 4D printed products be excluded from protection? Currently applicants need to provide a series of snapshots representing the animated sequence for which protection is sought. Views are sought on whether applicants should be able to submit digital files enabling designs to be seen in virtual 3D and dynamically? Should the ability to file physical specimens be retained?

Deferment provision for designs
Currently an applicant may defer publication of their design for up to 12 months. If it is not published within the set timescale it is deemed to be abandoned. This gives applicants the earliest possible filing date whilst maintaining the confidentiality of the design. Views are sought on whether to  introduce a specific deferment provision, and whether it should be increased (to either 18-months or 30-months) or decreased, and whether specific provisions for prior use rights or co-pending applications should be introduced.

Enforcement
The cost of enforcing rights can be a barrier to enforcement, especially for individuals and SMEs. Views are sought on the issues and barriers designers face when enforcing their rights and how enforcement can be made easier. Evidence of the experiences small businesses and individual designers have had when enforcing their rights is particularly sought. Currently there criminal provisions for the intentional infringement of a registered design, but not for unregistered designs, with views sought on whether they should be available for unregistered designs.

Responses to the call for views can be made using the response form, with the closing date for responses being the 25th March 2022.

Author: Quinn Miller

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