UK Government Issues Response to Consultation on UK Design Protection
Following the completion of the earlier announced consultation on UK design protection, and in light of the responses received, the UK Government has issued its response, indicating the aspects of the law that are likely to be reviewed or be the subject of further investigation.
Registered designs - search and examination
Stakeholder feedback indicated the importance placed by them on the speed and value of the current design registration service and raised concerns that this would be compromised by re-introducing a search requirement. While acknowledging the increased time involved, the government considers that searching will increase certainty about a design registration’s validity and so will further consider options for a search and examination system. It looks likely that an AI search system will be utilised and that an Australian style two-tier examination system will be adopted so that designs can be registered reasonably quickly, but not be enforceable until a more substantive examination has been successfully completed. The government did not state any preference regarding the introduction of either an opposition procedure or a bad faith provision, but it was noted that there was little support for either. The government will also give consideration to extending its involvement in the WIPO Digital Access Service (WIPO-DAS) system to designs.
Simplifying the designs system
The government acknowledges that simplifying the overlapping protections available via copyright, unregistered designs and registered designs is desirable, particularly for SMEs. Currently there are 3 types of unregistered design right, although that will become 2 from 2024. There was wide support for effectively reducing this to one by harmonising key provisions in each. The government will also further consider the relationship between designs and copyright law and whether reform is needed or only further guidance.
Disclosure of supplementary unregistered designs
The UK supplementary unregistered design and the unregistered community design each require first disclosure in the UK or EU respectively. The government recognises that further guidance on what constitutes disclosure is warranted, especially in regards to whether simultaneous disclosure in the UK and the EU can allow for valid unregistered design rights in each jurisdiction. Additional stakeholder views and evidence in this regard is sought.
While recognising that allowing filing in additional file formats would be desirable, the government also recognises that it could increase complexity when filing in multiple territories. The option of ceasing to allow the filing of physical specimens was widely supported. It was recognised that the impact of emerging technologies such as 3D and 4D printing, AI and blockchain on design protection and enforcement should be kept under review.
Deferment provision for designs
The government acknowledges that deferring publication of a design is desirable for valid commercial reasons, although it needs to be balanced with provisions for prior use rights or co-pending applications. However, it will consult further on whether to retain the current deferment period of up to 12-months from filing or to increase it to 18-months or 30-months.
The government recognises the cost of enforcing rights can be a barrier to enforcement, especially for individuals and SMEs, and will further consider options such as a designs opinion service or allowing registered designs into the small claims track of the Intellectual Property Enterprise Court. There were opposing views on whether criminal sanctions should be extended to the intentional infringement of unregistered design rights, but there was little supporting evidence for either view. Consequently the government seeks further supporting evidence before deciding on this.
Author: Quinn Miller