In the aftermath of Brexit and with the advent of new and emerging technologies, the UKIPO recognises that certain features of the United Kingdom’s design system may need to be updated and/or simplified to maintain its utility and relevance. The UKIPO is also aware that notwithstanding the sophistication of the UK’s existing IP regime, certain barriers to enforcement remain – most notably the costs of mounting an action for infringement, which are most acute for small businesses and individual designers.
The UKIPO has therefore issued a Call for Views on the UK design regime, requesting input from individual designers, small and large businesses, legal professionals, rights holders, and any other interested stakeholders. The deadline to respond to the Call for Views is 11.45pm on 25 March 2022.
In particular, the UKIPO has asked stakeholders to consider the following issues:
Should examination practice be amended for registered designs?
In the UK, registered designs must be novel and benefit from individual character, although no formal examination of novelty or individual character is undertaken by the UKIPO. Instead, a third party may apply to invalidate a design registration if it believes that the relevant criteria have not been satisfied. To some, the current approach leads to uncertainty (particularly in the context of enforcement proceedings) and has the potential to increase costs. The UKIPO has therefore proposed a number of options to address the issue, including by introducing: prior art searches and examination on novelty/individual character (potentially incorporating an AI tool to manage costs and enhance efficiency); a pre-application search tool to assist applicants in identifying potentially conflicting designs in advance of filing; a two-tier registration system, whereby enforcement would be subject to a full search for novelty and individual character; an opposition period; and a provision for objection based on bad faith.
Do the different and overlapping ways of protecting the appearance of a product present any issues to creators and users of the system?
Are there inconsistencies between the design rights that need to be addressed e.g. qualification requirements, spare parts exemption?
In the UK, there are currently four different types of design protection available, namely: (1) registered designs; (2) supplementary unregistered designs; (3) continuing unregistered designs; and (4) UK unregistered design rights. In addition, under the provisions of the UK’s copyright regime, certain items/objects could also be protected as original artistic works. In each case, a product may be protected by one or more of the available design/copyright categories, which subsist according to different qualitative criteria and give rise to distinct terms and scopes of protection. Mindful of the complexity of the current system and the potential consequential cost implications, the UKIPO is requesting evidence-backed views on ways to bring greater clarity to the system and address any inconsistencies between the various design rights (i.e. qualification requirements based on residency).
Whether the changes in disclosure requirements for unregistered designs since the end of the transition period have caused any particular issues.
Prior to Brexit, a rights holder could secure protection throughout the EU (including in the UK) for its product as an unregistered community design by disclosing that product in any one of the (then) 28 Member States. As a consequence of Brexit, however, a product will only be protected in the territory in which it is first disclosed, either as a supplementary unregistered design in the UK or as an unregistered community design in the EU (if disclosed originally in any one of the remaining 27 EU Member States). To address the lack of reciprocal recognition for unregistered designs in the UK and EU, the UKIPO is therefore asking for stakeholder views/suggestions on possible solutions.
How can the current system better meet the needs of a digital environment and future technologies?
Technology is developing rapidly. The advent of 3D printing and 4D printed products, the development of the Metaverse and the use of AI to ‘create’ designs simply reinforces the need for the law to adapt to keep pace with technological advancements. In particular, the UKIPO is canvassing views on the prospective extension of protection for computer-generated designs to the supplementary unregistered design right and whether the system as a whole is fit for purpose in light of developing technology.
Whether there should be changes to the law concerning deferment.
It is possible for a design applicant to defer the publication of its design (i.e. the point at which the design is made public on the UKIPO’s register) for up to 12 months. Deferment provides the reassurance of a filing date, while maintaining the confidentiality of the design (during which further R&D or product production can be undertaken). The UKIPO is seeking views on whether the current 12-month deferment period is sufficient, or alternatively whether it should be extended to 18 months (consistent with equivalent provisions applying to patents), 30 months (to bring the UK in line with the Hague designs system) or reduced. In addition, stakeholders have been asked to comment on whether any information should be made available publicly during the deferment period.
The effectiveness of the UK’s enforcement framework, including the extension of criminal sanctions for intentional unregistered design infringement (there is already a separate criminal offence for registered design infringement).
The publication of the Call for Views serves as an acknowledgment that while the current system may be beneficial for certain actors, it also undermines access to justice for others. In particular, although UK registered design protection can be obtained cost-effectively and quickly, it is often difficult for the applicant and third parties to understand the validity and scope of the resulting registration. Consequently, in the context of a dispute significant costs can be expended on the identification and assessment of prior art, thereby reducing the value of the design registration itself. The pace of technological change also threatens to complicate the legal landscape; the UKIPO’s intervention is therefore welcome and should hopefully lead to greater clarity and accessibility for applicants and third parties alike.
The UKIPO’s Call for Views can be accessed here. Should you require further information or guidance on responding to the Call for Views, please contact Ben Hitchens, Sarah Wright or Kaisa Patsalides.