Spotlight on UK Design Law
Reviewing the UK designs framework – UKIPO’s Call for Views
The legal protection of design rights in the UK is no picnic. As IP practitioners and design businesses will be all too well aware, UK design law comprises a myriad of IP rights, both registered and unregistered, protecting different types of designs and with a varying scope and term of protection. This framework has been further complicated by the introduction of new UK “spin off” design rights post-Brexit, and other changes to the legal landscape. It is no surprise, therefore, that the sheer complexity of design law is often cited by design businesses (particularly those without legal representation) as a key reason for not taking full advantage of the protection that is available to them. The UKIPO is alive to the need for simplification of the system, and the opportunities presented by Brexit to re-shape domestic design law for the future.
Between January and March 2022, the UKIPO ran a ‘Call for Views’ consultation on the reform of the UK designs framework. It invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system. The consultation has now closed, and we will monitor and report on further developments as they arise.
Over the next few weeks, CMS will be exploring some of the topics covered by the consultation, and will be considering the key themes that are likely to emerge as the focus of further discussion. Please get in touch if any of these issues directly affect your business and you’d like to discuss them in confidence with our Designs team.
To view the articles in this series, click here.
Registered Designs – search and examination
In its consultation, the UKIPO asks whether it should change examination practice for designs. Currently, the UKIPO does not carry out substantive examination of design applications to verify whether they are “new and have individual character” – the onus is on the applicant to consider these matters before filing. Therefore, the grant of a registration does not guarantee its validity, and the novelty and individual character of a registered design can be (and very often are) challenged at enforcement stage. The UKIPO has called for views on whether it should re-introduce novelty searching and implement a mechanism for third party oppositions.
Our view: Any new hurdles to registration should balance the need to keep design registration a pragmatic and cost-effective protection mechanism for all designers.
- Greater scrutiny at filing stage could be potentially helpful in preventing and identifying anti-competitive (or “bad faith”) registrations. It would also help address the ‘clutter’ of invalid design registrations which remain on the register unchallenged. However, such benefits would come at a cost – notably, increasing the registration time and likely involving higher application fees.
- For some sectors, such as the fashion industry, and for products which undergo frequent changes, quick and cost-effective grant and enforceability are key considerations that can justify the cost of a design registration over relying on unregistered design rights.
- By contrast, for other sectors, and for products that are intended to stand the test of time, it is more important to obtain a robust registered design that can withstand challenge, thereby strengthening the merits of a prior art search and examination.
- Any design legislation, and any search and examination, should therefore ideally take the varying requirements of different sectors and different types of products into account. Increasing the barriers to entry, i.e. by introducing an additional layer of cost through prior art searching, may undermine the principal advantages of the registered designs system (cost and time) to specific sectors, which may inhibit access to IP registration and in itself have unintended consequences on sectors such as the fashion industry (i.e. an increase in copying, lowering of prices/margin to compete, with consequent impact on sustainability).