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UKIPO calls for views on UK designs system

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United Kingdom

On 25 January 2022, the UKIPO launched a call for views as part of a review to ensure that the UK's domestic designs framework is, and remains, fit for purpose. In its introduction, the UKIPO recognises the need to continue incentivising innovation and to help and contribute to the post-pandemic recovery.

This call for views follows hot on the heels of another short public survey recently published by the UKIPO on 10 January 2022, seeking views from those with an interest in designs (designers, design-led businesses and manufacturers) and how they are protected. That survey closed on 7 February 2022. This additional call for views is to gather more detailed information from stakeholders about what works well and what could work better so they can consider whether changes need to be made to the UK designs system. The call for views closes at 11.45pm on 25 March 2022.

The challenges

The UK and EU design regimes are renowned for their complexity and are fraught with confusion and uncertainty. Despite the various design regimes allowing a designer a multitude of options for protecting their products, it can also be challenging for a designer when it comes to assessing enforcement and infringement of any design rights, with so many different intertwining rules at play. 

Many will therefore welcome this call for views to have their say as there is no doubt that some refining is in order. Leaving the EU means that the UK is no longer subject to EU law and there is no longer a need for harmonisation with the EUIPO. This presents us with new opportunities and flexibilities to diverge if necessary, in order to give the UK that competitive edge and fulfil the government's ambition for the UK to be 'the best place in the world to innovate'.

The main aspects of the survey

Registered designs – search and examination

This section seeks views on whether the UKIPO should change the examination practice for designs, by introducing various options such as, prior art searching, a two-tier system, use of AI tools, bad faith and opposition periods.
 
As a reminder, in the UK, you can protect a design that “is new and has individual character”. Following changes to the law in 2006, the UKIPO does not check whether a design meets these requirements before allowing registration. It means that the onus is on applicants to consider novelty and individual character requirements before they apply. Competitors can apply to have a design invalidated if they believe a registered design does not meet these requirements.
 
This was done to harmonise UK practice with the EUIPO. As we are no longer required to harmonise with EU law, this is a prime opportunity for the UKIPO to seek views on whether the UK should reintroduce novelty searching, or whether this would just be more of a burden and add to costs. 
 
Novelty searching could help to identify and prevent anti-competitive registrations (where pre-existing designs are deliberately registered and used to stop the legitimate business activities of the original designer). Such applications could also possibly be dealt with by introducing a bad faith provision, mirroring trade mark law, so a registrar could object to filings on the basis of bad faith.
 
However, it may be difficult to provide evidence that a third party has acted in bad faith which could reduce the usefulness of this provision. The UKIPO therefore seeks views on the merits, or not, of a bad faith provision to enable them to determine whether this would be likely to complicate, rather than facilitate, the registration process.
 
Simplifying the designs system

Background

The UK designs system is not easy to navigate! There are currently four different types of overlapping design protection (not including copyright) in the UK as follows: 

Design right Protects Term
Registered design Protects the 2D and 3D appearance of the whole or part of a product resulting from a number of features (eg lines, contours, shape, texture and ornamentation) Up to 25 years
Supplementary unregistered design (SUD) (created when the UK left the EU - same scope of protection in the UK as provided for by the unregistered Community design) Protects the 2D and 3D appearance of a product 3 years from when first disclosed  
Continuing unregistered design (CUD) (for products protected in the UK as unregistered Community designs before 1 January 2021) Protects the 2D and 3D appearance of a product Exists in the UK for remainder of their existing three-year term
UK unregistered design right (UDR) Protects the design of the internal or external shape or configuration of the whole or part of an article. It does not protect surface decoration. The shorter 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

In addition to the above forms of design protection, copyright protection may also be available to a designer for any original artistic works and would last for the life of the creator plus 70 years.

One product may be protected by a number of different overlapping rights and may protect different aspects of the product, with different qualification requirements, terms of protection, restricted acts, exceptions, and limitations. A designer may also have difficulty assessing whether a design is capable of design right protection, copyright, or both. It can be especially difficult to assess those products that are both functional, yet creative (see our blog - CJEU gets a handle on whether copyright subsists in Brompton bicycle, but ultimate decision hinges on Belgian court | Fieldfisher) as if a design is eligible for copyright protection, it will attract a longer term of protection than may have otherwise been envisaged under design law.

All in all, the government is keen to gain a better understanding of the impact of the current system on businesses. They believe one way to rectify the complexities may be to simplify or even reduce the different types of unregistered rights in the UK.

Differences between unregistered design rights

As set out in the above table, the SUD (created on the UK's departure from the EU to plug the gap left by the absence of the unregistered community design so that crucially 2D designs can still be protected), sits alongside the UDR but these rights are not consistent. For example, the SUD does not provide an exception for spare parts but UDR and registered design law do. Qualification requirements also differ for both – for SUD, design right exists on first disclosure with no residency requirements but to obtain a UDR, people must be resident in the UK or a qualifying country. The government is therefore keen to establish what are the pros and cons of harmonising these different aspects or maintaining the status quo.

Definitions

The government seeks views on whether clarification is necessary in relation to certain definitions in the Registered Designs Act 1949 e.g. 'get-up'.

Disclosure

As we reported back in November 2020 (Brexit: European Commission rejects plea for reciprocity for designers), as a result of the lack of agreement between the UK and the European Commission, there is no reciprocity between the EU and the UK on the issue of when a design is first disclosed so a product is only protected in the territory in which it is first disclosed. This means that designers now have to choose between disclosing in the UK and getting a UK-wide right only, or, disclosing in the EU and getting the EU-wide UCD.

This is an added problem for designers in an already complicated system and the government is aware that many designers would welcome the opportunity to gain unregistered protection in both territories at the same time and not have to make that difficult choice of where to first disclose. It has been suggested that one way to do this could be simultaneous disclosure by live-streaming in the relevant territories or disclosing on a digital platform. This method, however, is currently untested in the courts and there is uncertainty as to whether digital disclosure is a valid disclosure under SUD legislation and whether a live-stream disclosure from anywhere in the world could give rise to UK design protection. However, given that more and more brands now tend to use digital platforms to launch products, it seems sensible to accommodate this method.

The government therefore seeks views from interested parties on the impact of these post-Brexit disclosure requirements.

Future technologies

The government recognises the need to 'future proof' the designs system in light of emerging and future technologies and the consultation highlights a number of areas where new technology is having an impact: (1) the use of AI tools to create designs; (2) the development of dynamic designs (e.g.4D printed products); and (3) use of designs in a digital environment, e.g. avatars in online gaming and graphical user interfaces (GUIs) for mobile devices.

The consultation acknowledges the importance of encouraging the use of AI tools for designers whilst maintaining the correct balance between human-created and computer-generated designs. Under both UK registered and unregistered design legislation, there are provisions addressing who is the creator of a computer-generated design but that is not the case for the SUD, so views are sought as to whether this should be changed. 

The government is also interested to hear views on designs representations in a digital environment. As part of the designs application process, the UK IPO accepts only 2D representations but this does not take into account dynamic, animated digital content or GUIs. Interested parties are therefore asked about whether it would be beneficial to be able to submit digital files so a design could be viewed in virtual 3D and dynamically.

Better regulation

The government seeks views on how well deferment of designs works in the UK. Currently an applicant is able to defer publication of their design for up to 12 months, after which, if it is not published, it is considered abandoned. The deferment allows the designer some flexibility on when to publish their design and reduces the risk of a product being copied before marketing. They can therefore benefit from the earliest possible filing date at the same time as keeping it confidential. The consultation asks whether this 12 month period is adequate or should be altered to 18 months, for example, which would align with patents, or even 30 months, which would align with designs under the Hague system. Alternatively, should it be reduced and should any basic information be published at the time of filing as it is in some international design systems?

Enforcement

Last but not least, the consultation seeks views on how the enforcement of design rights can be made easier as the costs can put designers off pursuing claims, especially in the case of individuals and SMEs. The government also wishes to obtain views on whether to introduce criminal penalties for unregistered design infringement (currently only available for the intentional infringement of registered designs, introduced by the Intellectual Property Act 2014). The current thinking, however, is that there is not enough evidence to support this, as only a very small number of criminal cases have been brought since 2014 in relation to registered designs.

Comment

There is a great deal of food for thought in this call for views and it is hoped that it generates some helpful and constructive data with which the UKIPO can work in order to assess if and what changes should be made. The current UK designs system has been branded complex and unwieldy, so it is vital than any changes going forward simplify the system and do not create further complexities. There has also been some concern that introducing pre-registration checks will just add to costs and become more of a burden on designers.

The call for views closes on 25 March 2022 and a summary of the responses to the consultation will be published at a later date. We will update as and when the summary is out.

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Design Rights