Contributors
The United Kingdom ("UK") Intellectual Property Office ("IPO") has opened a consultation on how its domestic designs framework should be improved in order to promote innovation and economic growth.
The consultation (which can be found here) aims to find evidence which can enhance the contribution made by the designs regime and inform legislative decisions.
The UK IPO invites wide-ranging responses – from individual designers, small and large businesses, legal professionals and rights holders – and encourages all interested parties to fill in the response form and submit their contribution by email to designscallforviews@ipo.gov.uk by 11:45pm on 25 March 2022.
Background to the consultation
Previously, as a member of the European Union ("EU"), UK designs law needed to follow EU legislation and be compliant with the Court of Justice's decisions as well as rulings by the EU IPO. However, since Brexit, the UK is no longer subject to EU law which may provide it with greater flexibility in its domestic designs regime.
On 1 January 2021, the day that the UK ceased to be part of the designs protection regime operated by the EU, the UK government introduced several new design protection mechanisms:
- Re-registered designs – to protect designs that were on the EU IPO register on or prior to 31 December 2020 (either as registered Community designs or international registered designs published by the International Bureau of the World Intellectual Property Organization designating the EU)
- Continuing Unregistered Design Right – to protect any designs entitled to protection as unregistered Community designs on or prior to 31 December 2020, providing equivalent protection in the UK for the remainder of its three year term
- Supplementary Unregistered Design Right – to protect any designs disclosed in the UK on or after 1 January 2021 which, had they been disclosed in the EU, would have been entitled to protection as unregistered Community designs.
As a result, the UK designs regime currently includes five different design rights – the three identified above, plus UK registered designs and UK unregistered design right.
Scope of the consultation
The consultation seeks evidence in response to a wide range of designs-related questions which are broadly organised into three categories.
Changes to the system
The first category asks a variety of questions in order to ascertain whether changes to the system are now possible given the UK's ability to alter its law an practice now that it has left the EU.
Proposed changes for comment include:
- Developments to the substantive law. The UK IPO posits that the designs system may need simplification given that there are five separate rights now in the UK, each of which provides different, and sometimes overlapping, protection. The consultation also asks whether there are any legal definitions or inconsistencies which should be clarified
- The introduction of search and examination stages as part of the designs registration process. The UK IPO envisages that this would assist designers in assessing whether a design meets the requirements of novelty and individual character prior to the submission of an application. Such stages could, it is said, also assist the UK IPO to identify and restrain the registration of conflicting designs
- The introduction of an opposition period or bad faith provisions, like those which already exist in relation to trade marks. Although this might be a helpful addition to the designs regime, the UK IPO highlights that changes to the applications process may have unforeseen consequences, such as longer processing times and increased application fees.
Emerging technologies and AI
The focus of the second category is future and emerging technologies, and whether the designs system needs to be updated to reflect these advancements. The consultation requests opinions on how the UK IPO should distinguish between designs created by humans and those generated by non-human designers, and whether artificial intelligence ("AI"), 4D products produced by 3D printing and digital designs should be afforded further protection by the designs regime or excluded from protection. The UK IPO further asks whether in an age of increasing digitisation, we should dispose of physical specimens and allow filing of digital representations.
Improvements for rights-holders
The third and final category focuses on rights-holders and seeks opinions on how the designs regime can be improved. Some suggested topics for discussion made by the UK IPO include whether new express deferment provisions should be introduced (and, if so, for what period); the extent, if at all, the current regime effectively protects designs; and whether there is evidence to support the extension of criminal sanctions to unregistered designs.
