“The proposals seek to streamline processes, enhance protection and update laws which are now showing their age.”
Following a consultation process and surveys dating back to 2022, the UK Government has recently published its response setting out aims for the future of design protection in the UK.
For context, the current UK design legislation comprises the Registered Designs Act 1949, the Copyright, Designs and Patents Act 1988, and the Registered Designs Rules 2006, as amended by subsequent legislation, including the Intellectual Property Act 2014 and Brexit related legislation. Currently the following registered and unregistered rights are available to protect designs in the UK:
– UK national registered design (including re-registered designs from pre-Brexit EU registered designs) [lasts up to 25 years]
– UK designations of Hague/international registered designs [lasts up to 25 years]
– UK unregistered design right [lasts 10/15 years depending on circumstances]
– Supplementary unregistered design (post-Brexit UK right akin to the corresponding protection available in the EU) [lasts 3 years from the relevant disclosure]
– Copyright for some qualifying works [generally life of the creator plus 70 years]
The recent Government response looked at how the system can be adapted and modernised for the future. Some of the key areas covered are:
– Introduction of targeted search and examination based on novelty/individual character in certain circumstances. The aim of this is to combat anti-competitive registrations, but whilst maintaining the speed and cost-effectiveness of the current process.
– Consideration of introducing bad faith provisions, to tackle invalid registrations and counteract anti-competitive behaviour.
– Increase the current 12-month period for deferring publication of registered designs to 30 months, in line with EU/Hague designs.
– Expand and clarify what can be protected by registered designs, including animations and transitions, and consider allowing additional file formats such as 3D and video.
– Allow worldwide disclosure to qualify for supplementary unregistered design protection, rather than just the UK. A possible grace period will also be considered
– Simplify and harmonise the overlapping unregistered design rights, including by aligning qualification requirements and duration. Currently UK unregistered design right has a 10/15-year term, while supplementary unregistered design protection lasts for 3 years. A harmonised 10-year term received support, but the Government intends to assess the economic impact before making any change. The overlap with copyright was also considered, but no change will be made for now, allowing further clarity to develop through case law
– Consider improving access to enforcement by allowing straightforward, lower-value registered design cases to be heard in the IPEC Small Claims Track
– Monitor and if/when appropriate respond to the use of AI in the design industry.
– Note, some other proposals were dropped, including a two-stage registration/examination system, formal opposition and observation procedures and, for now, criminal sanctions for unregistered design infringement.
The Government’s response does not set out a timetable for reform, and changes are unlikely in the immediate future. However, it does identify a number of areas in which legislation will be taken forward when parliamentary time allows, alongside others where further work is still required. These should, in time, benefit both the applicant during the application process and proprietors and other parties after registration. The proposals seek to streamline processes, enhance protection and update laws which, in some respects, are now showing their age. The UK’s design protection landscape has also become increasingly complicated, particularly following the UK’s independent accession to the Hague System and its subsequent departure from the EU. Against that background, steps towards modernisation, simplification and harmonisation are welcome. Watch this space!
