POST IMPLEMENTATION REVIEW - IP ACT 2014 - CIPA and CITMA Response

In April 2013, the IPO published a list of responses to a public consultation exercise entitled “The Consultation on the Reform of the UK Designs Legal Framework” to which you kindly responded. For ease of reference, I have attached the Consultation report to this e-mail.

The IPO is now conducting a Post Implementation Review of design related measures which were brought in by the IP Act 2014 and would be grateful of our views on some of them.

The IPO have requested our views on: -

1.            Revision of scope of design protection.

2.            Amendments of design ownership provisions.

3.            Introduction of criminal sanctions for the deliberate infringement of a UK or EU Registered Design

and whether we feel the measures have been of benefit to clients of our members as legal representative bodies. The IPO have also indicated that they are keen to know if any of the measures have not worked well.

The Chartered Institute of Trade Mark Attorneys (CITMA) is the professional and examining body for Trade Mark Attorneys in the UK, representing virtually all the registered trade mark attorneys in the UK, whether in industry or private practice.  Total membership is larger than this, with members also taken from the ranks of judges, barristers, solicitors, trainee attorneys and other professionals with an interest in intellectual property.  CITMA represents the views of the trade mark profession to policy makers at national, European and international level, with representatives sitting on a range of influential policy bodies both in the UK and overseas. 

The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK, representing virtually all the 2,400 registered patent attorneys in the UK, whether in industry or in private practice. Total membership is over 4,000 and includes judges, barristers, trainee patent attorneys and other professionals with an interest in intellectual property. CIPA represents the views of the profession to policy makers at national, European and international level, with representatives sitting on a range of influential policy bodies and working groups in the UK and overseas.

Both CITMA and CIPA thank the IPO for requesting our feedback in this review process, and would be grateful if the following comments could be taken into consideration:

Measures to simplify design law and get the IP framework to better support innovation

Scope of Design Protection

One of the objects of the reform was to simplify design law and get the IP framework to better support innovation and one way that the reform set out to do this was to change the definition of an unregistered design right to prevent right holders from using a very small part of their design as the basis for a claim that a third party is infringing their design.  The reform attempted to achieve this by amending the wording of the definition to remove “any aspect of”.

We are in agreement that this led to a temptation of design owners to define their designs in abstract ways, but the amendments have led to a lack of clarity in the law for design owners.  We would caution against making amendments such as these in the future where it was only “on balance” that the change would have the intended result.

This particular change has resulted in 5 years of uncertainty as to how this change should affect cases in real life, and there are cases still ongoing before the courts dealing with the issue (the next case due on the topic is Shnuggle v Munchkin, due in late November, but other cases dealing with the change include the Superdry case, the Whitby ice cream van case, and the Neptune kitchen case, none of which has led to a definitive position on the issue).  It has caused uncertainty in the field of unregistered designs with advisors being unable to advise their clients with certainty as to whether or not a particular design subsists in a part of an article, or whether it will be dismissed as an aspect.

In the future we suggest that where a problem is identified, the amendments should ensure that the problem is clearly fixed rather than leading to further uncertainty and therefore cost and complexity for design owners.

Qualification for designs

The reform amended the UK law relating to the qualification of designs commissioned by another individual or business.  This is separate from ownership, and has led to some British designers losing their right to a design simply because they work with designers overseas.

This change has led to what we feel are unintended consequences in particular where for example a UK company works with their manufacturing partner in a non-qualifying country (such as China) to design a product from scratch or to make changes to a product.  If it turns out that the UK company has not put in sufficient design input to qualify for joint authorship, then with this change no UK unregistered design would subsist in the design, unless the product was then first marketed in the UK.  Even if a product was intended to be marketed significantly in the UK, it could well be first marketed somewhere else, depending on the commercial reality of the market (for example, where the first trade show of the season is).  In our experience, it is unusual for marketing plans to be built around qualification for unregistered rights, making the qualification regime slightly arbitrary to the extent it depends on this. 

We would add that unregistered design protection is most relevant in a business context and firstly that this means that commissioning of work to create a design is commonplace and that treating the commissioning entity as the creator of the design makes good practical sense and would be more in line with the expectations of business; and secondly that UK unregistered design right is very different in concept from Community unregistered design protection (or its equivalent after withdrawal from the EU), and differences in the regime for significantly different rights can be expected.

Deferment Period

Period of deferment brought to 30 month aligns with the situation in the EU – this has not been brought into effect and the period is still only 12 months.

Enforcement of designs and understanding the design rights of others

Criminal sanctions

Criminal sanctions for the deliberate copying of registered designs was introduced.  It would be interesting to know of how many cases have been brought under these provisions as we at CIPA and CITMA have not heard of any.

It remains the case, even if prosecutions have not been brought in practice, that the provisions present concerns in the spare parts business or other businesses involved in the supply of essentially functional designs.  Typically, such a product will be a copy of, or differ in only immaterial details, from the original.  The legislation provides a defence that the person (the accused) reasonably believed that the registration of the design was invalid; however, the typical basis for invalidity in these case will be the appearance of the product is solely dictated by technical function, or relevant features must match/must fit or are not visible in normal use.  There is considerable uncertainty as to when a design is invalid on these grounds and the possibility of reproducing such functional parts being a criminal offence is undesirable principle where there is such uncertainty.  It is also undesirable because it often necessitates the business seeking legal advice on the issue to provide support for their opinion, and such legal advice may not be unequivocal.  It is suggested that, if the offence is retained, it should include the requirement that the registration is shown to be clearly valid, or at least that the defence is amended to provide that the accused reasonably believed that the registration was not clearly valid.

We understand that certain stakeholders are lobbying for these sanctions to be extended to also cover unregistered designs.  We would strongly argue that any extension be resisted, firstly on the basis that unregistered rights are not always certain, definite and clear (see our comments above, for example) and there can be much confusion in determining who owns the rights and what rights exist and we don’t consider it appropriate for such rights to be subject to criminal sanctions.  In particular if no cases or only few cases have been brought under the criminal sanctions available for the deliberate copying of registered designs this would also support that the provisions should not be extended, as this would put yet more pressure on Trading Standards.

Design Opinions Service

We note that the non-binding Design Opinions Service has not yet been introduced and we look forward to the introduction of this service in the future.

Appeal to Appointed Person

We are pleased to note that this has been introduced and gives greater flexibility to users of the system who need to appeal.

Other things to improve the design IP framework

Hague Agreement

We are pleased that the UK has now joined the Hague Agreement in its own right.

Inspection of Documents

We are pleased that an online filing service has been brought in and that number of views to file has been expanded to 12 following the initial limitation to 7.  We understand that the IT focus has been elsewhere within the IPO of late and look forward to the IPO being able to refocuses its efforts in relation to for online inspection of documents and obtaining documents electronically in hopefully not too distant future.

Full review of unregistered design law after Brexit

We would strongly be in favour of a full review (and simplification) of unregistered design law once the UK has left the EU, provided the existing protection afforded by UK UDR is retained.