Criminal Sanctions for the Intentional Copying of a Registered Design

October 21, 2014

This is the fourth of a five part series looking at the effect of the Intellectual Property Act 2014 on design law in the UK. In this part we shall consider the new criminal sanctions for intentional copying of a registered design.

The Intellectual Property Act 2014 introduces a criminal offence for the intentional copying of a UK or Community registered design. To be found guilty someone must intentionally copy a design, without the consent of its owner, whilst knowing (or having reason to believe) the design is registered. This intentional copying must also result in making a product exactly like the design in question or where a design has only been very slightly modified “with features that differ only in immaterial details”. Essentially therefore the new provisions are targeting counterfeit products which incorporate a design protected by a valid UK or Community registered design. It is also an offence to knowingly use an intentionally copied design in the course of business to profit from that copying. This includes using, marketing, exporting, importing or stocking the design in the course of business. The offence applies to any intentional copying of a registered design (but not unregistered design) that takes place on or after 1 October 2014, but does not apply to past acts. The offence carries with it the same kinds of penalties as already exist for copyright and trademark offences, namely a fine and/or a prison sentence of up to ten years. As with any other criminal offence it is necessary to prove ‘beyond all reasonable doubt’ that an offence has taken place. The new provisions are enforced by Trading Standards Officers, as per trade mark and copyright offences, but actions can also be brought privately. In the fifth and final part of this series we shall consider the other changes which came into force in October 2014.

If you have any questions concerning the design law changes brought into effect by the Intellectual Property Act 2014, please get in touch with your usual contact at Swindell & Pearson Ltd or Simon Foster at [email protected]. Simon is based in the East Midlands, at our head office in Derby.