The Intellectual Property Act 2014 and the Narrowing of the Scope of Protection Provided by UK Unregistered Design Right
November 04, 2014
This is the fifth of a five part series looking at the effect of the Intellectual Property Act 2014 on design law in the UK. In this final part we shall consider the remaining changes not already considered in the first four parts of this series. The most notable of these remaining changes is perhaps the narrowing of the scope of protection provided by UK unregistered design right.
The scope of protection provided by UK unregistered design right has been narrowed slightly
Previously a UK unregistered design was defined as “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The phrase “any aspect of” had previously been used to claim that very small parts of a design were protected by UK unregistered design right. The Intellectual Property Act 2014 removes the reference to ‘any aspect of’ from the definition of a UK unregistered design. This effectively means that, while a whole design and parts of a design can still be protected, a ‘part of a part’ cannot. Ultimately, it would be for a court to decide what that means in any particular case, but a designer should not find themselves on the receiving end of a claim against them for copying a very small and trivial part of someone else’s design.
Requirements for UK unregistered design right
UK unregistered design right only exists in an original design which is not commonplace. The definition of ‘commonplace’ has been amended to mean ‘commonplace in a specific area’, namely the qualifying countries. The Qualifying countries are the UK, the EU and some additional countries which have reciprocal arrangements with the UK such as Hong Kong and New Zealand. This change has the effect that commonplace designs outside of the specific area are not now considered in any assessment of originality.
Ownership of UK unregistered design right
Eligibility requirements defining who may claim UK unregistered design rights have been streamlined. For a design to qualify for protection under UK unregistered design right, the first owner of the design, be it the actual designer or the designer’s employer, must meet certain requirements. These requirements are met by citizens of a qualifying country and companies formed under the law of a qualifying country which carry out business in one of these countries. If these requirements are not met then the person who first markets the design can in some instances own the UK unregistered design right. This is a particularly complicated area of the law, so please contact us for tailored advice if you believe the first owner of the design is not from a qualifying country.
Certain acts are now exempt from being an infringement of UK unregistered design right
A number of exemptions to UK unregistered design right infringement have been introduced. Notable exemptions are that UK unregistered design right will not now be infringed by: a) private and non-commercial acts; b) acts done for experimental purposes; and c) reproducing the design for teaching purposes provided certain criteria are met. Similar provisions already exist for UK registered designs.
Infringement of UK copyright
If a person has been given permission to use a design by the registered owner of that design, and it is a Community registered design, that person will not be infringing any UK artistic copyright arising from it, provided the use made is in good faith. This mirrors similar longstanding provisions relating to UK registered designs.
Changing the liability regime for innocent infringement
Owners of UK registered designs can now recover any profits made by people that unintentionally and innocently infringe their rights. The innocent infringer will not be liable for damages. An innocent infringer of a UK registered design is a person who does not know or suspect that the UK registered design exists. Previously, if the infringement of a UK registered design was committed unintentionally, an infringer could avoid financial penalties. This is the final part of our series on the effect of the Intellectual Property Act 2014 on design law in the UK, and we hope that you have found it useful.
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.