Major updates planned for UK design framework

Registration procedure, including search and examination

Currently, registered designs are not searched or examined for novelty or individual character. The government accepts that this has contributed to anti-competitive filings, such as generic products being registered and then used to issue take-down notices on online marketplaces such as Amazon™, eBay™, or Etsy™. This has led to a sharp increase in design invalidation applications as discussed in our earlier articles (here, here, here).

The government will legislate to allow the UKIPO to search and examine for both novelty and individual character, but only for a proportion of applications. Criteria will be published to guide when an examiner performs a search. Examples put forward in the response included re-filings of previously invalidated designs, apparently generic products, and designs suspected as being anti-competitive.

There was good overall support among respondents for a bad faith provision to be introduced, but the government has acknowledged the difficulty of establishing bad faith at examination. The government will undertake further work before deciding whether to legislate on bad faith, and has not ruled out an introduction of a bad faith provision in the future.

The proposals for the introduction of opposition and observation periods have been dropped. Respondents were concerned about added cost and complexity, and the government will consider a fast-track invalidation process instead.

Deferment

For UK registered designs, it is currently possible to defer publication of the application by a maximum of 12 months. This can be useful if the designer intends for a design to be kept secret/confidential.

The government will legislate to introduce a statutory 30-month deferment period. This substantially aligns UK deferment of publication with the EU and the Hague system. 

Furthermore, prior use provisions will be extended to cover deferred applications, giving some protection to third parties who act in good faith during the deferment period.

Animated designs and graphical user interfaces

The definition of ‘design’ and ‘product’ is set to be amended, to make clear that animated and other virtual designs, including GUIs, can be registered.

The rights in a registered design are to be expanded accordingly, to prohibit creating, downloading, sharing or distributing any medium or software which records the design. 

The government will consider the technical solutions that would allow video and 3D file formats to be accepted. 

Unregistered designs

The government response acknowledges that the unregistered design framework in the UK is complex and can be difficult for designers to understand.

The UK currently has two unregistered rights: 1) unregistered design right (UDR), and 2) supplementary unregistered design (SUD), which came into existence after Brexit.

The government has decided to retain both unregistered rights. The government has discounted previous options of abolishing one or more of the existing rights, and is instead looking at ways to simplify the framework.

The government will legislate so that a SUD arises following first disclosure anywhere in the world, whereas SUDs currently arise following first disclosure in the UK.

The government intends to look into further options for simplifying the framework, such as harmonisation of the qualification requirements and term of protection. 

There will be no criminal offences for unregistered design infringement, and no change on the overlap with copyright.

Smaller changes

There are also several housekeeping measures, including removing the DF21 search service and the option to file physical specimens, giving the registrar power to rectify the register, and a single examination report with a two-month response period. The government will also explore allowing registered design claims in the IPEC small claims track.

Note on timing

None of the reforms outlined in this article are in the law yet. The reforms will require legislation, which the government says will come “when parliamentary time allows”. There is therefore no timetable for these changes and the existing law continues to apply, for now.

Next steps

We will continue to monitor developments of the changes to the design system.

If you have any questions regarding design protection or the contents of this article, please get in touch with the author of this article, Jack Bourne, or call 01332 367051.