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IP Cases & Commentary – Details

9 January 2013

Consultation on the Reform of the UK Designs Legal Framework

Richard Burton

The Government has published a summary of responses received during its Consultation on the Reform of the UK Designs Legal Framework. A number of respondents commented on the consultation. The summary does not include any policy decisions and is purely for information until decisions are made based on the outcomes. The document has been published as a result of The Review of Intellectual Property and Growth (the "Hargreaves Review") reported in May 2011.

In short, responses led to (amongst others) the following conclusions:

  • The majority of respondents, including the legal profession, manufacturers and designers, were in favour of retaining UK Unregistered Design Right (UDR) as an important form of IP protection for a number of reasons. These included the reliance on it when all other forms of protection were exhausted; a lack of awareness, especially amongst SMEs and designers of other forms of protection; and because the term of the Community UDR was considered too short. It was also felt that the UK right was in some respects wider than its European counterpart. Some stated that UK UDR had a part to play in protecting functional designs in light of the UK not having more appropriate protection (utility model or unfair competition).
  • Respondents were broadly in favour of harmonising UK and Community UDR.
  • Most respondents agreed with proposals to amend section 53 of the CDPA so that the current defence extended to Registered Community Designs (RCD). They felt it could help align UK and EU law and ensure consistency.
  • The majority of respondents were in favour of amending the RDA to incorporate joint ownership provisions.
  • Respondents recognised that there were benefits to design applicants of an extended deferment with the majority preferring a 30 month period (an extension of the current 12 month period).
  • Respondents were in favour of changing the current system of appeal against the IPO's decision on designs, which currently directs such appeals to the Registered Designs Appeal Tribunal (RDAT).
  • The majority of respondents were not in favour of the introduction of a requirement for some kind of prior art or prior right search. They felt that it would reduce harmonisation with the EU regime; that the demand for making the system 'cheap' would render any search impossible.
  • The majority of respondents saw value in the IPO offering a designs opinion service.
  • The general consensus was that a system allowing online inspection of designs documents would be of benefit to business and make access to documents quicker, easier and more efficient.
  • The majority of respondents were in favour of joining the Hague and perceived the benefits as: consistency with the EU position; a willingness by the UK to independently embrace multilateral treaties with the potential to influence other countries; increasing flexibility for UK business; EU integration; and providing UK applicants with a further direct route of protection, especially if countries such as the US and Japan were to join in future.

Some of the other suggestions put forward included:

  • Introduce a recognised symbol for demonstrating the existence of a registered or unregistered design as per © for copyright or ® and ™ for trade marks.
  • Enable modification by examiners of the descriptions given by applicants to that of a more standard Locarno term.
  • Introduce binding descriptions on the register, similar to patents to clearly show what elements (aspects) were actually protected.
  • Introduce electronic filing.
  • Introduce an automated registration system.
  • Improve use and awareness of design rights, including extending educational outreach, including developing model agreements to permit ideas to be discussed confidentially with e.g. business advisors, potential sponsors at an early stage.
  • Comprehensive guidelines on use of small claims track in PCC.
  • Introduce a two tier registration system - Design Reg-Lite with a 5 year protection for e.g. fashion and low tech products, and a deeper and longer term of design protection for high-tech products. (Possibly associated with the imitation levy).
  • Remove protection for technical improvements of low merit from UK unregistered design right.
  • Improve the duration of protection in comparison with copyright.

It remains to be seen which of the above suggestions lead to changes in the legal framework of UK Designs but we should soon find out.

Useful link

The full summary of the consultation can be found at http://www.ipo.gov.uk/response-2012-designs-summary.pdf

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