The UK Government has now published its plans following its design consultation earlier this year. In response to suggestions put forward by various respondents, the government proposes to adopt the following changes to the legislation and procedure for UK designs:
- The period to defer a UK design application from being published is set to increase from 12 months to 30 months, in line with the EU and the international Hague system. This is said to allow businesses to keep new products a secret for longer, in harmony with other territories worldwide.
- The government intends to amend the definition of what a “design” is to include things in motion, such as animations and transitions. The protection afforded to a design will also extend to prohibit the unlawful creation, download or sharing of files that record a design. With this, the UKIPO intends to adopt the same description line for UK design applications as that which is in place for registered trade marks. Proprietors are encouraged to view the description as a supplement to the scope of protection afforded to designs, rather than a marketing tool.
- The government has maintained section 214(2) of the Copyright, Designs and Patents Act 1988, which considers a person who has computer-generated a design to be the designer, so long as they made the necessary arrangements to create the design.
- The government has scrapped its considerations to abolish UK unregistered design right. Instead, it will consider whether to consolidate UK unregistered design right (“UKUDR”) and supplementary unregistered designs (“SUD”) into one catch-all unregistered right. Currently, the aim of the supplementary unregistered design is to provide protection to UK designs post-Brexit that would have otherwise enjoyed protection as an Unregistered Community Design. With parallels between SUDs and UKUDR, but little direct overlap, the government aims to align these and afford greater protections to rightsholders under one umbrella unregistered design right.
- The government intends to extend the scope of SUDs to afford protection even if the designs are disclosed anywhere in the world, rather than the UK.
- Lastly, the government does not intend to create a new criminal offence for copying unregistered designs, citing that this would not be proportionate. There will also be planning into allowing for simple and low-value registered design cases to be heard in the small claims track of the Intellectual Property Enterprise Court.
While the government has not set plans in stone just yet, with the date of commencement for the changes to be confirmed, rightsholders and businesses are advised to be mindful of the changes and to plan accordingly.
If you have any questions on the above, or if you need any advice or support in respect of your own intellectual property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
