It has been brought to Fashionista’s attention that the recently introduced Intellectual Property Act 2014 (the “IPA”) brings into force a controversial first for UK legislation, namely a criminal offence of intentional copying of a registered design, liable to a ten year prison sentence or a fine (or both). Under the new offence, a person will commit a criminal offence if they, in the course of business:

(a) intentionally copy a registered design (either a UK or a EU Community design) so as to make a product exactly to the registered design, or with features that differ only in immaterial details from that registered design; and
(b) know, or have reason to believe, that the design is a registered design and do not have the consent of the registered proprietor of the design (Section 13 IPA).

The offence will only apply to intentional copying that takes place after the IPA came into force (1 October 2014), although the date of the registration of the design is irrelevant. There is also a similar offence for those who, in the course of business, offer, put on the market, export or use the copied design.

However, the IPA does not extend criminal sanctions to unregistered design rights, despite discussion on this point in both Houses. The IP Federation had warned in its Policy Paper PP01/14, “It is virtually impossible for legitimate businesses to assess whether UDR owned by a third party subsists in a particular design” as there is no way of establishing the identity of the creator, the date of creation and or the date of first marketing… “Legal practitioners will advise their clients not to take any risk which could result in criminal prosecution”.

Section 13 IPA has caused considerable discussion throughout the Intellectual Property Bill’s (the “Bill”) passage through Parliament. Whilst its supporters have consistently maintained that design rights should be afforded similar protection as that given by copyright and trademark law, others have warned that reputable businesses would refrain from introducing legitimate new designs to the market, when faced with the risk of criminal sanctions. The Anti-Copying In Design (ACID) group has led the campaign for these changes and sees them as an important step in recognising the value conferred by design. Others take diverging views, as evidenced by the exchange recently between ACID and CIPA  on the IPKat website here.ACID-header

Some of the opponents’ fears have been allayed by the introduction of the concept of ‘intent’, which was noticeably missing from the Bill initially introduced to Parliament: “The Government amendments ensure that the law is as clear as possible and that it fully achieves the Government’s aim of tackling only the blatant copying of design (emphasis added)… The insertion of the word “intentionally” is not intended to make the sanction more difficult to prove—the clause was always aimed at situations where there was an intention—but to allay the concerns of stakeholders that unconscious copying could be caught by the offence, which is not the purpose of the clause.” (Mr David Willetts (Minister for Universities and Science), Public Bill Committee, 30 January 2014).

However, Fashionista understands that many continue to have reservations about this new criminal offence when it is so difficult for businesses to run effective clearances in this area. Unlike with trade marks, there is no examination of a design’s novelty or individual character prior to grant and the search functionality at both the UK’s IPO and OHIM can at best be described as clunky and cumbersome. It will be interesting to see both how the criminal courts interpret the legislation and cope with the complexities of design law going forward and how the line is drawn between civil infringement and criminal infringement.

Section 13 IPA may be governing much of the press coverage surrounding the IPA’s impact on design rights, but companies should be aware of additional changes. Notably, rights in designs that are created pursuant to a commission will now vest in the designer, as opposed to the business that has commissioned the work, unless there is an express contractual provision to the contrary. This brings UK legislation in line with that concerning EU registered and unregistered designs. Businesses wishing to own IP in designs that they have commissioned will need to take care going forward that there is a written agreement in place that thoroughly details the ownership of IP rights.

By: Sarah Wright
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