There are currently a number of differences between UK and EU design law, which can cause problems for applicants and practitioners alike. Christopher Smith discusses how the proposed UK IP Bill will harmonize the various design laws and how applicants might benefit.
As we have discussed previously, the proposed UK IP Bill contains a number of provisions intended to reform the law of design protection in the UK. We have already discussed how deliberate copying of registered designs is likely to become a criminal offence.
The IP Bill also contains a number of provisions aimed to harmonize UK Design law with European design law.
Why Harmonization Is Important
Design protection is big business and has made headlines around the world in the last few years: Apple and Samsung clashed in court over the designs of their iPad and Galaxy tablet computers, where Judge Colin Birss memorably pronounced that Samsung’s products did not infringe Apple’s registered designs because “they are not as cool“.
Despite its economic importance, design protection remains relatively underused. As identified by the Hargreaves Review, this is partly because design law is very complicated in the UK: designs are protected by four different overlapping intellectual property rights, covering UK and EU-wide, registered and unregistered design rights, which have different scopes and terms of protection. As set out below, some of these differences are likely to disappear but others will remain.
Differences Between EU & UK Designs That Are Likely To Be Eradicated According To The Proposed UK IP Bill
Liability For Damages
If a court finds infringement has occurred, the liability for damages is currently different, depending on whether the infringer has infringed a UK or EU registered design. In Jimmy Choo v Towerstone it was held that, while an infringer of a UK registered design can avoid paying damages for infringement while they were not aware and it was not reasonable for them to have been aware of the UK registered design, this “innocent infringement” damages exemption is not available for infringers of EU registered designs, and so infringers of EU registered designs are liable for damages regardless.
The proposed IP Bill provides an innocent infringement damages exemption for infringement EU registered designs.
Ownership Of Commissioned Works
Many designs are created in the course of the designer’s employment. For both UK and EU registered designs, these rights are owned by the employer. The situation is different for a commissioned work. Unless a contract provides otherwise, rights to an EU registered design created by a designer on commission are retained by the designer. This is also true for the copyright of a commissioned work. By contrast, rights to a UK Registered Design created by a designer on commission are owned by the person commissioning the design.
This means that in cases where a work is commissioned and there is no contractual provision for the ownership of IP rights, the copyright and any EU registered design will be owned by the designer whereas any UK registered design will be owned by the commissioner of the work.
The proposed IP Bill will harmonize UK registered and unregistered design with EU design law and UK copyright law, making the designer the owner of UK registered and unregistered design rights resulting from a commissioned work in the absence of any contractual provision to the contrary.
Prior Use Rights
EU registered designs allow a prior use right for persons using a registered design before its filing date (or priority date if claimed), if they did not copy the design. The prior use right also allows persons who have made serious and effective preparations to use the registered design before its filing date or priority to exploit the design according to the preparations that have been made. While a similar defence against infringement exists for patents in the UK, there is no equivalent provision for UK registered designs.
The proposed IP Bill will create a prior use right for UK registered designs in common with patents and EU registered designs.
Enforcement Of Copyright Against Licensed Registered Designs
Under the current law, those using a UK registered design with permission from its owner are not subject to infringement of any copyright associated with the design. This does not apply to EU registered designs and so licensees of an EU registered design may still infringe copyright. This can potentially cause problems in cases where different parties own the copyright and the EU registered design.
The proposed IP Bill will provide that users of an EU registered design with permission from its owner are not subject to infringement of any copyright associated with the design, in common with UK registered designs.
Differences Between UK & EU Designs That Are Likely To Remain After The Proposed IP Bill
An EU registered design cover all EU member states, which currently includes: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom.
A UK registered design covers the UK. We understand from the UK IPO that the following territories are automatically covered by a UK registered design in addition to the UK, without any need for re-registration: Anguilla, Antigua & Barbuda, Bermuda, British Indian Ocean Territory, British Virgin Islands, Falkland Islands, Fiji, Gambia, Gibraltar, Grenada, Guyana, Isle of Man, Kiribati, Montserrat, Saint Helena, Saint Kitts and Nevis, Saint Lucia, Saint Vincent, Seychelles, Sierra Leone, Solomon Islands, Swaziland, Tanzania and Uganda. A UK registered design may further be extended to other states on payment of an extension fee, such as Guernsey, Jersey, Tuvalu, and Malta. We have not verified this information with local attorneys in these states.
UK unregistered design right is effective only within the UK.
Term Of Protection
The term of protection for both UK and EU registered designs is five years from the filing date, renewable at five-year intervals to a maximum of 25 years.
UK and EU unregistered design rights have different terms of protection. EU unregistered design right lasts three years from the point at which the design was first made available to the public within the EU.
By contrast, UK unregistered design right lasts until the earlier of 10 years from the end of the year in which the first sale or hire of an article according to the design occurred and 15 years from the end of the year in which the design was first recorded or an article according to the design is made. Licenses of right are also available for the final five years of any UK unregistered design right, by which any third party is entitled to a license to exploit the design right on payment of a reasonable royalty, without the permission of the owner of the right.
Both OHIM and the UK IPO offer fee reductions for filing multiple designs in the same application. The official fees for UK registered designs are £60 for the first design in an application and £40 for each subsequent design. For EU registered designs, the fees are €350 for the first design, €175 for each of the second to the tenth design, and €80 for the eleventh and each subsequent design in the same application. The official fees are therefore significantly lower for UK registered designs, although the official fees for EU registered designs are still relatively inexpensive, particularly when compared to the EPO’s official fees for patent applications.
We understand from sources close to the UK IPO that the proposed IP Bill is on track for Royal Assent by the end of May 2014, with some of the provisions likely to come into force on 1 October 2014 and others to follow later.
The IP Bill is still passing through the UK parliament and there is a chance that parliament will amend it before it becomes law or that it might fail to become law at all. In its current state, however, it seems that the IP Bill should remove some of the quirks and eccentricities of UK design protection. This is to be welcomed because it should improve certainty for right holders and third parties. It should also make it easier for applicants to choose the most appropriate route for protection and make better use of this relatively underused IP right.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.