Design law changes present risks to product manufacturers

Roy Crozier, an intellectual property partner with national law firm Clarke Willmott, discusses how recent design law changes could impact on manufacturers.

Design law changes present risks to product manufacturers
Roy Crozier, intellectual property partner, Clarke Willmott.

A high in demand product design can take any market by storm and catapult a manufacturer to industry dominance.

However now manufacturers will need to tighten up their design contracts and ensure they do not fall foul of copying product designs that have been registered.

Registered and unregistered design right is a useful tool in protecting innovation in the manufacturing industry and can be used to protect manufacturers from those who would seek to copy their products.

From 1 October the Intellectual Property Act 2014 (the “Act”) introduced new changes to design law in the UK. The intention behind the new legislation is to support innovation, to help business, particularly SMEs, understand, exploit and protect IP rights and to reduce costly litigation.

Design ownership

Under existing law, any commissioned UK registered or unregistered designs are owned by the commissioner, in this case the manufacturer, and not the designer. This has been reversed and the rights to all designs created now belong to the designer, not the manufacturer who commissions the design, unless there is a contract in place which transfers ownership from designer to commissioner. This brings the law into line with the position with regard to Community registered and unregistered designs and copyright.

Action point – manufacturers need to ensure that a commission agreement is in place to expressly transfer ownership from any self-employed/independent designer to the commissioning business.

New criminal offence – intentional copying

The Act introduces a criminal offence for the intentional copying of a UK or a Community registered design in the course of a business. The offence, which carries the penalty of a fine and/or prison sentence of up to 10 years, will be committed by intentionally copying a registered design without the consent of the registered owner of that design. An individual will be guilty of this offence if the copy made differs only in immaterial details from the original and the copier knows, or has reason to think, the design is registered.  A separate offence will be committed by anyone similarly dealing with such a copied product.

Action point – the criminal penalty is likely to act as a deterrent. If there is any suggestion that a new product may infringe a registered design, a “head in the sand attitude” may prove disastrous for manufacturers both in terms of cost to the business and long term reputation. It is advised from the outset that they check their outsourced and in-house designers have not intentionally copied a design and that there are contracts in place with them to protect their own position if such an act took place.

If there is any likelihood of an infringement seek professional advice and always keep detailed records of the advice.

For designers, this new offence is an additional tool to ensure their work is not copied, but only of course, if the design is registered.

Also as owners of registered design manufacturers should ensure they mark their products, packaging and promotional materials with details of the Registered Design (i.e. registry name and design number) to make it easier to win any cases for intentional copying of their own designs. This will make it more likely that a third party will be held to know the design is registered.

Prior use of a design – limited protection

The Act provides limited protection for any manufacturer which starts, in good faith, to use a design but subsequently finds it has been registered by someone else. In these circumstances the business may continue to use the design, but only for the original purpose.

Action point – for any business using a design in good faith, this offers limited protection, but again, professional advice should be obtained to avoid overstepping the fairly narrow permissions.

Technical changes

In relation to UK unregistered design right, the Act makes a number of technical changes:

  • Unregistered design right will be available to protect the design of the shape and configuration of an article, as opposed to extending to any aspect of its design. As a result “cropping” a design to parts of the whole in order to support an infringement case will no longer be possible.
  • Action point – This represents a substantial change in design law and a substantial weakening of the protection afforded by unregistered design right.  This makes it all the more important for businesses to register designs of the whole and parts of a product where they are able to do so.