Both UK and EU law provide for the protection of designs through both registration and automatic unregistered rights, although the latter are generally more limited than registered rights.  Registered designs are currently a highly under-utilised right by the majority of UK businesses, unaware that it is not necessary for their product design to be aesthetically pleasing to obtain a registration, and leaving the owners of many industrial designs having to fall back on unregistered rights in the event of an infringement.

The key amendments being introduced can be summarised as follows:

• From 1 October 2014 it will be a criminal offence to intentionally copy a registered design, or to produce a design with only slight immaterial changes. The expectation is that this will provide a robust deterrent against blatant copying and therefore give businesses an additional commercial reason for registering their designs. It will also be an offence to knowingly use a copied design in the course of business and profit as a result. This could include marketing, exporting, importing or stocking the design. Accidental or incidental use of an infringing design however will not be a criminal offence.

• A change to first ownership of design rights. The absence of a contract defining who owns the rights to an original business design can be highly problematic. If the designer is an employee, and the design was created under the terms of an employment contract, the employer will own the rights without the need for any extra formality. Before 1 October, if you commission a third party to produce a product design for you, you own the design. However, this is at odds with EU design and UK copyright law. From 1 October, if the production of a design is commissioned from someone who is not an employee, a written agreement is necessary to ensure that all rights will belong to your business.

• Occasionally, and by coincidence, the same design may have been developed independently by two parties.  The possibility then arises that one, but not the other, registers the design, and the fact that EU law allows a 12 month grace period for a business to test market their product before seeking registration means that this scenario can occur. From 1 October 2014, businesses that have designed and started commercialising a design, or had made serious and effective preparations to do so, but later find that it has subsequently been registered by another party, will have a defence to infringement, although only if the design was produced and marketed in good faith.  The exact interpretation of this by the courts is likely to be an area of interest and debate in the coming years. Furthermore, the continued use allowed will be limited to the exact original product and cannot be extended to other products, so the natural expansion of product ranges will be hindered.  This provides a strong incentive to protect designs ahead of launch.  In many other countries such a grace period does not exist so protection must be sought ahead of launch.

• With a view to clarifying the UK unregistered design regime, the IP Act will also introduce a number of more technical changes, which aim to simplify this complex area for businesses.

-   Unregistered design rights in the UK have in the past been criticized for providing protection to trivial parts of a product, making it difficult to assess infringement risk. The definition of an unregistered design will be slightly narrowed, so that the whole or part of a product can be protected, but no longer the ‘part of a part’, although part of a design can still be an infringement.

-   A design needs to be original, which means that it should not be commonplace in the design field at the time it was created. The law did not specify before where the design should not be known in order to qualify for protection. From 1 October, regardless of where the design was originally created, it will only be protected as a UK unregistered design right if it is not well known in the UK, in another EU Member-State, or in a number of additional countries which have specific arrangements with the UK.

-   The Act also simplifies the qualification rules based on residence, or connection with a qualifying country and first marketing, making it easier to benefit from UK unregistered design rights

-   From 1 October, using somebody else’s UK unregistered design in an activity for private purposes which are non-commercial, or for experimental or teaching purposes will not constitute an infringement.  When using a design for teaching purposes, the exception is only valid if you name the source, and the use is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design.

• In order to align UK registered design law with EU law, from 1 October, UK registered design owners will be able to obtain some compensation, based on profits, where that infringement has been innocent rather than deliberate.

• Artistic works can sometimes be protected by both design and copyright laws. The Act will also introduce an exception to ensure that anybody who uses a registered Community design with the permission of the owner will not infringe the associated copyright, as it is already the case with UK registered designs.

A number of additional changes set out by the Act are expected to come into force during 2015, intended to encourage further use of registered design rights.

• Businesses will be able to use a Design Opinions Service which will be offered by the Intellectual Property Office to provide a low cost, impartial and non-binding opinion on potential design disputes. The intention is to allow businesses to quickly obtain an opinion on the strength of a case before deciding whether to go to Court.

• The Intellectual Property Office will provide easier access to UK registered design files by providing an online inspection system.

• Finally, the UK will be joining the Hague International design registration system. This system is already accessible to all businesses which are Registered Community Design owners, but it is hoped that this will make international design protection even more accessible for UK businesses and designers, as it provides applicants with an administratively simpler and cost effective mechanism to extend registered design protection to other countries which may be commercially or strategically important.