1 May 2013Copyright

UK government wants to criminalise design copying

The British government is planning to criminalise the “deliberate” copying of registered EU and UK designs, according to an official document.

The proposal is part of the UK Intellectual Property Office’s (IPO) official response to a 2012 consultation on reforming the UK design system.

Anyone making, marketing, importing or otherwise using a design “in the course of business” without authorisation could be liable, the IPO said, but the offence will not cover unregistered designs.

It is unclear whether criminal sanctions will match those under copyright and trademark law, which range from small fines to between six months and 10 years in prison, but proponents of the offence said they should.

Trading Standards, as it does with trademark and copyright violations, will enforce design copying cases and there will be defences to the crime, including one for unintentional infringement.

“The government believes there is a justifiable argument that blatant, deliberate copying of designs, for commercial gain safe in the knowledge that many of the victims will be unlikely to have the resources to respond, is an act worthy of punishment,” the document says.

According to the IPO, criminal sanctions will make the civil regime more effective, making companies more likely to use civil remedies if they know they can bring criminal proceedings later on.

The majority of respondents to the consultation, according to the IPO, support introducing criminal penalties. These included SMEs, individual designers and IP lawyers, who said the existing civil remedies have associated problems with time, cost and uncertainty.

“For example, several legal bodies said they were aware of examples in which civil remedies had proven ineffective against multiple and persistent offenders who were well resourced and untroubled by potential infringement cases,” the document says.

Opponents claimed that design cases are too complex to be heard by non-experts, with inexperienced judges and juries being unable to weigh up whether a design was valid or infringed.

“Others felt that it would be difficult to capture the policy aim in legislation without compromising unintentional infringement and in reality enforcement agencies would lack the specialist knowledge and resources to successfully pursue cases,” the IPO said.

But criminal sanctions “make sense for consistency”, said David Stone, chair of the design team at Marques, who added: “Anything to minimise counterfeit trade is good but we need public education to make clear that infringement is simply ‘not cool’.”

Stone said brand owners rarely want to see people imprisoned for infringement but that persistent infringers need to be dealt with more severely.

He added: “None of the measures appears contentious – they are minor adjustments that are tidying up disparate aspects of design law. This is evolution, not revolution.”

The IPO response is also notable, according to Stone, because it has a strong SME focus and seeks to simplify and harmonise UK laws with EU.

While it is unclear when the government will choose to bring in the IPO’s reforms, the document states that changes should be made “as soon as possible”.

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29 July 2013   The Chartered Institute of Patent Attorneys has called for draft British IP legislation to be re-worded so that it targets only the “deliberate and sustained” copying of designs.