Amended IP bill passes through House of Lords
The Intellectual Property Bill, part of which is designed to criminalise the blatant copying of designs, passed through the House of Lords on Tuesday with a new defence.
Alleged copiers will be exempt from potential 10-year prison terms if they can show that they “reasonably believed” they did not infringe an existing design.
The amendment was introduced by Viscount Younger of Leckie, the UK’s IP minister and sponsor of the bill, after concerns were raised in the IP industry about the scope of the bill’s criminal sanctions.
Industry body the Chartered Institute of Patent Attorneys (CIPA), which objected to prison terms for just producing “substantially” similar designs to existing ones, urged for the act to only legislate against “deliberate and sustained” copying.
Younger failed to rise to these demands, but said the new defence of a reasonable belief of non-infringement will help courts to reach a “just and fair outcome” in design infringement cases.
He added that the amendment clarifies the scope of the criminal provision and provides confidence to UK designers.
The amended bill passed with no objections.
Rob Jackson, a CIPA council member, said the changes are a step in the right direction but have still not gone far enough.
“We are worried about the current draft’s potential chilling effects on genuine competition. We would like to see the legislation focused on counterfeit goods or products that are a blatant rip off.”
While the new defence was welcome, he added, defendants will still have to go through an “unpleasant” litigation process before they can use it.
Chris McLeod, director of trademarks at Squire Sanders (UK) LLP and first vice president of the Institute of Trade Mark Attorneys, said he supported the reasonable belief test.
“The test is good because it doesn’t necessarily rely on someone obtaining a legal opinion about the design – it could be that the company or person in question conducts their own enquiries that the design wasn’t valid.
“It gives comfort,” he added. “If and when the cases start to proliferate, people will look back to what the intentions were – and they were to prevent the blatant copying of registered designs. I am sure the courts will look at the provisions and see that reasonable belief test does apply.
“It is positive to companies and individuals with concerns about receiving criminal records, even if it doesn’t go all the way,” he said of the bill’s amendment.
What is considered reasonable under the defence will be subject to a lot of argument in the courts, said Tom Hutchinson, director of law firm Hutchinson IP.
“This amendment seems to be trying to mirror equivalent defences available under other IP legislation, such as under patent law where there is something known colloquially as the ‘innocent infringement defence’,” he said.
But he said there are some significant differences, not least that the IP bill is an “actual defence” whereas under patent law there is only a limit on damages awards, not a defence.
He added: “Patents are published in the register, journal and online, so it’s actually quite difficult, in practice, to invoke an innocent infringement defence in patent litigation. Registered designs are also published, but they are not as readily searchable using the online databases ... thus making the design registers harder, but not impossible, to search.”
The bill, which deals with other issues such as providing the power to implement the London-based Unified Patent Court, will move on to the House of Commons, where it must pass three readings before becoming law.
