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4 February 2014Trademarks

IP Bill’s controversial clause 13 amended

The UK government has added the word “intentionally” into a provision barring the unauthorised copying of registered designs in the Intellectual Property Bill.

It also amended the provision – clause 13 – to cover copied products with features “that differ only in immaterial details” from a design. Before, the provision applied to “substantially” similar products.

Clause 13, which sanctions a maximum 10-year jail term for illegal copying, still applies if a copier produces an exact copy of a design.

The changes were made following the bill’s hearing on January 30 at the House of Commons’ committee stage. Opposition (Labour) politician Iain Wright proposed other amendments but withdrew them to avoid delaying the bill’s approval.

In the UK parliament, the committee stage marks the first time a bill can be amended. It follows two readings in the House of Commons.

At the committee hearing, Conservative government minister David Willetts, who is leading the bill through the UK’s parliament, had indicated that he would add the word “intentionally” to clause 13. He had rejected calls to use the word “deliberately”.

“We consider that ‘intentionally’ does a better job than ‘deliberately’ – in current legislation the word ‘intentionally’ is already recognised by courts and dealt with very effectively,” he said at the time.

Since the addition of “intentionally” into the bill, UK industry groups the Chartered Institute of Patent Attorneys, the Institute of Trade Mark Attorneys and the IP Federation have reacted positively.

“These amendments ... spell out the government’s stated intentions, by limiting the criminal offences to deliberate copyists and to close copies – protecting legitimate competitors who have gone far enough to make new designs in their own right, and giving the criminal courts a test they will find easier to apply.”

But Dids MacDonald, chief executive of industry group Anti Copying in Designs, told WIPR that both changes to clause 13 could have “unintended consequences”.

“While we wholeheartedly welcome criminal provisions for the deliberate copying of registered designs, we feel that government is making a significant mistake with the wording (of both changes), which is not consistent with the criteria for obtaining a registered design. Both create further complicated anomalies and, in our experience, will create unintended consequences with committed copyists finding a loophole in the new law. In our experience, at the first point of market entry, the exhibition venue, copyists will soon discover that they only have to make miniscule changes to a design to get around the new law,” she said.

Mark Richardson, director at Keltie LLP, said that broadly speaking, the amendments are welcome.

“A number of IP experts and industry representatives had concerns that the wording of clause 13 was not clear enough. The changes are designed to increase the clarity of the clause.

“The government’s stated aim is to tackle blatant copying of design. The explanatory notes to the bill also include the phrase ‘deliberate copying’ of a registered design. The introduction of the word ‘intentionally’ was to clarify these issues and is not regarded as changing the intent behind the clause since, as David Willetts said in committee, ‘the clause was always aimed at situations where there was an intention’. The word ‘intentionally’ was preferred over ‘deliberately’, as it is regarded as more familiar to the courts,” he said.

The second change – the deletion of “substantially” – will provide a more precise test in court, Richardson said.

“Clause 13 relates to the copying of registered designs and yet the term ‘substantially’ is not defined in the Registered Designs Act. The wording that has been substituted comes from the novelty provisions of the Registered Designs Act and so is more familiar. The explanatory notes don’t refer to ‘substantially’ copying a design and so this amendment should provide the courts with a more precise test.”

If the bill passes a third reading in the Commons, where it now returns for further debate, the House of Lords will consider any changes before it becomes law.

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