UKIPO publishes views on the designs framework
The government outlined how it will try to simplify the system and consider the cost of enforcement following a call for views.
The UK Intellectual Property Office (UKIPO) has published the outcome of its call for views on the designs framework, which enables rightsholders to protect designs and enforce their rights.
The government’s engagement exercise, which ran between January 25 to March 25 2022, sought views and evidence from users of the designs framework on ways to improve the regime in the UK.
It was billed as a response to the opportunity created by Brexit for the UK government to distinguish itself from EU law and the EUIPO, thereby opening up the chance to maximise creativity, encourage overseas investment and give the UK a competitive edge.
The value of the design economy was also cited, with recent figures from the Design Council showing that it was worth £97.4 billion (gross value added) in 2019, up from £85.2 billion in 2016.
“The designs framework is a crucial element of our IP system,” said Tim Moss, UKIPO chief executive. “Through this review, we want to ensure it remains fit to embrace the challenges of an increasingly digital future, helping to unleash the potential of the UK’s creative and innovative industries.”
Simplifying the process
Respondents—including design consultants, academics, legal firms and trade bodies—gave their views on the three broad themes of new opportunities, future technologies, and better regulation.
The survey covered issues such as how to simplify the designs regime, in particular for unregistered designs; how to improve guidance for designers, including those who do not normally engage with the government directly; options around search and examination; the relationship between design and copyright law, and if there is a need for reform or guidance; and concerns about disclosure requirements for supplementary unregistered designs, including uncertainty in relation to simultaneous disclosure.
Regarding simplifying the designs process, the general view was that the different overlapping forms of design protection makes the UK system complex and that it should be simplified, but they do not want simplification to result in lower levels of protection.
The government acknowledged that “the UK designs system is complex” and said it will investigate options to simplify the regime, in particular unregistered designs.
The impact of technology
On the subject of future technologies, a quarter of survey respondents said that technological advances had impacted the way they protect designs, while a third said that they had not.
Concerns that the current system may not provide adequate protection against infringement assisted by 3D and 4D printing were aired, and respondents urged the government to monitor the situation.
The use of non-fungible tokens (NFTs) and blockchain to prove ownership and provide an audit trail was mentioned by respondents to both the survey and the call for views.
Several respondents to the call for views said that design protection should extend to virtual designs. One respondent from the fashion sector explained that the growth in virtual clothes and ‘skins’ was expected to be a big market opportunity.
In response, the IPO said it recognises that allowing additional file formats could be useful to customers but that this could also make filing in multiple territories complex. It added that it will keep the impact of technological changes on the designs system under review, as well as consider how to ensure that the designs system is flexible enough to support developments in technology.
With respect to deferment, there was general consensus that provision for this would be desirable for commercial reasons, but there were mixed views on how long a deferment period should be.
Some suggested harmonising with the EU Intellectual Property Office (EUIPO) at 30 months would avoid confusion for designers and companies seeking protection in several territories.
The government said it recognises the need to balance the interests of designers and third parties on this issue.
Enforcement is ‘expensive’
And on the subject of enforcement, a significant number of people considered enforcement in the UK to be expensive. Some conceded that the system is an effective one while others believe it to be ineffective and favours those with significant financial resources. This latter view was reflected in responses to the survey and at some roundtable meetings.
Views on criminal sanctions were mixed, with some respondents strongly in favour of extending sanctions to the intentional infringement of unregistered designs and others strongly in opposition to this. Meanwhile, the majority (80%) knew criminal sanctions exist for the intentional copying of a registered design. A similar proportion (78%) indicated that this had not changed how they enforce their rights. It was not clear from responses what the reasons for this were.
Among the responses, participants requested that the UK joins the World Intellectual Property Organization’s digital access system for designs, which would reduce the administrative burden on applicants who file in multiple territories.
The government said it would give consideration to this, as part of the IPO’s digital transformation programme.
A welcome response
Matthew Ridley, chair of the Chartered Institute of Patent Attorneys’ (CIPA’s) Designs and Copyright Committee, said that CIPA is “pleased that the government response acknowledges the benefits of the existing speed and value of the UK designs registration system”.
“Further consultation will provide further opportunity to identify improvements to the UK design framework—particularly in the areas of simplifying the unregistered design and copyright systems, considering the searching and examination of registered designs and implementing a harmonised deferment provision under UK law.”
Cat Drew, chief design officer at the Design Council said: “The design economy is a significant and growing contributor to economic growth. Our departure from the EU, the disruption of the Covid pandemic and the climate emergency are seeing us reconfigure and re-establish global trade routes.
“An IP framework that supports all designers, and protects sustainable and equitable innovation, will help ensure the design economy remains a major driver of exports. The climate emergency requires us to redesign almost every aspect of our lives. Global collaboration is crucial.
“We need an IP system that allows ideas to be shared and spread, protecting and rewarding imagination and creativity.”
“We welcome the IPO’s recognition that these are complex issues, and look forward to working with them on further consultation to get this challenge right.”
While the call for views received just 57 responses, views came from a wide variety of respondents: designers, design consultants, academics, legal firms and professionals, legal trade bodies and professional bodies, other trade bodies, SMEs, and large enterprises. The IPO also held a number of round-table events.
It also published a Designs Framework Survey, which closed on February 11. It targeted people with an interest in designs and how they are protected, but who do not consider themselves experts on IP. There were 288 responses to this, predominantly from lone designers and small businesses.
The full government response can be viewed here.
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