01 Oct 2014The Intellectual Property Act 2014 introduced some changes to design law in the UK with effect from 1 October 2014. Here's a brief overview of the key points:
- intentional copying of a registered design is now a criminal offence punishable by fine or up to 10 years' imprisonment;
- there is now some limited protection from infringement action for someone who uses a design in good faith but subsequently finds that it has been registered;
- the owner of a commissioned design will now be the designer not the commissioner (unless a contract states otherwise);
- the ability to base a claim for copying on a cropped area of an unregistered design ('part of a part') has been restricted;
- the eligibility requirements defining who can claim unregistered design rights has been simplified.
To date, design protection and registration has not proven as popular as it perhaps should. It has been poorly explained and poorly promoted, so any additional powers or rights for design owners will be welcome. However, clients should particularly note the change to the requirements regarding ownership of designs. It’s now the case that the designer will be the first owner, which brings designs into line with copyright, so care is needed when commissioning designs of any sort.
To avoid disagreements regarding ownership, a simple agreement should be executed before any design work is commissioned, the costs of which is very low in contrast to the costs involved in a dispute. That agreement should ensure that the rights in the designs are passed to the person or company commissioning the designs, either upon creation or when payment is made.
Further changes will be coming into force in 2015 at the earliest. These include the creation of an impartial, non-binding opinions service. We'll keep you posted.
Helpful guidance provided by the Intellectual Property Office can be found here.