Spotlight on UK Design Law – Part 7 - UPDATE – UKIPO publishes initial response to ‘Call for Views’

The UKIPO has published its response to the ‘Call for Views’ consultation on the reform of the UK designs framework. By way of re-cap, the UKIPO had invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system, both by way of a survey and the formal consultation. You can read a summary of CMS’ response to some of the consultation topics in our previous posts in the ‘Spotlight on UK Design Law’ series, linked below.

The UKIPO received a total of 57 responses to the Call for Views, from a range of designers and design consultants, professional and trade bodies, academics, and lawyers. A further 288 responses were submitted to the survey, predominantly from lone designers and small businesses employing fewer than 10 people.

Opinions were mixed among respondents on how to tackle some of the key areas of reform, but there was broad consensus that the current design regime is too complex and requires simplification. There were also several calls for more clarity and better guidance for designers, as it was apparent from the survey that there is a low level of knowledge and understanding of design rights, especially among those without legal representation (the UKIPO reports that nearly half of survey respondents were not aware that a design could be registered, and three-quarters indicated they had a poor knowledge of unregistered design protection).

Key points from the UKIPO’s response:

• Search and examination. There was little appetite for radically changing the current examination practices for registered designs. The imprecise and subjective nature of design “similarity” was a key factor weighing against prior art searching, together with the limited functionality of the current search system. Some respondents called for higher-quality searching tools, and access to WIPO’s electronic data exchange system for designs. Others advocated for a two-tier system involving novelty searching at enforcement stage only, not affecting initial registration. This was echoed by concerns about the volume of un-vetted (and likely invalid) designs on the register, which could stifle innovation. However, there was wide consensus that any reforms aimed at improving certainty of validity of registered design should not compromise the speed and value of registration as a cost-effective protection tool. The introduction of opposition periods and ‘bad faith’ provisions also received limited support.
• Simplification. Respondents were in favour of introducing a single UK unregistered design right incorporating the best elements of the current framework of overlapping rights. The UKIPO also specifically noted the need for clarification of the legal “grey area” between copyright and design rights. Consistency with EU design law was also considered as a factor for boosting cross-border trade. The government has committed to consider these points and to explore ways to roll out better guidance, including by targeting “hard to reach” designers who are most in need of support.
• “First disclosure” dilemma. Many respondents (particularly those in the fashion industry) expressed concerns about the difficulties faced by designers in having to choose whether to obtain unregistered design rights in the UK or in the EU through “first” disclosure. Notably, the survey responses indicated that although around half of respondents regularly do business in the EU, only about one-third were aware of the post-Brexit changes to protection of unregistered designs, and only 10% had actually made changes to their design disclosure policies. The UKIPO has recognised the legal uncertainty of “simultaneous disclosure” practices and will consider these issues in more detail, including through further stakeholder engagement.
• Future technologies. Views were divided over whether the current regime adequately serves future technologies, such as 3D/4D printing. The majority view was that computer-generated designs were sufficiently protected, and only a minority of respondents had changed the way they protect designs in response to technological advancements. Respondents agreed that AI should not be recognised as an “author” or owner of a design. Some fine-tuning of the rules on digital representations and specimens was suggested, with the caveat that material changes to filing formalities rules could make international applications more complex. The government is watching this space to stay tuned to how technology advances are affecting designers.
• Deferment. The UKIPO had asked whether the current rules on deferment (i.e. the ability to delay the publication of a design application, whilst securing a priority date) were fit for purpose. Whilst various possible reforms were suggested, the common stance was that deferment should remain available and there was no call for radical reform.
• Enforcement. The UK regime of design enforcement was seen as effective, but expensive. A number of alternative dispute resolution options were floated, including a designs opinion service, greater use of mediation, and opening the Small Claims Track of the IPEC to registered design claims (for which it is not currently available). The issue of criminal sanctions divided opinion, with respondents arguing both for and against the extension of criminal liability to intentional unregistered design infringement. No majority view emerged on this point, which remains open to debate. The government has committed to exploring more cost-effective enforcement routes through further stakeholder discussions and review of impact evidence.

The UKIPO’s Analysis of Responses drills down into the detail of the consultation responses on each key issue. The wide range of responses aptly illustrates the complexity of the task that the UKIPO now faces. The preliminary response offers no definitive view yet on the direction of travel, including on pressing issues such as the recognition of ‘simultaneous disclosure’. However, there is likely to be an increased focus on the key themes of simplification and clarity, promoting awareness of design rights, and maintaining the ease and value of design registration.

We will continue to closely monitor developments as the consultation progresses to its next phase. If your business is facing challenges from the evolving legal landscape, or if you’d like to share your thoughts on any of the consultation topics, please get in touch with us to discuss in confidence.

To view the articles in this series, click here: Part 1; Part 2; Part 3; Part 4; Part 5; Part 6