UK Government sets out planned reforms to the designs framework

The UK Government has published its response to the consultation on reform of the UK designs framework, confirming a package of potentially significant changes to registered and unregistered design protection.

The package is targeted rather than radical. It aims to crack down on anti-competitive filings, modernise protection for digital designs and to address some of the complications created by Brexit. However, some of the thornier questions and legal ‘grey areas’ remain unresolved. 

At a glance

The key outcomes under each Consultation topic are:

1. Search, examination, bad faith and opposition

• Outcome: The Registrar will be empowered to conduct searches in selected cases to examine novelty and individual character. Guidance will determine when a search should take place, with the consultation identifying potentially problematic applications such as re-filings of invalidated designs, apparently generic products and suspected anti-competitive filings. The Government rejected the more radical proposal for a ‘two-stage’ system involving mandatory pre-enforcement searches. Likewise, proposals for formal opposition or observation procedures will not be taken forward, largely because of concerns about additional cost, delay and complexity. The little-used DF21 registered design search service is also set to disappear.
• Who benefits: Legitimate businesses, particularly online sellers, that have faced copycat registrations and spurious takedown notices.
• Who may not: Applicants whose legitimate filings are selected for scrutiny may face added cost, delay and objections. Third parties still have no route other than invalidation to challenge design registrations, and a fast-track invalidation process (which could offer a practical alternative to changes in law) is under consideration, but with no positive plan to implement it.
• Still unclear: The search criteria are still to come, and the response does not address the additional resources and tools that UKIPO examiners will need in order to carry out effective prior art searching (despite respondents calling for better, including AI-assisted, search tools). A ‘bad faith’ provision will inevitably involve complex considerations of law and practice, and needs significant further work before the Government decides whether to legislate at all.

2. Deferment

• Outcome: The UK will move to a statutory 30-month deferment period, aligning more closely with the EU and Hague systems. The period will run from the earliest of the priority or filing date. Importantly, some information about deferred applications is expected to become public, including the applicant and representative details and filing and priority dates. The design itself would remain confidential. However, prior-use protection will also be extended to deferred applications, protecting parties that innocently adopt a design while the earlier application remains secret.
• Who benefits: Businesses with long product lead times and those filing in several jurisdictions.
• Who may not: Third parties in fast-moving sectors, who face a longer period without knowing what has been filed. 

3. Graphical user interfaces and animated designs

• Outcome: The definitions of “design” and “product” will be amended so that animations and transitions can expressly be protected, strengthening the position for GUIs and animated designs, aligning the law with the UKIPO’s practice (see Designs Practice Note 1/26). The scope of rights is also set to be extended to creating, downloading, sharing or distributing media or software that records the design. The UKIPO will also explore accepting video and 3D file formats in due course – though this depends on the IPO's digital transformation programme, which has no set date.
• Who benefits: Technology, app and gaming businesses, and owners of designs that are vulnerable to digital copying.
• Who may not: Those who object to the protection of animations through design, due to concerns about blurring the line between design rights and copyright.

4. Computer-generated designs

• Outcome: The Government had indicated a preference for removing existing statutory provisions dealing with designs generated by a computer without a human designer. It has stepped back from this option for now, and chosen to retain the existing framework while monitoring AI use in the design sector and considering developments elsewhere in IP law and internationally.
• Who benefits: Designers who use AI tools, who avoid having to prove the extent of human involvement – at least for now.  For businesses integrating generative AI into product development, this postpones rather than resolves the underlying questions around authorship and entitlement.
• Who may not: Those who are concerned about AI-generated filings flooding the system, devaluing human authorship and crowding out human creators. 

5. Miscellaneous changes

• Outcome: Various procedural changes are on the horizon, including the adoption of a single two-month period for responding to objections, the power to object to matter prohibited by law, rectification of the register by the registrar, the removal of the facility to file physical design specimens, and the requirement for the provision of priority details. Whether filing a priority document will be mandatory or optional is still to be decided once the UK IPO joins the WIPO Digital Access Service (DAS) for designs.

6. Unregistered designs and copyright

• Outcome: The Government will continue to look at ways to simplify unregistered design.  It is no longer proposing to abolish UK unregistered design right while retaining supplementary unregistered design protection. Instead, it will investigate harmonising aspects of the two regimes, including qualification and duration. Critically, the Government has stated that it will not legislate on the overlap with copyright in the wake of WaterRower (see our case report, here) and will allow case law to develop on this point.
• Who benefits: Rights holders who rely on UK unregistered design rights.
• Who may not: SMEs who struggle with the complexity of the system, and those wishing to rely on copyright protection for industrial designs.
• Still unclear: The harmonised term for unregistered designs is undecided: a 10-year term was most popular, but an economic assessment will come first. The consolidation of rules concerning eligibility, spare parts, infringement, defences and visibility in use are all still under review. Given the number of variables at play, legislative reform is likely to be a much longer-term prospect.

7. Post-Brexit disclosure

• Outcome: A major Brexit-related disclosure problem may be addressed, at least in part. The Government intends to legislate so that first disclosure anywhere in the world (which comes to the attention of the relevant UK trade circles) can give rise to UK supplementary unregistered design right (SUDR) protection.
• Who benefits: Global businesses that trade in the UK, including UK businesses who prefer to launch their products at overseas trade fairs and fashion shows.
• Who may not: Those carrying out freedom-to-operate checks, who must now consider disclosures made worldwide – including SUDR held by businesses with no intention of trading in the UK.
• Still unclear: The Government will consider whether the expansion of SUDR should also be accompanied by a ‘grace period’ during which the protected design must be placed on the market in the UK, to avoid the right being lost. The stated aim is to preserve the benefit of SUDR for businesses who genuinely want to trade in the UK.

8. Criminal sanctions

• Outcome: There will be no new offence for infringing unregistered designs. The Government concluded that the evidence did not justify extending criminal sanctions to unregistered design infringement.
• Who will benefit: Legitimate businesses that design close to competitors’ products, who avoid the risk of criminal liability attaching to rights that are often uncertain in existence, ownership, duration and scope.
• Who may not: Small designers in sectors where copying is common and where criminal sanctions might have acted as a stronger deterrent. 

9. IPEC Small Claims Track

• Outcome: The Government sees a case for hearing straightforward, lower-value registered design claims in the IPEC’s Small Claims Track and will engage with stakeholders “in the coming months”. It remains to be seen whether the change will go ahead, and on what terms.
• Who benefits: SMEs and individual designers who could benefit from a cheaper enforcement route.
• Who may not: Defendants facing complex validity issues without being able to recover their costs.
   

What should businesses do now?

Most of the new measures will be legislated “when parliamentary time allows”, and no timetable has been given – so nothing is set to change immediately. Nevertheless, businesses with significant design portfolios should consider planning ahead by:

• Reviewing filing strategies in anticipation of selective novelty and individual-character examination.
• Reassessing deferment strategies, particularly where UK, EU and Hague filings form part of the same international launch programme.
• Reviewing protection for digital assets, including GUIs, animations and transitional interfaces, in light of the UK IPO's developing practice. For businesses operating in software, gaming, automotive interfaces and other digitally led sectors, this is likely to make UK design protection substantially more relevant.
• Avoiding sole reliance on copyright for 3-dimensional product designs. Whether such designs qualify as protectable ‘works of artistic craftsmanship’ will depend on the facts. In the absence of further guidance from the Courts, businesses should be aware that products without any obvious ‘artistic’ character may be denied protection.
• Monitoring disclosure strategies carefully. The Government's proposed reform of SUDR protection could have significant strategic implications for international product launches. If implemented as proposed, this should substantially reduce the importance of sequencing UK and overseas product launches purely to secure UK SUDR protection, although businesses should not assume that the future UK rule resolves the separate question of obtaining EU unregistered protection.
• Continuing to register commercially important designs. The Government's response does not eliminate the complexities and evidential issues associated with relying solely on unregistered rights.

The reforms represent one of the most substantial prospective changes to the UK designs system in years. The direction of travel is clear: preserving an accessible and comparatively inexpensive registration system, while making it better equipped to deal with abusive registrations, digital products, global product launches and modern enforcement.

Coming up: Spotlight on Design Reforms

In the coming weeks, we will be publishing a series of further updates with more in-depth analysis of each consultation topic. We will drill down on the Government’s proposals and how these might translate into new laws and procedures. We will look more closely at the practical implications of the proposed solutions, the unresolved questions, new opportunities, and the possible pitfalls. 

If you would like to discuss how these changes may affect your business, please get in touch.