UK design law changes come into force
Owners of existing UK and Community designs, and creators of new designs, should be aware of changes to the laws governing UK registered and unregistered designs which came into force on 1 October 2014.
This update was published in Legal Alert – October 2014
Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.
The changes include a new criminal offence. The main changes are as follows:
- Criminal offence: It will be a criminal offence to intentionally copy a UK or Community registered design, which the infringer knows is registered, in the course of a business without the owner's permission. The copy must be identical or differ from the original only in 'immaterial details'. It will be a defence if the infringer can show it reasonably believed the registration to be invalid (ie the design should never have been registered in the first place) or that it has not been infringed.
- New designs: If someone commissions a designer to create a design, intellectual property (IP) rights in the new designs will belong to the designer, not the commissioner, unless they agree otherwise.
- Criteria for unregistered Design Right: The criteria for when UK unregistered Design Right applies have changed. The new rules protect 'the shape or configuration (whether internal or external) of the whole or part of an article'. The effect is to stop owners of Design Right from asserting their rights over just one small – perhaps trivial – part of their design, rather than the overall design.
- Unregistered designs: These must still be 'original' (not commonplace), but the new law clarifies that they need only be original in the UK and EU (and a limited number of territories that have treaties with the UK in relation to IP rights).
- New defences: There are new defences allowing use of unregistered designs for non-commercial private purposes, experimental purposes, teaching and citation purposes, and using equipment on non-UK registered ships or planes which are temporarily in the UK.
- Continued use if same purpose as before registration: A person who was using a design (or had made serious and effective preparations to do so) before you registered your UK design, can continue to use that design despite your subsequent registration of it provided they only use it for the same purposes as they did before your registration. This brings UK registered design law into line with Community design law.
Further changes are expected, and we will update you as they become imminent.
Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.
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