The majority of the changes brought in by the new Act will come into force on 1 October this year, including the introduction of the new criminal offence for flagrant copying of UK or EU Community registered designs – which includes a possible jail sentence of up to ten years – in the course of business.
This change has been made to emphasise the gravity of copying registered designs, which can protect anything from a piece of furniture to an item of clothing, in line with trademark and copyright infringement.
This is a welcome addition to UK Design legislation, which up until now has been a little weak in terms of protecting design rights holders. The prospect of receiving a criminal sentence for intentional copying sends a clear message to potential perpetrators that falling foul of the law is taken seriously. Whilst the amount of actual sentences may turn out to be low, the prospect of being prosecuted will act as a clear deterrent.
Another key change revolves around appropriate ownership of a design. A commissioned design will be automatically owned by the designer and not the commissioner, as has been the previous case. If the commissioner wants to retain ownership, this must be contractually agreed.
The new act also implements provisions allowing patented products to be marked with a link to a website listing the patents that are relevant to the product.
This helps the process of marking patented products, and allows the relevant marking to be updated quickly, easily and cheaply when new patents are granted or when patents cease. Incomplete listing of relevant patents on a product can lead to a potential loss of damages recoverable in infringement, but for products covered by many tens or hundreds of patents this marking burden has become excessive.
Deliberate IP right infringement is an extremely serious matter and it is great that the law has been updated in a way that not only recognises this and makes it easy for IP right holders to mark their products appropriately, but also provides sufficient protection for unintentional copying.
Richard Worthington is head of the designs group at Withers & Rogers, one of the UKs leading firms of patent and trade mark attorneys.