Designers can shape reform of ‘overly complex’ UK IP law

The IPO is inviting views on reforms to the designs system in the UK in a consultation exercise open to 25 March 2022. Brexit “gives the UK new flexibilities and opportunities to define the domestic design regime” in order to “give the UK a competitive edge”, it said.

Florian Traub and Gill Dennis of Pinsent Masons said the questions posed in the IPO’s paper hint at potentially wide-ranging reforms to follow.

Traub said: “Designs are very likely to become the first intellectual property right where the law in the UK and EU will truly diverge following Brexit. The law on designs is currently overly complex. In the UK alone four different types of overlapping design protection are available. This creates barriers in effectively protecting creations for designers. The consultation offers a chance to get your views heard, and to lobby for a modernised model.”

Dennis said: “Because of its complexity, design protection is often misunderstood by designers and lesser used than other IP rights. This consultation aims to address that with what could be a significant overhaul of the system, helping businesses to leverage the strategic and commercial value of their designs. The breadth of the consultation suggests that the government means business around creating a national designs regime that works better for designers.”

As well as inviting views on the potential simplification of the four different types of overlapping design protection in the UK – registered design, UK unregistered design right, supplementary unregistered design and continuing unregistered design – the IPO is exploring how it might address the fact that, now the UK has left the EU, the place where the design is first disclosed has become critical in determining whether the design is  protected as either a supplementary unregistered design in the UK or an unregistered community design in the EU...

Dennis said: “Designers will welcome the news that the government plans to tackle the dilemma for design businesses around the availability of supplementary unregistered design protection in the UK and unregistered Community design protection in the EU. Post-Brexit, these rights are mutually exclusive and dependent upon the territory in which the design is first disclosed. This is a headache for designers wanting design protection right across Europe, including the UK. At the moment, they have to choose which market is most business critical for them.”

Businesses and other stakeholders are also invited to share their opinions on whether the current complexity around overlapping copyright and design protection inhibits best use of the designs system, while the IPO is also seeking views on the potential harmonisation of the requirements for supplementary unregistered design and UK unregistered design right protection.

Traub said: “The current overlap of copyright and design protection is an area which has been subject to somewhat controversial judgments of the Court of Justice of the European Union (CJEU) before the end of Brexit transition period. This is an area where I would expect the law in the UK to differ from the position in the EU going forward.”

Other options for reform that appear to be under consideration include the reintroduction of novelty searching for registered designs and the extension of existing law as it applies to designs created by artificial intelligence (AI) systems. The law currently enables AI-created designs to be protected as a registered design or via UK unregistered design rights as computer generated works. The IPO is exploring whether to enable AI-created designs to benefit from supplementary unregistered design protection too.

The IPO’s call for views further seeks designers’ insight into the barriers they face in enforcing design rights in the UK and how enforcement could be made easier, as well as their opinions on whether criminal penalties should be introduced for unregistered design infringement.