Last week, the UCL Institute of Brand and Innovation Law (IBIL) held a stake holder event to discuss the proposed reforms set out UK Government’s latest Consultation on changes to the UK design framework. IBIL also submitted its response to the Consultation.
The UK Government launch its Consultation on the 4th of September. This expanded upon, and added to, some of the issues raised in the previous consultation ‘Reviewing the Designs Framework’ which took place in 2022.
The complexity of UK design law is a well-known and longstanding issue. In addition to the protection afforded by registered designs, there are currently two forms of unregistered design rights, alongside the protection afforded to graphic and product designs via copyright law and also the possibility of securing trade mark protection too. This has led to calls, including from groups representing designers, for simplification. Also, whilst the UK design registration system has been commended for its speed and affordability, the lack of thorough pre-grant examination has resulted in a significant number of obviously invalid and ‘bad faith’ registrations, which are then used to hinder the activities of good faith actors. The gives rise to the question how best to balance between speed and flexibility on one hand, and quality and enforceability on the other. As with other areas of intellectual property law, there are also questions about how AI-generated designs be treated.
The Consultation document sets out a number of proposals aiming ‘to create a designs system fit for the future… and better able to support UK creativity and innovation in a rapidly evolving digital landscape.’ These include increasing the grounds on which applications may be challenged pre- and post- grant to prevent anti-competitive filings, reviewing whether wholly AI-generated designs should be eligible for design protection and introducing criminal sanctions for unregistered design infringement. The Consultation also considers the overlap between design rights and the protection available under copyright law.
- Find out more about the consultation here.
IBIL has engaged with this Consultation in two ways. Firstly, it hosted an event which brought together a panel of experts to consider some of the options for change. Secondly, it submitted a formal response to the Consultation, identifying which paths UK design law should take, and why.
The event, ‘A New Dawn for UK Design Law?’ brought together key stakeholders including legal practitioners, judges, design-right holders and academics to discuss, question and advise on the issues raised in the Consultation.
The expert panel, chaired by David Stone, (Partner at White & Case LLP and Deputy High Court Judge) comprised:
- Jeff Lloyd, Deputy Director Trade Marks and Designs Policy, UKIPO
- Jane Cornwell, Senior Lecturer in IP Law, University of Edinburgh
- Nina O’Sullivan, Partner, Mishcon de Reya LLP.
Each presented on a different aspect of the Consultation, with the presentations being followed by a short panel discussion and then questions from the room. The event highlighted a number of important points about the Consultation and current state of design law.
You can watch a recording of the event here.
IBIL also submitted a response to the Consultation, addressing many of the core topics that were raised. In terms of the options aimed at addressing anti-competitive and bad-faith filings (e.g. applicants knowingly registering others’ designs and those clearly in the public domain, or refiling for designs that had already invalidated or expired), IBIL supported plans for introducing additional pre-grant checks on ‘suspicious’ applications, as well as expanded grounds on who and when registrations can be challenged. However, this was premised that this should be an interim action on the path back towards full pre-grant search and examination of all applications, (as was previously undertaken pre-2006). In the meantime, the IPO should investigate whether existing powers might be better utilised, such as the ability to refuse an application which is contrary to public policy (arguing that a deliberate anti-competitive filing should fall into this category).
The IBIL response also highlighted the importance of the UKIPO having the power to challenge the validity of a design at its own volition, which might be prompted by third-party observations. Patent and trade mark law already grants similar powers. The response argued that the current system places too much of a burden of policing the register on third parties affected by invalid design registrations, whilst bad faith actors face very little, if any, deterrence.
In terms of the existing protection of computer-generated designs, it was argued that the preferred option was to remove the existing protection for computer-generated designs without a human author. This is because the justification for design law (as with many other IP rights) is to encourage and reward human creators and inventors who create and invent which is beneficial for society. If there is no human creator, then any justification for legal protection of ‘outputs’ falls away. Removing this provision should also be re-introducing the requirement for applicants to set out their entitlement to design and naming the (human) designer/s.
In terms of the simplification of unregistered designs, the response submitted that certain aspects of the UK unregistered design right (UK UDR) and supplementary unregistered design right (SUD) could be harmonised in the short-term, the ultimate solution required a wholesale re-examination of what should be protectable as unregistered designs. Although many designs will enjoy protection under both schemes, SUD protects graphic works and surface decoration (specifically excluded from UK UDR because of the likely duplication with copyright protection), while at the other extreme, UK UDR protects industrial designs, which are specifically excluded by SUD because the appearance of all of the features depicted are ‘solely dictated by technical function’. While proceeding on the basis of one of the existing rights, rather than the other, would maximise the simplicity of the system, this would mean that certain categories of design would lose protection altogether. Therefore, the UK should be aiming for optimum protection for unregistered designs, which might fall short of the proposed ‘maximum protection’ regime proposed and equally might be more complex than the ‘maximum simplification’ option. It was agreed that the UK should be looking to offer a single unregistered design right, but its nature and scope require proper consideration, which also includes consideration of the overlap and relationship with copyright, which is yet to be explored fully.
Finally, the IBIL response rejected proposals for the introduction of criminal sanctions for deliberate infringement of unregistered designs. Although groups representing designers have lobbied hard for this for many years, the Government was right to reject previously that a new offence should be introduced. Not only is current system of unregistered design protection inherent complex, making it very tricky for a non-expert court to determine criminal liability, but there is little evidence that the criminal sanctions in place for registered designs and other IP rights are much-used, nor that local authorities (via Trading Standards Officers (TSOs)) would intervene in the ‘David versus Goliath’ type of disputes which the lobbyists have in their sights. Typically, TSOs currently use existing sanctions against the sellers of counterfeit goods, meaning criminal law and public funds are being used to enforce the private rights of the ‘Apples’ and ‘Samsungs’ of the world, who are the best positioned – both in terms of understanding of their rights and resources – to look after themselves.
However, the proposal to allow infringement claims relating to registered designs to be brought within the IPEC small claims track (SCT), was supported as this court has proved useful in determining other IP dispute, particularly involving SMEs, micro-businesses and individuals.
Overall, it is clear that UK design law is a complicated and nuanced area of law that requires careful consideration at this time of proposed reform. Now that the consultation period has closed, we shall await the Government’s proposals, expected in 2026, with interest!
Read the IBIL full Response here.
