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Tahir's Tips: Changes to UK Design Law

Tahir Basheer
29 August 2014

Design rights are a key piece of intellectual property in the fashion industry. When fashion brands compete against similar products, designs are one of the differentiators that give products character. Take the classic Chanel quilt bag – there are hundreds of small black handbags available but what gives Chanel handbags value, aside from the quality of course, is the timeless design. The law protects these designs as long as they are original and not commonplace and as a result prevents others from releasing copycats.

Design rights can be registered or, as previously mentioned on The Industry, unregistered. New legislation is coming into force from the 1st October 2014 that will make a number of changes to how these rights arise and are enforced. Most notably, individual designers who create distinctive designs will have more default rights while those that intentionally copy others will face the prospect of criminal charges.

 

Ownership of Designs

 

Under the new law, designers will be the default owners of designs they have produced that they have been commissioned for. That means that, in the absence of a contract, the designer will own the rights to that design. This brings UK law into line with EU law.

This is obviously a big plus for individual designers (previously the commissioner of the designs owned the designs). For those commissioning designs it will therefore be important to have a written agreement in place with the designer whereby the designer assigns the rights in the designs to the commissioning party and allows the commissioning party to exploit those rights.

 

Registered Designs

 

Criminal offences and financial consequences of copying registered designs:

It will now be an offence for a person to intentionally copy a registered design in the course of business and without permission. Copying will occur when a product is made exactly to the design of the registered design or with features that only differ in immaterial details.

 

The offence requires the infringer to:

1. Have known or had reason to believe that the design was a registered design; or

2. That the registered design had been intentionally copied.

 

There are defences for those who can show:

1. That they had a reasonable belief that the registration of the design in question was invalid; or

2. That they had a reasonable belief that they did not infringe it.

 

This means that designers should think about registering their designs as the new legislation will give them more protection and also anyone attempting to recreate a particular design should think carefully before putting their product on the market and should carry out the relevant registered design searches in advance. If there is any doubt the designer should seek legal advice in advance of using the designs. Also those commissioning the designs should ensure they have robust warranties and indemnities in their agreements with the designers so that they have protection should the designs be infringing.

The offence carries the prospect of a fine or prison sentence, however, as is the case with trademark and copyright infringements – which already allow criminal sanctions – it is anticipated that only the most deliberate and repeated infringements will face criminal charges.

Innocent individuals who had no knowledge or reason to believe the infringed design was registered can now be made to account for the profit they have made from their product to the owner of the registered design. The current law did not allow for any financial remedies against innocent infringers.

 

Unregistered Designs

 

The definition of an unregistered design:

Design now means the shape or configuration of the whole or part of an article rather than “any aspect” of the shape or configurations. This is aimed at limiting the protection for trivial features of designs, by making sure that protection does not extend to any aspect of an article. There is also further clarification of the geographical scope of the word requirement for the design to be original.

 

Defences for unregistered design right infringements:

The new legislation gives certain defences to those who have technically infringed an unregistered design right e.g. if they have acted in a private capacity, for the purpose of teaching (if use is fair) or if they have acted for an ‘experimental purpose’.

 

These changes underline the importance of design rights as a key asset in any creative business. They seek to reward and incentivise designers who create new and innovative designs while also penalising those who seek to unfairly profit from the hard work of others. Legitimate designers with products that are inspired by existing designs should think carefully before releasing any products and incurring criminal liability. A number of the changes bring the UK in line with EU standards which will help brands to manage their rights more effectively.

The Intellectual Property Act 2014 will come into force in the UK on the 1st October 2014.

 

For more information on Industry  member, Tahir  visit his personal partner page on the Sheridans website. To contact him directly, visit The Industry Directory, email [email protected] or telephone 020 7079 0103. 

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