Considering the impact of the IPO’s proposals in response to the consultation on designs framework

57 responses were submitted to the call for views ranging from designers, legal firms, legal trade bodies and small and medium size enterprises, while the 288 responses to the survey predominantly came from lone designers (58%). The government response covers the views of respondents and identifies the issues for further consideration, including areas for future consultation. Some of the commitments made include that the government will consider joining the World Intellectual Property Organization’s digital access system for designs as part of the IPO’s digital transformation program. In addition, the government will investigate how it can improve guidance for designers, potentially by providing more targeted guidance for specific sectors.

Why did the IPO call for views on opportunities to improve the designs system in the UK?

The underlying motivation for the IPO's design law consultation (see: LNB News 26/01/2022 35 and News Analysis: Considering the IPO’s consultation on designs framework and its impacts) is the government’s ambition for the UK to be the best place in the world to innovate. The government acknowledges that great design helps UK products to stand out, to demonstrate quality and to attract consumers in a competitive global marketplace. Design is also an economically important and growing sector of the UK economy.

Another trigger for the consultation was Brexit. Following the UK’s departure from the EU, the UK is no longer subject to EU law and no longer needs to harmonise with the European Union Intellectual Property Office (EUIPO). This gives the UK new flexibilities and opportunities to define the domestic design regime.

As the UK negotiates trade deals with international partners, the government wants to ensure the UK system maximises creativity, supports UK designers, encourages overseas investment in the UK and gives the UK a competitive edge.

What action is the IPO considering in response to the call for views?

Registered designs - search and examination

The government is going to consider further options for search and examination. It acknowledges the importance placed by customers on the speed and value of the UK designs registration system and the concern that pre-registration search and examination could delay the registration of designs. However, it also recognises that searching could increase the certainty of validity of design protection.

The report considers that a high-quality artificial intelligence (AI) tool could possibly be used by both the IPO and customers performing pre-application searches.

The government will also consider joining the World Intellectual Property Organization Digital Access Service (WIPO DAS) system (an electronic system allowing priority documents to be exchanged between participating IP offices). This will be done as part of the IPO’s digital transformation programme.

Simplifying the designs system

There is an acknowledgement that the designs system, with its overlapping forms of protection, is complex and that this can be problematic for those without legal representation. However, it is also recognised that the current regime offers flexibility in choosing how best to protect creations and designers do not want simplification to result in lower levels of protection.

The government will therefore investigate options to simplify the regime, in particular in relation to unregistered designs, and will review further the relationship between design and copyright law and the need for reform. It will also consider improved guidance for designers, in particular more targeted guidance for specific sectors. It will work with key stakeholders to reach designers who do not engage with government directly.

Disclosure of supplementary unregistered designs

The government recognises that there is currently uncertainty surrounding disclosure requirements for supplementary unregistered designs and whether designers can rely on simultaneous disclosure to obtain protection in both the UK and EU.

The government is considering this issue further and will seek additional stakeholder views and evidence on options to address the problem.

Future proofing for new technologies

The government has noted that users want the IPO to accept digital representations and to allow filings in additional formats. However, it has been noted that a lack of international harmonisation in this area could make global filings more complex.

The government will therefore consider this issue further and seek stakeholder input. More generally, it has agreed to keep the impact of technological changes on the designs system under review and will consider how it can ensure the designs system is flexible enough to support developments in technology. For example, the government response notes how some respondents raised interesting questions about blockchain and how it can help in proving ownership.

Deferment

The government response acknowledges that stakeholders would like a deferment provision but there are mixed views on how long the period should be. There is also a balance to be struck between the interests of designers and third parties in relation to the information to be published.

The government will consider options and will seek stakeholder views by consultation.

Enforcement

The government will consider whether there are measures that can be introduced to make enforcement of designs easier and cheaper for smaller design companies. For example, there were mixed views on whether registered design disputes should be introduced into the Intellectual Property Enterprise Court (IPEC) small claims track. There are also opposing views on criminal sanctions for registered designs and extending criminal sanctions to unregistered designs.

There will be further consultation with stakeholders and a review of evidence submitted before next steps are decided. In particular, the government wants to look at evidence regarding the deterrent effect and the problems businesses may face if the criminal regime is expanded to unregistered designs.

Would any of the IPO’s proposed actions result in significant changes to the UK designs regime?

At this stage, it is still unclear what concrete proposals will result from the consultation. The government has promised to consider many of the more complex issues more closely. However, to date, it has not given much indication of what, if anything, it will change and how. It is clear that the government needs to consult further with stakeholders and review the evidence surrounding some of the key issues.

Would these changes result in divergence from the EU designs regime?

Again, it is not clear at this stage. As mentioned above, one of the key drivers behind the consultation was Brexit and the opportunity, if desirable, to define the domestic design system differently from the EU designs regime.

However, it is interesting that the report does recognise a couple of areas (eg deferment and representation format) that diverging from other systems does complicate matters for multi-national filings. Some of the respondents had specifically noted that there are benefits to be gained from aligning the UK system with other jurisdictions, including the EU. We will have to wait to see what changes are actually implemented. For more information on design rights following Brexit, see Practice Note: Design rights before and after Brexit - comparison table.

This analysis was first published on LexisNexis.