In the fourth part of a series on the Intellectual Property Bill, IPCopy summarises the proposals affecting registered design rights and registered Community designs. [This post looks at the IP Bill as originally published. We will revisit the IP Bill at a later date to look at amendments introduced in its passage through Parliament.]
Clauses 5 through 13 of the Intellectual Property Bill relate to Registered Community design or Registered Designs.
Registered Community Designs
Clause 5 of the Bill falls under the IPO’s heading of “simplifying and improving design protection to help businesses (particularly SMEs)” and ensures that persons who use a registered Community design cannot be sued for infringement of associated copyright.
Clause 6 of the Bill is intended to clarify “the IP legal framework” and harmonises UK design law with those of the EU. This clause amends UK law such that the commissioner of a design will no longer be the owner. A consequence of this clause is that it will be important for commissioners of designs to make sure that ownership of a design that they commission is transferred to them (e.g. via the terms of the agreement under which they commission the work).
Clause 7 of the Bill relates to the right or prior use and allows 3rd parties who have, in good faith, been using a design that has subsequently been registered by someone to continue using that design. This is another clause that falls under the IPO’s heading of “simplifying and improving design protection”
Clause 8 falls under the IPO heading of “making the international and European IP system work better” and allows the UK to join the Hague international design registration system in our own right instead of only being a member by virtue of our EU membership.
Clause 9 falls under the IPO heading of “Other measures” and provides for online file inspection of design files.
Clause 10 (IPO heading: “simplifying and improving design protection”) will make it possible to appeal IPO decisions to an Appointed Person rather than the courts. This is similar to the situation in trade mark proceedings.
Clause 11 (IPO heading: “simplifying and improving design protection”) provides for an opinion service to allow parties to obtain a non-binding an impartial view from the IPO of the strength of their case in potential litigation situations. This is a useful proposal and could potentially help parties resolve disputes without resorting to litigation.
Clause 12 (“Other measures”) simplifies the process by which the IPO can change their design forms, amongst other things.
Clause 13 makes infringement of a registered design a criminal offence. As noted in our earlier post here, this provision has sparked a certain amount of discussion!
Mark Richardson 8 July 2013