Following the second reading of the Intellectual Property Bill in the House of Commons on Monday (20th January), David Willetts (Con)(Hampshire), the Minister for Universities and Science, has proposed some amendments to the Bill. The proposal includes amendments to Clause 13 that relates to criminal sanctions for copying a registered design.
These amendments on quick review look promising and appear to bring the provision closer into line with the explanatory notes to the Bill. A tracked changes copy of the proposal is below but the amendments basically introduce the fact the design has to be intentionally copied and remove the “substantially to the design” wording.
Seeing as there seems to be little chance of Clause 13 being deleted, the proposed amendments appear to be the next best thing. Hoepfully, the calls from some parties for the prosivions of Clause 13 to be extended to unregistered design rights will be resisted!
[Update: the Committee stage of proceedings has been set for 28th-30th January 2014 – see here]
“35ZA Offence of unauthorised copying etc. of design in course of business
(1)A person commits an offence if—
(a)in the course of a business, the person intentionally copies a registered design
(i) exactly to that design, or
(ii) with features that differ only in immaterial details from that design
so as to make a product exactly or substantially to that design,
(b) the person does so—
(i)knowing, or having reason to believe, that the design is a registered design, and
(ii)without the consent of the registered proprietor of the design.
(2) Subsection (3) applies in relation to a product where a registered design has been intentionally copied so as to make the product
exactly or substantially to the design
(a) exactly to the design, or
(b) with features that differ only in immaterial details from the design.
(3)A person commits an offence if—
(a)in the course of a business, the person offers, puts on the market, imports, exports or uses the product, or stocks it for one or more of those purposes,
(b)the person does so without the consent of the registered proprietor of the design, and
(c)the person does so knowing, or having reason to believe, that—
(i) a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly
or substantially to the designto the design or with features that differ only in immaterial details from the design, and
(ii)the design is a registered design.
(4)It is a defence for a person charged with an offence under this section to show that the person reasonably believed that the registration of the design was invalid.
The definitions of Relevant article and Relevant product have also been amended under this proposal to read:
(2)“Relevant product” means a product which is made exactly or
substantially to a registered designto a registered design, or with features that differ only in immaterial details from a registered design by copying that design intentionally.
(3)“Relevant article” means an article which is specifically designed or adapted for making copies of a registered design intentionally.
Mark Richardson 22 January 2014