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IP Federation position on unregistered designs and the IP Bill

Keltie LLP

K2 IP Limited

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Parliamentary copyright images are reproduced with the permission of Parliament

Parliamentary copyright images are reproduced with the permission of Parliament

The Intellectual Property Bill is still awaiting a date for the Report stage in the House of Commons. One of the parts of the Bill that got a lot a discussion time was, of course, Clause 13 which introduces criminal sanctions for the copying of registered designs.

One point of discussion in relation to Clause 13 was its possible expansion to include unregistered design rights. This is something that ACID (Anti-copying in Design) in particular is keen to see happen. IPcopy would prefer that Clause 13 wasn’t in the Intellectual Property Bill at all but the registered design sanctions of the clause appear to be here to stay. However, extending the clause to cover unregistered designs would, in this ipcopywriter’s opinion, be a disaster.

Recently, the IP Federation has issued a policy paper on this issue and they have the following to say on the matter:

The IP Federation does not support the introduction of criminal sanctions for any aspect of design right infringement and fully supports the IP Minister in opposing the introduction of criminal sanctions for copying of UDRs. The fundamental problem with UDR is that third parties cannot know with certainty whether any particular design is or has ever been subject to UDR. This, coupled with the fact that the term is uncertain and that a legitimate right to use the design in question may exist, makes criminal sanctions wholly inappropriate. If criminal sanctions are introduced, the effect of this will be that businesses will err on the side of caution and refrain from bringing legitimate products to the market. This will stifle innovation in the UK and reduce legitimate choice for UK consumers.

The IP Federation has produced a policy paper on the subject which can be accessed here. IPcopy understands that this policy paper has been sent to the House of Commons Public Bill Committee for the Intellectual Property Bill 2013–14 and a number of Members of Parliament.

IPcopy concurs with the arguments presented in the IP Federation policy paper. Indeed, having read those arguments IPcopy wonders how anyone could really believe that extending Clause 13 to cover unregistered design rights could ever work!

In addition to the points raised in the policy paper IPcopy notes that it can be extremely difficult to determine whether unregistered design rights subsist in a design. As an example consider  Sealed Air Limited v (1) Sharp Interpack Limited and (2) Sharp Aylesham Limited (*) where UK design right was found to subsist in feature C (shown in yellow) of the punnet below

Punnet

IPcopy fails to see how including unregistered design rights into Clause 13 could ever hope to bring certainty to businesses. We therefore hope that the IP Minister continues to oppose their introduction into the IP Bill.
Mark Richardson 25 February 2014
* With thanks to Jan Vleck for bringing this case to IPcopy’s attention

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