August 15, 2022
In January 2022, the IPO announced that it was conducting a review of the designs system and had developed a survey seeking views from anyone with an interest in designs and how they are protected.
The IPO also published a call for views to allow respondents to give more in-depth information on designs issues.
The IPO wanted to hear about what works well and what could work better to assist the Government in considering whether changes need to be made to the UK designs system now that the UK has left the EU. In particular, the IPO wanted to know whether the designs system is too complex and whether it is adaptable to new technologies. It also wanted to know how it could improve the user-experience, increase the value of IP rights and ensure broader accessibility to design protection.
The Government received 57 responses to the call for views and 288 responses to the survey. A number of people from Wiggin were involved in the response on behalf of AIPPI.
Responses to the call for views were received from designers, design consultants, academics, legal firms and professionals, legal trade bodies and professional bodies, other trade bodies, small and medium size enterprises (SMEs) and large enterprises.
Responses to the survey came predominantly from lone designers (58%) and small businesses employing fewer than ten people (22%). This provided additional insight into how these groups use design protection in the UK.
The Government responded as follows:
- Registered designs – search and examination: the Government has acknowledged the importance placed by respondents on the speed and value of the UK designs registration service. It has also recognised concerns that pre-registration search and examination can impact the time taken to register designs. However, it notes that searching can increase certainty of validity of design protection and help counter anti-competitive filings. The Government will further consider options for search and examination and stakeholder views will be sought at consultation. The Government will also give consideration to joining the WIPO DAS system for designs as part of the IPO’s digital transformation programme;
- Simplifying the designs process: the Government has acknowledged that the UK designs system is complex and that this can be a problem for customers without legal representation. The Government will investigate options to simplify the regime, in particular unregistered designs. The Government will also consider the relationship between design and copyright law, and the need for reform or guidance. The Government will consider how it can improve guidance for designers and options such as providing more targeted guidance for specific sectors and will work with key stakeholders to reach designers who do not engage with the Government directly.
- Disclosure of supplementary unregistered designs: The Government has recognised that there is currently uncertainty amongst users of the system about disclosure requirements for supplementary unregistered designs to subsist, including uncertainty in relation to simultaneous disclosure (SUD). The fashion sector expressed particular concern with the current situation. The Government will consider the issue further and seek additional stakeholder views and evidence on options to address the problems raised;
- Future technologies: The Government has recognised that as technology develops, stakeholders want ways that designs can be represented to be updated and that allowing additional file formats could be useful to customers. It has also recognised that this could make filing in multiple territories complex. It will therefore consider this issue further and seek further stakeholder input at consultation. More generally, the Government has recognised that as new technologies are adopted by society there may be an impact on designers. It will keep the impact of technological changes on the designs system under review and consider how to ensure the designs system is flexible enough to support developments in technology;
- Deferment: The Government has acknowledged that stakeholders would like a deferment provision and recognises the need to balance the interests of designers and third parties on this issue. It will consider options for a deferment provision and stakeholder views will be sought by consultation.
- Enforcement: The Government has recognised that the complexity and costs of bringing legal action can be problematic for smaller design companies who want to enforce their rights. It will therefore consider whether there are measures which can be introduced to make enforcement easier for all rights owners. The Government recognises that there are opposing views on the existing criminal sanctions for registered designs as well as on any extension of criminal sanctions to unregistered designs. Some respondents argued that they are a deterrent to potential infringers, while others considered that extending them to unregistered designs would cause problems for business. However, the Government says that no firm evidence has been provided to support these positions: it has recognised that this is an issue of significant interest to some in the designs sector and will therefore ask stakeholders for further evidence at consultation before deciding on next steps.
To read the consultation outcome in full, click here.