Simon Bennett, Intellectual property law partner at Fox Williams.
The new intellectual property law could be good news for brands that invest in designs and for designers who create them.
On the protection front, the new law will make unauthorised copying of registered designs a criminal offence if the copying is done knowingly and in the course of business. Registering designs is relatively inexpensive and quick and brands that fail to do so will be missing a trick.
The new law also provides for a voluntary, non-binding design opinions service on design infringement issues to be provided by the UK Intellectual Property Office. This will benefit SMEs for whom taking a potential infringer to court is expensive.
Fashion designers will be able to obtain international protection for their designs far more easily as the changes mean the UK will become part of an international design registration agreement.
An added benefit for designers is that the new law changes the position on ownership: commissioned designs will first be owned by the designer, rather than the commissioner as at present. Brands failing to have agreements with their designers to ensure that the brands own the IP in the designs will only have themselves to blame.
But it’s not all good news. One of the law’s drawbacks is that it will narrow the scope of protection for ‘trivial features’ of designs.
But who defines what is trivial? A stitch or colour may seem trivial to a judge but a carefully considered part of the whole by those who designed it.
More serious is the new defence to design infringement. An alleged infringer can defend himself if he can show he made serious preparations to produce the same or a similar design prior to the registration of the original design.
Unless Parliament rethinks this issue before the bill is enacted, it could inadvertently open the door to more copying if all that
an infringer has to do is produce documents to show he made such preparations. This can be a very difficult issue to prove and will make it more difficult for designers to enforce their rights.