UK design protection: upshot of consultation
Solutions must be found to simplifying the current complex system for design protection in the UK. Is the government’s response to its recent consultation the first step? We take a brief look at the responses to the consultation and what the government plans to do next.
Impetus for the consultation
Having left the EU, the UK government considers that there are new opportunities to ensure that the UK designs framework better encourages creativity and innovation. In January 2022, it launched a consultation seeing views on a number of issues arising from the current design protection landscape.
The government has now published a summary of those responses and set out its preliminary views on the way forward.
Registered designs – search and examination
The government asked whether there should be an overhaul of the registration process for obtaining a UK registered design, including introducing some form of substantive examination for design applications before grant. Unsurprisingly this revealed mixed views.
In its response, the government recognised the importance placed by businesses on the speed and value of the UK designs registration service, and concerns that pre-registration searching and examination could impact the time taken to register designs. But it also noted that searching could increase certainty of validity of design protection and help prevent anti-competitive filings. The government concluded that it will further consider the options for search and examination, seeking stakeholder views.
It is interesting that the government appears to be leaving the door open to the possibility of introducing substantive examination/searching for UK registered designs. Unless a truly effective means of searching for prior designs can be found (with the aid perhaps of AI tools), introducing substantive examination for UK registered designs might actually result in the worst of both worlds: a slower and more costly registration process, but without much improvement in the validity of the resulting designs.
Simplifying the UK design protection regime
The general view from respondents was that the different overlapping forms of design protection makes the UK system complex and that it should be simplified. The government acknowledged this and said it will investigate options to simplify the regime, particularly for unregistered designs. It will also consider the relationship between design and copyright, and the need for reform or guidance.
It is important that the government has at least acknowledged that the regime for protecting designs in the UK is too complex. This was arguably a problem before Brexit, but it’s certainly more so now given the addition of two further types of unregistered design right, sitting alongside the pre-existing UK unregistered design right. This makes it challenging to know with certainty what unregistered rights may or may not exist to protect a given design.
Simplification is certainly needed, most likely with the creation of a single new unregistered design right to replace the existing rights, incorporating their best features. Guidance on, or reform of, copyright law is also essential to allow a better understanding of what can and cannot be protected by copyright in the UK. This is an area that has been distinctly grey since the CJEU’s decision in Cofemel (C-683/17) in 2019, which is retained in UK law (for now at least). (This need for guidance was commented on by the judge in a recent unsuccessful strike-out action in Waterrower (UK) Ltd v Liking Ltd t/a Topiom [2022] EWHC 2084 (IPEC): discussed in our article, Design protection – iconic WaterRower debated in UK court.)
Disclosure of Supplementary Unregistered Designs
The consultation addressed another significant issue arising post-Brexit. This is the ongoing difficulty regarding the impact of where a design is first disclosed to the public on whether it will benefit either from Unregistered Community Design (UCD) protection in the EU or the new Supplementary Unregistered Design (SUD) protection in the UK.
The government recognised that there is currently uncertainty over the disclosure requirements including whether simultaneous disclosure is a viable option for obtaining both UCD and SUD protection. Although the government said it will consider the issue further and seek additional stakeholder views, perhaps this can only be satisfactorily resolved if both the UK and EU take a conciliatory stance.
Other issues
The government also sought input on a range of other issues, including the use of future technologies, the introduction of a deferment provision (generally considered desirable commercially, but with mixed views as to length) and criminal sanctions. In many of these areas, the government said it will consider the options for the future.
Our thoughts
There are undoubtedly a number of difficult issues with the current design protection landscape in the UK and the task of simplifying the regime to address these issues is by no means straightforward. Any solutions must grapple with legal, policy and even political considerations.
The government’s response to the views of the design industry might politely be described as equivocal. It gives nothing away about what it might do about the complex issues nor what its next steps might be, other than further consultation with stakeholders at some point. It is, however, to be welcomed that the government is looking at the design protection regime in the UK and hopefully now appreciates in more detail the challenges that lie ahead.
