UK: Webmarking of product designs to be introduced
30 November 2015, London
The UK Government has announced that it will introduce changes to UK designs legislation to provide registered design owners with the option to mark their products with a website address as a means of providing public notice of their rights.
As part of the UK Government’s design modernisation programme, the Government reviewed how registered design owners can mark their products so that they are able to enforce their rights more easily. Currently, owners of UK registered designs and registered Community designs have an option to mark their products with the word “registered” alongside the relevant registered design number(s) as a means of providing notice to third parties of their protected rights. Such notice ensures that anyone who infringes the design cannot later claim that they were unaware of the protected design, otherwise referred to as “innocent” infringement. In such cases of innocent infringement, the design owner is unable to claim damages, only an account of profits. Therefore, marking a product in this way (which is known as providing “constructive notice”) affords protection to owners as they are armed with the means of refuting a defence that any infringement was “innocent”. However, this mechanism of marking is burdensome; updating registration details (e.g., when design rights lapse or are revoked) requires re-marking of products which is time-consuming and expensive.
In light of this, the Government proposed changes to the relevant UK registered designs legislation  such that registered design owners would have the option to mark their product with the address of a website which links the product with the relevant registered design number(s) as an alternative way of providing constructive notice. This proposal is more attractive than the current scheme since companies are more likely to be able to organise changes to a website rather than to the tooling of a product. In addition, the costs involved in maintaining details of registered designs online are likely to be minimal.
In order to provide third parties with transparency and ease of access to the relevant information, the website should be accessible to the public free of charge. When the user clicks on or enters the marked link, the website should clearly associate the product with the registered design right number(s).
These proposed changes to allow webmarking of registered designs will be complimentary to the changes that have already been introduced for patent marking under the Intellectual Property Act 2014. The Government has taken on board the suggestion that a single website link associated with a product listing details of all the relevant patents and/or registered designs would be of significant value to companies. As regards unregistered designs, there is no provision under the relevant legislation  that provides for the marking of a product to prevent a third party from establishing a defence of innocent infringement (although it may nonetheless be prudent to do so, where practical, simply to alert would be infringers of the rights that subsist). Accordingly, the UK Government has no plans to introduce the concept of providing constructive notice for this type of unregistered right. Thus the proposed changes will apply to registered designs only.
 The relevant changes will be made to the Registered Designs Act 1949 and will also require minor amendments to the Community Designs Regulations 2005.
 Namely, the Copyright, Designs and Patents Act 1988, Part III.
Originally published in DesignWrites 7th Edition.