New UK legislation to amend design right law


Author: Eddie Powell


This article is taken from the latest edition of Fladgate’s Fashion Update. Please email the marketing team on marketing@fladgate.com to be added to the mailing list for future updates.

The Intellectual Property Act 2014 has now been passed and should come into force in stages, commencing 1 October 2014. Some of its provisions are relevant to the fashion industry.

The law in this area is far from being “user friendly”, with four types of protection for designs: UK or the entire EU; registered or unregistered. The UK’s unregistered system differs from the EU’s, meaning that fashion copying cases are frequently mired in several different tests. Unfortunately, this UK-only tinkering has not addressed these big issues.

The key changes are:

  • infringement of a design which has been registered (either in the UK or in the EU registry) will be a criminal offence. This is designed to catch those engaged in deliberate counterfeiting of designs. The offence requires that the copying is exact or differing only in “immaterial details” and that the copier knew or had reason to believe that the design was registered;
  • a minor change is made to the test for infringement of a UK unregistered design; where previously a design would be infringed if “any aspect” of the design was reproduced, now the infringer must reproduce the design as a whole;
  • a designer of a work which is covered by UK design registration will now own the IP in the design, even if he has been commissioned (i.e. contracted) to make the design by someone else. In practice, this brings the UK rules for designs into line with copyright and the position for EU design rights, but it reinforces the need for anyone who uses contract or freelance designers to use contract terms which assign all the IP from the designer to the person commissioning the design. Note that this does not apply to employed staff, whose designs made in the course of their normal duties will always belong to the employer; and
  • design disputes can be referred to the UK Intellectual Property Office for a non binding opinion. This is aimed at helping parties who have technical arguments about whether a design is infringed, or about the validity of a right, settle the matter without expensive and time-consuming court battles.

Eddie Powell, Partner, Fladgate LLP (epowell@fladgate.com)

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