Consultation outcome

Call for views on designs

Updated 12 July 2022

Introduction

An effective intellectual property (IP) system is vital to the government’s ambition for the UK to be the best place in the world to innovate. Great design helps UK products stand out, demonstrate quality, and find consumers in a competitive global marketplace.

In 2018 the Design Council (PDF,4.4 MB) reported that the design economy generated £85.2bn in gross value added (GVA) to the UK in 2016, equivalent to 7% of UK GVA. This demonstrates the importance of designs to the United Kingdom both now and in the future.

The Intellectual Property Office (IPO) is the government agency responsible for ensuring the designs framework enables rights holders to protect designs and enforce their rights. We want the IP system to be responsive to the changing needs of UK innovators, creators, businesses and consumers. As such, the IPO is carrying out a review to ensure the UK’s domestic designs framework is fit for the future. This will allow IP to continue incentivising innovation and contribute to the post-pandemic recovery as the UK builds back better.

Following the UK’s departure from the European Union (EU), the UK is no longer subject to EU law. There is also no longer a need for harmonisation with the European Union Intellectual Property Office (EUIPO). This gives the UK new flexibilities and opportunities to define the domestic design regime. As we negotiate trade deals with international partners, we want to ensure the UK system supports UK designers and encourages overseas investment in the UK. This will give the UK a competitive edge and allow designers to get the most from new opportunities.

This call for views seeks views on opportunities to improve the designs system in the UK. We seek evidence on the potential to improve the designs systems’ contribution to UK economic growth, and to inform decisions on legislative action. We welcome responses from individual designers, small and large businesses, legal professionals, rights holders, and all interested parties.

Data protection

A summary of responses to this consultation will be published on GOV.UK. The government considers it important in the interests of transparency that the public can see who has responded to government consultations and what their views are.

By responding to this consultation, you acknowledge that your response, along with your name and/or organisation may be made public when a response to the consultation is published in accordance with the access to information regimes. These are primarily the Freedom of Information Act 2000 (FOIA), the Data Protection Act 2018 (DPA), the UK General Data Protection Regulation (UK GDPR) and the Environmental Information Regulations 2004 (EIR).

Additionally, information provided in response to this consultation, including personal information or commercially sensitive information, may be made available to the public on request in accordance with the requirements of FOIA and EIR.

If you wish to highlight that information is confidential or sensitive, please advise us in writing when you provide your response. If there is a request to make any confidential information publicly available, we will consider the request according to the appropriate legislation. We will treat each request individually and in line with any request to maintain confidentiality.

The government may also publish consultation responses in response to any FOIA/EIR requests on GOV.UK.

Please read the privacy statement and privacy notice for consultations for more information.

New opportunities

Now that we have left the EU, we want your views on the opportunities this offers. The UK Innovation Strategy: leading the future by creating it sets out our long-term plan for delivering innovation-led growth. Its primary aim is to boost private sector investment across the whole of the UK.

This call for views sets out some specific aspects of the designs framework which we are keen to explore in this context. We want to set the right framework for design protection and seek views on how to achieve this. We welcome input from all designers and users of the system on changes which could be made to the designs framework. This will ensure the system continues to meet the needs of those who use it to protect their creativity and innovation.

Registered designs - search and examination

In the UK, you can protect a design that “is new and has individual character”. Following changes to the law in 2006, the IPO does not check whether a design meets these requirements before allowing registration. This was done to harmonise practice with the EUIPO. It means that the onus is on applicants to consider novelty and individual character requirements before they apply. Competitors can apply to have a design invalidated if they believe a registered design does not meet these requirements.

Since then, there have been many changes affecting the designs sector. These include increased use of online platforms, a more global marketplace and improved search technology. Further, as rights granted by the EUIPO no longer apply to the UK, there is no longer a need for harmonisation. With this in mind, we seek views on whether the UK should reintroduce novelty searching, as well as a corresponding examination on novelty and individual character.

A search would likely include available registered designs databases and internet searching. Artificial Intelligence (AI) tools could be used to assist the search examiner. In the future, searches could be conducted largely by AI systems. In this case, there would be a range of technical and legal issues to consider.

A pre-application AI tool could also be introduced and could be similar in function to the recently introduced Trade Mark pre-apply service. This would assist applicants in identifying relevant registered designs before filing. It would also help applicants improve their chances of successfully registering a design.

Alternatively, the search could be limited to exact matches only. In this case, the individual character of a design would not be considered. Here, only designs that are identical to an existing design would be objected to.

A further alternative to carrying out novelty searching on all applications would be introduction of a two-tier registration system. Here applications would be filed and examined in accordance with current legal requirements. Then, if the rights holder wanted to enforce their design, they would need to request a full search for novelty and individual character. Enforcement could include any attempt to stop others selling a product on third party e-commerce websites. We are aware that IP Australia has a similar process for enforcement.

Novelty searching would be especially useful in helping identify and prevent anti-competitive registrations. These are registrations where pre-existing designs are deliberately registered and then used to stop the legitimate business activities of the original designer. However, there are other ways in which such applications could be dealt with, for example by introducing a bad faith provision for designs. This would allow the registrar to object to these kinds of filings on that basis. However, it may be difficult to provide evidence that a third party has acted in bad faith which could reduce the usefulness of this provision. We would like your views on the merits, or otherwise, of a bad faith provision.

The effects of anti-competitive applications could also be mitigated through the introduction of an “opposition period”. Here designs would be published before registration, enabling third parties to oppose or comment on a design. Opposition to registration could occur on the grounds set out in the Registered Designs Act. If no objections were raised in this timeframe, the design would be automatically registered at the end of the opposition period.

However, all these changes would increase the registration time and might involve higher application fees. There could also be unforeseen effects on other areas of the registered designs framework.

Questions

1. Do you have views on whether the IPO should change examination practice for designs? Do you think it would be useful to introduce any of the options outlined? These include prior art searching, a two-tier system, use of AI tools, bad faith and opposition periods. Are there other options not outlined?

Simplifying the designs system

There are currently four different types of overlapping design protection in the UK. They are:

• registered designs,
• supplementary unregistered design,
• continuing unregistered design and,
• UK unregistered design right (“design right”)

A registered design protects the 2D and 3D appearance of the whole or part of a product resulting from a number of features. These include lines, contours, shape, texture and ornamentation. Protection rewards investment in the creative process and allows the owner of the design to control its use for up to 25 years.

The supplementary unregistered design was created when the UK left the EU. This provided the same scope of protection in the UK as had previously been given by the unregistered Community design. It provides shorter term protection without the burden of registration formalities. This benefits sectors which produce large numbers of designs with a short market life. It protects the 2D and 3D appearance of a product for 3 years from when the product is first disclosed in the UK.

The continuing unregistered designs provides UK protection for products protected in the UK as unregistered Community designs before 1 January 2021. They exist in the UK for what remained of their existing three-year term and are provided for in the Withdrawal Agreement. As we are bound by the Withdrawal Agreement, changes are not being considering to continuing unregistered designs as part of this call for views.

The UK unregistered design right protects the design of the internal or external shape or configuration of the whole or part of an article. It does not protect surface decoration. Protection lasts for the shorter of 15 years from when the design was first made or recorded in a design document, or 10 years from when it was first sold.

In addition to design protection, a product may benefit from copyright protection. This would be the case when the product is considered an original artistic work within copyright law. Copyright in original artistic works lasts for the life of the creator, plus 70 years.

Overlapping rights

Protection of designs in their broadest sense is complex. A product may be protected by a number of different overlapping forms of design protection and copyright.

These different IP rights protect different aspects of a product. They also have different qualification requirements, terms of protection, restricted acts, exceptions, and limitations.

The extent to which copyright protects designs – in particular which designs are considered original “works of artistic craftsmanship” – is not completely clear. When copyright applies to a design it will be protected for the lifetime of its designer plus 70 years. The scope of copyright protection is also different to designs, and they are subject to different exceptions.

The application of copyright to designs could allow some designs to gain longer protection than was originally envisaged in legislation. Designers may need to consider case law to determine whether their products are protected by copyright, design rights or both. This may not always be easy, particularly for items which are primarily functional rather than aesthetic. While some products will benefit from being eligible for both copyright and design protection, a clearer distinction between them would simplify the system.

The complexity of the system may cause problems to designers who lack legal representation. The lack of clarity about how a product is protected can impact competitors assessing their freedom to operate. We seek views on where the current system inhibits best use of designs. The government is keen to ensure a balanced system which encourages investment in design in a competitive market. Simplification of the system or a reduction in the different types of unregistered rights available may be one way to achieve this.

Differences between unregistered design rights

The creation of the supplementary unregistered design alongside UK unregistered design right means there are two forms of unregistered design protection available in the UK. However, there are areas of inconsistency between these rights. These include spare parts exceptions and qualification requirements. While the supplementary unregistered design does not provide for an exception to designs protection for spare parts, both design right and registered designs do. Similarly, the qualification requirements are different for both the unregistered rights:

• for the supplementary unregistered design, the right exists when a product is first disclosed. There is no residency requirement
• for design right, there’s a need to meet a residence qualification

Moving to a disclosure requirement or a residency requirement for both these rights would simplify the system. Similarly, extending the spare parts exemption to supplementary unregistered design supports the right to repair agenda and increases the lifespan of products. This contributes to the government’s commitment to achieving net zero by 2050.

However, there may be benefits in retaining differences between these rights. We are keen to hear from users what the pros and cons of harmonising these aspects, or retaining the status quo are. We are also interested in understanding if there are other differences between unregistered designs which need addressing, or provide particular benefits to you.

Definitions

Another area we would like your views on is in relation to certain definitions contained within the Registered Designs Act. For example, the law sets out that “get-up” is considered a product which can be protected as a design. However, there is no definition of what this term means. This can cause difficulties when examiners consider the validity of an application for the “get-up” of a product. We are seeking your views on what you understand “get-up” to mean and whether it would be helpful for the government to produce guidance in this area.

We are also interested in your views on whether other terms in the Registered Designs Act are unclear and would benefit from clarification or guidance.

Disclosure of supplementary unregistered designs

The UK’s departure from the EU has resulted in changes to the designs landscape. One consequence of this is that a product is now only protected in the territory in which it is first disclosed:

• as a supplementary unregistered design in the UK, or;
• as an unregistered community design in the EU,

The lack of an agreement with the EU to recognise disclosure reciprocally is a cause of concern to some businesses. Businesses which rely on unregistered designs need to choose where to disclose and protect a product.

The government understands that designers would like to be able to obtain unregistered protection in both territories, but the solution is not straightforward. Making the EU - or indeed any country or territory - a qualifying territory for the supplementary unregistered design may not be straightforward. A full assessment of all impacts, both positive and negative, would need to be carried out to determine whether this is a viable option.

It has been suggested that simultaneous disclosure may provide a solution. This could be achieved by live-streaming in the territories concerned or disclosure on a digital platform. However, this approach is untested in the courts. There are also unresolved questions about whether any delay in transmission could destroy the novelty of a design. It is also untested as to whether a disclosure in a digital environment constitutes a valid disclosure under supplementary unregistered design legislation. We would need to consider the consequences of allowing a live-streamed disclosure from anywhere in the world giving rise to UK design protection.

Questions

2. Do the different and overlapping ways of protecting the appearance of a product present any issues to creators and users of the system? If you think the system could be simplified, we would like your views on how to do this.

3. Are there inconsistencies between the design rights that need to be addressed e.g. qualification requirements, spare parts exemption? Are there terms in the Registered Designs Act which would benefit from clarification or guidance e.g. “get up”?

4. Please share any issues you or your clients have experienced in relation to the changes to disclosure requirements for unregistered designs since the end of the transition period (31 December 2020). Would any of the options outlined, such as simultaneous disclosure, address this issue? Are there any other ways of addressing the lack of reciprocal recognition for unregistered designs in the UK and EU? If so, please provide details on how they may work in practice.

Future technologies

The government is also keen to future proof the designs framework, ensuring the UK remains a world leading IP environment. Emerging and future technologies might affect how designs are created and used, particularly in digital environments. A future designs system must be flexible in the face of these technological developments and not exclude specific technologies. We seek views on areas where the current system could better meet the needs of a digital environment and future technologies.

Artificial intelligence, digital and dynamic designs

Advancement in technology is increasingly driving innovation in the designs sector. There are a number of areas where new technology is having an impact, including:

• the increasing use of AI tools to create designs;
• the development of dynamic designs;
• use of designs in a digital environment, including avatar content in online gaming and graphical user interfaces for mobile devices

We want to ensure that the designs framework encourages the development and use of AI tools for designers. We are also keen to ensure we have the correct balance of protection between human created designs and computer generated designs. There are specific legal provisions on who is considered the creator of a design generated by a computer. This is the case for both registered designs and UK unregistered design rights. However, the supplementary unregistered design does not have such a provision. We want to hear from users of the system about whether there are benefits in continuing to protect computer generated designs. Alternatively, should the supplementary unregistered design be extended to protect computer generated designs. We also seek views on whether the current framework is considered fit for purpose.

A recent application of 3D printing is to make 4D printed products. This involves printing a three-dimensional object, which can then transform into different shapes. The transformation is in response to environmental stimuli. Such a time-dependent shape change after printing is referred to as the 4th dimension. The IPO has published guidance on the protection of transformable designs. In most cases, 4D printed products could be protectable as a transformable design We are interested in whether you consider some 4D printed products would be excluded from protection.

Another area where legislation may not meet the needs of an increasing digital environment is that of designs representations. This is because the IPO only accepts 2D representations of a design as part of the application process. This can cause issues for dynamic or animated digital content and graphical user interfaces (GUIs). For these kinds of designs, applicants need to provide a series of snapshots representing the animated sequence for which protection is sought. We are seeking views on whether applicants should be able to submit digital files enabling designs to be seen in virtual 3D and dynamically.

We would also like your views whether, in an era of increasing digital content, the ability to file a physical specimen is still relevant. Would there be any problems if we ended the ability to file physical specimens?

Questions

5. How can the current system better meet the needs of a digital environment and future technologies? Are areas such as digital designs and 4D printed products adequately protected by the current system?

6. Do you think it would be useful to introduce any of the options outlined? These include extending supplementary unregistered design to cover computer generated designs, filing of digital representations and ceasing accepting physical specimens. What are your views on the protection of computer-generated designs?

Better regulation

There are number of areas where changes could improve the designs framework for users. We seek views on whether there are any other areas that would benefit from improvement.

Deferment provision for designs

Deferment of designs was introduced in 2006 to give applicants flexibility in respect of publication and reduce the risk of a design being copied before it is marketed. Currently an applicant may defer publication of their design for up to 12 months. If it is not published within the set timescale it is deemed to be abandoned. This provision is used to allow applicants to defer their application. This gives them the earliest possible filing date whilst maintaining the confidentiality of the design. We are seeking views on whether we should introduce a specific deferment provision, and whether this would improve legal clarity.

The deferment period is currently capped at 12 months, and we seek your views on whether this is adequate or whether it should be altered. For example, an 18 month deferment would align publication for businesses seeking to obtain both design and patent protection for a product. Alternatively, a 30 month deferment period would align the UK with Hague design systems and other international offices. However, it may be that the deferment period should be reduced. We may also need to consider if specific provisions for prior use rights or to deal with co-pending applications might need to be introduced. This would be particularly important if a longer deferment period and novelty searching was introduced.

The UK currently defers both publication and registration of a design application, and no information is published until the deferment period ends. This differs from some other international design systems, where basic information is made available at filing. Parties operating in the same field are then aware that they should monitor future design publications.

The government is seeking views on how well deferment of designs works in the UK.

Questions

7. Should UK law have an express deferment provision and how long should it be?

8. What information, if any, should be published in relation to a deferred design? Is there a need for specific provisions for prior use or to deal with co-pending applications?

Enforcement

The UK has one of the best intellectual property regimes in the world. Nonetheless, we are aware that the cost of enforcing rights could be a barrier to enforcement, especially for individuals and SMEs. This is because they lack the resources to take a case of alleged infringement to court. This barrier may also be a factor for designers wanting to defend an allegation of infringement.

We are therefore seeking your views on the issues and barriers designers face when enforcing their rights and how enforcement can be made easier. We are interested in receiving evidence of the experiences small businesses and individual designers have had when enforcing their rights.

The Intellectual Property Act 2014 introduced criminal sanctions for the intentional infringement of a registered design. The impact assessment prepared for this measure considered whether copying of unregistered designs should be criminalised. It concluded that to do so would be too complex due to the difficulty in determining which unregistered rights exist and who owns them. To encourage the registration of designs, criminal provisions were only introduced for those which were registered. The IPO also reduced filing fees for multiple applications to further incentivise registration.

In 2020 the government reviewed the impact (PDF,212 KB) of the availability of criminal sanctions for registered designs. The evidence showed that only a small number of criminal cases had been brought since 2014. Current government policy is that there is insufficient evidence to support the introduction of criminal penalties for unregistered design infringement. However, we are aware there a range of views on this issue, and we are open to hearing those views as part of this exercise. Introduction of any new criminal offences in future would need to be carefully considered, and based on detailed and robust evidence.

Questions

9. What are your views on the effectiveness of the UK’s enforcement framework? How could it be improved to help small businesses and individual designers enforce their rights?

10. What has been your experience of the introduction of criminal revision for registered designs? What are your thoughts on extending criminal sanctions to unregistered designs and what economic evidence do you have to support your view?