Consultation outcome

Calls for views on designs: Analysis of responses

Updated 12 July 2022

Introduction

1. This document contains analysis of written responses received to the questions posed in the call for views. It also contains analysis of stakeholder views expressed in roundtable meetings held to supplement the call for views.

2. Analysis has been set out under several key headings:

I) Registered designs - search and examination
II) Simplifying the designs system
III) Disclosure of supplementary unregistered designs
IV) Future technologies
V) Deferment
VI) Enforcement

3. The call for views was published on GOV.UK and ran from the 25 January until the 25 March 2022. We used Intellectual Property Office (IPO) bulletins and social media channels to reach as many interested parties as possible.

4. 57 respondents replied to the call for views. 42 responses were submitted via the Citizen Space platform and 16 by email. One legal professional filed responses via both routes.

5. On Citizen Space, respondents identified themselves as designers (5), design consultants (2), academics (1), legal professionals (16), professionals in other sectors (2), other (10). 6 respondents did not specify their respondent category

6. Of the 16 responses received by email, the breakdown was as follows – legal firms/professionals (3), trade bodies or professional bodies (legal – 4, other - 6), academic (1) other (2).

7. The stakeholder roundtable meetings were held with:

• small design companies and their representative trade body;
• members of the legal profession and professional bodies;
• the UK fashion and textile sector, including a range of small and large design companies and their trade bodies

I) Registered designs - search and examination

Question 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?

Prior art searching

8. Most respondents suggested that whilst some changes could be made to the UK’s current design registration system, the speed and value offered should be maintained.

9. There were mixed views on prior art searching. A multinational technology company said that pre-registration search and examination would reduce uncertainty about the validity of design registrations. This was said to currently cause difficulties for businesses. Others indicated that search and examination could reduce costs for third parties who currently need to pay to invalidate designs lacking novelty and individual character. The potential for a reduction in the number of counterclaims for invalidity in an infringement context was also noted. A legal professional said the lack of searching has led to the presence of invalid designs on the register. These can be used to “take-down” products from online marketplaces, causing commercial damage to legitimate businesses. Some small design companies were in favour of the Intellectual Property Office (IPO) carrying out a search. They thought the onus should not be on the customer.

10. Many respondents were concerned that pre-registration search and examination could result in increased costs and delays to registration. The latter was said to be at odds with customers’ desires to have designs registered as soon as possible, especially in fast-moving industries. Others thought it could increase complexity of the system and introduce uncertainty owing to the risk of wrong examination decisions. Potential issues over the quality of searching were also raised. These included the difficulty in performing a fully comprehensive search due to the existence of unregistered designs.

11. It was said that the drawbacks associated with search and examination could result in the UK becoming a less attractive place to file. Others said that maintaining a harmonised approach with the EUIPO, who do not mandate search and examination, was desirable.

12. A few respondents from the legal sector advised that any search and examination should cover both novelty and individual character. It was said this would provide a better indication of a design’s validity. An academic thought a search should be limited to novelty only. This is because an assessment of individual character is subjective. One respondent suggested that individual character is a complex issue better dealt with post-examination by hearing officers or judges.

13. Some legal professionals and academics mentioned the Korean IPO’s practice of exempting applications from fast moving sectors from search and examination requirements. For example, applications from the fashion and toy sectors. These respondents suggested that if the UK introduced prior art searching, a sector-specific approach might be beneficial.

14. Some respondents thought optional search and examination could be useful. A few respondents highlighted that the IPO already offers a prior art searching service (a “DF21 search”). This was described as helpful and low-cost. However, it was also noted that results give little guidance on what has been covered in a search, rendering its value unclear.

AI tools

15. It was generally felt that an automated high-quality search tool using AI could make pre-registration searching more attractive. This was because it may address concerns such as delays and increased costs.

16. Others still considered pre-registration searches undesirable even when assisted by AI. One respondent said that whilst AI technology is improving, design and image searching is not yet precise enough to be relied on for this purpose. They also commented that AI was not best placed to consider individual character.

17. Two respondents from the legal sector queried if AI tools would be limited to searching registered designs and which registers an AI tool would search. They also asked if AI tools could detect similar registrations in addition to identical registrations. They highlighted the risk of designs being missed which could result in uncertainty over the validity of designs searched in this way. A designer in favour of AI assisted searches said it would be important to provide details on the scope of sources and search algorithm used.

18. There was significant support for making AI tools available to the public. This would allow customers to conduct reliable searches prior to filing. Several respondents supported the introduction of a pre-application AI tool. It was thought this would increase accessibility of the system for those without professional legal representation as well as help reduce clearly invalid filings.

19. Respondents commented generally on the need for a robust and user-friendly search tool on the IPO website. The current system only allows searching by design number or owner. This was said to be unhelpful to customers in performing clearance searches.

Two-tier system

20. Many respondents commented positively about a two-tier system. This would allow designs to be registered without being searched for novelty and individual character but require a search before the right could be enforced. Several commented that it would offer a good compromise. It would ensure quick, low-cost registration whilst also protecting against attempted enforcement of invalid rights and abuse of e-commerce take-down procedures. One professional body thought that searches prior to enforcement should be optional. Another respondent thought that applicants and third parties should be able to request ‘certification’ of a right via searching and examination at any time post-registration. A couple of respondents mentioned that e-commerce platforms would need to ensure that take-downs would only be actioned for designs which had been searched.

21. Respondents’ primary concern with introducing a two-tier system was that it could result in delays to enforcement. Potential delays to obtaining injunctions were raised as a particular concern. Suggestions to overcome this included:

• performing searches quickly
• limiting pre-enforcement examination to novelty only
• exempting interim measures from the pre-enforcement examination requirement
• allowing litigation to start prior to the search but allowing the defendant time to see results prior to filing their defence

22. Other concerns were that a two-tier system could disincentivise enforcement, render the system more complex and introduce a risk of wrong decisions by IPO examiners. A few respondents also questioned how unregistered rights would feature in such a system given their relevance to the issue of validity.

Bad faith provision

23. Several responses, including those from representative bodies supported the introduction of a bad faith provision. Some of these said that bad faith filings could already be adequately dealt with by invalidation on novelty grounds, however. Most who commented favourably thought it would be a useful additional ground for invalidation. A professional body thought the advantage of a bad faith provision would be that it could address anti-competitive filings and other misuses of the system. They also felt that the substantial bad faith case law available for trade marks might be able to be applied by analogy to designs. Other responses, including one from a professional body cautioned that bad faith case law was often a source of debate. It was advised that implementing a provision would require careful thought. Another respondent suggested that guidance on what constitutes bad faith would be needed.

24. Several respondents raised the possibility of introducing a requirement for customers to certify their entitlement to register a design or that their design is novel. It was suggested that false declarations could be used to support bad faith claims. Another suggestion for dealing with anti-competitive filings was to allow parties other than the owner of a pre-existing design to invalidate a design on the grounds that the applicant is not the true proprietor.

25. The responses against introducing a bad faith provision questioned what value it would add over existing novelty grounds. One legal professional explained that designs filed to prevent true owners from using their pre-existing designs would clearly be invalid for lack of novelty. A response from a trade body argued that a bad faith provision would only increase the complexity of design law.

Opposition period

26. There was limited support for the introduction of an opposition period. Many respondents thought this would add unnecessary delays to the registration of designs. Some commented this would impact on their enforceability. As many designs have a short shelf life, respondents generally felt that any delays to registration would be sub-optimal. Others commented that opposition periods would lead to increased costs and uncertainty, for example, with cross-border filings.

27. A professional body explained that design watching is currently extremely expensive and available to few. Their view was that SMEs would be disadvantaged even if the IPO introduced a notification system to highlight potentially conflicting rights. Also concerned about the impacts to SMEs, a trade body representing small and lone designers thought an opposition period could lead to protracted legal challenges. They said this would benefit those able to afford litigation costs. A professional body agreed that the system could be abused by those who strategically oppose an application to delay it from becoming an enforceable right. Several respondents from the legal sector were of the opinion that issues such as bad faith filings were better left to be dealt with via the invalidation route. Many considered this sufficient.

28. Despite the overall lack of support, a few respondents could see some merit in an opposition period. One considered it could be a helpful mechanism to remove clearly invalid registrations. They thought that only novelty, and not bad faith, should be a valid opposition ground. Others said that whilst an opposition period seemed sensible in principle, a reliable data source of applications for registration would first need to become available. This would ensure third parties and watching companies could identify a potentially conflicting design. The publication of a periodic gazette of approved design applications was suggested.

Other issues

29. Several respondents put forward specific suggestions which they felt would improve the registered designs system. These included:

• joining the World Intellectual Property Organisation’s Digital Access System (WIPO DAS) for designs. This would improve administrative efficiency and reduce costs for customers filing in multiple jurisdictions. One response suggested this would increase the number of customers using the IPO as an ‘office of first filing’
• introducing an online file inspection service which provides a full prosecution history and history of actions for designs applications
• increasing the maximum description length for electronically filed designs. Respondents advised that the current limit can be problematic. For example, if using a United Kingdom (UK) application as a priority document for an application in the United States where longer descriptions are permitted
• increasing the word limit for disclaimers and limitations. The current word limit is considered inadequate
• increasing the size of the images displayed in the PDF filing receipt. The compression of these images was said to make it difficult for customers to check the correct representations have been uploaded. It was also said this causes clients to query the quality of the representations filed by their legal representatives
• introducing a system which allows a draft design application to be prepared and saved for an indefinite period. This is currently offered by the European Union Intellectual Property Office (EUIPO) and WIPO. The current UK system where draft applications expire after a period of 7 days without being saved was said to be frustrating. This can be too short a period for legal representatives to consult with clients before submitting an application
• changing the law to allow divisional applications to be filed for international designs which designate the UK
• making the system more user-friendly and efficient by allowing more actions to be carried out electronically. This includes allowing e-filing of all forms and providing registration certificates and certified copies of applications as e-filed via email
• providing clear rules on extensions of time and guidance on what happens if a date should be missed
• using the IPO’s power to award costs, and to require for security for costs. This would deal more robustly with the problem of bad faith or fraudulent registrations
• working with other agencies to prosecute egregious bad faith or fraudulent registrations
• a trade body commented that it can be unclear what product type a particular design is intended to be applied to. This can be unhelpful when assessing the individual character and identifying features of a design solely dictated by technical function. They suggested that customers should have the option of including a description in an application. This would be part of the registration and could be taken into account by third parties when considering the scope of protection. Another option was giving customers the option to limit the scope of protection of their design to the product indication included in the application. Novelty and individual character requirements for registration would then be adjusted to reflect the relevant product indication claimed. A tick-box could make clear whether the scope of protection was defined by the design representations alone, or in combination with one or more of a limitation, disclaimer, product indication or description

II) Simplifying the designs system

Question 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.

Question 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”?

Complexity of the UK designs system

30. Respondents generally think the UK designs system is complex, with numerous overlapping rights. There was a significant call to simplify the system by reducing the types of unregistered design protection available. Some responses from the legal sector did not think this was necessary. Smaller companies, lone designers, and their representative organisations said that the system is too complex to understand. They called for improved guidance, in plain English, to help creators who are unfamiliar with IP law to protect their products in the best way. This was also reflected in roundtable meetings with small design companies, including those in the fashion sector. Some responses mentioned that the number of different rights available in the UK increases the cost of clearing designs.

31. Several respondents mentioned that the different forms of design protection protect different aspects of a design. They said this can be useful when bringing an action against infringers. Several responses suggested that UK unregistered design right (“design right”) provides flexibility. Others indicated that they protect important designs by registration.

32. Where respondents called for simplification, there was a general view that this should not result in lower levels of protection or lead to a situation where some creations fall “through the cracks” and cannot be protected at all. Different views were expressed on how simplification could be achieved:

• the most common call was for a single unregistered design, harnessing the best of current SUD and design right. There were different views on what the length of term should be. Most respondents suggested either 5 or 10 years, although 7 years was also mentioned. One response suggested design right term should be 3 years to harmonise with SUD. Another response suggested a 25-year term for unregistered designs and copyright in AI-generated works
• several respondents consider the residency and first marketing qualification requirements for design right unhelpful. There was general agreement that, as a minimum, qualification requirements should be harmonised across the two forms of UK unregistered design. A legal professional suggested that design right provisions for reciprocal protection in other countries are unhelpful and should be removed
• respondents also called for harmonisation of various legislative provisions across the different forms of design protection. Some suggested this should include copyright. Provisions which were specifically mentioned include permitted acts, infringing acts, spare parts and right to repair provisions, legal tests for infringement, threats provisions, and liability of innocent infringers across the various forms of design protection
• in relation to infringement tests, more than one response suggested that “overall impression” for SUD was simpler than “made substantially to” for design right. Respondents consider this is an area which could be simplified
• there were several calls from the legal sector for spare parts provisions to be harmonised across rights. There were some calls for them to be harmonised with EU provisions
• several respondents recognised that the UK design regime covers both functional industrial design and more aesthetic creations. They want both types of design to be protected in any simplified system
• one respondent suggested that an easier, more streamlined invalidation process for identical designs should be introduced
• one response suggested that the definition of “product” should be harmonised across rights. It was suggested that the Registered Designs Act 1949 (RDA) does not meet current drafting standards

33. Some respondents wanted the UK designs system to remain as harmonised as possible with the EU. Some also want the UK to seek more harmonisation for designs internationally, for example design representation requirements. One response said that harmonisation at the expense of eroding design protection currently available in the UK is not desirable.

34. Some respondents mentioned that the UK-EU Trade and Cooperation Agreement sets out certain UK obligations in relation to unregistered designs[1]. They said this need to be taken into account if changes are made to the UK unregistered design regime.

35. Some smaller design companies considered the process of registering designs to be too expensive and time-consuming. They think registration is only worthwhile if the rightsholder can afford to enforce their design. A fashion business indicated that registration fees are affordable, but work and cost of producing representations of all aspects of a design can be significant. A legal professional made a similar point, explaining that smaller companies often rely on unregistered protection due to the cost of registering designs for a series of products in both the UK and EU.

36. Some respondents expressed concerns about the perceived narrow protection afforded by representations of a registered design. These respondents considered that cases can be lost on a technicality due to the strict interpretation of registered design representations by the courts. The Trunki case was specifically mentioned as an example. This view was also expressed in roundtables with small design companies and the fashion sector. Some responses suggested that SUD is more flexible, presumably as the scope of protection is not defined by representations.

37. A concern was raised that changes made to the law in 2014 in relation to the ownership of design right for commissioned designs have been problematic. The government was urged to reconsider its position. This view was echoed in a roundtable meeting with the legal sector.

38. An academic and a legal professional called for government to consolidate designs legislation into a single piece of legislation.

39. There were several calls from the legal profession for the IPO to provide clarity in relation to protection of animated designs and graphical user interfaces.

40. Some respondents commented on definitions. Some thought that the term “get up” was not clear. Others thought greater clarity could be provided on what falls within the terms “product” and “other than a computer programme” in designs legislation. One respondent was concerned that changing definitions could impact on relevant case law.

Overlap with copyright

41. Several respondents commented on the overlap between copyright and designs. A number of responses suggested that pre-Brexit decisions of the Court of Justice of the European Union (CJEU) have resulted in a lack of legal clarity. On the other hand, a small number of responses considered that these recent CJEU decisions had in fact brought some clarity.

42. Concerns were expressed that the outcome of these CJEU decisions mean that more functional designs will be become protectable by copyright. This would protect them for life of the creator plus 70 years. One respondent said this was “ludicrous” for industrial products.

43. Section 51 of the Copyright, Designs and Patents Act 1988 (CDPA) sets out that it is not an infringement of copyright in a design document or model to make an article to that design, unless the design is an artistic work or typeface. In broad terms, this means that making a 3D article from a design document will only infringe copyright where the document itself depicts a work of artistic craftsmanship. One respondent was concerned that this provision will apply less frequently if more products are considered to be works of artistic craftsmanship under copyright following recent CJEU decisions. The same respondent asked whether legal provisions in relation to infringement where both design right and copyright subsist (section 236 CDPA) are fit for purpose. Another response suggested that the scope of copyright in 3D articles should be considered if changes to design right are made. Any changes could have limited practical effect if CJEU case law continues to be applied. A legal sector response suggested it might also be necessary to look at other provisions in the CDPA.

44. One response suggested it would be helpful to clarify the meaning of a work of artistic craftsmanship and extent to which works of applied art can be protected by copyright. This respondent also commented that the direction of travel of EU case law has diverged from the UK’s traditional interpretation of copyright. They considered that this should be a policy decision by government, not judicial interpretation.

45. One response from a trade body stated that in some instances, copyright will already provide some protection to those disclosing designs in the EU (rather than in the UK). They said it is hard to justify to designers why they should benefit from copyright but not unregistered design protection just because of the location of the disclosure.

46. One response suggested that aesthetic designs should be protected by copyright protection. Another that unregistered designs should come under the ambit of copyright.

III) Disclosure of supplementary unregistered designs

Question 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.

Disclosure requirements

47. Many responses stated that the UK’s departure from the EU had resulted in much complexity, expense and uncertainty for those in the sector. Almost all responses called for clarity on the issue of disclosure for supplementary unregistered designs (SUDs).

48. Respondents explained that they were having to choose between supplementary unregistered design (SUD) protection in the UK and unregistered Community design protection (UCD) in the EU. Location of first disclosure was said to determine the protection obtained, this was said to be detrimental for businesses operating globally. UK businesses were highlighted in particular, because first disclosure in the UK would lead to a smaller geographical scope of protection

49. It was suggested that companies may choose to first disclose their designs in the larger EU market. A fashion trade body reported that their industry was particularly affected by current uncertainty due to a reliance on unregistered designs. They indicated that some companies had already taken their sales and showcasing activities to the EU. It was noted that the future of UK events like London Fashion Week could be at risk.

50. Several responses challenged the assumption that SUD in the UK and unregistered Community design (UCD) in the EU require first disclosure in specific territories. A subset said that there was currently no definitive answer to this question. They explained that this was not set out in legislation and had never been decided by the CJEU. Others suggested that a disclosure anywhere in the world should be sufficient to create these rights. One trade body’s view was that worldwide disclosure for SUD should be accepted providing it becomes known to the relevant circles in the UK. They considered this would stimulate UK investment and remove the need for simultaneous disclosure. One respondent thought the impacts of accepting worldwide disclosure on UK business would need to be assessed. Whilst they could see some potential benefits, they thought this could put UK designers at increased risk of challenge from third parties with rights. One response mentioned that UK unilateral action could provide an unfair advantage to trade shows taking place in the EU.

51. A legal trade body suggested introducing a grace period for unregistered designs. This would allow designers to obtain unregistered design protection within a short period of a disclosure outside the UK or EU.

52. Several responses commented on the option of registering designs to overcome disclosure issues. It was reported that there had been an increase in people doing so. Some commented that costs and administrative burden made this an unattractive option. The fashion sector explained that automatic unregistered protection was needed to support the volume and speed of designs in their industry. A professional body remarked that some products are better suited to unregistered protection.

53. It was also mentioned that designers have the option of relying on UK unregistered design right. It was noted that this does not protect surface decoration and two-dimensional designs.

54. Several comments were received about the lack of awareness of disclosure requirements amongst some designers, especially those from small companies. It was suggested that the current disclosure situation adds another layer of complexity to the designs regime and acts as a trap for the unwary. Another response said disclosure considerations are frequently not considered as part of a launch strategy. There was a call from a fashion trade body for government to provide more support and education for business.

Simultaneous disclosure

55. Several responses explained that businesses were trying to rely on simultaneous disclosure to obtain rights in both the UK and EU. For example, live streaming via a website. It was commented that this was yet untested in the courts. Businesses taking this approach were said to be taking a risk as protection assumed to be obtained in this way could later be deemed invalid. A representative body was concerned that simultaneous disclosure could terminate novelty in both locations. The government was urged to provide clarification. Several said that this should be by way of legislation.

56. A legal professional expressed concern that allowing simultaneous disclosure could result in parties arguing about whether a disclosure was truly simultaneous. It was commented that delays in transmission could be problematic. Some respondents suggested that simultaneous publication could be assisted by new technology. This would allow disclosure in multiple territories at the same time and reduce the risks associated with potential delays in publication.

57. There were questions about how ‘simultaneous’ a ‘simultaneous disclosure’ would need to be. Some suggested that legislation could be introduced to make clear what constitutes a simultaneous disclosure. It was noted that copyright legislation sets out a 30-day time period in which disclosure is considered simultaneous. Two respondents said the impact on the grace period would need consideration. Others questioned whether a simultaneous disclosure would require some nexus with the UK in order to create a SUD. For example, a disclosure on a website or via a live stream specifically targeted at the UK. Two respondents thought that online disclosures should be considered a simultaneous disclosure everywhere. A legal professional requested clarity on evidence needed to show a simultaneous disclosure had come to the attention of the relevant circles in the UK.

58. Many said that reciprocity with the EU was important. They called for the UK government to work towards a disclosure agreement with the EU. A legal professional cautioned that divergence of the UK designs regime from that of the EU could cause additional difficulties for customers. Some said that any UK unilateral action on simultaneous disclosure would first need careful evaluation of the impacts to UK industry. Others were clearly in favour of the UK formally recognising simultaneous disclosure even if the EU were not prepared to do so. They explained that this would make the UK an attractive place for rights owners.

IV) Future technologies

Question 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?

Question 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?

Supporting technological development

59. Some respondents considered the current law and system adequately meets the needs and challenges of future technologies and a digital environment. This included offering adequate flexibility to deal with digital designs and 4D printed products. Others thought it was necessary to amend design legislation and policies to keep up with technological developments.

60. A couple of respondents considered the terms “design” and “product” in designs law to be sufficiently broad and flexible to cover future technological developments. Some respondents thought the government should ensure definitions are not overly restrictive. They thought definitions should reflect advances in technology and commerce, and that virtual and digital designs should specifically be encompassed.

61. Several respondents commented specifically that it should be possible to protect 4D designs. One legal professional thought this should be possible providing no parts were added or removed. They also said that the representation would need to adequately show each view of the design. Another respondent questioned whether there might be instances where it looks like a part has been taken away but the product has merely transformed instead. If this was the case, specific provisions for protecting 4D products were needed. Other respondents thought that the non-permanent character of 4D printed products might represent a challenge to current design laws. Safeguards were considered necessary.

62. A legal professional commented that 3D and 4D printing are new, disruptive technologies which raise a range of IP issues. Infringement issues were raised in particular. Two trade bodies also expressed concern over the potential impact of this technology on infringement, for example 3D-printed clones of objects protected as designs. A few respondents thought clarity was needed about whether a file enabling creation of an infringing object would be considered infringing itself. One respondent from the legal sector considered that design protection for a physical product should also cover an electronic reproduction thereof, and vice versa. Their view was that clarification should be provided about whether design protection covers files such as CAD and surface files, and if sharing them constitutes infringement.

63. An academic queried to what extent consumers may try to claim a private, non-commercial use defence if they print infringing products. A legal professional commented that private use exceptions should be interpreted in a restrictive manner in these instances. It was suggested these exceptions could be restricted by limiting 3D printing to “acts which do not unduly prejudice the normal exploitation of the design”. This respondent also raised whether exceptions should generally be limited by the wording: “compatible with fair trade and commercial practice and do not unduly prejudice the lawful interests of the right holder”. This was said to be the case currently in Denmark and Lithuania. They also asked whether intermediaries involved in facilitating the download and eventual reproduction of an infringing design could be pursued. Respondents urged government to monitor the situation in relation to these new technologies.

64. Several respondents thought that design protection should extend to virtual designs. Some agreed but thought an exception for incidental inclusion, as is available for copyright, would be necessary. An academic commented that in an increasingly digital age, excluding virtual designs would not be considered progressive. A trade body representing the fashion industry explained how the growth in virtual clothes and “skins” was expected to be a big market opportunity. A legal firm described how it was currently difficult to protect against the monetisation of electronic reproductions of protected physical designs, for example, non-fungible tokens (NFTs) or in-game premium items.

65. There was also support for design protection for graphical user interfaces (GUIs), icons, fonts, animations, interior designs, and projected or holographic designs. A few respondents sought more clarity and guidance on the IPO’s current examination practice in relation to animated and GUI designs. They suggested there is currently inconsistency in approach.

66. In contrast to other respondents, one legal professional believed intangible designs such as pictorial representations in computer graphics were more appropriately protected by copyright.

67. A professional body raised some questions in relation to distributed ledgers such as blockchain, and Web 3.0. These included:

• would placing an original work on a distributed ledger constitute a relevant communication to the public?
• would a distributed ledger be considered a form of intermediary for enforcement purposes?
• would, given the distributed and de-centralised nature of Web 3.0, a finding of infringement in one jurisdiction be enforceable worldwide?

68. Others raised questions such as:

• how could AI simplify the process of navigating the design protection process?
• How could blockchain, NFTs and digital passports enable identification of rights holders, and provide an audit trail for the development and usage of a design?
• what might the rise of decentralised autonomous organisations (DAOs) tell us about the nature of ownership when corporate structures are increasingly dispersed, automated and flexible?

Filing digital representations

69. There was a significant call for the IPO to allow the filing of digital representations and expand its list of accepted file formats. There was also a call for this to be kept under review as technology develops. 3D CAD and MP4 were provided as examples of file types which IPO should accept. One respondent mentioned that it would be important to consider whether rules and requirements for new file types would be necessary, for example, maximum running time for video files. A couple of respondents suggested that care would be required to ensure that designs represented by video files were still clear in scope. For example, by showing a design on a plain background with any sound removed. There were several calls for any new file formats to be searchable and published in the register.

70. Several respondents described how limitations of the current system could cause problems for customers seeking to protect complex designs. Respondents raised the inability to submit more than twelve 2D representations per electronically filed application. Complex designs mentioned included 4D designs, designs having multiple configurations, dynamic designs or those with a complex shape or surface decoration. It was also mentioned that the current limit on image pixel size makes it difficult to protect the appearance of GUIs such as webpages.

71. One legal professional’s view was that the UK should retain its current representation requirement of 2D images to ensure harmonisation with other countries. They thought that products that change shape or configuration could be adequately protected under these arrangements but that improved clarity on how to do so would be helpful, nonetheless. They felt it would be particularly useful to be able to distinguish between a series of configurations which occur in a predetermined order and those which may occur in different orders. A digital display controlled by user input was provided as an example of the latter.

72. Two other responses from the legal sector raised a concern about changing approach. They suggested that 3D files could be difficult to enforce as the scope of the design could be challenging to discern in some instances.

Physical Specimens

73. Responses were mixed on the issue of whether IPO should accept physical specimens. Half of respondents were in favour of IPO ceasing to accept them. Reasons included that physical specimens are rarely used and cannot be searched. About a quarter of respondents considered specimens had a role to play unless technology allowed a convincing digital 3D representation to be filed. It was also mentioned that IPO could scan specimens, including those which have been filed in the past. A minority of responses specifically wanted IPO to continue to accept physical specimens. A designer mentioned that removing this option could disadvantage those who do not use computer technology. They also thought it could disadvantage those who make products where a physical specimen gives a more accurate representation.

Computer generated designs

74. Several respondents commented on existing provisions in law which provide that the person who makes the arrangements for creation of computer-generated designs shall be taken to be the author or designer. The consensus was that these provisions are currently adequate for dealing with computer generated designs. Registered design, UK unregistered design and copyright law currently contain these provisions. There was support for introducing a similar provision for supplementary unregistered designs. A couple of respondents felt these provisions are outdated. This is because AI systems involve complex input arrangements requiring numerous human contributors, as opposed to a single person as currently provided for in law.

75. More generally, most respondents were of the view that computer generated designs should be protectable. The consensus was that AI should not be recognised as the author or designer, however. Reasons for this included that AI does not possess legal personality and cannot be litigated against. One response mentioned that incentives offered by the IP system do not apply to AI. Others said there should be consistency of approach across IP rights in relation to AI-authorship and that the issue should be kept under review as part of the IPO’s wider work on AI and IP. A trade body representing the fashion sector thought AI generated designs should be owned by the designer and brand owner rather than the software owner.

76. One trade body was of the view that computer generated designs should only be protected where there has been a degree of human input. A couple of legal professionals said that computer generated designs should be excluded from protection altogether. It was suggested that AI tools are able to rapidly create a large number of designs, which could result in designs trolls stifling innovation.

V) Deferment

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

Question 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?

77. The general consensus was that a deferment period was desirable. Views differed on how long the deferment period should be. Some suggested 12 months, with others preferring 18 or 30 months. One designer thought it may be useful to have an initial 12-month deferment period, with the option to extend to 18 months to align with patent publication. Another response suggested that it is currently possible to defer a UK application based on a Convention country application for 18 months by filing in the UK at the end of the 6-month priority period. Those who suggested 30 months mentioned that it would harmonise the UK deferment period with that of the EUIPO. 30 months is also the maximum period allowed under the Hague system for international designs. A legal firm suggested that aligning with the EUIPO would reduce client confusion.

78. In relation to what information should be published about a deferred application, a significant number of responses said only basic information should be made public. Some responses suggested the applicant’s name, filing and priority date, and design field or classification should be published. One trade body thought that the EUIPO approach is useful. It allows competitors to know that a design has been applied for and by whom, but full details are only made available on publication. Several responses said that no details should be published for a deferred application.

79. A number of respondents considered that specific provisions may be needed to deal with prior use or co-pending applications. They thought this would improve legal clarity for customers. Some respondents did not think such provisions were required and deemed current prior use provisions sufficient.

VI) Enforcement

Question 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?

Question 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?

80. Respondents expressed mixed views about the UK’s enforcement regime. Small design companies and their representatives generally considered enforcement to be expensive, stressful and ineffective. They also thought it advantages companies with greater financial resources. As a result, some respondents said the enforcement framework was not fit for purpose for small and medium enterprises (SMEs). It was suggested that it is not worth filing for protection if rights cannot be properly enforced.

81. The legal profession generally considers that the enforcement regime is effective but expensive. Some legal trade bodies acknowledged that the playing field is not level. Others said that the system has a range of remedies and routes available to rightsholders. One legal professional suggested that limiting costs and the size of legal teams could help address the imbalance between small and large companies.

82. Some small design companies gave specific examples of their experiences of enforcing their designs. One company said they were 2 years into proceedings and facing high costs, another that they could not afford to pursue action against an alleged infringer. Others who had experienced long and costly cases said they had been put off enforcing their rights in the future. Several small businesses said unsuccessful enforcement actions could be extremely damaging financially. One said that there is uncertainty about whether damages will be paid, even when they win a case. A couple of respondents suggested that damages need to be high enough to deter infringement.

83. Some in the legal sector expressed concern about the misuse of the design register by people who file applications to register designs which are not their own. They suggested that this is made worse because only limited action can be taken by those who are not the prior rights holder.

84. One response from a legal professional suggested that the short term nature of protection available for supplementary unregistered designs can make it unproductive to seek injunctions against copyists. Unless an injunction can be obtained quickly, the right may be close to expiry by the time it is granted. Another response called for wider availability of interim injunctions.

85. A response from the fashion sector suggested that customs and criminal authorities are less familiar with designs than trade marks in relation to counterfeit goods. A number of respondents raised concerns that the relevant authorities are under resourced, lack knowledge of design infringement and are reluctant to bring cases. They called on government to address these issues.

86. Respondents mentioned that designers are increasingly making use of online platforms’ take-down procedures to police alleged design infringement. A small design company said these were efficient. Others were concerned that technology companies’ procedures lack the built-in safeguards of the court system. It was also mentioned that decisions taken by e-commerce platforms are inconsistent, and that their processes are open to abuse. Accordingly, there was a call for government to investigate ways to regulate take-down procedures.

87. A couple of respondents suggested that publicising alleged infringements online, for example on social media, can be an effective way of dealing with them.

88. Other suggestions for improvements to the enforcement system from respondents included:

• use of standard letters and templates for use in enforcement actions
• pro-bono legal service funded by government
• a procedure which is more streamlined than those of the Intellectual Property Enterprise court (IPEC), similar to the take-down processes used by online platforms
• a pre-litigation framework similar to that of the Danish Design Board
• a Criminal Prosecution Service-type entity which focusses on IP enforcement
• a government education campaign to explain why IP theft is socially unacceptable
• copyright registration

IPEC

89. There were mixed views on introducing registered designs into the small claims track of IPEC. A significant number of respondents, mainly from the legal sector were in favour of doing so, but some organisations were opposed to it. A response from the legal profession mentioned there is a big difference in cost caps between the IPEC small claims and multi tracks. This can pose significant risks to small businesses. A legal professional suggested a “middle track” should be considered.

90. One respondent from the legal sector thought IPO should publish summaries of cases heard at IPEC, including details of damages awarded.

91. A response from a trade body which represents small design companies suggested a Designs Court could be held at IPEC. The same respondent suggested that introducing an IPEC small claims mediation service could encourage early settlement between parties. Another suggestion was to introduce a service where a judge could give a view on whether there was a case to answer before proceedings commence.

Designs opinions and alternative dispute resolution (ADR)

92. Several respondents suggested that a designs opinions service should be introduced to offer a form of expert determination without the cost of litigation. There were some positive views expressed in favour of designs opinions at the fashion sector roundtable.

93. Some respondents were in favour of ADR, in particular mediation. One response from a small design company suggested judges should mandate mediation before they would hear a case. Another response said that mediation should be independent of the IPO to ensure impartiality.

Criminal sanctions

94. Respondents generally had little or no experience of criminal sanctions for registered design infringement since their introduction.

95. Approximately half of respondents did not answer the question or expressed no clear preference about whether criminal sanctions should be extended to unregistered design infringement. Amongst those who did provide a preference, views were mixed. Around a fifth of respondents were in favour of extending them to unregistered designs. Approximately a third were opposed to doing so. Views were mixed amongst designers. One considered it would be too complex to extend criminal sanctions, another that unregistered designs should have the same enforcement options as registered designs. Another respondent thought that “massive fines” should be available.

96. Some respondents in favour of criminalising unregistered design infringement thought it would be a welcome deterrent. A number of responses suggested the same remedies should be available for both registered and unregistered designs. However, one respondent thought the practicalities might be complex.

97. A trade body representing small design companies stated that “designers continue to be baffled by a law that makes it a criminal offence to copy a two-dimensional design drawing but when that drawing is converted into a 3D product there is no criminal offence involved should it be copied”. They also considered that some of the difficulties raised by those against the introduction of criminal sanctions for unregistered designs, were no more problematic than they are for copyright, for which such sanctions are available. This respondent was clear that they do not want innocent, accidental infringers to be penalised. They suggested that the built-in safeguards in the justice system would “prevent abuse of the prosecution regime by over enthusiastic rights holders”.

98. Some respondents against extending criminal sanctions to unregistered designs considered there would be no real benefit to doing so. Some thought it would be impractical to enforce them. Others said it would be inappropriate to criminalise something when it is impossible to identify the right, who owns it, when it runs from or when it expires. It was also suggested that criminal sanctions could cause difficulties to clearing and launching a product. These risks might mean some companies choose not to launch new products. A legal trade body said that law enforcement bodies have much bigger issues to deal with than IP enforcement.

99. Some responses challenged the view that the same considerations apply to unregistered designs and copyright because they are both unregistered rights. One response said that unregistered designs “cover all or part of a product, and are often articulated for the first time when enforcement is being considered”, which differs from copyright. The same response suggested that criminal provisions for copyright were introduced to tackle piracy. They considered this to be “quite different to introducing criminal sanctions because someone creates a product that sails a little too close to someone else’s product” and which can be dealt with by civil enforcement. A legal trade body suggested that criminal courts are not equipped to deal with the complexities of design law cases. They were concerned that errors may result in wrongful imprisonment. They also considered that private prosecutions may be used to raise the stakes in a legal dispute.

100. One respondent against criminalising unregistered design infringement raised specific issues related to UK unregistered design right. This included the importance of design right in protecting functional designs, the complex qualification rights, the difficulty in knowing when a right expires due to the complicated term calculation, and the existence of licences of right. This respondent also thought it was difficult for legitimate businesses to assess whether design right owned by a third party subsists in a particular design, resulting in an unacceptable risk to business.

101. Some responses suggested that there was a lack of evidence that criminal sanctions for registered design infringement have been used much since their introduction in 2014. They considered there is insufficient evidence to draw conclusions about how the system is working for registered designs. One respondent suggested that tracking design infringement activity over time would help assess the effectiveness of criminal sanctions.

Other issues

102. Some responses from the legal profession wanted government to engage with e-commerce platforms to educate them about designs.

103. One respondent was concerned that clients don’t always think about design protection strategies and don’t keep evidence and audit trails for enforcement purposes. This was also mentioned in the fashion sector roundtables.

104. An organisation representing small and lone designers suggested that government should fund a pro-bono legal advisory and advocacy service to assist designers whose rights have been infringed. They also suggested that government should draw up a code of conduct for legal professionals to reduce the “expensive legal ping pong” involved in litigation. A further suggestion was that consideration should be given to introducing an IP insurance scheme.

---

[1]UK EU Trade and Cooperation (PDF, 7.4MB) agreement says: ARTICLE 247 Protection of unregistered designs 1. Each Party shall confer on holders of an unregistered design the right to prevent the use of the unregistered design by any third party not having the holder’s consent only if the contested use results from copying the unregistered design in their respective territory1. Such use shall at least cover the offering for sale, putting on the market, importing or exporting the product. 2. The duration of protection available for the unregistered design shall amount to at least three years as from the date on which the design was first made available to the public in the territory of the respective Party.

[FN1: 1 This section does not apply to the protection known in the United Kingdom as a design right.]