The Intellectual Property Act 2014 – Key Changes from 1st October 2014

October 29, 2014

The Intellectual Property Act 2014 (2014 Act) came into force on 1st October 2014. The 2014 Act builds on the conclusions of the Hargreaves Review of Intellectual Property, which reported in May 2011, in relation to the “patchwork of protection” afforded by the availability of 4 different forms of design right in the UK,

The principal changes effected by the 2014 Act relate to design law, with the introduction of criminal liability and penalties for infringers, and a change in the default position on ownership of rights in some designs. Businesses should be aware of five key changes implemented immediately under the 2014 Act together with the fact that additional changes will follow in 2015.

Key Updates

Under the Intellectual Property Act 2014 (Commencement No.3 and Transitional Provisions) Order 2014 and the Community Design (Amendment) Regulations 2014, the following changes take effect from 1 October 2014:

• Ownership of designs

The 2014 Act harmonises the principles of ownership of designs with EU design law and UK copyright law by providing that, in the absence of a written agreement to the contrary, the ownership of a design is vested in the designer. This change will not apply to designs created before 1 October 2014, or designs created on or after 1 October 2014 under a contract between the designer and the commissioner which was entered into before 1 October 2014. Businesses who commission designs should now ensure that written agreements are in place to provide that all future rights are correctly assigned to them.

• Criminal offences for internationally copying and using registered designs

The 2014 Act aligns protection for registered designs with other registered IP rights, with the intention of preventing or at least deterring blatant infringement under threat of criminal liability. The relevant provisions extend to knowingly (but not accidentally) making use of copied designs in the course of trade, including by importing, exporting, stocking or marketing products comprising the design. The relevant offences carry penalties of a fine or prison  sentence of up to 10 years, or both, and are likely to be of interest to consumer and luxury goods businesses as part of their regional anti-counterfeiting strategy.

Defences to Infringement

• Private, non-commercial uses of unregistered designs

Where the infringing use is for private, non-commercial, experimental or educational purposes, the 2014 Act provides a defence to infringement of unregistered design right. In relation to education, the defence applies only if the design is sufficiently attributed, the use is fair and does not unfairly prejudice the ordinary exploitation of the design. These defences are similar to those which currently apply in relation to UK copyright infringement.

• Innocent concurrent use of UK registered designs

The 2014 Act provides a defence for using and commercialising a design, or making material preparations to do so, in good faith without knowledge of a third party’s subsequently registered design. A person benefiting from the defence will also be in a position to continue using the design, although this is limited to the continued marketing of the particular product. Given the infancy of the 2014 Act, the scope of the defence is as yet untested by the courts and is likely to be subject to detailed scrutiny in due course. The defence may be of particular interest in industries where the commercialisation and launch of designs have long lead times.

• Account of profits for innocent infringement

Owners of UK registered designs can now claim compensation for innocent infringement, based on an account of profits. This mirrors the financial remedies currently available for unintentional infringement of a registered Community design in the UK.

• Limitations of dual registered community design and copyright protection

The 2014 Act introduces an exception where use of a registered Community design with the permission of the owner (for example, pursuant to a licence) will not infringe the copyright in the work. This brings UK law into line with the existing regime for dual protection of artistic works as UK registered designs and copyright works. The exception does not, however, apply to unregistered designs.

Looking Ahead

The 2014 Act facilitates the introduction of additional services at the UK Intellectual Property Office, including a new “designs opinion service” for the provision of low-cost, non-binding opinions on potential design disputes and improved online records for files relating to UK registered design applications which may be of assistance in relation to disputes as to ownership or infringement.

The 2014 Act also provides a foundation for the UK to join the Geneva Act of the Hague International design registration system as an individual member. UK businesses currently have access to the Hague system to protect designs in the EU as a whole. Once the UK has joined as an individual member, it is anticipated that the Hague system will provide greater flexibility for initial protection and subsequent extensions of protection.

The full text of the Act can be read at http://www.legislation.gov.uk/ukpga/2014/18/contents/enacted

For further information on the impact of the Act please do not hesitate to contact any member of our Intellectual Property Team.

Please note; the content of this article is for information purposes only and further advice should be sought from a professional legal advisor before any action is taken.
Please contact Cleaver Fulton Rankin on 028 9024 3141 or alternatively visit www.cfrlaw.co.uk