Intentional infringement of a registered design is now a crime. On 1st October, 2014, history was made – a new Intellectual Property Act became law and it's now a crime to intentionally infringe a registered design. Individual board directors will also be held accountable. The changes which are set out in The Intellectual Property Act have been introduced to:
* Reduce the scale of registered design infringement by acting as a deterrent
* Increase protection for the holders of registered designs
* Better punish perpetrators of blatant design infringement. Individual Directors will also be liable
Intentionally, infringing a registered design and producing a copy that differs from an original in only immaterial respects now becomes a criminal offence punishable by up to 10 years in prison. This is a significant development for designers, but for the time being the change in the law will only assist those designers who've registered their designs at either the Intellectual Property Office in England or at the Community Design Office in Alicante. It doesn't cover unregistered designs.
The ACID (Anti-Copying in Design) campaign, spanning many years, consistently supported by case studies, demonstrated the scale of the problem and the objective was to address a shortfall in laws to protect designers. In 2011 Professor Hargreaves reported that design and IP had been neglected. Government listened and the Prime Minister put design and IP law (Ch7) as one of his 10 recommendations.
Following consultations, it was introduced in the Queen's Speech in November, 2013. ACID Members wrote to their MPs to make them aware about the impact that design theft was having on the job security of their employees and the threat to their growth opportunities. Several ACID members also met with Government officials and ministers to add their weight to the argument for reform. Following at times, a tricky route with opponents and, subsequently, through the House of Lords and then House of Commons, the Bill received Queen's Assent on 14th May, 2014.
Nick Kounoupias, ACID's Chief Legal Counsel and a Partner at DMH Stallard, said: “This is the result of a genuine grass roots campaign and shows what can be done with a well presented case argued with integrity and honesty. To get fundamental legislation of this kind, in which copying of designs is made a criminal offence, from lobbying to law in less than 12 months, is nothing short of phenomenal. Criminal sanctions for registered design infringement should be seen as evolution not revolution and the proposed changes are sensible and pragmatic. However, we believe that Government should listen again to the powerful arguments for including unregistered designs.”
When the bill passed to committee stage, Pete Wishart MP (Vice Chair of the All Party Parliamentary IP Group) commented, “It's great that it covers registered design rights—the great forgotten IP right. It's fantastic that ACID has at last got its way and that this will now be covered by criminal infringement provisions, but it's totally wrong that unregistered designs are not covered too.”
Rodney McMahon, MD of ACID Member Morgan Contract Furniture, said, “Strengthening of IP law can not only serve as a strong deterrent to copying, but also act as a real vehicle for growth, innovation and job certainty for those who create design originality.”
Dids Macdonald, ACID's Chief Executive, commented, “I welcome the fact that the IP Bill is a significant step in the right direction. However, there's still much work to be done because the majority of UK designers rely on unregistered rights. Way back in 1996 when ACID was just a round table action group, I gave a talk along with design law specialist and co-founder of ACID, Simon Clark, saying we needed design issues to be heard and acknowledged within government and a change of law to bring design in line with copyright. Little did I think it would take 18 years to happen! Next step is to persuade government to include unregistered designs, exemplary damages and unfair competition. At the moment our EU designer counterparts can turn to unfair competition laws if IP laws fail them.”
To find out more, contact Dids Macdonald on +44 (0)845 644 3617 or visit www.acid.uk.com
Posted: 22 March 2019