Are sweeping changes coming to modernise UK design law?

The UK Intellectual Property Office (UKIPO) has recently launched its long-promised consultation aimed at reforming the UK's design law framework. This follows an initial consultation back in 2022, that collated views on a number of post-Brexit issues. The current consultation expands on some of the key areas from the initial consultation, with the government proposing reform in relation to unregistered design rights, computer-generated design protection and bad faith, among other areas.

The consultation noted that the UK's design sector is crucial for innovation and creativity, contributing £97.4 billion to the UK economy in 2019. Effective intellectual property (IP) protection is essential for the industry to continue to expand and drive economic growth, one of this government's key priorities. In light of this, the consultation highlights areas of weakness in the current framework and makes proposals to make the system more future-proof – simpler, more effective and better able to support creativity and innovation in the evolving digital landscape.

The consultation remains open until 27 November and presents a unique opportunity for interested parties to shape the post-Brexit future of design law in the UK. What are the proposals and their potential implications?

Design registration reviewed

A design registration only provides protection if the design is new and has individual character. A design that does not meet these requirements can be declared invalid and removed from the register, but, under the current law, the UKIPO is not able to object to a non-novel design. As such, designs not meeting these requirements can be registered and the onus is on third parties to pay to invalidate these registrations.

The government is concerned that this places significant financial and administrative burdens on third parties. It is also aware that the approach could facilitate anticompetitive and bad faith behaviour, allowing applicants to register designs for well-known products or products that do not belong to them.

Search and examination

The UKIPO stopped searching and examining designs for novelty and individual character in 2006 to align its approach with the European Intellectual Property Office (EUIPO). Although the consultation does not consider the reintroduction of full search and examination due to costs and time constraints, it does propose several options to improve the current process.

The consultation seeks views on whether the status quo should be maintained, whether powers should be introduced to allow the registrar to carry out a search or whether a two-stage system should be introduced that would allow a design to be partially registered without a search but a full search and examination would be required to enforce a design.

The government does not express a preference for any of these options, save for discounting maintaining the status quo. Its intention is clearly to improve the quality of design registrations, while still trying to provide a quick and cost-effective route to registration. Arguably, introducing powers for the registrar could provide the most cost-effective route. However, searches would only be carried out under certain circumstances, for example, if the design appears generic, if the examiner knows it is similar to another design or where there are bad faith suspicions. This could lead to an inconsistent approach to design registration.

However, the two-stage system could risk disincentivising smaller designers from enforcing their rights due to the added cost of the second stage search and examination and could lead to delays in enforcement. It would also mark a significant change in the UKIPO's processes and a divergence from EUIPO practices, which could increase confusion and cost for designers seeking to use both systems.

Bad faith

Unlike trade mark law, UK design law does not currently include a specific bad faith provision. The consultation therefore seeks stakeholder views on whether the UKIPO should be able to object to applications filed in bad faith during the examination process.

The consultation proposes a targeted approach whereby raising a bad faith objection would require some indication that an applicant is not acting in good faith, for example, suspicious filing behaviour, refiling previously invalidated designs or applications using third-party product photographs or marketing materials.

The government suggests that this targeted approach would not significantly impact the time taken to register most designs and would reduce the financial, time and administrative burden for third parties.

Observation and opposition

Unlike with trade mark and patent law, UK design law does not have a mechanism allowing third parties to oppose a registration or to provide the UKIPO with observations on a design application.

The government therefore seeks views on the following options: maintaining the status quo, introducing a post-registration opposition period, introducing a pre-registration opposition period, or introducing an observation period. The UKIPO has proposed a time period of two months for the last three options.

Third‑party observation and opposition mechanisms can prevent problematic registrations but may add time and cost. It is currently possible to apply to invalidate a design after registration, so a post-registration opposition period may not have significant advantages over this existing route. As for a pre-registration opposition period, although publication of a design prior to its registration would not be novelty destroying in the UK, the government seeks views on whether this may have implications for filings in other countries.

Deferment Proposals

An applicant can currently choose to delay registration and publication of their design for up to twelve months. However, this is not an explicit provision in UK law. The government proposes introducing a specific deferment provision in the Registered Designs Act 1949 to provide an explicit legal basis for deferring designs.

The government's preferred approach would be to extend the period of deferment to 18 months starting from the earliest of the filing or priority dates (rather than sticking with the existing twelve months or extending to the 30 months as permitted by the EUIPO). Under this provision, both registration and full publication would be deferred and only basic information would be published, for example, the name of applicant, date of application and classification of the design.

The government is seeking views on these deferment proposals and how they interplay with prior use provisions. The current prior use provisions are only available to somebody who uses a registered design before the application date. For a deferred application, someone who starts using the design in the deferment period is not able to rely on the right of prior use.

However, the Registered Designs Act does provide that no infringement proceedings can be taken in relation to any infringement that occurs before the registration certificate is issued, which provides some protection for third parties who use a deferred design between the date of the application and of registration.

Animated designs and GUIs

One of the key aims of the consultation is to modernise the design framework to account for the significant advances in digital technology. The consultation sets out various options on how to make it easier for designers to file digital and animated designs on which it seeks stakeholder feedback. The government is open to introducing one of the following options or combining them:

• Option 1 – providing further guidance on what can be protected as a design.
• Option 2 – amending the legislation, for example, amending the definition of a design.
• Option 3 – allowing users of the design registration system to file moving/animated designs via a different file format.
• Option 4 – allowing an additional description to be added alongside stills/video clips.

The UKIPO notes that, while animated designs and graphical user interfaces, or GUIs, are already protectable under the existing law, amending the legislation would help provide clarity and future-proof the design law framework.

Computer-generated designs

The consultation notes the lack of clarity around the provisions providing protection for computer-generated designs without a human author, particularly as the courts have not yet provided guidance on these types of designs. These provisions apply only where there is no human author and therefore are separate to designs that are created with the aid of computers, which attract "standard" design protection.

The current provisions apply to registered designs and UK unregistered designs (but not supplementary unregistered designs (SUDs)) and they mirror those in copyright law, which are also contentious, lack clarity and are separately being .

Although the consultation sets out a number of reform options, the government's preferred approach is to remove the protections for computer-generated designs. This is unsurprising given that it has also proposed abolishing the similar provisions in copyright law. It would also bring the UK in line with other "leading AI nations" that do not provide protection for computer-generated designs without a human author – such as the US and most EU Member States.

Simplification of unregistered designs and overlap with copyright

In the UK, designs can be protected in a number of different ways, leading to a patchwork of overlapping rights, something that has become more complex post-Brexit. There is also a notable tension between the protection afforded by designs and copyright. One of the key aims of the consultation is to address these issues, presenting two simplifying options for feedback.

Retain SUD, abolish UKUDR

Firstly, the government could retain the SUD and abolish the UKUDR. This option is described as providing "maximum simplification". The appearance of the whole or part of a product would be protected for three years from first disclosure in the UK. 2D and 3D articles, including surface decoration, would be protected.

However, some designs that would have qualified for protection of a UKUDR would no longer be protected as a SUD. For example, purely functional aspects of a shape and configuration, aspects of a complex product not visible in normal use or the internal configuration of a product.

This proposal would have significant implications for designers; however, it would provide a high degree of harmonisation with the EU designs system. The consultation notes that this option has been included to help better understand what users value – simplification versus protection.

Consolidate the unregistered design framework

This option is described as providing the "maximum protection" and would provide protection for both aesthetic aspects, such as appearance, and more functional elements, such as shape and configuration.

Consolidation of the framework could involve: harmonising certain provisions but keeping two separate rights, creating a single consolidated right which is harmonised in some respect, or creating a fully consolidated right.

At a minimum, the government considers that harmonising the term of protection and qualification requirements is desirable to help simplify the system. As such, the consultation proposes that an unregistered design should be created when it is first disclosed to the public and that the term of protection should be five years.

Overlap with copyright

The consultation suggests that a further opportunity to simplify the legal framework for designers is to consider the overlap between design and copyright protection. Copyright protects, among other things, original artistic works – the legislation provides for a closed list of what amounts to an "artistic work" – the main overlap with design law being for works of artistic craftsmanship (that is, works of applied art).

In view of recent case law relating to works of artistic craftsmanship, the government's preferred position is to make no changes to copyright legislation. However, the consultation seeks views on other options. For example, amending the copyright legislation, which could include removing works of artistic craftsmanship from copyright protection, providing a definition of works of artistic craftsmanship or providing a new definition of originality for design articles.

Views are also sought on potentially updating the copyright exceptions framework, which could include reintroducing an exception for industrially manufactured items – providing a shorter term of protection, introducing a spare parts exception and harmonising it with the equivalent designs spare parts provisions or amending the panorama exception to allow works of artistic craftsmanship to be represented in new artistic works, such as photographs.

Post-Brexit issues relating to unregistered designs 

Prior to Brexit, a product could be disclosed anywhere in the EU (including the UK) and would have been protected as an unregistered Community design (UCD) in all Member States. Following Brexit, the UK created the SUD to provide an equivalent form of protection. However, there is now no mutual recognition of disclosure in the UK and EU. This means that a design first disclosed in the UK will be protected as a SUD and one first disclosed in the EU will be protected as a UCD. This adds a further layer of complexity for those operating across both markets.

The consultation sets out a number of alternative options, in addition to doing nothing, with a view to improving legal certainty and helping businesses who want to protect designs in both territories:

• Option 1 – unilaterally recognising that simultaneous disclosure of a product outside of the UK would give rise to a SUD in the UK. Clear requirements for what would constitute simultaneous disclosure would be provided. However, this would maintain asymmetry with the EU and the benefits would be limited to those disclosing outside the UK unless other countries make similar legal changes.
• Option 2 – introducing a grace period for unregistered designs, meaning that the first disclosure of a design outside of the UK would give rise to a SUD if subsequently disclosed or put on the market in the UK within a certain period of time. This option could add another layer of complexity and may disadvantage UK-based trade shows and events.
• Option 3 – creating a SUD following first disclosure anywhere in the EU which has come to the attention of the relevant trade circles in the UK. This option would recognise a disclosure in the EU for the purpose of creating a SUD, but it still has the issue of asymmetry of disclosure as a UK disclosure would not give rise to EU protection.
• Option 4 – the creation of a SUD following first disclosure anywhere in the world which has come to the attention of the relevant trade circles in the UK. This broadens the scope of option three but similarly would still involve asymmetry of disclosure.

IPEC small claims track

The consultation calls for evidence on whether registered designs cases under the Registered Designs Act should be permitted to be heard in the Intellectual Property Enterprise Court (IPEC) small claims track.

Opening this route could materially improve access to justice for small and medium- sized enterprises and independent designers by providing a cost-effective forum for lower value disputes.

Osborne Clarke comment

This is a wide-ranging consultation that is seizing the post-Brexit opportunity to consider potentially broad changes to the UK design law framework. Post-Brexit, the designs framework has become particularly complex and recent case law has illustrated the difficult line between designs protection and copyright. Simplification and clarity would be welcomed by those seeking to obtain design protection.

Although the government has indicated that it has some preferred reform options (for example, abolishing protection for computer-generated designs), the main purpose of this consultation is to solicit feedback on the numerous reform options proposed. The government has indicated that the feedback it receives will help shape its next steps and what policy or legislative reform it decides to pursue (if any).

This does mean that any reform may still be some way down the track, particularly if it is legislative in nature as this will be dependent on parliamentary time. However, responding to the consultation gives stakeholders an important opportunity to shape the future of the design law in the UK. The consultation closes on 27 November.

As for next steps, we can expect a government response once the consultation feedback has been collated but there is no indication of a timeframe for this at the moment.