Parliamentary copyright images are reproduced with the permission of Parliament
In an earlier post we looked at the patent related provisions in the Intellectual Property Bill. Today, it is the turn of the registered design related provisions, or more accurately, one specific part of the registered design related provisions: Clause 13 – “Offence of unauthorised copying etc. of design in course of business”.
Clause 13 introduces a criminal offence with respect to registered design infringement which is punishable by imprisonment of a term “not exceeding ten years” and an unlimited fine. As we see below this provision has generated some opposing views.
Criminal offences exist in respect of both trade mark infringement and copyright infringement (section 101(5) Trade Marks Act 1994 and section 110 Copyright, Designs and Patents Act 1988 respectively). These provisions in turn come from our obligations under Article 61 of the TRIPS agreement which states, in part, that:
Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity.
It is noted that TRIPS does not require criminal procedures in respect of any other IP right, such as registered design infringement.
So, if we’re not obligated to have such procedures then why does the Bill propose them?
The Hargreaves Review of Intellectual Property (IP) suggested that the system for protecting designs was difficult for business to understand and to use effectively (the high cost of the available civil sanctions being one area of concern). Following a consultation on the Reform of the UK Designs Legal Framework that was carried out in 2012, the Government Response noted that:
The Consultation asked whether criminal penalties should be introduced for the deliberate copying of a design right. To inform this proposal the Consultation sought evidence on the effectiveness of existing civil sanctions, asked what impact sanctions might have upon enforcement agencies and sought views on which design rights, including RCDs, should attract criminal sanctions.
The majority of respondents who answered questions on this topic supported the introduction of criminal sanctions for the deliberate copying of a design right.
So, as a result the Intellectual Property Bill has incorporated Clause 13 and the criminal Registered Design provisions.
Based on the results of the Consultation and comments from groups such as ACID (see the Anti Copying in Design survey here) you might be forgiven for thinking that this provision has widespread support.
However, an alternative point of view is forcefully put in Jane Lambert’s blog nipc (see Jane’s post “The Intellectual Property Bill” and scroll down around three-quarters of the post to the section “Criminalizing Registered Design Infringements”). Some meaty and compelling arguments are also present in the submission by Sir Robin Jacob and others to the UKIPO on the issue of criminal sanctions.
One of the arguments put forward in these alternative views is that criminal courts are unsuitable arenas for issues such as design infringement to play out.
Is there an alternative that might make it easier for design owners to enforce their rights? Well, long time followers of IPcopy may remember our piece on the Small Claims Track in the Patents County Court. Currently the small claims track does not extend to registered designs (though it does cover unregistered designs). It seems to this IPcopywriter at least that amending the PCC Small Claims Track to allow registered design cases to be heard may provide a neater way of tackling at least some of the perceived problems (cost, speed) of the current range of civil sanctions.
If you feel that the criminal provisions are a step in the wrong direction what can you do? Well, the IP Bill is currently awaiting the Committee stage in the House of Lords. Perhaps it is time to start lobbying your MP!
Apropos nothing in particular, Jane Lambert noted on Twitter that two countries that do currently criminalise design infringement are China and Saudi Arabia.
What’s your view? As always, please feel free to share your take on things by visiting our comments section below.
Mark Richardson 31 May 2013
As an aside, it is interesting to look at the IPO’s impact study on this subject. The only two options considered were “Do Nothing” or “Introduce a criminal offence”! A shame that this study didn’t explore all the options.
Aside number 2: the IPO press release surrounding the Intellectual Property Bill contains the following section (the section that caught our eye has been underlined)
CEO of Anti Copying in Design (ACID) and Vice Chair of the Alliance for Intellectual Property, Dids Macdonald, said:
“It’s great that the Government has taken a positive first step to protect designers against design copying with a proposal to introduce criminal sanctions for deliberate registered design infringement; this will encourage more designers to register their designs. However, we hope that in the future this will apply to those who rely on unregistered rights, which comprise the majority of designers in this country.”
Related links
CPS on Intellectual Property Crime – http://www.cps.gov.uk/legal/h_to_k/intellectual_property_crime/
IPcopy 
I just want to make two points clear beyond peradventure:
– I have every sympathy for designers of all kind whether graphic, product, service and so; and
– no sympathy whatsoever for infringers of their designs especially those who do so deliberately.
I have advised and represented designers in the North of England for many years many of them pro bono at my clinics in Barnsley, Bradford, Huddersfield, Leeds, the Wirral and elsewhere. I have campaigned for better redress for SME ever since the consultations on the 2004 Patents Act in 2003. I was in at the birth of the patent opinions service in the debate between Sean Dennehey and Richard Gallafent at the Patent Office in 2003. I hope that my commitment to SME of all kinds including designers is beyond question.
It is the responsibility of those of us who object to criminalizing patent or registered design infringement to suggest alternatives. I suggested extending the jurisdiction of the small claims track of the Patents County Court to registered designs in my article. That should not be a problem as the district judges already have jurisdiction over unregistered Community designs cases. Any case of any difficulty could be listed before Mr Recorder Campbell or Miss Recorder Michaels or even, in an particularly difficult case, before Mr Justice Birss himself.
Another suggestion is to insert an additional damages provision for flagrant infringements along the lines of those in Part I (copyright) and III (design right) of the Copyright Designs and Patents Act 1988.
Yet another solution would be for ACID to negotiate inexpensive insurance cover for its members. I know of at least two brokers who have indicated that they would grant such cover for my inventors if there were enough of them. ACID once ran such a scheme.
Responsibility for enforcing an IP right must rest with the owners of that right. At a time that local authorities are cutting back on essential services for the weakest in society it is quite wrong to impose on trading standing wrongs the duty of enforcing a private property right at taxpayers’ expense. I would go so far as to call it immoral but then that’s my Northern, Quaker, Liberal prejudices coming out.
This is a not a great idea. Sir Robin Jacob also made this one of the focuses of his Bentham Address – according to UCL’s website, this was filmed and “will be available to view soon”. http://www.ucl.ac.uk/laws/events/index.shtml?past
If this is going to go through, the problem could be ameliorated by sensible defence provisions (though it of course would be better not to have this in the first place). But the defences are not broad enough. Sectiion 35ZA(4) will read –
“It is a defence for a person charged with an offence under this section to show that the person reasonably believed that the registration of the design was invalid”
Evaluating designs is quite a subjective process, and it makes sense to have this defence. But invalidating a registered design can be quite difficult, and unless someone has really studied the prior art, a view on validity can be difficult to come by. What is normally much easier is to say is – the design creates a different overall impression, so there is no infringement. This does not form the basis of a defence. So, a party who has gone to a lawyer, and had received professional advice that there is little risk of infringement as the designs look different could still be criminally liable for his actions – whereas a party who has received professional advice that a design is invalid has a defence.
I can’t see the logical basis for this.