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.”
CPS on Intellectual Property Crime – http://www.cps.gov.uk/legal/h_to_k/intellectual_property_crime/