Inter-House Ping Pong

The Report Stage and the third reading of the Intellectual Property Bill took place on 12 March. After some significant discussion time over the last few weeks on all the provisions within the Bill, the IP Bill leaves the Commons with amendments to Clause 3 (Qualification criteria for Unregistered design right) and Clause 13 (the criminal offence for copying a registered design) only. A full list of the Commons Amendments can be found here and marked up versions of the two clauses in question are below.

Since the Commons has made amendments to the Bill, the Lords needs to have another look and (i) agree to the amendments; (ii) disagree with the amendments; or (iii) propose an alternative. When a Bill passes back between the two Houses it is referred to as “ping pong” (or whiff whaff if you prefer….). When the exact wording has been agreed by the two Houses then the Bill will be ready for royal assent. Whiff whaff is currently scheduled for 2 April 2014.

We have taken a quick look at the changes made by the Commons to the Bill down below.

Clause 3 now looks like this:

3      Qualification criteria

(1)In section 213 of the Copyright, Designs and Patents Act 1988 (design right), in subsection (5), in paragraph (b), omit “person by whom and”.

(2) In section 217 of that Act (qualifying individuals and qualifying persons), in subsection (1)—

(a) omit the definition of “qualifying individual”, and

(b) for the definition of “qualifying person” substitute—

““qualifying person” means—

(a) an individual habitually resident in a qualifying country, or

(b) a person who has in any qualifying country a place of business at which substantial business activity is carried on.

(b) a body corporate or other body having legal personality which—
(i) is formed under the law of a part of the United Kingdom or another qualifying country, and
(ii) has in any qualifying country a place of business at which substantial business activity is carried on.”

(3) In that section, omit subsection (4).

(4)In section 218 of that Act (qualification by reference to designer)—

(a) in subsection (2), omit “a qualifying individual or, in the case of a computer-generated design,”,

(b) in subsection (3), omit “a qualifying individual or, as the case may be,”,
and

(c) in subsection (4), omit “qualifying individuals or”.

(5) In section 220 of that Act (qualification by reference to first marketing)—

(a) in subsection (1), omit paragraph (a) (and the following “and”), and

(b) omit subsections (2) to (4)

“(a) in subsection (1)(a), omit “who is exclusively authorised to put such articles on the market in the United Kingdom”,
(b) in subsection (2), for “requirements” substitute “requirement”,
(c) in subsection (3), for “those requirements” substitute “that requirement”, and
(d) omit subsection (4).

(6) In section 264 of that Act (index of defined expressions), in the Table, omit the entry for “qualifying individual”.

(7) This section applies only to designs created after the commencement of this section.

In clause 3, the term “qualifying person” for the purposes of unregistered design rights has been amended to clarify that when the term refers to a body corporate then this needs to be a company formed either in the UK or a country that offers reciprocal rights. This is to ensure there is balance in the Bill and ensures that countries that do not offer reciprocal recognition of design rights cannot benefit from recognition of design rights in the UK.

Clause 13 now looks like this

13     Offence of unauthorised copying etc. of design in course of business

After section 35 of the Registered Designs Act 1949 insert —

35ZA Offence of unauthorised copying etc. of design in course of business

(1) A person commits an offence if—

(a) in the course of a business, the person intentionally copies a registered design so as to make a product exactly or substantially to that design

(i) exactly to that design, or
(ii) with features that differ only in immaterial details from that
design, and

(b) the person does so—

(i) knowing, or having reason to believe, that the design is a registered design, and

(ii) without the consent of the registered proprietor of the design.

(2) Subsection (3) applies in relation to a product where a registered design has been intentionally copied so as to make the product exactly or substantially to the design 

(a) exactly to the design, or 

(b) with features that differ only in immaterial details from the design.

(3) A person commits an offence if—

(a) in the course of a business, the person offers, puts on the market, imports, exports or uses the product, or stocks it for one or more of those purposes,

(b) the person does so without the consent of the registered proprietor of the design, and

(c) the person does so knowing, or having reason to believe, that—

(i) a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly or substantially to the design to the design or with features that differ only in immaterial details from the design, and

(ii) the design is a registered design.

(4) 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.

…

35ZC Section 35ZA: forfeiture in England and Wales or Northern Ireland

(1) In England and Wales or Northern Ireland, a person who, in connection with the investigation or prosecution of an offence under section 35ZA, has come into the possession of relevant products or articles may apply under this section for an order for the forfeiture of the products or articles.
(2) “Relevant product” means a product which is made exactly or substantially to a registered designto a registered design, or with features that differ only in immaterial details from a registered design, by copying that design intentionally.
(3) “Relevant article” means an article which is specifically designed or adapted for making copies of a registered design intentionally.

Clause 13 has been amended with reference to terms already used in the Registered Designs Act 1949. This helps define how close a copied design would need to be to the original before it fell within the scope of this clause. The amendments to the clause also ensure that unintentional copying is not caught by the offence. The government argued that these amendments would provide a more precise test for the courts. It is noted that the opposition to this clause revolved around whether criminal sanctions are appropriate for design infringement (I would say no! see here, here or here) and whether the clause should be extended to cover unregistered designs (again, I would say no!).

Mark Richardson  31 March 2014