The Government has just published the responses to its consultation on the shake-up of the intellectual property (IP) system, particularly with respect to the protection of unregistered and registered design rights that date back to the eighteenth and nineteenth centuries.
In the UK there are four different and to some extent overlapping forms of design right protection: a registered right available from the Intellectual Property Office (IPO); a registered right available from the Office for Harmonization in the Internal Market (OHIM) and unregistered design rights recognised in the UK and other EU jurisdictions.
If this sounds like a minefield for a design rights holder – well, it is!
On top of that, there may be circumstances in which copyright and trade mark protection may also be relevant.
This additional layer of complexity is nothing short of a nightmare for rights holders seeking to protect their designs from bottles and cartons, haute couture through to industrial and manufacturing designs.
From a legal marketing perspective, there’s confusion as to what forms of design are covered, how long the rights last, what’s required to prove infringement and the penalties that should be imposed, including the possibility of criminal sanctions.
Since 2003, the EU-wide Registered Community Design has been an alternative source of registered design protection in the UK but judging from the responses to the Government consultation, the patchwork of laws in this area are in drastic need of reform.
In light of this, the well-publicised Hargreaves Review on IP and growth, published in May 2011, was an excellent step in the right direction, with the Government pretty much rubber stamping its conclusions.
The devil, as they say, is in the detail and the legal profession and design right holders are holding their breath as the UK inches closer to a sensible reform of the current byzantine situation, although no date has yet been formally announced when the reforms will take place.
Which is worrying given that about £165m in revenues is lost every year as a result of design right infringement.
However, on reviewing the evidence presented in the submissions to the Government’s consultation process, those expecting some form of criminal sanctions where designs are ripped off are going to be left disappointed.
Some of those arguing for the handcuffs to be put on the rip off merchants say that a new offence of copying with the intent to deceive a member of the public as to its source or from slavish imitation of a design should do the trick.
Others argued that the standard to be applied in criminal cases should be where someone knew or had reason to believe a design was subject to a registered right and where the infringing article was a copy intended to mislead as to the identity of the manufacturer.
Criminal law protection of unregistered design rights is a whole new ball game and is fraught by even more obtuse legal argument.
At the root of these arguments is the contention that design rights should attract a criminal sanction in line with copyright and trademarks.
If only it could be as simple as that. But it isn’t.
It comes down to what possible effects criminal sanctions may have.
The threat of a criminal record may have a chilling effect on honest traders, for example, defendants may settle for fear of receiving a criminal record. But there’s no evidence that suggests that criminal sanctions would act as a massive deterrent for those determined to steal designs.
More likely to curry favour with the Government is the point made by IP legal professionals that the scope and validity for registered as well as unregistered design rights would be too complex to be heard in non-expert criminal courts. It’s likely that the judge and jury wouldn’t be able to weigh up the evidence as to whether a design was valid and had been infringed with the requisite fore-knowledge required for a criminal conviction to be safe.
And then there’s the practical issue of specialist knowledge required in order to prosecute such cases with the wider argument of whether the public purse should be used to protect the interests of private enterprise.
Ardi Kolah is the author of Guru in a Bottle® Essential Law for Marketers (£19.99), published by Kogan Page and is the CIM’s Book of the Month. Click on the book to order your copy today!