New IP Laws May Affect Design Rights

A senior judge has warned that recent changes to intellectual property laws may lead to a shift in what the law considers “designs”.

His Honour Judge Hacon said this week that the wording introduced under the Intellectual Property Act, which came into force in October, may diminish the rights designers have in unregistered designs.

Judge Hacon, who sits in the Intellectual Property Enterprise Court, did not go as far to make a ruling on the matter, arguing that the issue was not central to the particular dispute he was considering.

However, he did say that the new legislation may help to reconcile the differing definitions of “design” in the UK’s Copyright, Designs and Patents Act and the EU’s Design Regulation.

“There is no reason to suppose that Parliament intended the new definition of ‘design’ in [the CDPA] to be identical to that in the Design Regulation and plainly it isn’t,” said Judge Hacon.

“However for policy reasons of consistency where that can be achieved, there is much to be said for treating ‘the design of the shape or configuration (whether internal or external) of the whole or part of an article’ as having a meaning as close as possible to ‘the appearance of the whole or part of a product’.

“One route to such a result would be to interpret the effect of [the changes made to the definition of ‘design’ under the CDPA by the Intellectual Property Act] as being that it no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant’s article, i.e. no more UK unregistered design rights in abstract designs.”

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Nigel is the Managing Partner and Head of Litigation and Dispute Resolution in the London office of Mackrell Turner Garrett.