In part the Act is intended to address shortcomings in the legal protection afforded to designs (the overall visual appearance of products) that were identified by the Hargreaves Review of Intellectual Property and Growth in 2011. In particular, as far as designs are concerned, the goals of the Act include simplifying design law to enable businesses to better understand what is protected, harmonising UK and European law, and improving the enforcement of designs.
And it is enforcement which has generated the most controversial provision of the Act. Section 13 will for the first time make copying a registered design a criminal offence, bringing it into line with copyright and trade mark law, with those convicted facing a prison sentence of up to 10 years.
However, in a concession to those worried that the Act might punish those who inadvertently copied others' designs (among them vacuum maker Dyson), the initial wording of the provision was changed to clarify that the copying must be intentional. But even with this revised wording, concerns remain that designers may be inhibited from using existing designs as a point of reference for innovative new work.
And for ACID (Anti Copying in Design), an organisation that represents the interests of designers, the Act does not go far enough. Section 13 only applies to registered designs, that is designs which have been recorded on the registers maintained by the UK and European Community intellectual property offices. However, the majority of designers are not prepared to incur the expense of registering their designs, and prefer to rely instead on so-called unregistered design right, which arises automatically when an original design is created. By failing to include criminal sanctions for copying unregistered designs in the Act, ACID say, there is no effective deterrent against what is a widespread problem in the industry.
The Government has defended the omission of unregistered design right from criminal sanctions, arguing that because unregistered designs are not available for inspection on a public register, it is much harder for third parties to know whether they are infringing those designs or not. While there is some merit in this position, it is inconsistent with copyright law, where criminal sanctions can apply to copying, even though the underlying copyright is unregistered.
However, despite the controversy, all sides are agreed that the new Act is a step in the right direction. The provisions of the Act are expected to come into force from 1 October 2014.
(This blog was also published by The Huffington Post here.)