UKFT is working with the UK Government to ensure the key issues for the UK fashion and textile industry are addressed as part of the new review into the UK designs system.

The UK government’s ambition is to have an effective intellectual property (IP) system to make the UK the best place in the world to innovate: to help UK products stand out, demonstrate quality, and find consumers in a competitive global marketplace. Brexit gives the UK new flexibility and so the UK Intellectual Property Office (IPO) is reviewing the system to ensure the UK’s domestic designs framework is fit for the future, to inform of the design systems’ contribution to UK economic growth and inform decisions on legislative action. The consultation can be found here.

UKFT and the British Fashion Council (BFC) have been pressing the UK Government to undertake this review of the UK designs system and have met with the UK Intellectual Property Office (IPO) on several occasions to highlight and discuss industry wide issues. To create the positive changes we are looking for, it is of vital importance that the IPO receives as much evidence and input as possible from stakeholders.

Ask for Evidence

A summary of the consultation can be found below. The IPO is keen to receive evidence of:

• Issues experienced in using and/or enforcing both registered and unregistered design rights
• Worked through examples that “tell the story” of issues faced and the impacts they have
• Importantly they want suggested solutions on how the current system can be improved for businesses

Main Points For The UK Fashion & Textile Sector

Protection of Intellectual Property is a key issue for the fashion and textiles industry, which relies on creativity, particularly in relation to its designs. We have increased the cost and complexity of IP protection in the UK by leaving the EU wide systems for the protection of trademarks and designs. We need to ensure that the UK is seen as:

• Having a very international approach and fit for purpose IP system, reciprocity is key
• A territory that is a safe harbour for brand owners (from emerging designers to large corporates, based in the UK or selling into the UK) with the availability of unregistered designs and controls over matters such as exhaustion of rights. Without this many businesses may prefer to focus on expansion in other markets.
• The EU is undertaking its own consultation of design rights, and given that these issues impact both businesses established in the UK and the EU we are asking that the UK and EU’s positions are aligned

The main issues to highlight are:

• Cost of registration and enforcement and the Complexity of the System
  • Prior to Brexit, designers regularly relied on Unregistered Community Design rights, which provided unregistered design rights throughout the EU (including the UK). This was a cost effective mechanism given the number of products and seasonal ranges produced.
  • The EU withdrawal agreement did not allow for designers first showing designs in the UK to continue to rely on Unregistered Community Designs in the EU. This means that a designer first showing designs in the UK may not have unregistered design rights in the EU. In addition, the Supplementary Unregistered Design right that was created in the UK in anticipation of Brexit that mirrors Unregistered Community Designs only provides rights in the UK and may exist only if designs are first shown in the UK. This means that a designer first showing designs in the EU may not have unregistered design rights in the UK.
  • It may be possible to secure unregistered design protection in both territories by disclosing a design simultaneously in both the UK and the EU (for example via a website, or social media) but this is currently untested. This means that for designers to have certainty of obtaining design protection in the UK and EU they need to register designs in both territories. Whilst design filing is cheaper than filing trade marks, this is still a cost that many emerging and established businesses cannot afford. Equally, many designers only seek to rely on design rights when an infringement occurs, and at that point it may be too late for the designer to seek registered protection which is only available for 12 months after public disclosure.
  • The complexity of the design system in the UK provides challenges for businesses of any size. Without automatic protections, many are likely to have difficulty in enforcing their rights and may choose to market, invest and/or locate elsewhere.

Summary of the Consultation

Search and examination

Currently the IPO does not search/examine whether an a design is “new and has individual character” – the onus is on applicants to consider this, and competitors can apply to have a design invalidated if a registered design does not meet these requirements. With increased use of technology and now that we have left the EU, should searches be reinstated? The consultation sets a number of ways in which this could be done, and recognises that it would lead to higher application fees and possible unintended consequences on other areas of the registered designs frameworks.

Simplifying the designs system

Overlapping rights

There are currently four types of overlapping design protection that have arisen as a result of Brexit: registered designs, supplementary unregistered design, continuing unregistered design and UK unregistered design right (“design right”).  There is also overlap into copyright when a product is an “artistic work”. These all protect different aspects of a product, they also have different qualification requirements, terms of protection, restricted acts, exceptions and limitations. A clearer distinction between these would simplify the system, removing complexity that causes problems, particularly for those who lack legal representation, or competitors assessing their freedom to operate.

Differences between unregistered design rights

The creation of supplementary unregistered design alongside the UK unregistered design means there are two forms of unregistered designs in the UK but there is inconsistency between them, including spare parts exceptions and qualification requirements. The consultation asks for issues or benefits in retaining these differences.

Definitions

The IPO is also seeking views on definitions within registered designs, for example “get-ups”, that can cause difficulty when examiners consider the validity of an application for the “get-up” of a product.

Disclosure of supplementary unregistered designs

A key concern of the fashion and textiles industry is discussed in the consultation, namely the disclosure of supplementary unregistered designs. Since the UK’s departure from the EU, a product is now only protected in the territory in which it is first disclosed. The lack of an agreement with the EU to recognise disclosure reciprocally is a cause for concern – businesses that rely on unregistered designs now need to choose where to disclose and protect their product. The government understands that designers would like to be able to obtain unregistered protection in both territories, but the solution is not simple. Making the EU – or indeed any country or territory – a qualifying territory for the supplementary unregistered design may not be straightforward. A full assessment of all impacts, both positive and negative, would need to be carried out to determine whether this is a viable option. It has been suggested that simultaneous disclosure may provide a solution. This could be achieved by live-streaming in the territories concerned or disclosure on a digital platform. However, this approach is untested in the courts. There are also unresolved questions about whether any delay in transmission could destroy the novelty of a design. It is also untested as to whether a disclosure in a digital environment constitutes a valid disclosure under supplementary unregistered design legislation. We would need to consider the consequences of allowing a live-streamed disclosure from anywhere in the world giving rise to UK design protection.

Future Technologies

Future proofing the designs framework that considers emerging and future technologies. The use of artificial intelligence, digital and dynamic designs, both to create designs and the use of designs in digital environments such as avatar content in online gaming is increasing and driving innovation. The IPO wish to create the correct balance between protection of human created designs and computer generated designs and also consider 3D printing that is used to make 4D products.

Better Regulation

Deferment provisions allows applicants flexibility in respect of publication, to reduce the risk of a design being copied before it’s marketed. Deferment currently lasts for 12 months, and views on extending this are being sought, for example to align with patent application timeframes by extending to 18 months.

Enforcement

It is recognised that the cost of enforcing rights can be prohibitive to individuals and SMEs, and so the consultation is inviting those with experiences they can share in enforcement and views on whether copying of unregistered designs should be criminalised (in line with the criminalisation of registered designs in 2014).

UKFT members with questions: Please contact info@ukft.org.