There's a new IPO report on designs infringement - game-changer or stating the obvious?
Four years is a long time in politics but not a particularly long time in the land of government reports. Just under four years ago the UK Intellectual Property Office commissioned research to address the lack of existing data on design infringement. The results of that research were recently published.
Designs are an important part of the UK economy. In 2015, the UK design economy was worth 6% of the nation’s total economy. It was therefore considered a worthwhile exercise to review the current designs regime and identify opportunities for improvement.
The report includes some positive indicators about the design sector "there is some evidence that the design sector as a whole is thriving, and that the use of design improves the productivity of firms in other sectors." It is less positive about the legal mechanisms which are designed to protect this: "there is still little knowledge based on reliable evidence about the effectiveness of the legal system to achieve its aim [to encourage innovation and reward the design owner]."
There is a lack of appreciation for and awareness of unregistered designs.
Most designers (98.3%) have had their designs infringed (and actively monitor for infringement).
The most common response to infringement is to send a letter to the other party (around 30% contact a lawyer). However, many avoid taking legal action due to concerns about the cost although they recognise that the infringement damages their business and wastes staff time.
Most infringers will cease and desist when challenged by the design right owner but larger companies were more likely to ignore the claim or allege that a design isn't valid.
Only a small number of respondents reported international infringement of their designs. China was identified as the most commonly infringing country followed by the USA
Unregistered vs unregistered designs
One point which particularly struck this Kat was that the survey respondents considered patents to be the most effective means of protecting designs. This is an odd response which may be connected to either the type of innovation or a misunderstanding about the difference between patents and registered designs. Even more strangely unregistered designs were rated at the bottom of the list of useful rights for the designs industry when in practice it is usually the most useful and versatile right. This is confirmed by the report's analysis of court cases which show that unregistered design rights are more commonly litigated and have a much higher success rate than registered designs. It is notable that the authors of the report expected the opposite result suggesting a lack of appreciation by the authors of the report for just how useful unregistered rights can be. I conducted a similar review of IPEC cases for Rouse (on a less formal basis) back in 2012, at that time unregistered design rights were successful in every reported case. The pattern does not appear to have drastically changed in the intervening years
The report's recommendations were primarily based on how a future report and data collection should be carried out rather than more pro-active plans for the design industry. These recommendations were:
data should be collected regularly by the UK IPO through their communication channels and educational projects.
any future research should aim to increase participation amongst potential owners of unregistered design rights.
more consideration should be given to the wording in future questionnaires: it should be more precise to provoke more informative responses, or more granular detail.
negative questioning (e.g. asking what respondents have not heard of) should be avoided.
The only suggestions regarding how to enable the design sector to better protect design rights, were:
Education: using communications channels, and working with trade associations, to teach and inform designers and design rights owners about their design rights.
Accessible guidance: providing guidance in plain English to the court process that is specifically tailored to the design sector.
Pro bono legal advice: encouraging the legal profession to offer more pro bono advice to designers and design rights owners, and to always be clearer about long-term costs that may be incurred when defending design rights.
These recommendations are not particularly original and not a million miles from what is already available.
ACID (Anti-Copying in Design), a campaign organisation for the design sector in the UK was particularly unimpressed. As they put it "Is this what we have waited nearly four years for?" ACID's CEO, Dids Macdonald, OBE succinctly summarised the ACID criticisms: “it fails to serve the design community and meet its own objectives." In particular, they noted that: The Research was based on Australian Patent Research. This may explain the odd responses referred to above. As ACID noted, in Australia, there is no separate protection available for unregistered designs. Further, the EU, including the UK, takes a different approach to designs to Australia, the US and China. In the EU, the barrier to obtaining the right is low but enforcement is more challenging. Elsewhere it is harder to get a design patent but once obtained it tends to be a stronger right which can withstand a validity attack. As ACID notes, the low costs barrier and flexibility of the EU system is generally preferable for designers than a system which has a higher barrier to entry. There was only one Focus Group meeting to discuss the questionnaire. According to ACID, the result was a complicated questionnaire with confusing language. Copyright was not given enough attention – the exclusive focus on designs missed the reality that designers tend to rely on a patchwork of IP rights and meant that many issues which affect the industry were given insufficient attention. They raise a great point regarding the off position adopted by online takedowns whereby copyright is typically accepted without much question but unregistered designs are not permitted. This leaves designers at a significant disadvantage. Some of the other criticisms were a little less fair. The report didn't consider 3D printing but the spectre of 3D printing destroying the design industry has been repeatedly raised over the last decade and so far failed to materialise. Is "having a methodology for measuring incidences of 3D printing infringement" a high priority? In this Kat's view, getting the basics right is more important at this stage and the law as it stands is adequate to deal with any 3D printing infringement should it become a more mainstream concern. Finally, the report did consider whether a criminal offence of design infringement would be helpful by looking at what the levels of current infringement would meet the proposed test of criminal infringement. The report concluded that this was at around 5-16% of infringing incidents (i.e. examples of where the design infringement was identical or nearly identical).