John Coldham, Director at Wragge and Co tells Cosmetics Business what we need to look out for.
The most controversial change is the introduction of criminal sanctions for intentionally copying registered designs. Where a person or company is found guilty of copying a design, despite knowing or having reason to believe it is registered, they may face imprisonment for up to ten years and/or a substantial fine. The sanctions aren't limited to those doing the copying - they extend to anyone offering, marketing, importing, exporting, using or stocking the design, provided that person has reason to believe the design has been registered and intentionally copied.
There is a defence for a company (or person) who reasonably believed the registered design was invalid, or that it was not infringing any design rights. What constitutes "reasonable belief" is not yet clear, but where inspiration for a design has been taken from elsewhere (as is so often the case), it would be sensible to get a third party opinion that can be used to demonstrate a reasonable belief that your design does not infringe.
The other key change is that, absent any agreement to the contrary, the ownership of UK unregistered designs will now vest in the designer - not in any person or company who has commissioned the design.
This change brings the UK position for ownership of unregistered designs in line with that relating to Community designs, and reiterates the need to ensure that clear contractual provisions are in place when designs are being commissioned.
The new ownership provisions will not apply to designs created before 1 October 2014, and will not affect any contractual agreements already in place.
