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Should there be criminal penalties for design infringement?



James Nurton


The most radical proposal in the UK government’s IP bill, published this week, is the introduction of criminal penalties for infringing registered designs. Will that deter copiers or constrain designers?

The UK government published an IP bill this week. I expect it will be of most interest to designers and design lawyers (do they exist?) as it includes welcome initiatives such as the introduction of a design validity opinion service and accession to the Hague Agreement.

But probably the most interesting and controversial part of the bill is section 13 "Offence of unauthorised copying etc of design in course of business" which introduces the possibility of criminal penalties for infringing a registered design (including a prison term of up to 10 years).

This is something groups such as Anti-Copying in Design (ACID) have long lobbied for. And, indeed, ACID’s CEO Dids Macdonald is quoted in the BIS statement on the bill, saying: "It's great that the Government has taken a positive first step to protect designers against design copying with a proposal to introduce criminal sanctions for deliberate registered design infringement; this will encourage more designers to register their designs."

I’m not so sure. On one hand, I can understand that designers feel criminal penalties could be an extra deterrent to copyists (and are already available for copyright and trade mark infringement). On the other hand, will designers now feel constrained by the fear of being found to infringe a registered design? Will they also have to track the thousands of registered national and Community designs? The recent litigation between Apple and Samsung in the UK concerned registered Community designs: in the trial, Judge Colin Birss found there was no infringement. But if he had found otherwise, under this law would he have been compelled to send Samsung executives to jail?

In fact, there’s good reason to believe that, as drafted, the bill won’t change much. An infringer must know, or have reason to believe, that the copied design is a registered design - so unwitting infringement is not caught. There are defences where the person charged "reasonably believed" that the design registration was invalid or showed that the design was not infringed. There is also extra protection for those further down the distribution chain: in these cases it must be shown that the design has been copied "so as to make the product exactly or substantially to the design".

In other words, this bill may generate some nice arguments for lawyers but I would be surprised if it leads to many fines or prison sentences.

The bill’s Second Reading is on May 22. There does seem to be growing interest in IP issues in the UK Parliament, so hopefully some of these questions will get aired. In the meantime, if you have a view on this question, send us your comments or take part in the vote on our LinkedIn page.

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