Design right re-design – an opportunity for UK business to shape design protection to suit its needs

No items found.
​
August 22, 2012
#
Litigation
Table of contents
  • Toc Heading
  • Toc Heading

The UK Intellectual Property Office (UK IPO) has recently published a consultation document on the proposed reform of the UK Designs Legal Framework. This follows on from earlier research and public consultations that concluded that changes needed to be made to the legal system for protecting designs in the UK (please see here for an EIP newsflash on the earlier consultation).

The consultation document leaves no doubts as to the critical importance of design to the UK economy, but seeks to determine whether the underpinning framework for the ownership and protection of design is a help or a hindrance to business, particularly as the Hargreaves Report raised questions over the current protection regime. As explained in the consultation document: “The proposals can be grouped. There are some proposals that aim to resolve uncertainties around the scope of protection offered by design rights. A second set of proposals is intended to simplify laws surrounding ownership of unregistered and registered design. We also want to improve the regime for enforcement of design rights and enable people to more easily understand the design rights held by others so as to be able to avoid dispute and conduct business. Lastly there are some other miscellaneous things that it has been suggested the IPO could do to improve the design IP framework.”

More specifically, the report poses the question as to whether the deliberate copying or infringement of design should be a criminal offence, similar to the one that exists for similar activity in relation to trademarks and copyright. It also seeks to promote a discussion over:

“…other things that can be done to help businesses avoid legal dispute over design right; resolve those disputes more quickly and cheaply when they do arise; and facilitate designers and design businesses collaborating to create new work.”

In addition to the consultation document itself, the UK IPO has produced several reports that assess the likely impact of the proposed changes, for example in terms of the scope of design protection and also on criminal sanctions for design infringement. These reports are available via the UK IPO’s website.

For those working with designs this provides an opportunity to help shape the future of UK policy and legislation in this area. Should you wish to submit your views on the consultation documents, a response form is available here. Please note that the closing date for responses is 2 October 2012.

By Iain Russell

Recent Case Reports

See all Case Reports

UPC Court of appeal issues final decision, despite no finding on infringement at first instance
30 March 2026
In Rematec v Europe Forestry, the UPC Court of Appeal overturned the Mannheim Local Division’s revocation of the patent and, applying Article 75(1) UPCA, issued a final decision on both validity and infringement despite no infringement finding at first instance. The Court adopted a narrower, description‑led approach to claim interpretation, confirmed the patent’s validity, found infringement, and granted final remedies without referring the case back to the Court of First Instance.
​
Litigation insurance as security for costs
30 March 2026
In Syntorr v Arthrex, the UPC Court of Appeal clarified that while litigation insurance is not itself a form of security under Rule 158 RoP, it is a relevant factor when deciding whether security for costs should be ordered at all. By failing to consider the claimant’s insurance policy, the Munich Local Division wrongly exercised its discretion. The Court set aside the €2 million security order and confirmed that insurance can mitigate concerns about cost recoverability.
​
National law applies to claims for loss of profit if the events occurred before the UPC came into force
30 March 2026
In Fives v REEL, the Hamburg Local Division of the UPC dismissed a standalone damages action despite prior findings of infringement. Although the UPC was competent to assess damages, the court held that national law applied because the relevant events pre‑dated the UPC’s entry into force. Applying German law, the court found that the claimant had not proven causation or lost profit, highlighting the demanding evidentiary burden for price‑reduction damages claims and the importance of substantiating counterfactual tender outcomes.
​