|19 May 2016|
UK Government proposes an amendment to the Registered Designs Act 1949 and Regulation 3 of the Community Design Regulations 2005 to allow design owners to mark their products with a relevant website address as a way of providing public notice of their UK and Community registered designs intellectual property rights.
One of the benefits of owning a Registered Design Right is the official right to mark or stamp the word ‘registered’ alongside the relevant registered design number(s) on products as a measure against infringers claiming innocence as an infringement defense.
Therefore distinctly marking the product would deter infringement and eliminate ‘innocence’ as a defense.
However, unlike the USA laws, the UK has not allowed markings to include a web address as an acceptable means of notifying the change in registration status. It is illegal to retain claims to ‘registered design status’ stamped into products and packaging when the registration expires.
As such many design owners chose not to include the registered stamp and number on the product due to the time and cost of product recall and high wastage, post registration expiry date.
The good news is that following consultation and review the Government proposes that the current designs legislation should be changed to allow design owners to mark their products with an IP Rights URL / web address that directs to meta data pertaining to the design registered status.
In doing so, it also provides greater opportunity to designers to include more detail about the design and design owner as well as make it fast and easy for those concerned to locate the information. It eliminates the problem of product recall and high wastage cost as dedicated web sites and IP Tags are fast, easy and cost efficient to update.
The acceptance of web site product markings was introduced in the Intellectual Property Act 2014 for patents and will now extend to Industrial Designs. The amendment to the Registered Designs Act 1949 and Regulation 3 of the Community Design Regulations 2005 will likely adopt very similar wording.
Creative Barcode participated in the call for evidence and consultation alongside design right and IP owners, lawyers, company and industry representatives and design users – all of whom were supportive of the amendment to include a web address as another permissible means for design owners to provide notice of their UK and Community registered designs.
The Creative Barcode IP Rights, IP Tags service used by designers to generate unique URL’s for example http://c-b.me/1hu - leading to the meta data including registration status, date, owner name, designer name and easy means to contact the owner to negotiate a license, is a perfect option, available immediately.
Alternatively, design owners could develop dedicated landing pages or pages listing all registered designs and numbers within their own web sites, so long as their pages do not move.
Creative Barcode, post fund raise, will extend its system to incorporate a dedicated IP Rights Design blockchain to ensure lifetime persistence, in perpetuity of the design, designer, licensees, royalty transactions and so forth. It will also include chronological design iterations and automated licensing functionalities.
Due to the complexity surrounding Unregistered Design Rights the legislation covering unregistered design rights does not provide for the marking of an article to prevent a third party establishing a defense of innocent infringement. Therefore the government has no immediate plans to introduce the concept of constructive notice for this type of unregistered right. As such the government will apply the provisions to registered designs only.
However, the Creative Barcode IP Rights IP Tags system already assists Unregistered Design Rights owners to communicate their UDR’s and importantly it’s protection life-term (15 years maximum reducing to 10 years from first product sale, or 3 years Unregistered Community designs). IP Tag / URL’s include vital Meta data including ownership status, original designer and means to contact owners to license designs before or when 5 years of protection remains. Unregistered design rights owners’ are obliged to grant a license to any requesting licensee.
The development of the design blockchain will afford the same benefits to Unregistered Design Rights Owners as Registered Design Rights owners. It will also provide the means for Government to enter a provision for unregistered design rights that are marked with an IP Rights tag, and to introduce the concept of constructive notice to thereby prevent a party from establishing a defense of innocent infringement.
Additionally, establishing Design Blockchain will ensure in perpetuity record of the design, designers, license holders, creation dates and so forth, without reliance on any third party business.
The amendment to the Registered Designs Act 1949 and Regulation 3 of the Community Design Regulations 2005 is likely to be swift; thereafter the next review date would be 5 years hence.
Registered Design Rights owners can gear up for the amendment now, either by creating their own web marking system or simply setting up a Creative Barcode account to create unique URL/IP Tags.
Unregistered Design Rights owners can do likewise and enjoy the same benefits as RDRs owners in terms of applying URL’s to products, their marketing collateral, packing and so forth, to enable the design owner to be easily identified. The simple wording suggested is IP Rights: followed by the URL
In the future Blockchain technology has the capability of also revolutionizing transparent, irrefutable, royalty payments direct to designers for products under-license to licensees, without expensive audit trials. We will be issuing further information on that subject nearer the time.
For further information:
14 Page Web-Markings for designs Consultation PDF download