The government has published its response to the UK Intellectual Property Office's (IPO) consultation on the designs framework. For the background to this consultation, please see our guide.

The Design Council estimates the value of the UK's designs economy at more than £136 billion, underlining the importance of an effective and fair system of design protection. The consultation sought views on a wide range of proposals, from the registration process and deferment of publication, to the protection of digital designs, artificial intelligence, the structure of unregistered design rights and enforcement.

Around 90 responses were received from a mix of stakeholders, including small and large designers and design-led businesses, stakeholder groups such as the Chartered Institute of Trade Mark Attorneys (CITMA) and the Chartered Institute of Patent Attorneys (CIPA), and law firms such as Gowling WLG. Some respondents addressed the consultation as a whole, while others commented only on particular sections.

The registration process

Speed, cost and simplicity remain the focus

Respondents were clear that they value the speed, efficiency and low cost of the current registered designs regime and want these features retained. The government will legislate to give the registrar the power to conduct a search and examination of designs on the ground of novelty and individual character in some circumstances, but this will not be the default. Some clarity will be needed on what those circumstances will be.

Consistent with respondents' desire to keep the system simple, the government will not introduce opposition or observation periods, which it considers would overcomplicate the designs regime.

There was a recurring message from respondents that nothing should make the registration process slower or more expensive but, at the same time, there was evidence of anti-competitive behaviour, notably applicants registering designs using images of other people's products.

There was good support for a power to refuse applications in certain circumstances, so that the burden of challenging improper registrations does not fall on others after the event. There was a desire to deal with bad faith applications but there was some concern that a specific bad faith provision might not add much in practice.

In trade mark law, bad faith can be difficult to establish and has resulted in extensive case law. The government has not ruled out a bad faith ground being introduced at some point, but says more work is needed to explore how it would operate, and what the criteria would be.

The statutory obligation to provide the DF21 designs search service will be removed, meaning that service is likely to end (our impression is that it was not widely used anyway and has been largely replaced by online search tools).

Deferment of publication will be formalised and extended

Deferment is currently a matter of IPO practice rather than a legal obligation, and there was strong support for placing it on a statutory footing. Views on the period were evenly split between 18 months, which the IPO had proposed, and a longer period of 30 months. Those favouring 30 months argued that it works better with global filing strategies, and the IPO has been persuaded by this argument, and the 30 month deferment option (from the earliest of the priority date or the filing date) will be introduced.

Limited information about a deferred application would be published, including the name and address of the applicant, any representative details, and the filing and priority dates.

Digital designs and new technologies will be accommodated

The definitions of 'product' and 'design' will be amended so that animations and transitions can be protected as registered designs. Technical solutions are needed to allow video file formats showing movement and animation, and 3D file formats. These technical improvements will form part of the existing One IPO transformation programme, and once done, should bring the UK into line with the recent changes in the EU.

Computer generated designs and artificial intelligence (AI) will be subject to further consideration

Should a design that has been completely created by AI be protected as a registered design? If the design was mostly AI, but a final stroke of a stylus was added by a human, does that lead to a different answer? The IPO is going to undertake further work on this topic, ensuring any changes made are in tandem with the treatment in other intellectual property (IP) rights, and reflect the developing nature of AI usage in the design industry.

We had raised concerns about the difficulty of legislating on the extent to which AI is used in registered designs,, and we are therefore not surprised to see that the IPO has decided to take this away for further thought.

Other changes will streamline the designs system

A lot of the consultation was about fairly uncontroversial changes, such as removing the ability to file a physical specimen. These were largely waved through. One that might be worth noting is that in the future only currently registered designs will be viewable online, and historical information about designs will be recorded in the Journal. There are also changes planned to the requirements around evidencing priority claims.

Unregistered design rights are still changing, but less radically than planned

The government has decided, contrary to its earlier proposal, to retain both UK unregistered designs and the EU-inherited supplementary unregistered designs.

While respondents accepted that designs legislation is difficult to navigate and would benefit from simplification, many, including us, stressed that this should not come at the expense of existing protection. There was a real risk of throwing the baby out with the bath water. Both forms of unregistered design right were highly valued by respondents, particularly in litigation, and having both was seen as a real strength of the UK system.

Although the government has withdrawn its proposal to remove UK unregistered design right, the government still intends to simplify the rights including, as a minimum, harmonising qualification requirements and the term of protection.

In relation to the term, most respondents favoured a 10 year term, compared with the current three year term for supplementary unregistered designs and 10 year term for design rights (of which the last five are subject to a licence of right). The IPO feels that 10 years is a big increase in protection for supplementary unregistered design, and plans to conduct further analysis before a decision is made, including in relation to economic impact.

There has been some concern over where a disclosure must be made to qualify for supplementary unregistered design. It was previously anywhere in the EU or UK, but following Brexit that was narrowed to just the UK.

In one of the more dramatic changes to be introduced, supplementary unregistered designs will be permitted following a disclosure anywhere in the world, provided that disclosure would come to the attention of those operating in the relevant sector in the UK. That is quite a change and very good news for design owners around the world who do business (and therefore need protection) in the UK.

In good news for practitioners, the government plans to explore consolidating all design legislation into a single piece of legislation, which will itself simplify the law (whilst requiring us to learn new section numbers!).

In less good news, the government has decided not to address the question of the overlap between designs and copyright, and leave the law to develop through case law. This is frustrating as it could take many years (if not decades) for designers to understand the extent to which copyright protects works of applied art.

Enforcement of designs reforms

It is likely that registered designs will be introduced to the small claims track of the Intellectual Property Enterprise Court, allowing improved access to justice for individuals and SMEs who cannot afford larger scale litigation.

Meanwhile, there has been some energetic lobbying by some for criminal sanctions to be introduced for unregistered design infringement. The government's view is that the evidence simply isn't there for such an introduction, and as such no new offences will be created and the issue has thankfully been put to bed.

This is good news, as it provides some certainty for designers, especially given the introduction of such offences would not have helped anyone (the existing registered design offence has hardly been used at all).

What next?

Overall, the response represents a sensible and cautious approach to designs reform. That will not suit everybody – some have been calling for wholesale reform. Be in no doubt that change is coming; whilst the original unregistered design rights are not being discarded as planned, who will be entitled to them, what they cover, and how long they last is all up for change.

The government is making changes in stages, and carefully, which has to be the right approach. That said, the designs reforms have been in the works for many years already, and uncertainty over too long a period is unhelpful for everyone. It is our hope that the next stage will be progressed quickly and time will be found in the legislative timetable for the changes that require primary legislation to be enacted.

The earliest will be the 2027-8 Parliamentary session, but there is some danger it will not happen until final session of this Parliament – 2028-9. We hope not; the initial Call for Views on this topic was launched in January 2022, and even this consultation closed almost a year ago, so the time is ripe to bring this process to its conclusion.

If you would like to discuss what these changes could mean for your designs and how they are protected, please contact John Coldham or a member of our Intellectual Property team.