A fellow director has heard that the Intellectual Property Act 2014 introduced new criminal offences in relation to registered designs. What’s changed and how can you stay on the right side of the law?
Certain provisions of the Intellectual Property Act 2014 came into force on 1 October 2014 . One of the changes relates to the legal ownership of unregistered designs and we’ve already reported on this. However, for the first time, the Act also introduces new criminal offences which affect directors and their companies. So what do you need to know?
Under the Act it’s now a criminal offence to copy a UK-registered design, in the course of business and without the legal owner’s permission, in order to make a product to the same design or to make a design with no material differences.
If found guilty, the maximum sentence that the courts can impose is ten years’ imprisonment.
In order for a prosecution to succeed it must be proven that the copying of a UK-registered design was intentional – accidental and incidental use are not considered to be criminal offences.
Right to damages
Redress is available if a UK-registered design has been infringed by someone who is an “innocent infringer”, i.e. a person or company who can prove they were not aware, and had no reasonable grounds to suppose, that the design was registered at the date of the infringement. In that case the legal owner of the design can, if they wish, seek some, or all, of the profits resulting from the activity.
In addition, the Act makes it a criminal offence to import, export or place a UK-registered design on the market for sale where you either knew or have reason to believe that a registered design right has been infringed.
These two changes effectively bring infringement of registered design rights in line with copyright and trademark breaches.
How can you check?
So how can you tell whether or not a design has been registered in the UK? This can be done by searching the designs register which is managed by the Intellectual Property Office (IPO) (see The next step ).
The online register allows you to conduct a search by product, classification, proprietor, i.e. legal owner or design number.
If you are unsure how to search for a registered design, or where to look for it exactly, don’t ignore this process and hope for the best – carrying out due diligence checks will give you a defence should the worst happen. In this situation, you can contact the IPO and ask it to run a check of the designs registered on your behalf.
Don’t pay another company to do this search for you. Not only will it charge unnecessary costs, you could still be subject to criminal proceedings if a problem arises later.
It’s now a criminal offence to intentionally copy, import, export or market a UK-registered design, with the maximum sentence being ten years’ imprisonment. You can ask the Intellectual Property Office to check whether a design is registered or, if you know what to look for, search its online register.