Intentional Copying of Registered Designs now a Criminal Offence

Law

From 1st October 2014, the UK Intellectual Property Act 2014 introduces some important changes to UK Designs and Patent Law.

One of the major changes is to make the intentional copying of a UK or EU registered design a criminal offence if done in the course of a business.  Prior to the change, infringement of a registered design was solely a matter for the civil courts whereas both routes are now open to an owner where they feel intentional copying has taken place. 

There are no substantive changes to the existing infringement provisions under civil law, where the main remedies are damages, injunctions and seizure. 

It is important to note that, like all criminal offences, there is a higher standard of proof required to prove intentional copying, which is "beyond a reasonable doubt".  The copy should result in a product that is exactly the same as that shown in the registered design or with features that differ only in immaterial details.  "Intent" will require proof that the person knew or had reason to believe that the design is the subject of a registered design and that no consent had been given by the owner. 

The criminal sanctions include fines, and in very serious cases, imprisonment.  Criminal actions can be brought by local Trading Standards agencies or through private prosecution.  The new law applies to acts of intentional copying taking place on or after 1st October 2014, regardless of whether the design was registered before this date. 

In the civil courts, the test remains "balance of probabilities" and there is no need to prove copying.  In this respect, a registered design can be infringed accidentally, without copying.  The test is one of 'same overall impression created on the informed user' which is much broader than direct copying.  There are no changes in this regard, and civil actions are likely to remain the main method of dealing with registered design disputes.