The Digital Economy Act 2017 – Changes in relation to Registered Designs
The UK Intellectual Property Office (IPO) has published guidance for registered design owners on a change of law effective from 1 October 2017. The IPO has brought the Digital Economy Act 2017 to the attention of registered design owners as it introduces an amendment to section 24B of the Registered Designs Act 1949. The IPO hopes that this change will make it easier for registered design owners to enforce their rights against infringers and seek damages.
What is the Digital Economy Act 2017?
The Digital Economy Bill was first published in July 2016 and received Royal Assent on 3 May 2017. It will come into force on 1 October 2017.
What does this Act do for registered design owners?
The Digital Economy Act 2017 Section 33 amends Section 24B of the Registered Designs Act 1949 by making it possible for registered design owners to give notice of their prior registered design rights via a website link where the registration details are held.
This means that, if they choose, registered design owners will no longer have to include the registered design number and an indication that such design is registered on each individual design and/or product containing the design. Instead, they can include a link to a website which will detail the registered design right. This will be effective for the purposes of giving notice of a registered design where the internet site can be accessed for free and associates each individual product with a registered design right. However, giving the web address of the home page of a company website is unlikely to be sufficient unless on that home page there is a clear association between the product and the applicable registered design number.
The Digital Economy Act 2017 brings in a similar system for registered design rights as has been in place for patents since 2014. This change will not impact on Community Design Rights.
How will this impact infringement actions?
For owners of registered design rights, until now the best way of ensuring that they can claim damages for infringements, is by marking their product so as to ensure that the infringer cannot argue that they were not aware of the registered design right. Now by including a relevant website link instead infringers will be unable to argue that they were not aware, and had no reasonable grounds for supposing, that the design was registered.
Registered design owners, however, do not have to use the new system. They can continue to mark their products with the relevant registered design numbers, or choose not to mark them at all. However, where products are not marked or where no relevant website link is given, registered design owners may find it more difficult to show that the infringer was aware of the registered design right in an infringement action.