Consultation on changes to the UK designs framework

Question 1

Ministerial Foreword

Accepted Answer

The UK’s design sector is a powerhouse of innovation and creativity, contributing £97.4 billion to our economy in 2019 - equivalent to 4.9% of total GVA. Behind these impressive numbers are 80,665 design businesses, the vast majority being microbusinesses with fewer than 9 employees.

Effective intellectual property (IP) protection is essential for these businesses to thrive and continue driving economic growth.

These kinds of innovative businesses are at the heart of this government’s mission to grow the UK economy. Yet the story too many businesses tell us is of a designs system that for them is a complex patchwork that many find difficult to navigate, particularly small businesses that form the backbone of the sector.

This consultation sets out proposals to create a designs system fit for the future - one that is simpler, more effective, and better able to support UK creativity and innovation in a rapidly evolving digital landscape.

We know that our current system faces significant challenges. Some applicants seek to register designs for products that don’t belong to them, with limited ways to address this under current law.

Following Brexit, designers face new complexities in protecting their work across both the UK and EU. And as technology advances, our system must evolve to effectively protect virtual and animated designs.

This consultation proposes practical solutions to these challenges with several key objectives:

1. Improving the validity of registered designs through targeted measures such as novelty checks and bad faith provisions

2. Simplifying our complex designs regime, making it more accessible and easier to understand

3. Addressing issues relating to unregistered designs, providing greater legal certainty for businesses

4. Ensuring our framework adequately protects emerging forms of design, including virtual and animated designs

5. Exploring how our system should respond to computer-generated designs in an era of advanced AI

The consultation also includes potential improvements to our enforcement framework, including the possibility of extending access to the Intellectual Property Enterprise Court’s small claims track for registered designs cases - making justice more accessible to small businesses.

These proposed changes aim to strike the right balance between maintaining the speed and flexibility that designers value, while improving the validity and enforceability of design rights. They represent an opportunity to build a designs system that works better for everyone.

I encourage all stakeholders - from individual designers and small businesses to large enterprises and legal experts - to engage with this consultation and help shape a designs system that supports British creativity and innovation for years to come.

Feryal Clark MP

Parliamentary Under-Secretary of State for AI and Digital Government

Question 2

Introduction

Accepted Answer

1. The Intellectual Property Office (IPO) is the official UK government body responsible for intellectual property (IP) rights. Our mission is to help people and businesses grow the UK economy by providing an IP system that encourages investment in creativity and innovation.

2. The designs sector is an economically important one and, according to a Design Council report.

3. To make sure that the regime is fit for the future and supports the designs sector, the government is reviewing the UK designs system. A call for views was carried out in 2022, which asked users about opportunities to improve the designs system in the UK and invited views to help inform future government proposals. A designs survey was published alongside the call for views, to help us understand how well non-IP experts understand the UK design protection system. The government response set out areas for further consideration and committed to seek stakeholder views on options by consultation. A further survey was published in February 2025 aimed at designers, design businesses, legal professionals and anyone with an interest in designs. The survey sought views on the overarching principles which should shape the future of the UK designs system. A report summarising responses is being published alongside this consultation. Survey responses have informed this consultation.

4. It is clear from the responses received from stakeholders that the complexity of the UK designs system causes problems for users, in particular small businesses. Although there is evidence that they are aware of IP, many do not have the knowledge to protect their intellectual assets and unlock the value of them. We are also aware that some applicants are abusing the system and seeking to register designs for well-known products, or products which don’t belong to them. In addition, there are a number of aspects of design law which would benefit from simplification, consolidation and streamlining to make it easier for designers to protect their work.

5. This consultation seeks to address these issues and asks interested parties for their views on a wide-range of issues with the overarching aim of improving the UK designs system. They are:

proposals to improve the registered designs system
proposals to simplify the unregistered designs system
options to address changes in how disclosures of supplementary unregistered designs are recognised following the UK’s departure from the EU
enforcement issues, including a call for evidence in relation criminal sanctions for design infringement, and inclusion of registered designs in the Intellectual Property Enterprise Court small claims track
a number of smaller changes which will simplify and streamline the design protection system for users

How to engage with this consultation

6. The consultation is an opportunity for anyone with an interest in these issues to share their views on these proposals. You do not need to respond to every question and can send in a response only on the areas which impact you, for example. You may find it helpful to refer to the guidance to evidence for policy.

Next Steps

7. After this consultation closes the government will assess responses. We will use the information we receive to help design and deliver the best possible policy and legislative outcomes to achieve the aims and objectives set out in this consultation. The government’s response to the consultation will set out next steps and will be published on GOV.UK.

Data protection and confidentiality

8. A summary of responses to this consultation will be published on GOV.UK. The Government considers it important in the interests of transparency that the public can see who has responded to Government consultation and what their views are.

9. By responding to this consultation, you acknowledge that your response, along with your name and/or organisation may be made public when a response to the consultation is published in accordance with the access to information regimes. These are primarily the Freedom of Information Act 2000 (FOIA), Data Protection Act 2018 (DPA) and the UK General Data Protection Regulation (UK GDPR).

10. Additionally, information provided in response to this consultation, including personal information or commercially sensitive information, may be made available to the public on request in accordance with the requirements of FOIA.

11. If you wish to highlight that information is confidential or sensitive please advise us in writing when you provide your response and it would be helpful if you could explain to us why you regard the information you have provided as confidential. If we receive a request for disclosure of the information we will take full account of your explanation but we cannot give an assurance that confidentiality can be maintained in all circumstances. An automatic confidentiality disclaimer generated by your IT system will not, of itself, be regarded as binding the department.

12. The Government may also publish consultation responses in response to any FOIA requests on GOV.UK. Please read the privacy statement privacy notice for consultations for more information.

Use of AI analysis tools

13. The IPO may share consultation responses with the Department for Science, Innovation and Technology (DSIT) who may carry out the analysis of consultation responses on behalf of the IPO and who may use an artificial intelligence (AI) tool to help assess consultation responses.

14. The IPO or DSIT will take steps to remove personal data from the consultation responses before using an artificial intelligence tool. This means that the data provided to the AI tool will not be able to identify any individual from your consultation response. The AI tool processes data securely and does not copy or share data. The data will only be accessed and used by those authorised to do so.

15. The AI tool identifies themes present in the responses. The draft themes are reviewed and agreed by a policy team before the tool then maps responses to the themes. The resulting mapped responses produce an analysis dashboard which is then used by policy teams to analyse the consultation. DSIT and IPO will take steps to check for accuracy and identify and reduce any possible bias.

Question 3

Section A: Search, examination, bad faith and opposition/ observation

Accepted Answer

Introduction

1. A design registration only provides protection if the design is new and has individual character. This means it needs to be new and not too similar to previous designs. A design which does not meet these requirements can be declared invalid and removed from the register. However, the current law means that the IPO is not able to object to a design which is not new. It is therefore possible to register designs that do not meet these requirements.

2. The IPO is aware that some applicants seek to register designs for well-known products, or products which don’t belong to them. The IPO has also received complaints from businesses impacted by anti-competitive behaviour who have been subject to take-down notices by online commerce platforms, preventing them from legitimate trading.

3. Internal IPO analysis was carried out to try and assess the size of the problem. Six months of designs registrations between November 2023 and April 2024 were sampled. Initial results suggest that approximately 9% of registered designs sampled are pre-existing and further work is being undertaken to clarify the position. Pre-existing designs which have been identified may include designs which have been filed anticompetitively as well as designs which are not new but are filed in good faith.

4. The current law limits what the IPO can do to address these types of filings. Third parties can apply to invalidate registrations but must pay a fee to do so, putting an administrative and financial burden on business. The process also takes time to complete, during which period a legitimate business may be prevented from trading.

5. The government’s 2022 call for views on designs sought users’ opinions on ways to improve the UK’s designs framework. We specifically asked for views on whether the UK should reintroduce novelty searching for designs, and the usefulness of introducing bad faith and opposition provisions into UK designs law. Responses to the call for views were mixed, identifying both benefits and disbenefits of these measures.

6. The government’s response to the call for views recognised that searching could increase certainty of validity of registered designs and help counter anti-competitive filings. We committed to considering options and seek stakeholder views through consultation.

7. Government intervention could make it easier for both the IPO and third parties to identify and object to designs which are not new and which may have been filed anticompetitively or in bad faith. However, we need to be satisfied that such action is warranted. We therefore want to better understand the issues businesses have experienced in relation to anti-competitive registrations.

8. This section of the consultation sets out options for search and exam, bad faith and opposition/observation. We want to hear users’ views on them. When analysing responses, we will also take into account respondents’ views of the overarching principles set out in section A. This will be important to ensure that any future legislative proposals balance the principles of cost, validity, speed, flexibility and simplicity in a way which best meet the needs of businesses seeking to protect their designs in the UK, whilst also taking account of the legitimate interests of third parties.

9. As part of this consultation, we are also seeking information from users about the service the IPO offers to identify existing rights in a registered design. Users may request a search of the UK designs register for a particular product by filing a DF21 form. We are keen to understand how and why the service is used and will use the information to make a decision on whether to retain it in future.

Questions:

Have you/your business experienced anti-competitive filings (YES/NO)?

If yes:

How many times has this happened to you in the past 2 years?

1

2-5

5-10

Other (please specify)

Was the anticompetitive filing for (tick all that apply):

A copy of my product e.g. used your marketing material, pictures from your website, or copied representations from your design registration.
For a generic or well-known product
A re-filed application for a previously invalidated design
Other

How did you address the issue (select all which apply).

Removed my online listing due to a takedown notice
Appealed the takedown notice with the online platform
Applied to IPO to invalidate the design
Sought legal advice from an IP attorney
Sought advice from a trade body or membership organisation
Did nothing
Other

Did this have a financial impact on your business? (Y/N)

If yes, how much did it cost your business?

< £10,000
£10,000-£25,000
£25,000 - £50,000
Greater than £50,000 (please indicate approximately how much if so)

Section A1: Search and examination

Background

10. The Intellectual Property Office stopped searching and examining designs for novelty and individual character in 2006. This was because the UK aligned its approach with that of the European Union Intellectual Property Office (EUIPO). Due to the political and technological changes which have occurred since then, the 2022 designs call for views sought views on whether the UK’s current practice in this area meets the needs of designs businesses.

11. We sought users’ views on reintroduction of prior art searching, a two-stage system and the use of AI tools. Responses were mixed in relation to mandatory search and examination. Those in favour thought it would increase the validity of registered designs. Respondents also considered it would prevent anti-competitive filings being used to obtain take-down notices on e-commerce platforms, behaviour which impacts legitimate businesses. Users thought it would reduce costs for third parties who must currently pay to invalidate designs which they believe are not new. Responses to the 2022 designs framework survey showed that a large number of respondents thought that the IPO already performed checks on whether a design is similar to another.

12. The respondents to the call for views who were against reintroduction of searching raised concerns about potential delays and increased costs of registering designs. Some expressed concerns about the difficulty of carrying out a comprehensive search due to the existence of unregistered designs. The general view was that a high-quality AI search tool would address many of these concerns. A small number of respondents to the designs survey also felt that AI could be used as a search tool in addition a small number were supportive of introducing a two-tier system.

13. We have identified a number of options in relation to search and examination of applications. We want to hear users’ views on them. The government will consider all responses when deciding on the best way to proceed.

What is out of scope of this consultation

14. We are not consulting on reintroducing full search and examination. In the absence of enhanced search tools supported by AI, carrying out a comprehensive search on all designs applications would increase the time taken to register designs unless the IPO significantly increased examination resources, which would, in turn increase search fees. Users told us in the call for views that they value the speed and low-cost of the UK designs system.

15. We consider the benefits of mandatory searching would not justify the additional costs to business at this time. We recognise that AI search tools could change the landscape in future, support searching and bring greater speed and efficiencies to the registration process.

Options

16. We are now seeking users’ views on the following options for search and examination of designs:

Option 0 - No change to the current system
Option 1 - Introduce powers to allow the registrar to carry out a search
Option 2 - Introduce a two-stage system, where a design can be partially registered without search, and a full search and examination is required in order to enforce a design

Option 0 – Do nothing

17. This option would maintain the status quo. The IPO would not search design applications and would not examine whether they are novel and have individual character. Designs would be registered quickly, and costs would be kept low for applicants. However, designs which are not new might be accepted. This option would not improve the validity of design registrations, nor address anti-competitive filers, or those seeking to protect well known designs.

18. For these reasons, the government believes this option should be discounted.

Do you agree that the “do nothing” option should be discounted? (Y/N/don’t know)

Option 1 – Introduce powers to make it clear that the IPO can carry out a search

19. This option would provide a clear power in law for the IPO to investigate and object to designs which are suspected of lacking novelty and individual character. It would not mandate that a search is carried out on all applications.

20. A search would be carried out under certain circumstances. For example, where an application is received for what appears to be a generic design, if an examiner knows that a design is similar to or the same as a previously invalidated design, or where suspicious filing activity suggests an applicant may be filing in bad faith. We consider it is possible to carry out this type of search using existing tools.

21. This option would retain the low-cost, quick-to-register system users have told us they value, whilst allowing IPO to object to specific applications. It would provide a way to address anti-competitive filings. We expect this option would also reduce administrative, legal and financial burdens on third parties, who must currently apply to invalidate designs after registration.

22. On the other hand, it would introduce an inconsistent approach to registering designs as not all applications would be searched. As improved search tools become available, searching could be extended to more - or all - applications whilst maintaining a quick, low-cost system.

23. Applicants can currently request to delay – or defer – publication and registration of a design for up to 12 months. Any relevant deferred designs would not be identified at search as they would not be publicly available. We do not consider this would be an issue for the limited search proposed in this option. However, further consideration of the impact may be needed if full novelty searching was introduced in future. Potential mitigation of this issue is covered in the deferment section of this consultation.

Option 2: Introduce a two-stage system

24. This option would introduce a system similar to that used in Australia. Designs would be partially registered without a search, but search and examination would be required before a rightsholder could enforce a design. We envisage it would work as follows:

Stage one:

the application is paid for, received, and examined in accordance with current UK law
following acceptance of the application, the design would be published in the designs journal and given a status of “partially registered”. At this stage, the design cannot be enforced

Stage two:

this stage would begin on receipt of a request and payment of a fee. We envisage this could be paid by either the applicant, or a third party
a prior art search would be carried out and the design examined to check that it is new and has individual character. Once fully registered, the design can be enforced

25. The government considers this system would deliver quick, low-cost partial registration of a design, providing designers with an IP right and protecting against others registering an identical product. Requiring the second stage to be completed before action can be taken against others could prevent abuse of e-commerce take-down procedures by third parties. Allowing third parties to instigate stage 2 would provide an alternative to potentially more costly and time-consuming invalidation proceedings.

26. The government believes this option could help address anti-competitive registrations. Designs clearly lacking in novelty would be identified at stage 2 and would be refused before they could be enforced. The government would need to work with e-commerce platforms to ensure that their takedown procedures would only be available when a design is fully registered.

27. Several respondents to the designs call for views commented positively on a two-stage system, recognising that it offered a middle ground between the current system available in the UK and full search and examination.

28. On the other hand, some responses expressed concern that such a significant change to the system could confuse applicants, and that a move away from EUIPO practice could increase the administrative burden on applicants seeking to protect their designs in both territories. Some users told us they would prefer to retain a high level of alignment between UK and EU systems.

29. Some respondents thought that a two-stage system might lead to delays enforcing a design. Suggestions to overcome this included performing searches quickly and limiting pre-enforcement examination to novelty only. Another suggested option was allowing litigation to start prior to completion of stage 2 but giving the defendant time to see results prior to filing their defence. The concern was also expressed that a two-stage system might disincentivise enforcement and make the system more complex.

30. A few respondents also questioned how unregistered rights would feature in stage 2 given their relevance to the issue of validity. We note that no search can ensure full coverage of all pre-existing designs, and that the aim would be to increase the presumption that a registered design is valid. It would not be possible to guarantee that it is.

31. We also recognise that the search tools currently available have limitations to their functionality. Maximising the robustness of the search whilst keeping costs relatively low for applicants might only be achievable with a robust AI tool. Another way of achieving this, would be to limit the search and examination stage to novelty only. This would bring efficiencies to the system but could leave registrations open to being challenged for lacking individual character.

32. A two-stage system would be a significant change to IPO processes. Although not all applications would proceed to stage 2, there would be an increase in the cost of resourcing the search stage, which we would expect to be reflected in the search fee. There might also be an increase in hearings challenging the outcome of examination process. Responses to the designs survey indicated some support for a two-tier system.

Questions:

Please rank the options (most preferred/least preferred/no preference):

Option 1 - Introduce powers to make it clear that the IPO can carry out a search Option 2 - Introduce a two-stage system

Limited searching

If limited searching was introduced, which designs should be subject to search (select all that apply)?

Designs which IPO knows are the same as another e.g. re-filing a previously invalidated design.
Applications to register generic products/designs.
Designs which an examiner suspects may be anti-competitive.
Other (please specify)
None of the above
Don’t know

To what extent do you agree or disagree that limited searching would help combat the number of anticompetitive filings?

Strongly Agree
Agree
Neither agree or disagree
Disagree
Strongly Disagree
Don’t know

If better search tools become available to allow a search to be carried out quickly, do you think IPO should extend searching to other design applications? (yes, no, don’t know)

If limited searching is reintroduced, would it provide you/your business with:

A benefit/opportunity (yes, No, don’t know)
A challenge (yes, No, don’t know)

If limited searching is reintroduced, would the impact on you/your business be:

Positive (yes/no/don’t know)
Negative tick (yes/no/don’t know)

Two-stage system

To what extent do you agree or disagree that limited searching would help combat the number of anticompetitive filings?

Strongly Agree
Agree
Neither agree or disagree
Disagree
Strongly Disagree
Don’t know

If this option was introduced, should the pre-enforcement examination be limited to an assessment of novelty or should it include individual character?

Search should be limited to novelty
Search should be for novelty and individual character
Not sure

If this option was introduced, to what extent do you agree that litigation should be able to start prior to the search and examination, while allowing the defendant time to see results prior to filing their defence.

Strongly Agree
Agree
Neither agree or disagree
Disagree
Strongly Disagree
Don’t know

If a two-stage system is introduced, would it provide you/your business with:

A benefit/opportunity (yes, know, don’t know)
A challenge (yes, know, don’t know)

If a two-stage system is introduced, would the impact on you/your business be:

Positive (yes/no/don’t know)
Negative tick (yes/no/don’t know)

Please provide any additional information or evidence relevant to search and examination. In particular we would like to hear about:

Any impacts the current system has had on your business.
Any impacts you anticipate the options set out above would have on your business

Section A2: Bad faith

Background

33. An application is made in bad faith when an applicant seeks protection with a dishonest intent. UK designs law does not currently include a specific bad faith provision. Designs must meet certain substantive requirements set out in law, and it is for applicants to check that their design is new and has individual character before they apply.

34. In the 2022 call for views on designs, we asked users in general terms whether an explicit bad faith provision would be useful. Some responses were supportive and considered it could address abuses of the system. Others cautioned that bad faith case law for trade marks is often a source of debate, and that careful consideration and guidance on what constitutes bad faith would be needed. Further responses thought that bad faith filings can already be invalidated under existing provisions, and that introducing bad faith might increase the complexity of design law.

Proposed approach

We have considered the issue further and are now seeking users’ views on introducing a specific bad faith provision into designs law. This would give the IPO clear powers to object to applications which have been filed in bad faith. This could include, for example:

applications for well-known products
applications where another company’s product photographs are used by a third party to seek protection
applications which are re-filed for previously invalidated designs
anti-competitive applications more generally

36. Tackling this behaviour during the examination process would prevent bad-faith registrations being used to obtain take down notices which prevent legitimate businesses from trading. It would also remove the administrative and financial burdens on business associated with invalidating such designs.

37. We recognise that it is not always straightforward to assess bad faith, and that raising a bad faith objection will require some indication that an applicant is not acting in good faith. This could be, for example, suspicious filing behaviour refiling previously invalidated designs, and applications which contain third-party marketing materials and representations.

38. Due to this targeted approach, we do not think that introducing a tailored bad faith provision will significantly impact the time taken to register most designs.

39. The alternative to the government’s proposed approach is to maintain the status quo of having no explicit bad faith provision in designs law. The financial, time, and administrative burden of invalidating such designs would remain with third parties. We do not consider this option addresses the issues as set out above.

Questions:

To what extent do you agree or disagree with the proposed approach to introduce an explicit bad faith provision for designs?

Strongly agree
Agree
Neither agree nor disagree
Disagree
Strongly disagree
Don’t know

To what extent do you agree or disagree with each of the following? A bad faith provision would allow IPO to address:

Applications for well-known products. [Strongly agree, Agree, Neither agree nor disagree, Disagree, Strongly disagree]
Applications where another company’s product photographs are used by a third party to seek protection. [Strongly agree, Agree, Neither agree nor disagree, Disagree, Strongly disagree]
Applications which are re-filed for previously invalidated designs. [Strongly agree, Agree, Neither agree nor disagree, Disagree, Strongly disagree]
Anti-competitive applications more generally [Strongly agree, Agree, Neither agree nor disagree, Disagree, Strongly disagree]

If a bad faith provision is introduced, would it provide you/your business with:

A benefit/opportunity (yes, know, don’t know)
A challenge (yes, know, don’t know)

If a bad faith provision introduced, would any impact on you/your business be:

Positive (yes/no/don’t know)
Negative tick (yes/no/don’t know)

Please provide any additional information relevant to deferment.

Section A3: Observation and Opposition

Background

40. Unlike trade marks and patents, there is no mechanism in designs law to allow third parties to oppose a registration, or to provide IPO with observations on the allowability of a design application. The IPO does not notify existing rights holders of any similar designs as part of the examination process. In the UK, designs are simultaneously registered and published when they meet the relevant legal requirements. Any third-party objections are remedied by invalidation, either at the IPO or through the courts.

41. The 2022 call for views asked for users’ views on a pre-registration opposition period. The majority of responses did not think there was a good reason to introduce opposition for designs. It was generally considered that current invalidation proceedings were sufficient, and that introducing an opposition period would cause delays in registration and could become costly. Although small in number, responses to the designs survey supported this view and were generally against introducing an opposition period.

42. Concerns were raised that the administrative process associated with a pre-registration opposition period could be problematic. For example, some felt that publishing a design before it is registered could destroy the novelty of filings in other jurisdictions. Others thought that an opposition period might cause confusion over what rights could be relied upon during the opposition period. Another concern was that the process could be abused by individuals seeking to strategically oppose an application to delay it from becoming an enforceable right.

43. On the other hand, some responses felt an opposition period could be worthwhile and expressed a preference for this over introducing search and examination or a bad faith provision, believing it would be a helpful mechanism to remove and prevent clearly invalid registrations.

44. We have identified a number of options in relation to opposition and observation periods. We want to hear users’ views on them. We will consider all responses when deciding how to proceed.

Options

45. We have identified the following options:

Option 0 - Do nothing/maintain the current system.
Option 1 - introduce a post-registration opposition period for designs (“registered at risk”).
Option 2 - Introduce a pre-registration opposition period for designs.
Option 3 - Introduce an observation period.

46. In addition to these options, in section E (miscellaneous changes) we are consulting on whether to introduce powers for the registrar to make a late objection under certain circumstances. Such a power would allow the registrar to object to a design which has been accepted if matters relevant to the acceptance of the design come to his attention by the end of the opposition or observation period. If introduced, this power could be used in conjunction with option 1 or option 2 below so that opposition or observations from a third party could trigger an official objection (either before or after registration).

Option 0 - Do nothing/maintain the current system

47. This option would maintain the status quo; applicants who wish to challenge the registration of a design would use the invalidation process currently available.

48. This option would have no impact on costs, timescales and resourcing for operational delivery and tribunal teams. It would mean that the only route open to third parties to raise a concern about a design would be invalidation. It would not address the issue of anti-competitive filings.

Option 1 - introduce a post-registration opposition period for designs (“registered at risk”)

49. This option would introduce an opposition period. A design would be “registered at risk” and would be published. Third parties would have a set period during which they could oppose the registration. If an opposition is filed, IPO tribunal would consider and action it.

50. An opposition period needs to be long enough to allow third parties enough time to consider the validity of a design without unnecessarily delaying registration. If this option is taken forward, the government proposes a 2-month period, aligning with that allowed for trade mark opposition proceedings and providing a balance between third party and applicants’ interests.

51. This option would allow third parties to oppose designs which they consider to be invalid or to have been registered incorrectly, for example designs which are not novel or contain a protected coat of arms. Anti-competitive registrations could be opposed, but a takedown notice may already have been obtained. Whilst we would expect successful opposition proceedings could be used to appeal such a notice, there would be financial damage to a business in the period they are waiting for the outcome of their opposition request.

52. A post-registration opposition period does not appear to have any significant advantages over the invalidation process which currently available to third parties, apart from a specific time period in which to file concerns with IPO. This could confuse people who do not have professional representation.

53. Third parties would need to monitor the register for conflicting rights which some call for views responses suggested could be time-consuming and costly, especially for SMEs. We would also anticipate a fee would be levied for opposition, as is currently the case for trade marks.

Option 2 - Introduce a pre-registration opposition period for designs

54. This option would introduce an opposition period for designs, after examination is complete and before the design is registered. The design would be published in the designs journal, and third parties would have a period of time in which to oppose it. If no opposition is received in this period, the design would be registered. If an opposition is filed, tribunal would consider and action it.

55. As for option 1, the government considers that a 2-month period would balance the interests of applicants and third parties, as well as aligning with the trade mark opposition period.

56. A pre-registration opposition period would provide an additional route for stakeholders to object to designs which they believe to be invalid or otherwise incorrectly registered. It would also allow third parties to oppose an anti-competitive filing before registration, and thus before a potential registration could be used to prevent legitimate businesses selling products.

57. Third parties would need to monitor the register for conflicting rights and pay a fee to oppose a design. As set out above this could increase time and financial burdens on business wanting to avail themselves of this provision.

58. Publishing images of a design prior to its registration would not destroy the novelty of that design in the UK but we would like to hear from applicants whether there would be any implications on filings in other countries. We are particularly keen to understand any issues which would arise in this situation which would not occur if a design was invalidated after registration.

Option 3 - Introduce a pre-registration observation period

59. This option would introduce an observation period for designs. A design would be published before registration and third parties would have a period of time in which to make observations as part of the registration process. Powers would need to be introduced allowing IPO to object to a design, either based on third party observations or any other relevant information coming to the attention of the registrar. A third party would not become a party in the examination process, and we would not anticipate a fee being payable to make an observation. We consider an observation period would be most useful if introduced alongside novelty and individual character as reasons to refuse a design.

60. For the reasons already set out, the government considers that a 2-month observation period would be appropriate.

61. A pre-registration observation period would provide an additional way for third parties to raise concerns about designs which they do not believe are new or should be refused for another reason. Information supplied by third parties could be used to object to anticompetitive filings as part of the examination process.

62. As set out for option 2 above, publishing images of a design prior to its registration would not destroy the novelty of the design in the UK but we want to hear views on potential impacts on filings in other countries. We are particularly keen to understand any issues which would arise in this situation which would not occur if a design was invalidated after registration.

63. In order to decide whether to take forward any of these options, the government wants to hear users’ views on them.

Please rank the options in order of preference (1=most preferred, 4=least preferred):

Option 0 - Do-nothing
Option 1- introduce a post-registration opposition period for designs (“registered at risk”)
Option 2 – Introduce a pre-registration opposition period for designs
Option 3 – Introduce an Observation Period

In your opinion, would these options provide an effective tool to address potentially anticompetitive or otherwise invalid designs being registered?

Post-registration opposition (Y/N/don’t know)
Pre-registration opposition period (Y/N/don’t know)
Observation period (Y/N/don’t know)

How likely would you be to use the following options if introduced? (very likely, likely, neither likely or unlikely, unlikely, very unlikely).

Post-registration opposition
Pre-registration opposition period
Observation period

To what extent do you agree or disagree with the government’s view that a two-month period for opposition or observation strikes the right balance between the needs of applicants and third parties?

Strongly Agree
Agree
Neither agree or disagree
Disagree
Strongly Disagree
Don’t know

Would publishing a design before registration cause you or your clients any problems if introduced (YES/NO/Don’t know)?

Would publishing a design before registration cause you any problems when filing in other countries (YES/NO, don’t know).

If an opposition or observation period is introduced, would it provide you/your business with a benefit or challenge:

Post-registration opposition (benefit/challenge/don’t know)
Pre-registration opposition period (benefit/challenge/don’t know)
Observation period (benefit/challenge/don’t know)

If an opposition or observation period is introduced, would any impact on your/your business be:

Post-registration opposition (positive/negative/don’t know)
Pre-registration opposition period (positive/negative/don’t know)
Observation period (positive/negative/don’t know)

Please provide any additional information relevant to opposition or observation

Combination of options

64. Each of the options set out in this section would provide a way to address anticompetitive filings. The options could be combined to give a range of ways for businesses to tackle this behaviour. We want to hear your views on whether more than one option should be brought forward.

Several options for addressing anticompetitive filings have been set out above. Do you (select appropriate) think:

It would be useful to users to have different ways of addressing anti-competitive behaviour (Y/N/don’t know).
Having different ways to address anti-competitive behaviour would unnecessarily complicate the legal framework? (Y/N/don’t know)

Which options should be introduced (please tick all that apply)

Search and examination
Bad faith
Post-registration opposition
Pre-registration opposition

Pre-registration observation

Section A4: Information on the existence of a right in a registered design (DF21 search)

65. As set out in section 23 of the Registered Designs Act 1949 (RDA), and Rule 31 of the Registered Designs Rules 2006, the IPO is legally obliged to provide information about the exis must include the product or products to be searched and an illustration of the design. On receipt of the request, the IPO carries out a search of UK registered designs to check for identical designs to the one illustrated on the request and the result is communicated to the applicant. In the call for views, the service was referred to as “helpful and low cost”.The request must include the product or products to be searched and an illustration of the design. On receipt of the request, the IPO carries out a search of UK registered designs to check for identical designs to the one illustrated on the request and the result is communicated to the applicant. In the call for views, the service was referred to as “helpful and low cost”.

66. This type of search is not a full novelty search as it is limited to UK designs and also to designs classifications relevant to the products listed in the request. The number of these requests received is very low. The number of DF21 searches requested since 2018 are set out in the table below:

Year	No. of DF21 requests
2023	98
2022	44
2021	32
2020	17
2019	20
2018	18

67. The current wide-ranging review of the UK designs framework is considering whether to reintroduce a form of novelty searching (section B1 above). The government is therefore taking the opportunity afforded by this consultation to understand the usefulness of DF21 searches to designers and their legal representatives. This information will be used to decide whether to retain this service.

Questions:

Have you ever used the DF21 service? Yes/No
If so, please explain how you use the DF21 service in your role.
How many DF21 searches have you filed in the past 5 years?

What were your main reasons for using this service (tick all that apply)?

To know if identical designs exist
For due diligence
Another reason (please specify)

If you have never used the DF21 service before, why not?

Didn’t know the service existed
Too expensive
Don’t know what the scope of the search is
Carry out own search
Other

What do you think is included in a DF21 search (tick all appropriate):

Identical designs on the UK designs register
Identical designs on the EUIPO designs register
Identical designs anywhere in the world
Similar designs on the UK register
Similar designs on the EUIPO designs register
Similar designs anywhere in the world
Don’t know
Anything else (please specify)

Section A: Assessment of impacts

68. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

69. Extracts from our assessment of the impacts are presented in annex 2 to this consultation. We are keen to hear respondents’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

70. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in Annex 2? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)

Please supply any relevant information which you consider would be useful and help us assess the impacts of the options.

Question 4

Section B: Deferment

Accepted Answer

Introduction

1. Publication of a design at the time of registration can result in commercial difficulties for companies whose products have a long lead time before being placed on the market. Deferment of - or delaying - publication provides a solution to this, by allowing an applicant to keep their design confidential for a period of time whilst they make preparations for its commercialisation.

2. In the UK, an applicant can currently choose to delay registration and publication of their design for up to twelve months. However, there is no explicit deferment provision in UK law. As set out in section 3(5) of the Registered Designs Act 1949 (RDA) and rule 10 of the Designs Rules 2006, the deferment period is the time set out in legislation in which an applicant must complete the registration process. Currently, no information is published about a deferred design in the UK, and third parties only become aware of it when it is published.

3. The 2022 designs call for views asked stakeholders whether UK law should have a specific deferment provision and how long the deferment period should be. We also asked what information, if any, should be published in relation to a deferred design and whether there is a need for specific provisions for prior use or to deal with co-pending applications.

4. Respondents were in favour of having an explicit deferment provision in legislation, but there was no clear agreement on how long it should be. Some thought the current 12-month deferment period is adequate and others considered 18 months would be useful. Other responses wanted the UK to harmonise the deferment period with the 30-months allowed by the European Union Intellectual Property Office (EUIPO).

5. In relation to what information should be published about a deferred application, a significant number of responses said only basic information should be made public. Some responses suggested the applicant’s name, filing and priority date, and an indication of product or classification should be published; others thought no information should be published. Some preferred the EUIPO’s approach of publishing some details, such as date of filing and entry into register, registration number, name and address of the applicant and their representative - this allows competitors to know that a design has been applied for and by whom, but full details are only made available on publication.

6. UK designs law ( Section 7B of the Registered Designs Act 1949) currently contains a provision relating to prior use. It applies if a person has - in good faith - used or made preparations to use a design which is subsequently registered. Where this happens before a registered design is applied for, the person may continue to use the design. The right of prior use only exists for designs used before the application date. A third party who starts using a deferred design after that point but before it is registered might have to withdraw a product which is already on the market. If not, they could be open to infringement proceedings from the registration date of the deferred design.

7. A number of respondents to the call for views considered that specific provisions to deal with prior use or co-pending applications would improve legal clarity for customers. Some respondents did not think provisions were required and that current prior use provisions are adequate.

Proposed approach and analysis of options

8. We propose introducing a deferment provision into the Registered Designs Act 1949. This will provide an explicit legal basis for deferring designs, improving legal clarity.

9. The provision needs to balance the needs of applicants to keep details of an application secret for commercial reasons, against the legitimate interests of third parties to know what is out there, to minimise the risk of potentially infringing a deferred design once it is registered.

10. We consider this balance is best met by a deferment provision with the following features:

18-month duration
deferment period starts from the earliest of the priority or filing date of the application
both registration and full publication is deferred
basic information is published e.g. name of applicant, date of application and classification of the design

11. We want to hear users’ views on these proposals and on our analysis of the different options set out below. We will take account of responses when bringing forward final proposals for legislative change.

Length of deferment

12. In the call for views, there was no clear consensus on how long the deferment period should be. Our assessment of the benefits and disbenefits of 12, 18 and 30-month deferment periods are set out below:

	Benefits	Disbenefits
12 months	Current length of deferment in UK – applicants are familiar with it. Shorter deferment minimises the risks to 3rd parties. If search and examination is reintroduced this minimises the number of deferred designs which cannot be searched.	Shorter period does not recognise the commercial reality of launching a new product with a long lead-time.
18 months	A longer deferment period would be welcomed in sectors which have a long lead-time to launch. Aligns with publication period for patents which would benefit applicants protecting both technical and aesthetic elements of a single product. If the deferment period starts at the earliest date for the application, this would align with the maximum deferment period currently available in the UK (where an applicant files at the end of the 6-month priority period and then defers for 12 months).	A longer deferment period would increase the risk to 3rd parties of infringing a deferred design once it is registered. A longer period would increase the number of deferred designs which cannot be searched by third parties viewing the external register (if reintroduced).
30 months	Aligns with deferment period at EUIPO, removing administrative burdens on businesses seeking protection in both EU and UK. Longer deferment period would be welcomed in sectors which have a long lead-time to launch.	A longer deferment period would increase the risk to 3rd parties more significantly. A longer period would increase the number of deferred designs which cannot be searched (if reintroduced).

13. The current 12-month deferment period may not be long enough for products with long development and launch cycles, but it minimises the commercial and legal risks to 3rd parties unsighted on deferred applications in their sector.

14. On the other hand, a deferment period of 30 months would support the product launch cycle for products with a long lead-time. It also aligns with the deferment period available at the EUIPO, reducing administrative burdens for designers seeking protection in both jurisdictions. However, it would increase the length of time during which a third party may be undertaking commercial activities in relation to a deferred design which is subsequently registered. The third party may then have to withdraw a product which was launched during the deferment period of a competitor’s design, to their financial detriment.

15. 18 months deferment would provide up to 6 months additional confidentiality for applicants who first file in the UK, during which time commercial activities could be undertaken. Applicants who currently defer their UK application at the end of the priority period will be able to keep their design secret for the same length of time. This option aligns with the publication timeframe for patents, which could be useful to applicants seeking both types of protection for a product. On the other hand, a longer period of deferment than that which is currently available increases the legal risks to third parties.

16. Taking these potential impacts into account, the government considers that an 18-month deferment period provides a balance between the interests of designers and third parties.

To what extent do you agree or disagree with the proposal to introduce an 18-month deferment period:

Strongly agree
Agree
Neither agree nor disagree
Disagree
Strongly disagree
Don’t know

Commencement of deferment period

17. The government has identified two options for when the deferment period could start:

the filing date of the application in the UK or,
the priority date of the application (if there is one)

Under the Paris Convention, an applicant for a design can claim “priority” from the first application made in a Paris Convention country. This period is 6-months from the filing of the first application. A subsequent application cannot be invalidated e.g. for not being new by any designs filed between priority date and the subsequent filing. Further information can be found in Article 4 of the Paris Convention.

18. Starting the deferment period at the filing date of the application would retain a familiar feature of the current system. However, it would allow applicants who file in the UK at the end of the priority period to keep their designs confidential for 6 months longer than applicants who first seek protection in the UK, adding complexity to the system.

19. Alternatively, starting the deferment period at the earliest of the priority or filing date would provide a simple system for users. It would ensure that all applicants are able to keep their designs confidential for the same period of time, irrespective of where they first file an application. The publication date for patents is calculated in this way, and, and if combined with an 18-month deferment may benefit applicants who apply for both patent and registered design protection for a product.

20. The government’s preferred approach is for deferment to start at the earliest date of the application (filing date or priority date, if there is one). This will provide a simple system where all applicants can maintain confidentiality of designs for the same length of time.

To what extent do you agree or disagree with the proposal to start the deferment period from the earliest date of the application?

Strongly agree
Agree
Neither agree nor disagree
Disagree
Strongly disagree
Don’t know

Deferment of registration and publication

21. The government has identified two options here:

deferment of both registration and publication
registration of a design, with deferment of publication only

22. Under UK law (Rule 11(1) Registered Designs Rules 2006), the registrar must publish a design as soon as possible after it is registered. The IPO therefore defers both registration and publication of a deferred design application. EU law, in particular Articles 12, 49 and 50 of Regulation 6/2002/EC, sets out that an applicant can request to defer publication of a registered design.

23. Both systems have checks and balances to ensure that innocent infringement in the deferment period is not penalised but achieve this in different ways. UK law sets out that acts done between application date and the date the registration certificate is issued cannot be pursued for infringement. The EU system limits the right to take infringement action in the deferment period to instances where the design has been copied by a third party.

24. The government has not identified any benefits of moving to a system where a design is registered and publication is deferred. We therefore propose to retain current UK practice of deferring both registration and publication of a design. UK applicants are familiar with this system and making changes could be confusing.

To what extent do you agree or disagree that both registration and publication should be deferred?

Strongly agree
Agree
Neither agree nor disagree
Disagree
Strongly disagree
Don’t know

Information published in respect of a deferred application

25. Currently, no information is published in the UK when an application is deferred. This is because there is no mechanism to do so. The new deferment provision could retain this approach, or alternatively, basic information about deferred applications could be published in the register.

26. Publishing no information about a deferred design would benefit applicants who would be able to rely on complete confidentiality in respect of their application. Third parties would remain unsighted about the existence of a design which may be relevant to their own activities during the deferment period.

27. Alternatively, publishing basic information about deferred applications would allow applicants to keep the specific details of a design secret for a period of time but third parties would be put “on notice” that a deferred design has been filed in an area in which they are active.

28. Our view is that the balance between applicant and third-party interests is best served by publishing basic information relating to a design application, and we want your views on what that information should be published.

In your opinion, which information should be published about a deferred design (please tick all that apply):

Name and address of applicant
Name and address of representative
Filing date
Priority date
Locarno class
Locarno subclass
Anything else (please state)

Prior use and co-pending applications

29. UK designs law contains a prior use provision which gives limited rights to a third party in relation to a design which is subsequently registered by somebody else. The provisions only apply where the third party has acted in good faith. It allows them to continue using a design without fear of someone being able to stop them at a later date, jeopardising their investment.

30. We did not receive many responses on this from the call for views, and the responses we did receive were mixed. Some respondents thought there was no need for such a provision, whilst others suggested prior use provisions could be extended to the period when a design was kept secret.

31. Prior use provisions are currently only available to somebody who has used a registered design before the application date. For a deferred application, a person who starts using the design in the deferment period is not able to rely on the right of prior use, as the use occurs after the application date.

32. Although prior use provisions do not apply in the deferment period, the Registered Designs Act also sets out that no infringement proceedings can be taken in relation to any infringement which occurs before the registration certificate is issued. This provides some protection to third parties who use a deferred design between the date of application and the date of registration.

33. However, under current UK law a design holder can sue somebody for infringing their deferred design once it is registered, even though the third party was unaware of the existence of the design before that point. This means that third parties risk having to stop commercial activities from the date a deferred design is registered because those activities infringe the design from that point.

34. We want to hear from users about whether prior use provisions should be extended to include deferred designs, to better balance applicant and third-party interests. This would mean that a third party who has started using a design in good faith in the deferment period can continue to use it once the deferred design is registered. The provision would not apply to third parties who copy a design, so rightsholders would be protected from copyists.

35. If the government reintroduces novelty searching, extending prior use provisions would also mitigate not being able to include deferred designs in the search. Without this, somebody applying for a design could not be certain that a search has identified all relevant prior art. A relevant deferred design with an earlier application date exists, could be used to be used to stop use of the later-filed design for the reasons set out above.

To what extent do you think it would be useful to extend prior use provisions?

Very useful
Mostly useful
Moderately useful
Somewhat useful
Not at all useful

Would extending prior use provisions provide you/your business with:

A benefit/opportunity (yes, know, don’t know)
A challenge (yes, know, don’t know)

Would the impact on your/your business of extending prior use provisions be:

Positive (yes/no/don’t know)
Negative tick (yes/no/don’t know)

Please provide any additional information relevant to the government’s proposal for a formal deferment provision in designs law.

Section B: Assessment of impacts

36. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

37. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear users’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

38. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)

Please supply any other relevant information which you consider would be useful to help us assess the impacts of the options.

Question 5

Section C - Graphical User Interfaces And Animated Designs

Accepted Answer

Background

1. The last twenty years has seen a digital technology revolution, with society increasingly relying on and interacting with electronic devices to perform everyday functions and leisure activities. As a result, businesses spend time and money designing new and improved interfaces through which users interact with devices - from graphical user interfaces (GUIs) on phones and consoles, to websites, animated icons and screensavers.

2. We want to ensure that the designs system reflects the advances in digital technology and provide clarity for applicants filing GUIs. We have identified several options that will ensure the UK designs framework is fit-for-purpose in the digital world of the 21st century.

3. Applicants who wish to protect animated designs currently have to do so by filing still/snapshot representations of the animation. This can be problematic as often these stills may show different visual appearances between different stages of the animation which can be interpreted as containing more than one design.

4. Some responses to the government’s overarching principles survey of February 2025 said they would be in favour of reforming the current system for GUIs and animated designs to make registration easier. Similarly, in the 2022 call for views, there were calls for the IPO to allow the filing of digital representations and expand its list of accepted file formats. Some concerns have also been raised directly with IPO that the current system does not provide adequate protection for digital designs and that legal practice in this area is unclear.

5. We have considered various options to update the current system. When doing so, our aims were i) to make it easier for designers to file the digital/animated designs they have created and ii) to ensure the system remains relevant in the face of new and emerging technologies.

Do you register animated designs/GUIs?

Yes
No
NA

If yes, how many animated designs/GUIs have you registered in the last 12 months

0-9
10-19
20-29
30-39
40-49
50+

If yes, do you think the current system is fit for purpose for registering animated designs/GUIs?

Yes
No
Don’t know

Discounted Options

6. We propose to discount the following option:

Do nothing

7. Under this option, design applications would be examined in line with current law and practice and applicants would have to request a hearing if they disagree with the IPO’s assessment of their application. This option would not address the issues which stakeholders have raised with us. Under this option, if a case was appealed to the courts, the resulting decision could be useful in interpreting the extent to which provisions of the Registered Designs Act apply to animated designs, and the scope of protection provided when representing them as still images.

Do you agree that “do nothing” should be discounted?

Yes
No
Don’t know

Options

8. We have identified the following options which either update the current system or will make it easier for designers to use the system when registering animated designs/GUIs. It would be possible to introduce more than one option.

Option 1 - Provide further guidance on what can be protected as a design
Option 2 - Amend legislation
Option 3 - Allow users of the designs registration system to file moving/animated designs via different file format
Option 4 - Allow an additional description to be added alongside stills/video clips

Option 1 - Provide further guidance on what can be protected as a design

9. The Registered Designs Act predates the digital technology revolution. Although current practice allows the protection of animated designs, due the lack of relevant case law it can be difficult to determine what can be protected as an animated or moving design. This is the case in particular where there is uncertainty as to whether the static representations relate to a single design. One way of addressing this is to provide additional guidance on how the IPO applies existing law in respect of animated designs and graphical user interfaces. The IPO is already in the process of updating its guidance in this area. We have included this option in the consultation for completeness and to allow users to give a view on where further guidance would be useful.

Option 2 - Amend legislation

10. Under this option, the legal definition of a design, a product, or both would be updated. Although we believe that animated designs are protectable under the existing legislation, this would provide legislative clarity to both users of the designs registration system as well as the IPO. It would make clear that animations and transitional designs can be registered in their own right. This option could be implemented in the following ways:

amending the definition of a design in the Registered Designs Act to clarify that a design can contain an animation or transition
amending the definition of a product in the RDA to clarify that 2D designs such as GUIs and animations are considered products in law
amending the definitions of both a product and a design in the RDA as set out above

11. The EU has recently broadened its definition of “design” to encompass animation, transition and movement of design features. It also amended its definition of “product” in law, to include industrial and handcrafted items, whether they take form as a physical object or materialise in a non-physical state. This includes intangible products, 3D printed items, animations and GUIs.

12. Although we did not specifically ask about the EU changes in the recent overarching principles survey, several respondents stated that similar changes to the definitions of a product and a design in UK law were desirable and would bring a degree of harmonisation with the EU.

13. The recent changes to the EU designs system also extend the rights conferred by a registration. Article 19 of Regulation (EU) 2024/ 2822 now prohibits third parties “creating, downloading, sharing or distributing to others any medium or software which records the design for the purposes of enabling a product…to be made”. These are now considered infringing uses of a design.

14. Although this extension of rights does not specifically relate to animated designs and GUIs, the change is relevant to the creation and use of designs in a digital environment. We would therefore like to hear users’ views on this issue, and whether we should make a similar change in UK law.

Do you think the current definition of a design within the RDA meets the needs of applicants who want to protect animated designs and GUIs?

Yes
No
Don’t know

Do you think the current definition of a product within the RDA is adequate?

Yes
No
Don’t know

Would you be in support of the UK amending the definition/s of a product and/or design?

Product – yes/no/don’t know
Design – yes/no/don’t know
N/A

If yes, do you think we should make similar changes to the EU?

Yes
No
Don’t know

Would you be in support of the UK extending the rights in a registered design to prohibit creating, downloading, sharing or distributing to others any medium or software which records the design, (similar to the EU)?

Yes
No
Don’t know

Option 3 - Allow users of the designs registration system to file different file formats

15. Under this option, IPO would increase the range of acceptable file formats applicants could file. Doing so would allow designs to be represented more fully than is possible through a series of still images. Video file formats would make presenting an animated or moving design easier than by way of snapshots, with the whole design shown as it would be in use. 3D computer-aided design (CAD) file formats could make it easier to show a non-animated design in its entirety, rather than being limited to a certain number of views in 2D representations. This would make it easier for third parties to understand what is protected and for IPO examiners to assess the design.

16. However, applicants who wish to claim priority in another country may encounter issues if other jurisdictions do not accept the same file formats. There may also be difficulties in using visual disclaimers to limit protection to only some of the features of a moving design. We want to hear users views on both of these issues, to help us understand to what extent they are a problem.

17. Other technical issues also need to be considered, including which file formats should be accepted, maximum file size and clip length and how the design would appear on the register/registration certificate. These issues will also be considered further as part of IPO’s ongoing transformation program. Responses to this consultation will help inform that work.

Should IPO accept file formats which show movement and animation?

Yes
No
Don’t know

Should IPO accept 3D computer-aided design file formats?

Yes
No
Don’t know

If yes, which file types should we accept? Please tick all that apply

OBJ
STL
X3D
DWG
SWF
MPEG
WMV
MP4
WebM
Other – please specify

How problematic do you feel the following would be when protecting a design using a video or CAD file format? (Not problematic, Somewhat problematic, Very problematic, Don’t know)

Claiming priority
Displaying the registered design on the register
Displaying the registered designs on the registration certificate
Certified copies
Visual disclaimers

Other (please specify)

Would any potential issues claiming priority be overcome by being able to file a sequence of still images alongside a video or CAD file?

Yes
Yes but only if video or CAD file is filed as additional information
No
Don’t know

Under our Public Sector Equality Duty, we do not expect any significant equality impacts from this change. Do you agree (Y/N/don’t know)

If no, please share any relevant evidence or concerns.

Option 5 - Publication of an additional description filed alongside stills/video clips

18. Under current UK law, the rights of a design are defined by the representations and any disclaimer which form the registration. Applicants are able to file an optional description which is not published and is therefore not available to third parties.

19. This option envisages publishing the optional description. This would mean that applicants could provide a description, for example to explain the transition from one still to the next, providing clarity to third parties about the scope of protection. This would be useful to applicants who choose to file animated designs represented as a series of still images, for example if they are basing a UK application on a priority filing in a jurisdiction which does not allow them. It would also be useful information to help third parties assess the scope of protection of a registered design.

20. It is currently unclear whether the description has any bearing on the extent of protection provided by a design registration as the courts have not given a view. This raises the question of whether it would be helpful for a description which provides additional context to still representations, such as describing the transition between them, should have the same status as written disclaimers and form part of the registration. We therefore want to hear from users about whether the scope of protection of a design should be assessed by reference to any optional description which is filed to provide additional information about the design.

Would you find it useful to file a description to describe an animation or transition?

Yes
No
Don’t know
NA

Do you think that such a description should be published as part of the registration:

Yes
No
Don’t know
N/A

Do you think that the scope of protection of a design should be assessed in light of the optional description? (Y/N/don’t know)

Yes
No
Don’t know
N/A

What would the impact be of allowing a description to be filed as part of an application (Easier, no change, harder, don’t know)

Understanding the register
Carrying out due diligence
Filing in the UK based on a foreign priority.
Filing abroad based on a UK priority.

Combining options

21. As mentioned above, the options set out could be introduced alone or in combination. We want to hear your views on this. We will take account of responses when bringing forward proposals for change.

Which options do you think we should introduce? (please select all that apply)

None
Additional guidance
Amend the legal definition of a design only
Amend the legal definition of a product only
Amend the legal definitions of a design a product
Increase the file formats available to users
Publish description as part of the registration

Please provide any further comments you wish to make about protecting animated designs and graphical user interfaces

Assessment of impacts

22. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

23. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear respondents’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

24. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)

If yes, please briefly explain which additional impacts should be included.

Question 6

Section D: Computer-generated designs

Accepted Answer

1. Registered design and UK unregistered design law contain provisions which provide protection for computer-generated designs without a human author. Supplementary unregistered design law does not. In principle, this protection would appear to apply to designs generated by artificial intelligence (AI).

2. The computer-generated designs provisions in registered design and UK unregistered design law mirror the computer-generated works provision in copyright law. They specify that where a design is generated by a computer in circumstances such that there is no human author, the person who made the arrangements necessary for the creation of the design will be considered the author or designer, respectively. These provisions appear to have been rarely relied on to date and are legally untested.

3. The courts are yet to provide guidance on the types of designs that would be considered computer-generated without a human author, and which would need to rely on the computer-generated designs provisions to be protected. However, the policy intention behind the computer-generated works provision was to provide protection for works produced “without expenditure of clearly identifiable human skill and effort”. Incentivising investment in AI technology was provided as a reason in support of this provision when it was legislated for alongside the computer-generated designs provisions in 1987.

4. It was also intended that works created with the aid of computers (computer-assisted works) would attract ‘standard’ protection, and so not need to rely on protection offered by this provision. In the recent Copyright & Artificial Intelligence consultation, an example provided of a computer-assisted work as opposed to a computer-generated work was a work produced by a person using Adobe’s Generative Fill tool to make edits to their own photograph.

5. The government’s 2022 call for views on designs sought views on the protection of computer-generated designs, and whether computer-generated designs should also be protected under supplementary unregistered design law. Some respondents commented that computer-generated designs should be protected, however they did not refer specifically to computer-generated designs without a human author. It was clear that some were instead referring to computer-assisted designs likely to qualify for ‘standard’ design protection.

6. Some respondents raised concerns about offering protection for computer-generated designs. It was commented that AI tools have the ability to create a large number of designs in a very short period of time, and that this could result in large numbers of designs being held by bad actors, which could inhibit innovation.

7. In respect of the computer-generated designs provision in UK unregistered design law, it was commented that there is a lack of clarity on how this interacts with the wider legal requirement for UK unregistered designs to be original. Stakeholders also called for consistency of approach across IP rights in relation to AI.

8. In view of stakeholder views on this issue and the rapid advances in generative AI in recent years, we are considering future options for the protection of computer-generated designs without a human author. These include the government’s preferred option to remove existing provisions which provide them with protection.

Options

9. We are seeking users’ views on the following options for computer-generated designs:

Option 0 – Maintain the existing protection for computer-generated designs without a human author
Option 1 – Reform protection for computer-generated designs without a human author
Option 2 (preferred option) – Remove the existing protection for computer-generated designs without a human author
Option 3 (supplementary option) – Collect data on whether AI has been used in the creation of a registered design

Option 0 - Maintain the existing protection for computer-generated designs without a human author

10. Under this option, the provisions in registered design law and UK unregistered design law which provide protection for computer-generated designs without a human author would be maintained. An equivalent provision could also be introduced into supplementary unregistered design law. To simplify the designs regime, we are of the view that the same approach for protecting computer-generated designs should be taken for each of the design right types.

11. Although retaining the provisions would offer continuity for users, they should only be retained if they provide an overall benefit or are likely to in the future. While it appears the provisions have not been widely relied on to date, there is risk that incentivising the production of computer-generated designs without a human author by protecting them could make it more difficult for designs created by humans to get protection. This is because AI tools have the ability to produce large amounts of designs in a short space of time and so could mean that human-created designs are less likely to have the novelty or individual character required to qualify for registered design or supplementary unregistered design protection.

12. In view of this risk to human created deigns, we consider this option should be discounted unless we receive evidence demonstrating that these provisions offer sufficient benefit. This aligns with the government’s position on the copyright computer-generated works provision, as set out in the recent Copyright and Artificial Intelligence consultation which consulted on options for the protection of computer-generated works.

Option 1 - Reform protection for computer-generated designs without a human author

13. Under this option, the existing protection for computer-generated designs could be clarified or amended. This could include removing or redefining the originality requirement in UK unregistered design law in relation to computer-generated designs, or any other clarification or amendment supported by evidence.

14. UK unregistered design law requires designs to be original to qualify for protection and concerns have been raised that the computer-generated designs provision is incompatible with this requirement. These considerations are not relevant to registered designs or supplementary unregistered designs which do not have an originality requirement.

15. The test for originality for a UK unregistered design will either be the traditional British concept of copyright originality or the new test of originality from the Court of Justice of the European Union (CJEU). The former requires the author to have spent sufficient time, labour, and skill in the creation of the work. The latter refers to the work comprising the author’s intellectual creation which is the expression of their creative choices and reflects their “personal touch”. To date, judges in the UK have followed both approaches for UK unregistered designs, but they follow the CJEU approach for copyright.

16. Concerns surrounding the incompatibility of the CJEU test for originality and the copyright computer-generated works provision are well documented. The Copyright and Artificial Intelligence consultation explains that the test is very much associated with human qualities, suggesting that a work created by a non-human could not be “original”. However, the computer-generated works provision only applies to works “without a human author”. The same considerations arise for UK unregistered designs if the CJEU test is followed.

17. It has been argued that even if the traditional approach to originality is followed for UK unregistered designs, a contradiction arises. “Sufficient time, labour and skill” are criteria better suited to assess the actions of humans than computers. Therefore, if there are strong arguments that protection for computer-generated designs without a human author is beneficial, there may be an argument for reforming the current protection to address this issue.

18. As part of this consultation, we are also seeking views on future options for unregistered designs to simplify the UK designs regime [section F]. These include replacing the UK unregistered design and supplementary unregistered design with a single consolidated unregistered design. If this occurs and the single unregistered design right does not have an originality requirement like that in place for UK unregistered designs, any potential conflict will resolve and reform to address this issue would be unnecessary.

Option 2 (preferred option) - Remove the existing protection for computer-generated designs without a human author

19. This option would see the existing computer-generated designs provisions removed from registered design and UK unregistered design law. There is no existing computer-generated designs provision in supplementary unregistered design law and so this would result in a consistent approach across the different forms of design protection available. It would also address any contradiction with the originality requirement in UK unregistered design law.

20. There is little evidence that the computer-generated designs provisions are used or are valuable. In view of the lack of evidence, the benefits of removal above and the risk to human-generated designs of providing computer-generated designs with protection, this is our preferred option.

21. However, retention of these provisions could still be justified if sufficient evidence is provided in support of this. For example, if evidence is provided to suggest this provision is likely to strongly encourage development or investment in generative AI services. We are not aware of any evidence that this is the case however and most leading AI nations do not provide protection for computer-generated designs without a human author. This includes the US and most EU Member States.

Option 3 (supplementary option) - Collect data as to whether AI has been used in the creation of a registered design

22. The IPO does not currently know when AI has been used in the creation of a design. To improve our understanding of the use of AI in the designs sector and to generate data on this which could be shared with the public, the IPO could collect data on the use of AI tools in the creation of a registered design as part of the application process. This option is not a standalone option and could be adopted alongside any of options 0-2.

23. This could be as simple as asking applicants to make a declaration whether they had knowingly used AI in the generation of the design or not. However, more information could be requested such as the name of the AI tool used in the creation of a design. Alternatively, a statement on the type of AI used and the extent of its use could be requested. Providing this information could be optional or mandatory. If optional, this could result in a poor quantity and quality of data, however the benefit of collecting this data may not be considered to warrant making it mandatory. This would introduce additional administrative burden for applicants. If mandatory, consideration would need to be given to whether there should be an appropriate sanction if the information was not supplied or it was found that it was supplied incorrectly.

24. Also under consideration as part of this consultation is the option to introduce a bad faith provision to registered design law [section A]. If a mandatory declaration was introduced, the sanction for supplying incorrect information could be cancellation of the application on the grounds of bad faith.

Questions:

Do you agree that the existing computer-generated designs provisions should be removed?

Yes/No/ Don’t Know

Please explain your answer and provide relevant evidence.

If the existing computer-generated designs provisions are retained, do you agree that an equivalent provision should be introduced for supplementary unregistered design law?

Yes/No/ Don’t Know

Do you agree that the same approach for protecting computer-generated designs without a human author should be taken for registered designs, supplementary unregistered designs and UK unregistered designs?

Yes/No/ Don’t Know

If not, why not?

Have you ever knowingly relied on the existing computer-generated designs provisions to protect your designs?

Yes/No/ Don’t Know

Would you be impacted if the existing computer-generated designs provisions were removed?

Yes/No/ Don’t Know

If you think you would be impacted by removal of the existing computer- generated designs provisions, please provide evidence to support this:

Do you think there is conflict between the computer-generated designs provision in UK unregistered design law, and the requirement for UK unregistered designs to be original?

Yes/No/Don’t know

Do you think that the computer-generated designs provisions should be reformed to address this issue, or for any other reason?

Yes/No/Don’t know

Please explain your answer, including how the provisions should be reformed if you chose ‘yes’, and provide relevant evidence:

Should the IPO collect information about the use of AI in the creation of a registered design as part of the application process?

Yes/No/Don’t know

If yes, do you think supplying this data should be mandatory?

Yes/No/Don’t know

What information do you think should be collected and why? If you think it should be mandatory to supply this information, what would be the appropriate sanction for not supplying it or supplying it incorrectly, if any?

Section D: Assessment of impacts

25. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

26. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear respondents’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

27. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)

Please supply any relevant information which you consider would be useful and help us assess the impacts of the options.

Question 7

Section E: Miscellaneous Changes

Accepted Answer

The current review of the UK designs framework provides an opportunity to address a number of smaller miscellaneous issues. This will allow us to provide greater consistency across registered IP rights, improve the clarity of designs legislation, and streamline IPO’s designs practice. We welcome views on the proposed changes set out below.

Matter prohibited by law contained in a design application

2. Designs legislation says that the registrar shall refuse to register designs containing certain emblems. These include Royal arms, crowns or flags, flags of Paris Convention countries, flags and emblems of international organisations, and coats of arms. Section 3(A)(4)c and schedule A1 of the Registered Designs Act sets out a limited, amendable list of emblems which cannot be protected as a design.

3. However, the Registered Designs Act does not list all emblems which should be refused if present in a design application. For example, the use of the Red Cross and Red Crescent are prohibited by the Geneva Convention Act 1957 (section 6 Geneva Conventions Act 1957 (legislation.gov.uk)).

4. Trade mark legislation contains a more general provision which allows registration of a trade mark to be refused to “the extent that its use is prohibited in the United Kingdom by any enactment or rule of law other than law relating to trade marks” ( section 3(4) Trade Marks Act 1994 (legislation.gov.uk)

5. We propose introducing a similar provision into the Registered Designs Act. This will provide a legal basis to allow the registrar to object to the use of a symbol which is prohibited elsewhere in legislation but is not within the scope of schedule A1. This change would also deliver greater consistency between IP rights, aiding legal clarity.

Do you agree that an express provision should be introduced to allow an objection to be raised to matter prohibited in law contained in a design application? (Y/N/don’t know)

If not, why not?

Harmonising time periods for response to an official action

6. Rules 8 and 9 of the Registered Design Rules 2006 set time periods for an applicant to respond to objections raised by the IPO. These are:

2 months for substantive or formalities objections
3-month deadline for an objection that the representation of the design does not meet legal requirements

7. The law also sets out the sequencing of when objections can be made – an objection to the representation may only be made after the substantive or formalities objection has been overcome. This can result in multiple official actions which need to be considered and responded to by an applicant or their legal representative.

8. To streamline the process, we propose amending the Designs Rules to allow objections to be made at the same time and harmonise the time limits for response at 2 months. This will simplify the administrative process for both applicants and the IPO. As the time limit is extendable, applicants will not be disadvantaged by this change as they will be able to request an extension to the response date if required.

Do you agree that the registrar should be able to object to both substantive and formalities issues in the same examination report? (Y/N/don’t know)

Do you agree that the that time limit for responding to both types of objections should be harmonised at 2 months? (Y/N/don’t now)

If not, why not? Limited text box?

Removing the ability to file specimens

9. UK designs law currently allows physical specimens of designs to be filed alongside a representation of a design, although very few have been filed in recent years. The legislation requires the IPO to keep a copy of any specimens filed.

10. The 2022 designs call for views asked users whether the ability to file a physical specimen is still relevant, in an era of increasingly digital content. Users were also asked whether ending the ability to do so would cause them any problems.

11. Respondents were generally in favour of disallowing acceptance of physical specimens by IPO. Reasons given were that they are rarely used and cannot easily be searched. Of those who wanted to retain the provision, some thought they had a role to play until technology allowed filing of convincing 3D electronic representations. A concern was raised that not allowing specimens could disadvantage users who do not use computer technology.

12. We acknowledge the reasons given in favour of retaining this provision. However, users very rarely file specimens with the IPO, and we consider the risk of harm to users of removing the ability to be very low. We therefore propose removing the provisions which allow specimens to be filed from the Registered Designs Act and Designs Rules.

Do you agree that the filing of a physical specimen as part of a registered design application should be disallowed? (Y/N/don’t know)

If not, the reason is that :

I file/have filed physical specimens in the past.
I like having the option of filing a physical sample.
Only a physical sample adequately represents by designs.
Other (please specify)

13. The Registered Designs Act requires the registrar to refuse to protect designs which contain protected coats of arms or heraldic devices. However, there is no searchable database of coats of arms, and in any case, they are issued as “blazons” which describe the coat of arms in words rather than as a visual emblem. Without expertise in heraldry, it is extremely difficult for the IPO to meet its obligations.

14. We therefore propose introducing a provision to allow the IPO to share applications before publication with relevant authorities for the purposes of the registrar carrying out his statutory duties. Such a provision might also be useful in other areas, for example, it would allow the IPO to seek translation of text contained in a design application, or to consult with the Red Cross in respect of its use.

Do you agree that the registrar should be allowed to share an application before publication for the purpose of carrying out his statutory duties? (Y/N/don’t know)

If not, why not:

I don’t think any information should be shared before a design is registered.
Other (please specify).

Powers to make a late objection

15. Trade marks legislation allows the registrar to object to a mark which has been accepted, if matters come to his attention by the end of the opposition period which are relevant to the acceptance of the mark(section of the 40(1) Trade Marks Act 1994 (legislation.gov.uk)) No such provisions exist for designs because there is currently no opposition period.

16. In section A of this consultation, we are seeking users’ views on whether an opposition or observation period should be introduced for designs. If an opposition or observation period is introduced, it may also be helpful to introduce late objection provisions at the same time. As an example, this might enable the registrar to make a late objection based on observations from a third party. We want to hear stakeholder views on this, to allow us to take responses into account when deciding next steps in this area.

Do you agree with the proposal to introduce a provision to allow the registrar to raise objections to matters coming to his attention after an opposition period, should the government introduce one in future (Y/N/don’t know)

If not, why not?

Warrant of validity and liability

17. It is not possible for the registrar to guarantee the validity of registered rights. For this reason, section 116 of the Patents Act 1977 and section 70 of the Trade Marks Act 1994 contain provisions relating to the exclusion of liability in respect of official acts. This sets out that the registrar shall not be taken to warrant the validity of registered trade marks and patents. The provisions also limit the liability of the registrar and his officers in respect of any examination required or authorised by domestic law or treaties and conventions.

18. There is no equivalent provision in the Registered Designs Act 1949. There does not seem to be any reason why official acts done in connection with designs should attract more liability than for other registered rights.

19. We propose introducing similar provisions for registered designs, to provide consistency across registered IP rights.

Do you agree that warrant of validity and liability provisions should be similar across trade marks, patents and designs? (Y/N/don’t know)

If not, why not?

Rectification of the register

20. Section 20 of the Registered Designs Act contains provision relating to rectification of the register of designs. This requires an application to be made to the court. The registrar is not able to rectify the register.

21. We propose allowing requests for rectification to be made to the registrar or to the court. Allowing requests to be made to the registrar would provide a more accessible route for rectification. As an example, this might be suitable where the request for rectification is unopposed, or if both parties agree. We propose that if the registrar determines that a request would be more properly determined by the court, the registrar may decline to deal with it. The registrar’s power to rectify could be subject to limits or safeguards. For example, it could be limited so that only certain types of issues can be rectified by the registrar, for example entitlement or ownership issues).

Do you agree that the Registered Designs Act 1949 should be amended give the registrar of designs the power to rectify the designs register?

Y/N/Don’t know

If not, why not?

Do you think the power should be limited or have safeguards? For example, limited to rectifying specific issues (eg only entitlement/ownership) or in particular circumstances (eg only unopposed requests, or with agreement of both parties)

Updating provisions relating to inspection of designs

22. Sections 22 and 17 of the Registered Designs Act set out the registrar’s responsibilities in respect of the register of designs and inspection of registered designs. The language of the provisions reflects the historical position before information was available online.

23. We propose to update the Act to reflect that information about currently registered designs should be viewable online and the journal should provide a record of information about designs that have been registered.

Should the Act be updated to reflect that representations for currently registered designs are made available online? (Y/N/don’t know)

How important is it to you to have access to historical design records (important, neutral, unimportant).

Please provide reasons or your answers

Power to direct the use of forms

24. Section 31A allows the registrar to direct forms for three purposes: for an application for registration, for filing of representations or specimens, and for filing of other documents at the IPO. However, there are some designs processes that do not fall within those three categories. We therefore propose to broaden the registrar’s power to direct forms so that forms can be directed for any purpose relating to the registration of a design and any other designs proceeding. This will make it quicker and easier for the registrar to make improvements to designs forms. This would also bring designs law into line with existing trade marks and patents law, where the registrar already has this wider power to direct forms.

Should the registrar be able to direct forms for any purpose relating to the registration of a design and any other design proceeding?

(Y/N/don’t know)

If not, why not

Priority claims

25. The Paris Convention allows applicants to file an application for an industrial design in one contracting state and later file an equivalent application in another contracting state within 6 months and benefit from the filing date of the earlier application. To benefit from this right of priority when filing a design at the IPO, applicants must provide details of their priority claim. These are the number, filing date, and country of the earlier (priority) application.

After an applicant has provided details of a priority claim on an application form, they either:

make a declaration that the design in the priority document is identical to the corresponding design in the UK application or,
provide a certified copy of the priority application (priority document)

27. Where a priority document is supplied, examiners compare it to the application under examination. If they have concerns over the validity of a priority claim, they raise an objection.

28. The IPO is currently reviewing its practice for dealing with designs priority claims and considering future options. The existing approach is inconsistent as a priority document is checked, where provided, but a declaration of identicalness is taken at face value.

29. To improve the consistency of approach and simplify the system for users, our preferred option is to stop requesting a declaration of identicalness or a priority document and merely ask for details of a priority claim (option 1). This would align with the current approach for trade marks and would reduce administrative burden on applicants. It would also prevent the IPO from having to validate priority claims which in most cases will be of no interest to third parties.

30. As part of this consultation, we are also seeking views on options for searching designs applications to assess novelty and individual character [section A]. If searching is introduced following consultation, the IPO will need to decide how to take account of a priority claim when conducting a search and examination. The preferred approach would be that the IPO only requests and examines a priority document where a disclosure is found which means the validity of the priority claim impacts the novelty or individual character of an application.

31. Another option is to adopt a similar approach to that in place for patents. Here the IPO would require a priority document whenever a priority claim is made (option 2). This means priority documents would always be on file for third parties to validate a priority claim themselves as necessary. The likelihood of this may be low but if a priority application is unpublished in the country of filing it may be difficult for third parties to otherwise access it. Inspection of priority documents would become easier for third parties once the IPO has introduced an online file inspection tool for designs as part of its digital transformation programme.

32. Although this option would increase the burden on applicants, introduction of this requirement would be delayed until the IPO has joined the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) for designs. WIPO DAS allows the electronic and secure sharing of priority documents between intellectual property offices and so reduces the need for applicants to submit physical priority documents. The IPO would only examine a priority document under this option if searching is introduced and a disclosure is identified which means the validity of the priority claim impacts on the novelty or individual character of an application.

Please rank the options for dealing with designs priority claims in order of preference:

Option 0: Maintain current practice (do nothing).

Option 1: Only require details of a priority claim. Do not require a declaration of identicalness or a priority document.

Option 2: Require details of a priority claim and a priority document whenever a priority claim is made, once the IPO has joined WIPO DAS for designs.

If the IPO introduces searching for designs, do you agree that the IPO should be able to request a copy of the priority document where the validity of the priority claim is relevant to the novelty or individual character of the design being examined?

(Yes/No/Don’t know)

Please provide any additional information relevant to priority claims.

Assessment of impacts

33. Ahead of this consultation, the IPO carried out an analysis of impacts for review by the Regulatory Policy Committee.

34. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear users’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society. The options assessment does not consider options relating to rectification of the register, updating provisions relating to inspection of designs, the power to direct use of forms or priority claims. An impact assessment including these options will be produced in due course.

35. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)
If yes, please briefly explain which additional impacts should be included.

Question 8

Section F: Simplification of unregistered designs and overlap with copyright

Accepted Answer

Introduction

Designs in the UK can be protected in several different ways:

UK registered designs
International registered designs
UK unregistered design right (“design right”
Supplementary unregistered designs (SUD)
Copyright (if relevant requirements are met)

2. This means there is a patchwork of overlapping rights, which is complex and difficult for designers to understand, especially if they do not have legal representation. This is the result of how the UK designs framework has evolved over time, and there has always been a tension between the protection afforded by designs and copyright.

Evolution of UK design protection

3. Copyright was first introduced to protect literary works, and has expanded to cover artistic, musical, dramatic, and other works. The types of artistic work to be protected has also expanded over time, with protection applying first to engravings and prints, then to sculptures and other artistic works. The Copyright Act of 1911 was the first to extend protection to “works of artistic craftsmanship” allowing copyright to apply to functional items (such as furniture) which meet the relevant standard.

4. Specific protection for designs was introduced as parliament responded to developments in mass manufacturing of articles. As a result, registered design protection has been available in the UK since the late 19th century. Over the intervening years, a number of Acts of Parliament sought to make clearer the distinction between design and copyright protection.

5. The Registered Designs Act 1949 (RDA) introduced the idea that designs protected “features which in the finished article appeal to and are judged solely by the eye”. Subsequent changes to copyright law in 1956, meant that it became possible to protect purely functional products, via the copyright which subsisted in design drawings for them. This lasted for a longer period than products with eye-appeal could be protected.

6. UK unregistered design right (“design right”) was introduced into UK law by the Copyright, Designs and Patents Act 1988 (CDPA). This new form of IP protection was intended to protect functional products, such as car parts, for which copyright protection was considered excessive. Changes were also made to copyright law to draw a line between the two types of protection, for example, to prevent copyright protection of industrial designs via design drawings. The aim was that design right would protect functional products which did not meet the threshold for patent protection, and for which the length of copyright term (life of the creator plus 70 years) was considered excessive.

7. Design right protects the internal and external shape and configuration (how the parts fit together) of the whole or part of an article. At the time design right was introduced, registration of designs was limited to genuinely aesthetic articles – those that had eye-appeal. This maintained a clear distinction between the two forms of design protection available at that time (UK registered designs and UK unregistered design right).

8. In the mid-1990s and early 2000s, the European Union (EU) legislated on designs. This broadened the definition of a design to the appearance of a product, removing the notion of eye-appeal from UK law. EU legislation also introduced a new type of unregistered design, specifically to protect short shelf-life products. When the UK left the EU, the supplementary unregistered design was created in the UK to mirror this form of protection.

9. EU copyright law harmonised legal concepts such as the originality requirement for copyright protection, the duration of copyright, etc. Harmonisation was by means of a series of EU Directives and case law. However, EU law allows flexibility in some areas such as exceptions and limitations, and EU member states’ laws differ in these areas.

10. As noted above, as well as introducing the unregistered design right, the CDPA sought to clarify the distinction between design protection for industrial designs, and copyright for artistic works. One provision, Section 52 limited the maximum copyright term for industrially manufactured artistic works. This meant that when more than 50 copies of these artistic works were made, the period of protection was limited to 25 years, compared to other artistic works which are protected by copyright for the lifetime of the creator plus 70 years. This was intended to ensure that items such as furniture and ceramics were not over-protected and to encourage industrial manufacturing.

11. The Court of Justice of the European Union (CJEU) judgment in Flos took a different approach to which designs could qualify for copyright protection under EU law. Following this, the UK Government reviewed section 52 of the CDPA which led to its repeal on 28 July 2016, bringing the duration of protection for industrially-manufactured items into line with other artistic works (life of the creator plus 70 years). This blurred the previous distinction between copyright and design protection by allowing such items to have full copyright protection.

12. Decisions from the CJEU also suggested that copyright should apply to any artistic work which was sufficiently original, in that it was the intellectual creation of its creator. This had the potential to further extend copyright protection to design articles. However, following the departure of the UK from the EU, the WaterRower case suggests that, as well as meeting the originality threshold, the requirement for design articles to be “works of artistic craftsmanship” in order to benefit from copyright protection continues to apply. As such, the bar for protection appears to be higher than in the EU.

13. This evolution of design protection, and the ebb and flow of the boundary with copyright over the years has resulted in a patchwork of IP protection which can subsist in designs. Not only do the different types of protection protect different aspects of a product, the term of protection also differs between the rights. This is summarised in the table below:

Type of protection	What can be protected	Duration of protection
Registered design (domestic and international application routes)	2D and 3D aspects of appearance e.g. features including the lines, contours, colours, shape, texture, materials and ornamentation. Surface decoration can be protected.	Up to 25 years (renewable every 5 years)
Supplementary unregistered design	2D and 3D aspects of appearance e.g. features including the lines, contours, colours, shape, texture, materials and ornamentation. Surface decoration can be protected.	3 years from disclosure in the UK
UK unregistered design (design right)	Shape and configuration (internal and external) i.e. 3D elements only – the shape of a product, the way parts of it fit together. Surface decoration cannot be protected.	10 years from first marketing or 15 years from first recording in a design document (whichever is shorter)
Copyright	Original works of artistic craftsmanship. Artistic craftsmanship excludes graphic works, photographs, sculptures and architecture (which have separate copyright protection). No other legal definition. May include areas such as furniture, ceramics and jewellery.	Life of the creator plus 70 years,

14. The UK designs sector is dominated by small businesses on designs and the linked designs survey that smaller companies and lone designers find the system too complex to understand. Even those who do understand the system, such as IP legal professionals, recognise it is complex and can be difficult to navigate for those without legal representation. Respondents to the designs call for views were clear that they do not want the system to be simplified at the expense of protection and the most common suggestion in relation to simplification was for a single consolidated unregistered design harnessing the best aspects of the current system. Even those who do understand the system, such as IP legal professionals, recognise it is complex and can be difficult to navigate for those without legal representation. Respondents to the designs call for views were clear that they do not want the system to be simplified at the expense of protection and the most common suggestion in relation to simplification was for a single consolidated unregistered design harnessing the best aspects of the current system.

Design Council report sets out that in 2019 92% of 81,665 design businesses in the UK were microbusinesses (<9 employees)

Approximately two-thirds of 288 respondents to the designs survey had no or poor knowledge of unregistered design protection generally and a similar proportion had no or poor knowledge of the different types of unregistered design protection available.

15. Responses to the 2025 survey seeking views on the overarching principles which should shape the system ranked simplicity third out of the five principles. A significant number of respondents indicated that they find understanding the system burdensome. Complexity of the designs system and a lack of knowledge or understanding of the system were specific themes raised by respondents.

16. The Government’s response to the 2022 call for views acknowledged the complexity of the system and committed to investigating options to simplify the designs regime. The response also committed to considering the relationship between design and copyright law, and the need for reform or guidance.

17. We have considered various options to simplify the UK designs framework, including the overlap of copyright and designs. When doing so, we had several aims. They were i) to provide for unregistered designs in a balanced IP system which recognises the needs of both designers and third parties; ii) simplify and streamline the system in a way which minimises negative impacts on designers and third parties; iii) ensure that there remains an incentive to encourage use of registered designs where appropriate, recognising that registration brings greater legal certainty to both rightsholders and third parties. We now want to hear stakeholder views on these options.

Discounted options

18. We have considered the following options to simplify the unregistered design regime and propose discounting them for the reasons set out below:

abolishing supplementary unregistered designs and retaining design right
abolishing unregistered designs and extending copyright protection
making no changes and improving guidance about how designs can be protected

19. Abolishing supplementary unregistered designs and retaining UK unregistered design right would simplify the system for designers. However, that would come at the cost of a reduction of the type of protection available to them. Some aspects of appearance such as surface decoration would no longer be protected as unregistered designs, which we know certain sectors value. This option would be a significant change to the balance of the current system and we therefore propose to discount it.

20. Abolishing unregistered designs and extending copyright to functional as well as creative aspects of a product would be a significant change to the UK’s IP framework. It would significantly increase the term of protection available for functional products, potentially having a chilling effect on follow-on innovations. For these reasons this we propose discounting this option.

21. Providing improved guidance would help designers make informed decisions about how to protect their designs. However, as a standalone measure it would not address the underlying complexity of the system which we know is an issue for users and therefore propose to discount it.

Do you agree that the options above should be discounted (Y/N/Don’t know)

If not, which option do you think we should consider further:

Abolish SUD and retain design right. (Y/N/Don’t know)

Abolish unregistered designs and extend copyright. (Y/N/Don’t know)

Keep the system the same and provide improved guidance (Y/N/Don’t know)

Options

22. We are seeking stakeholder views on two options to simplify the unregistered design protection system in the UK, alongside doing nothing. Those two simplifying options have been identified as they offer either maximum protection within a simplified system, or the maximum degree of simplification.

Option 0 - Do nothing and maintain the current system

23. The “do nothing” option would maintain the status quo. Supplementary unregistered designs and design right would continue in their current forms as distinct types of unregistered design protection. They would protect different aspects of a design for different lengths of time, and have different qualification requirements.

24. Although this option would not simplify and streamline the system for users, it is a system which legal professionals are familiar with. The availability of different rights, and the differences between them can be useful to designers and their legal advisors when making legal arguments.

Option 1 - Retain supplementary unregistered design, abolish design right (maximum simplification)

25. This option would retain supplementary unregistered design and abolish design right. The appearance of the whole or part of a product would be protected for 3 years from first disclosure in the UK. 2D and 3D articles would be protected, including surface decoration.

26. Design right would be abolished, and there could be some designs which would have qualified for protection under design right which do not qualify for protection as a SUD. For example:

purely functional aspects of shape and configuration would not be protected
a design which is not new but which is also not commonplace might currently be protected by design right but would not be protected by SUD
aspects of a complex product which are not visible in normal use might be protected by design right, but would not be protected by SUD
the internal configuration of a product can be protected by design right, but not by SUD

27. We recognise that removing some elements of design protection would have an impact on users. However, this option offers the maximum level of simplification as the legal scope of what can be protected as a design would be the same for unregistered and registered designs. It would also provide a higher degree of harmonisation with the EU designs protection system than option 2, which users have previously told us that they value. We have included this option in the consultation to help us understand the value users place on simplification.

Option 2: Consolidate the unregistered designs framework (maximum protection)

28. This option seeks to consolidate existing unregistered designs. Instead of two different legal frameworks, this option proposes a single unregistered design framework protecting both aesthetic aspects such as appearance and more functional elements of shape and configuration.

29. Consolidation of the framework could involve:

harmonising certain provisions, but keeping two separate rights e.g. retaining SUD and design right legislation but harmonising term and qualification requirements
creating a single consolidated right which is harmonised in some respects, but which has different provisions applying to the protection of the appearance of a design compared with those applying to the shape and configuration (e.g. protection of surface pattern must be visible in use, but this does not apply to aspects of shape and configuration)
creating a fully consolidated right which protects both aesthetic and functional elements and to which the same legal provisions apply. This could, for example, be the current SUD or design right legal frameworks, or a mixture of the two

30. Lighter touch harmonisation would simplify the system to some degree,but would retain an element of complexity as users would still need to understand how different legal provisions apply to different aspects of a design. Full consolidation would offer a higher level of simplification, but would reduce the legal flexibilities offered by the current system. We want to hear from users about what level of consolidation they would like to see.

31. As a minimum, the government considers harmonising term of protection and qualification requirements is desirable, for the reasons set out below.

Qualification requirements:

32. Under the current regime, a supplementary unregistered design comes into existence on first disclosure in the UK, and anybody can obtain protection if they meet this requirement. UK unregistered design right is more complex, and can only be obtained by qualifying designers or companies. Qualification requires an individual to be resident in the UK or a qualifying country, or a business to be incorporated in those territories and doing substantial business in them.

33. A single qualification requirement which applies to both aesthetic and functional designs would simplify the system, making it easier for designers to understand. We propose that an unregistered design should be created when it is first disclosed to the public as currently set out in supplementary unregistered design law. A disclosure requirement would be more easily understood by users of the system, especially designers with little IP knowledge. It would also remove an element of complexity present in the current system.

34. Currently a design needs to be disclosed in the UK. However, we are also consulting on whether we should make changes to this (section G). Should we bring forward proposals to recognise disclosures outside the UK, this would apply here.

Term of protection:

35. The term of protection currently differs for the two types of unregistered design protection currently available. Supplementary unregistered design exists for 3 years from first disclosure in the UK. UK unregistered design right expires 15 years after the design is first recorded or made, or 10 years after articles are first sold. This adds complexity to the system.

36. Harmonising term of protection for aesthetic and functional designs would further simplify the system. We want to hear your views on how long that should be. The options we have identified are 3 years, 5 years, 5 years plus licence of right term, or 10 years. Further information on these options is given below.

3 years - This is the term currently available for SUD and EU unregistered designs. This option would provide the same length of term as is currently available for appearance of a product but would be a reduced term for shape and configuration.
5 years - This option would increase the term for the protection of appearance of a product. It would align with the exclusive period of protection available for design right. However, as a licence of right is currently available for design right, this option would reduce the total period in which a design right holder can benefit from their design.
5 years plus licence of right - Currently, a licence of right must be made available to third parties in the last five years of the term of protection for UK unregistered design right. If a licence of right is requested, the rightsholder receives royalties, but do not have exclusive control over their design in this period. This option envisages a similar approach, where the term of protection for an unregistered design would consist of an exclusive term of 5 years plus an additional 5 years where a licence of right would have to be made available on request. This would be a significant increase to the period of protection for the appearance of a product and surface decoration, and would retain an element of complexity from the current system.
10 years - A 10-year term of protection would be a significant increase for aspects of aesthetic aspects of a designs appearance such as surface decoration and colour. It would also increase the exclusive term of protection as compared to design right, as no licence of right would need to be made available to third parties.

37. Our preferred option is a 5-year term of protection which we believe strikes a balance between the needs of designers and third parties as well as a balance between the different terms of protection currently available for aesthetic and functional designs.

Questions:

Which of the following is more important to you:

Maximum protection [rank]
Maximum simplification [rank]

Rank the options in in order of preference

Option 0
Option 1
Option 2
Neither

Would harmonising the following aspects make it easier for you to use the system?

Qualification requirements (yes/no/don’t know)
Term of protection (yes/no/don’t know)

Do you agree that a single qualification requirement should apply to both aesthetic and functional aspects of a design (Y/N/Don’t know)

Do you agree that a single term of protection should apply to both aesthetic and functional aspects of a design (Y/N/don’t know).

If term of protection is harmonised, how long should it be (please choose preferred option):

3 years
5 years
5 years plus 5 years licence of right
10 years
Other (please specify)

Other legal considerations

38. In addition to term of protection and qualification requirements, there are other legal provisions in unregistered design law which are different for SUD and design right, reflecting their different origins and different legal frameworks.

39. To create a fully consolidated unregistered designs system would require changes to the legal framework to address these differences. We recognise that some users and legal professionals value the legal differences between the two forms of unregistered design. Making changes to the system could change the scope of protection and may result in some case law ceasing to be relevant. However, additional simplification of the regime will improve accessibility to the system, and we want to hear stakeholder views on the level of harmonisation which is desirable, and views on which provisions should apply to a consolidated unregistered design.

40. This section covers some key areas which could be harmonised, but the list is not exhaustive. Further, detailed legal analysis will need to be carried out ahead of bringing forward specific proposals.

41. We consider that the most straightforward way to simplify the regime would be for supplementary unregistered design provisions to apply to the consolidated unregistered design system. For example, provisions relating to proprietorship/ownership of a design, the rights conferred by a design, and infringement provisions could be harmonised using this approach.

42. Using the concepts of novelty, individual character and overall impression in place of the originality and a commonplace test would further simplify the designs system by introducing a consistent approach across both registered and unregistered designs.

43. Spare parts provisions currently differ across different forms of design protection. UK registered designs and supplementary unregistered designs have a repair clause which says that it is not an infringement of a registered design for a component part of a complex product to be used to repair the complex product to its original appearance e.g. the bumper or wing panel of a car. UK unregistered design right has a “must-fit, must-match” exclusion which performs a similar function to a repair clause, albeit in a more complex way. We consider the simplest way to streamline the legal framework for spare parts is to apply the provisions for registered designs or supplementary unregistered designs across all forms of design protection available.

44. Other differences between the SUD and design right exist because of the different origins of the rights. For example visibility in use. To be protected as a supplementary unregistered design, a component part of a complex product must be visible in use. There is no such requirement for design right. On the one hand, it could be argued that design protection is a visual right, and so a design feature should be visible to be protected and that this should be the case for all forms of design protection in the UK. On the other hand, design right has a different origin and protects functional as well as aesthetic aspects of shape and configuration. We would like to hear respondents’ views on this.

To what extent should unregistered design be harmonised or consolidated?

Harmonise some legal provisions but keep separate regimes (Y/N/Don’t know).
Create a single right which is harmonised in some respects but where different provisions may apply to aesthetic and functional aspects of a design (Y/N/don’t know)
Create a single right where the same provisions apply to both the aesthetic and the functional aspects of a design (Y/N/don’t know)

Do you agree that the SUD legal framework should apply to a new consolidated unregistered design, if introduced (Y/N/don’t know)

Do you agree that the repair/spare parts provisions should be harmonised across all different types of design protection? (Y/N/don’t know)

If yes, we should use the provisions currently used for (tick preferred option):

Registered designs
Supplementary unregistered designs
UK unregistered design right

Do you think that design protection for a component part of a complex product should be limited to features which are visible in normal use (Y/N/don’t know).

Do you think that design protection for any product should be limited to features which are visible in normal use (Y/N/don’t know).

How important to you is the ability to protect the internal configuration of a product (important, neutral, unimportant, don’t know).

Are there any elements of the design right regime which you think should be used in a consolidated right, rather than going fully with SUD regime?

Please provide any additional comments in relation to simplification of designs here:

Consolidation

45. UK designs law is spread over several legal instruments. It is difficult for users of the system to identify the different pieces of legislation, and to understand the interaction between them.

46. We would like to hear from users whether this causes them problems, and whether they would like to see design law consolidated, for example into a single piece of legislation.

Questions:

Do you find the number of legal instruments relating to design law confusing (Y/N/don’t know/I have never looked at them).

Do you think the government should consider consolidating designs law into a single piece of legislation (Y/N/don’t know)

Please provide any additional comments in relation to consolidation of designs law here

Overlap with copyright

47. A further opportunity to simplify the IP legal framework for designers is to consider the current boundary with copyright protection. Responses to the 2022 call for views, and discussions with stakeholders indicated this is an area they wanted the government to consider. This is because the different IP rights have different qualification requirements, terms of protection, restricted acts, exceptions, and limitations.

48. Copyright protects original artistic works (as well as original literary, dramatic and musical works, and films, sound recordings and broadcasts). An original work is one that can be said to be the author’s own intellectual creation. The case law on the originality test came into UK law when part of the EU and has been preserved following exit.

49. An “artistic work” means a graphic work, photo, sculpture or collage; a work of architecture; or a work of artistic craftsmanship. The main overlap between copyright and designs will involve works of artistic craftsmanship.

50. There is no definition of artistic craftsmanship in legislation. Case law suggests that a work, as well as being original, would need to have both artistic quality and craftsmanship, but whether an individual item could be justified as such would determined on a case by case basis.

51. There have been criticisms of the current approach. Designers, users and customers may find it confusing as to whether an item is protected by copyright or a design right, particularly for items which are primarily functional rather than aesthetic. Some have called for a clearer line to be drawn between copyright and design protection.

52. In addition, to the extent that there remains an overlap between the two types of protection, concerns have been raised about specific use cases that may merit inclusion in copyright exceptions.

Options

53. We want to hear users’ views on the following options: * Option 3 - Make no changes to copyright legislation * Option 4 - Amend copyright legislation * Option 5 - Update copyright exceptions

54. Our aim is to ensure the boundary between copyright and design protection is sufficiently clear and provides the right balance between designers and rights holders of original products on the one hand, and users and follow-on innovators on the other.

55. At this stage, in view of the most recent case law, Option 3 – to make no changes to copyright legislation – is our preferred option. However, we welcome views on all of the copyright options.

Option 3 - Make no changes to the copyright system

56. UK courts have only occasionally ruled on cases which concern items which could be protected by design rights, copyright, or both. This means that those confused about whether copyright or design protection apply have to refer to undefined terms in legislation or to case law from the courts.

57. Until recently, one uncertainty was whether the EU-derived originality test was the only factor relevant to copyright protection for designs in the UK, or whether the additional criterion that a work must be a “work of artistic craftsmanship” continued to apply (in addition to originality).

58. The former interpretation could have led to copyright protection being available for all design articles considered original under EU copyright law. Such protection would not extend to purely functional aspects but would cover creative expression in a functional article.

59. However, recent case law confirmed that, following our exit from the EU, the additional requirement that such an article must also be considered a work of artistic craftsmanship to benefit from copyright protection still applies.

60. There has been criticism that the concept of “artistic craftsmanship” is vague and subjective and could be defined more clearly. However, challenges will be presented wherever a line is drawn. This approach, which provides copyright only to those design products with a certain artistic character helps to ensure that copyright is not overly-protective and stifles follow-on innovation. As such, maintaining this approach and allowing further clarity to develop through case law is the preferred option in this consultation.

WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC) available at WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC) (05 August 2022)

Option 4 - Amend copyright legislation

61. One option to provide further clarity in the copyright framework would be amend the Copyright, Designs and Patents Act 1988 (CDPA). The CDPA sets out what is protected by copyright, including works of artistic craftsmanship in section 4 CDPA.

62. There are different ways the legislation could be updated with a view to providing greater clarity. Options include: * remove works of artistic craftsmanship from copyright protection * provide a definition of works of artistic craftsmanship * provide a new definition of originality in relation to design articles

63. Neither originality nor artistic craftsmanship are defined in legislation. It would be possible to redefine one or both terms, in the context of design articles, with the intention of drawing a clearer line between copyright and design protection. Under one version of this works of artistic craftsmanship could be removed from copyright protection altogether.

64. This option could provide more certainty over what is covered by copyright (and designs). It could also provide support for replica businesses and product innovators. It could also increase the incentive to create works inspired by, or in the style of, classics.

65. On the other hand, businesses may need advice to acclimatise to a new framework, increasing legal costs for a period of time. In addition, attempts to draw a new line between the two types of protection are likely to face their own challenges over definition and interpretation.

66. While we acknowledge that there remains uncertainty around the boundary and extent of overlap between copyright and designs, recent developments in case law and the lack of clear alternative approach mean this is not our preferred option at this stage.

Option 5 - Update copyright exceptions framework

67. The fact that there is an overlap between copyright and designs protection raises questions over the types of use that are restricted by each.

68. Copyright provides a broad set of rights in copying, distribution, communication to the public, etc. Designs law provides a different set of rights and has certain exceptions not present in copyright law, for example to support repair of a product.

69. We received feedback through the previous Call for Views from some consumers and enthusiasts that their activities had been restricted in specific areas, where copyright law is more restrictive than design law.

70. One way to address such concerns through amendments to the copyright exceptions framework. Possible options include: * reintroducing an exception for industrially manufactured items, providing a shorter term of copyright protection for items where more than a certain number are made * introduce a spare parts exception and harmonise with the equivalent designs exception * amend section 62 CDPA (the so-called panorama exception) which would allow works of artistic craftsmanship to be represented in new artistic works, such as a photograph

71. An exception for industrially manufactured items where more than 50 were made previously existed as section 52 CDPA. Copyright for these items was reduced to a term of 25 years (rather than life of the creator plus 70 years). This was eventually repealed in 2016 due to EU case law. Some legal and academic stakeholders have suggested the reintroduction of section 52 CDPA, as the UK is no longer obliged to mirror EU copyright law. This would allow the term of protection by copyright to be limited where design items are mass-produced.

72. A spare parts exception exists in the design framework, so the copyright exceptions framework could be updated to include this type of exception. This would provide equality of treatment for items which are protected by both design and copyright protection.

73. The panorama exception in section 62 CDPA allows for the reproduction of some artistic works in public, but the exception also lacks clarity for some types of work. This has previously been identified by stakeholders as an exception which would benefit from updating, for example by allowing works of artistic craftsmanship (whether or not permanently situated in a public place) to be reproduced in photographs and other media.

74. As with changes to what is protected by copyright (Option 4), introducing or amending exceptions may require businesses to seek advice to acclimatise to a new framework, increasing legal costs for a period of time.

75. The precise scope of the exceptions identified here has not been considered in detail. As noted under option 4, recent case law has confirmed that only certain original design articles will receive copyright protection. As such, there may be no need to address issues such as these.

Do you think there is still confusion about items protected by copyright and design rights following recent case law? Y/N/Don’t know

Are there other changes to the copyright framework which could be considered under Option 4?

Are there exceptions in the copyright framework which could be added, amended or removed to provide more balance in the system to add to Option 5?

Do you prefer:

Option 3
Option 4
Option 5
None of these

Please provide any additional comments in relation to copyright here:

Assessment of impacts

76. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

77. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear respondents’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

78. It is difficult to quantify impacts of potential changes to the designs and copyright systems. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)
Please supply any other information which you consider would be useful to help us assess the impacts of the options.

Question 9

Section G: Post-Brexit issues relating to unregistered designs

Accepted Answer

Background

1. Before Brexit, the UK was part of the European Union’s design system. This meant that a product could be disclosed anywhere in the EU and would be protected as an unregistered Community design (UCD) in every Member State. Following Brexit, the government created supplementary unregistered designs (SUD) in the UK, to provide an equivalent to the UCD which UK businesses valued and were familiar with.

2. There is no mutual recognition of disclosure in the UK-EU Trade Continuity Agreement (TCA). This means that a design which is first disclosed in the UK will be protected as a supplementary unregistered design, and a design which is first disclosed in the EU will be protected as an unregistered community design. A single disclosure does not give rise to protection in both territories. This is set out in UK government guidance. This has added an additional layer of complexity the UK’s design protection system.

3. The lack of mutual recognition of disclosure has created practical difficulties for design businesses operating across the UK/EU border. Responses to the 2022 designs call for views explained:

that the ability to obtain automatic design protection across all 28 EU Member States shaped the business models and product launch strategies of many British designers
that design companies usually plan launch strategies around sectoral trade fairs rather than on a consideration of unregistered design protection
that deciding how, when, and where to disclose a product to establish unregistered design protection is a logistical challenge which does not reflect the commercial realities of doing business
since the end of the transition period, many of those businesses have been left with the difficult choice of whether to seek unregistered design protection in the UK or EU. This is especially the case for sectors which traditionally launch products at industry trade fairs which may take place outside the UK

4. Many responses stated that the UK’s departure from the EU had resulted in much complexity, expense and uncertainty for those in the sector. Almost all responses called for clarity in respect of disclosure for supplementary unregistered designs.

5. Some academics consider that the current legal framework already allows disclosure outside the UK to give rise to SUD, but this is untested by the courts. We know that some businesses are choosing to rely on simultaneous disclosure to obtain protection in both territories. Again, this approach is untested by the courts and comes with legal risk.

6. The recent overarching principles survey did not specifically ask about changes made to the designs system when the UK left the EU. Nevertheless, several respondents indicated the importance of international harmonisation, and issues relating to unregistered designs was specifically mentioned by two respondents.

7. The government recognises that the change in the law relating to unregistered designs as a result of Brexit has impacted UK companies doing business in the EU and has resulted in legal uncertainty for them. It may also put UK businesses at risk of not having adequate IP protection for their products in key markets and has been referred to as a “trap for the unwary” by some users.

8. We have therefore identified a number of options to provide more legal certainty and help businesses who want to protect designs in both territories. We want to hear users’ views on these options. The government will consider all responses when deciding on the best way to proceed.

Discounted options;

9. We propose to discount the following options:

seeking reciprocal recognition of disclosure with the EU
allowing any disclosure abroad to give rise to SUD

10. Seeking reciprocal recognition of disclosure with the EU would require renegotiation of aspects of the UK’s Trade and Continuity Agreement with the EU to address a technical point of law. Although this would overcome many of the difficulties associated with SUDs, it is not currently considered a viable option as we cannot implement this option unilaterally.

11. The current requirement in both the UK and the EU is that a disclosure can only give rise to an unregistered design if that disclosure can reasonably be known to the relevant sectors in the normal course of business. This requirement means that obscure disclosures do not give rise to protection. Allowing any disclosure abroad to give rise to supplementary unregistered design protection in the UK without this requirement would increase uncertainty about the existence of rights and increase the burden on third parties carrying out due diligence.

Do you agree that the options above should be discounted (Y/N)

If not, which option do you think we should give further consideration to:

Seeking reciprocal recognition of disclosure with the EU (Y/N)

Allowing any disclosure abroad to give rise to SUD (Y/N)

Options

12. We are seeking stakeholder views on the following options to address the issues which have been raised with us.

Option 0 - Do nothing
Option 1 - Unilaterally recognise simultaneous disclosure in law:
Option 2 - Introduce a grace period for unregistered designs:
Option 3 - SUD is created following first disclosure anywhere in the EU which has come to the attention of relevant trade circles in the UK
Option 4 - Creation of SUD following first disclosure anywhere in the world which has come to the attention of relevant trade circles in the UK

13. We do not currently have a preferred option. How we proceed in this area, and any changes we make will be informed by this consultation.

Option 0 - Do nothing

14. This option would make no changes to the current system. It would maintain a symmetric relationship with the EU and unregistered designs would come into being on first disclosure in either the UK or EU. Attempting to rely on a single disclosure giving rise to unregistered design protection in both the EU and the UK would come with legal risk. Designers are able to register designs in either territory to ensure adequate protection.

15. Making no changes to the current system means that UK businesses may not be adequately protected in UK and EU markets. This is more likely to impact smaller companies without a comprehensive IP protection strategy, or by sectors which rely on unregistered designs. However, evidence that the current situation is causing issues for stakeholders is largely anecdotal and it is therefore difficult to assess what the impacts are.

Option 1 - Unilaterally recognise simultaneous disclosure in law

16. This option would set out in legislation or guidance that the simultaneous disclosure of a product in a territory outside the UK would give rise to supplementary unregistered design protection in the UK. The disclosure would need to become known to the relevant circles inside the UK. For example, a disclosure at a fashion show outside the UK which is live-streamed on the internet and available in the UK would give rise to SUD.

17. This option recognises the increasing importance of digital technology and the commercial realities of doing business. It would provide clear requirements for what constitutes simultaneous disclosure for the purposes of obtaining unregistered design protection in the UK and would improve legal certainty for users.

18. However, it would introduce an asymmetry between the UK and EU (or other territories) and the benefits would be limited to those disclosing outside the UK unless other countries make similar legal changes to their law. In legal proceedings, it might be difficult to determine whether a disclosure was truly simultaneous. This could be mitigated by defining what is recognised as a qualifying disclosure in legislation or guidance.

Option 2 - Introduce a grace period for unregistered designs

19. This option would introduce a grace period for unregistered designs. The first disclosure of a design outside the UK would give rise to a supplementary unregistered design if it is subsequently disclosed or put on the market in the UK within a certain period of time.

20. The option recognises the realities of doing business, and that launch strategies are often based around trade shows or other commercial considerations. We would expect it to reduce some impacts of asymmetry of unilaterally recognising disclosures abroad by requiring companies to disclose or sell the product in the UK within a certain period of time from the initial disclosure abroad. Ensuring a link to the UK is more likely to bring economic benefits to the UK economy and increase the likelihood that consumers can benefit from designs protected here.

21. However, a grace period for unregistered designs would add another layer of complexity to the regime which could make it difficult for smaller design businesses to navigate. Unless other territories also offer a grace period, legal asymmetry could put UK-based trade shows and events at a disadvantage compared to those based in the EU.

Option 3 - SUD is created following first disclosure anywhere in the EU which has come to the attention of relevant trade circles in the UK

22. This option recognises that the EU is a key market for UK business and would allow a disclosure made in the EU to give rise to a supplementary unregistered design. It would require that the disclosure must have come to the attention of relevant trade circles in the UK. This could be done by designating the European Union as a qualifying territory in the Design Regulation as amended by the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.

23. This option differs from option 1 as it would recognise a disclosure in the EU for the purpose of creating a supplementary unregistered design, whereas the simultaneous disclosure in the UK set out in option 1 would be considered a disclosure in the UK.

24. This option would reduce financial, legal and administrative burdens on businesses by allowing a disclosure in the EU to give rise to SUD protection. However, it would result in asymmetry, as disclosure in the UK would not give rise to unregistered design protection in the EU. This could disadvantage trade shows in the UK compared to those in the EU and may encourage disclosure outside of the UK to obtain protection in both jurisdictions.

Option 4 - Creation of SUD following first disclosure anywhere in the world which has come to the attention of relevant trade circles in the UK

25. This option is similar to option 3 but would allow a disclosure made anywhere in the world to give rise to a supplementary unregistered design. It would require that the disclosure must have come to the attention of relevant trade circles in the UK.

26. This option recognises that businesses operate globally, and large international trade fairs take place outside the UK and EU. It would ease financial, legal and administrative burdens on businesses seeking registered design protection to ensure adequate protection in both territories.

27. However, this option would result in asymmetry, as disclosure in the UK would not give rise to equivalent protection in other jurisdictions. This could disadvantage trade shows in the UK compared to those elsewhere and may encourage disclosure outside of the UK due to availability of SUD based on disclosures abroad.

Questions

Please rank the options in order of preference (1 = most preferred, 5 = least preferred)

Option 0 - Do nothing

Option 1 - Unilaterally recognise simultaneous disclosure in law

Option 2 - Introduce a grace period

Option 3 - Creation of SUD following first disclosure anywhere in the EU

Option 4 - Creation of SUD following first disclosure anywhere in the world

If a simultaneous disclosure provision is introduced into UK law, should we recognise simultaneous disclosures made in:

The EU
The European Economic Area (Liechtenstein, Iceland, Norway)
Switzerland
USA
China
Japan
Korea
Australia
New Zealand
Anywhere in the world
Other countries (please specify)
Don’t know

What should constitute simultaneous disclosure:

At exactly the same time
Within the same hour
Within the same day
Within a longer period of time (please specify)
Don’t know/N/A

Do you think a grace period should be introduced for unregistered designs?

Yes
No
Don’t know

If the government introduces a grace period for unregistered designs, how long should this be?

Less than a month
1 month
2 months
3-6 months
Other (please specify)
Don’t know

If we allow disclosures abroad to give rise to SUD, should we recognise disclosures:

In the EU only
Anywhere in the world
Don’t know
Other (please specify)

To what extent are you concerned about asymmetry i.e.other jurisdictions not reciprocating any measure the UK introduces? (concerned, slightly concerned, unconcerned),

Please provide any further relevant information which you think will help us assess which option to take forward.

Evidence

28. It has now been several years since the UK left the EU and businesses have found new ways to operate in a post- Brexit world. In addition to seeking views on the options set out above, we also want to understand any issues which businesses have experienced since the UK left the EU. We are therefore asking respondents to provide us with evidence of any problems they have faced and any mitigations which they have used.

29. To ensure we can make best use of your evidence, please make any relevant methodologies and data are included or clearly signposted as part of your submission. Please consider the guidance on providing evidence for policy making when drafting your response.

30. Evidence could include but is not limited to;

what difficulties, if any, have you faced with the current disclosure requirements for supplementary unregistered designs and unregistered Community designs/EU unregistered designs
legal analysis to show the difficulties faced
any changes to business practices since the introduction of supplementary unregistered designs
any risks businesses are taking
any changes in behaviour relating to unregistered design protection?

You do not have to provide all the evidence highlighted.

Assessment of impacts

31. Ahead of this consultation, the IPO carried out an analysis of the impacts of the options set out below for review by the Regulatory Policy Committee.

32. Extracts from our assessment of the impacts are presented in the annex to this consultation. We are keen to hear respondents’ thoughts on it. This will allow us to update our assumptions and more accurately assess how the changes will affect rightsholders, third parties and broader society.

33. It is difficult to quantify impacts of potential changes to the designs system. We are particularly interested in any information you can provide to help us do so.

Do you agree with our assessment of the impacts as set out in the annex? (Yes/No/Don’t know)
Are there any impacts which we have not been included but should be? (Yes/No/Don’t know)

Please supply any other information which you consider would be useful to help us assess the impacts of the options.

Question 10

Section H: Call for evidence on criminal sanctions for design infringement

Accepted Answer

Introduction

A criminal offence for the unauthorised copying of registered designs in the course of business in certain circumstances was introduced by section 13 of the Intellectual Property Act 2014 (section 35(ZA) of the Registered Designs Act 1949) unauthorised copying of unregistered designs was excluded at that time as the government’s view was that this would require too high a level of evidence to prove criminal activity had taken place (the Consultation on the Reform of the UK Designs Legal Framework Government Response – April 2013)

2. The 2022 designs call for views asked stakeholders to share their experience of the introduction of criminal sanctions for registered designs, as well as asking for views on extending criminal sanctions to unregistered designs. Responses were mixed. Some considered that extending criminal sanctions would be a deterrent to potential infringers of unregistered designs, and others suggested that the practicalities of such a provision would be complex and could cause difficulties clearing a new product for launch. In its response to the call for views, the government recognised that there are wide-ranging views on this issue and committed to seeking further evidence before deciding on next steps.

3. Like copyright, unregistered design rights come into existence automatically if the relevant requirements are met. There is no government system for tracking their existence. Information about unregistered designs, including rightsholders experiences of infringement, is generally evidenced through survey data and research. The government has also been provided with case studies by interested parties. In the absence of a supporting tribunal or court decision finding infringement, the government is only able to consider them as anecdotal evidence. It is therefore difficult to assess the possible impacts of extending criminal sanctions to unregistered designs.

4. The bar for introducing new criminal offences is a high one and requires strong evidence. The Ministry of Justice (MoJ) has published advice on creating new criminal offences to ensure they are fit for purpose. Any proposed new criminal sanction is scrutinised to ensure it is proportionate and necessary, and a non-exhaustive list of questions considered are set out in the guidance. Of particular relevance to whether criminal sanctions should be extended to unregistered designs are:

whether civil sanctions are more appropriate?
if the new offence is for deterrent effect, whether there is evidence to support such an approach

5. As part of this consultation, the government is therefore seeking further evidence from stakeholders. An improved evidence base will allow an assessment to be undertaken, and consideration given to what intervention, if any, is needed. More information on the type of evidence we are looking for is set out below.

Call for evidence and what are we asking for

6. To inform any future policy decision regarding the potential introduction of criminal sanctions relating to the unauthorised copying of unregistered designs in certain circumstances, we are inviting submissions of further evidence from all interested parties.

7. To ensure we can make best use of your evidence, please make sure relevant methodologies and data are included or clearly signposted as part of your submission. Please consider the guidance on providing evidence for policy making when drafting your submission.

8. This evidence could include, but is not limited to:

legal analysis on options to address unregistered design disputes
analysis of the current use of legislation in unregistered design disputes
analysis of cost, duration and success of registered and unregistered design defence cases
case analysis where criminal sanctions would be applied, should they be available
evidence from other countries

9. Further evidence on the prevalence of unregistered design infringement and its impacts would support analysis of the problem. Potential evidence could include, but is not limited to:

statistics, modelling and economic analysis relating to prevalence and impact of unregistered design infringement
legal analysis of verified design infringement cases
case studies of verified infringement incidents

10. In addition to the evidence above, you may also want to consider the following questions. Please note that there is no requirement to provide responses to all the questions.

11. This lists above and questions below are indicative. Please feel free to provide evidence on areas not covered if you consider it appropriate.

E1: For the infringement of registered designs rights, what has been your experience of the typical costs, duration, remedies sought, and outcome associated with pursuing an infringement dispute?

Costs of proceedings:

£1000 – 5000

£5000 – 10,000

£10,000 – £25,000

£25,000 – £50,000

Above £50,000

Other (please specify)

Duration:

Under 6 months

6-12 months

12-18 months

Longer than 18 months

Other (please specify)

Remedies sought (tick all that apply):

Damages

Account of profits

Delivery up or destruction of infringing items

Final injunction to prevent infringement in the future

Interim remedies

Criminal sanctions

Other (please specify)

Outcome:

E2: Have you experienced or made any changes in business practices since the introduction of criminal sanctions for the infringement of registered designs? (Y/N/Don’t know)

If yes, has this been (radio button):

Change in staff numbers,
Changes in profit/loss
Change in business strategy
Other notable changes (please specify)

Please provide further information if possible

E3: Have criminal sanctions for the infringement of registered designs been providing an effective deterrent effect, in your experience? To allow government to assess impacts, please provide evidence to support your answer.

(Evidence could include analysis of caseloads or enforcement costs before and after the introduction of criminal sanctions for registered designs, and/or international comparisons of legislative regimes with criminal sanctions for registered designs and infringement rates.)

E4: Have you experienced any negative impact linked to the introduction of criminal sanctions for the infringement of registered designs? (Y/N/don’t know)

If yes, please provide supporting evidence.

E5: Do you have evidence or experience of the current prevalence of unregistered design infringement? (Y/N/Don’t know)

E6: How do you currently address infringement disputes for unregistered designs?

Legal proceedings:

Intellectual Property Enterprise Court’s small claims track

Intellectual Property Enterprise Court’s multi-track

High Court Chancery Division

Out of court:

Mediation

Arbitration

Negotiation

Other (please specify)

E7: What are the typical costs, duration, remedies sought, and outcome in currently available litigation routes for an infringement of unregistered designs?

Costs:

£1000 – 5000

£5000 – 10,000

£10,000 – £25,000

£25,000 – £50,000

Above £50,000

Other (please specify)

Duration :

Under 6 months

6-12 months

12-18 months

Longer than 18 months

Other (please specify)

Remedies sought:

Damages

Account of profits

Delivery up or destruction of infringing items

Final injunction to prevent infringement in the future

Interim remedies

Other (please specify)

Outcome:

E8: If a criminal offence is introduced for infringement of unregistered designs, should any adaptations to that offence be made to reflect the different context of unregistered designs?

E8a. What conditions of intentional copying do you believe would be necessary for a criminal offence?

E9: Please provide any further evidence and/or information on the prevalence of unregistered design infringement and its impacts.

E10: Do you have evidence from other jurisdictions that having criminal sanctions for the infringement of registered or unregistered (or equivalent) design protection reduces instances of infringement?

E11: Do you have any concerns about the possible introduction of criminal remedies for unregistered designs? Y/N/Don’t know?

If yes, please provide further information

Question 11

Section I: Call for evidence on inclusion of claims made under the Registered Designs Act 1949 within the Intellectual Property Enterprise Court’s small claims track

Accepted Answer

Introduction

1. Intellectual property rights are only effective when there is a robust system in place for enforcing them. The UK has a widely respected enforcement regime, which consistently ranks at the top of international IP indexes for its strength and effectiveness. The UK continuously evaluates its IP enforcement framework to ensure that it meets the needs of rights holders, businesses, and consumers.

2. The Intellectual Property Enterprise Court (IPEC) is a specialist court within the Chancery Division of the High Court that hears IP cases of any kind. The purpose of this court is to provide access to justice for SMEs and individuals that are involved in IP litigation. The court hears shorter, less complex, less valuable claims than those that are more suitable for the Patents Court and general Chancery Division. As such, the IPEC has distinctive procedures, financial limits, and cost rules in place in order to provide a streamlined, more cost-effective forum for certain IP disputes.

3. All claims that are heard at the IPEC are governed by the Civil Procedure Rules (CPR) (part 63 and practice direction 63)”. These are the “multi-track” and “small claims track” (SCT). The key difference between them is that the SCT deals with cases of a simpler nature, with a claim for a lower level of damages. Part 27 of the CPR deals with the general procedure of SCT cases.

4. The IPEC multi-track is suitable for claims of compensation for the infringement of IP rights that exceed £10,000 but not more than £500,000. The unsuccessful party may be required to pay the successful party’s legal costs but, with very limited exceptions, these costs will be capped at £60,000. Each individual stage of the proceedings at the multi-track is also capped. Further information on the multi-track can be found in the guide to the Intellectual Property Enterprise Court.

This maximum cap on compensation for infringement may be waived by agreement of the parties.

5. The IPEC SCT has simpler procedures where the most straightforward IP claims, with values of £10,000 or less, are heard. The general principle that the unsuccessful party pays the successful party’s legal cost does not apply, and only in very limited circumstances will they contribute to the successful party’s costs. Cases can be decided without:

the parties needing legal representation
substantial pre-hearing preparation
the formalities of a traditional trial
the parties putting themselves at risk of anything but very limited costs

Further information on the SCT can be found in the guide to the Intellectual Property Enterprise Court SCT.

6. Factors that determine which IPEC track a case is suitable for include:

the value of the claim
the type of IP right the case relates to
the remedies that are sought
the likely complexity of a case, including the number of parties and witnesses that may need to give oral evidence

7. A claim where both liability and the total amount of damages cannot be resolved within one day, including judicial reading time, are usually not suitable for the IPEC SCT. For example, a case relating to the validity, rather than the infringement of, a trade mark is difficult to hear in a single day. Such a case would likely be referred to the IPEC multi-track.

8. Stakeholders have expressed significant interest in the types of IP dispute cases the IPEC SCT hears. Currently, the SCT only hears cases relating to copyright, registered UK trade marks, passing off, and UK unregistered designs. This means that proceedings which involve other IP rights may be heard at the IPEC multi-track or the Patents Court. However, there has been a long-held view amongst some stakeholders that UK registered designs cases should be heard in the IPEC SCT.

9. We are aware that some businesses, particularly SMEs, experience barriers to enforcing their IP rights. Representatives of SMEs and microbusiness operating in the designs sector have suggested that including registered designs in the IPEC SCT is one way in which enforcement could be made easier for them.

Previous consultation on registered designs and the IPEC SCT

10. When the SCT was introduced into the IPEC in 2012, registered designs were not included because the cases were considered too complex. There were also concerns about the potential level of evidence that is filed in registered design cases, as well as the use of expert witnesses. Therefore, registered designs were deemed unsuitable for the simplified procedures of the SCT.

11. In 2020, the government conducted a review of the IP enforcement framework, where we sought evidence about which part of the enforcement framework was working well, as well as the issues that were being experienced by holders of all IP rights in enforcing their rights. The call for views included six questions on the feasibility of including registered designs within the scope of the IPEC SCT. Twenty-four responses were received to these questions.

12. Some respondents emphasised concerns that the complexity of registered design cases meant that most cases would be moved from the IPEC SCT to the multi-track. Specifically, they highlighted that registered design cases often require a detailed investigation of the validity of a design, and that the IPEC SCT may only be able to deal with simpler cases where no invalidity defence has been made. Further information on challenging the validity of a UK registered design can be found in the guidance on design invalidation or cancellation.

13. In contrast, most respondents supported including registered designs in the small claims track. One respondent pushed for greater consistency with other IP rights by providing low-cost access to justice for designs. Another argued that taking registered designs through the IPEC multi-track created an unfair advantage for larger businesses over SMEs and individual right holders due to the time and costs of these cases. This was claimed to create a substantial barrier for individual rights holders and SMEs in enforcing their design rights.

14. In its response to the review of IP enforcement framework, the government committed to carry out further work to assess whether registered designs should be included in the IPEC SCT.

Information that we are seeking from stakeholders

15. As part of the current review of the UK designs’ framework, we want to hear from users to understand in more detail the potential impact of procedural change to IPEC SCT. The government is particularly interested in learning:

whether stakeholders support registered designs cases being heard in the small claims track
if stakeholders consider that most of these cases could be heard within this track
if registered designs claims are included with the IPEC SCT, whether other measures could be taken to ensure that these cases can be effectively heard there

16. To help us assess the issues and decide on whether the IPEC’s SCT procedures should be amended to allow for the hearing of claims relating to registered designs under the RDA 1949 we would like you to answer the following questions. Please note there is no requirement to answer all questions.

Question 1 – Since 2020, have you been involved in a dispute, or considered launching a dispute, in relation to a registered design that you consider would have been suitable for the Intellectual Property Enterprise Court’s small claims track, if it heard these types of cases?

(Y/N/Don’t know/Prefer not to say)

Question 2 – Have you been a party to a dispute at the IPEC concerning an unregistered design where the validity of the design right has been challenged? (Y/N/Don’t know/Prefer not to say)

If yes

How often this has occurred
Was the case(s) able to be heard within the IPEC SCT (Y/N/Don’t know).

Question 3 – Do you have any evidence from other jurisdictions to indicate that lower cost dispute procedures are/are not appropriate forums for registered designs cases? (Y/N)

If yes, please provide details of the evidence and the jurisdiction(s).

Evidence

Country/Location

Question 4 – Do you support the inclusion of registered designs cases within the IPEC SCT?

(Y/N/Don’t know)

Question 5 – Do you think that most registered designs cases are suitable for the IPEC SCT? (Y/N/Don’t know)

If not, why not:

Question 6 – If there is a risk that registered designs cases could be moved from the IPEC SCT to the multi-track would this deter you from launching proceedings at the SCT? (Y/N/Don’t know)

Question 7 – If registered design cases were included within the IPEC SCT, are there any other additional measures that could be taken to ensure these cases were handled effectively? (Y/N/Don’t know)

Question 8 – Are there any alternatives to the inclusion of registered designs cases in the IPEC SCT that would improve access to justice for individual designers and SMEs? (Y/N/Don’t know)

Please provide any additional information or evidence or case studies to support your responses.

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Ministerial Foreword

Introduction

How to engage with this consultation

Next Steps

Data protection and confidentiality

Use of AI analysis tools

Section A: Search, examination, bad faith and opposition/ observation

Introduction

Questions:

Section A1: Search and examination

Background

What is out of scope of this consultation

Options

Option 0 – Do nothing

Option 1 – Introduce powers to make it clear that the IPO can carry out a search

Option 2: Introduce a two-stage system

Questions:

Limited searching

Two-stage system

Section A2: Bad faith

Background

Proposed approach

Section A3: Observation and Opposition

Background

Options

Option 0 - Do nothing/maintain the current system

Option 1 - introduce a post-registration opposition period for designs (“registered at risk”)

Option 2 - Introduce a pre-registration opposition period for designs

Option 3 - Introduce a pre-registration observation period

Combination of options

Section A4: Information on the existence of a right in a registered design (DF21 search)

Questions:

Section A: Assessment of impacts

Section B: Deferment

Introduction

Proposed approach and analysis of options

Length of deferment

Commencement of deferment period

Deferment of registration and publication

Information published in respect of a deferred application

Prior use and co-pending applications

Section B: Assessment of impacts

Section C - Graphical User Interfaces And Animated Designs

Background

Discounted Options

Options

Option 1 - Provide further guidance on what can be protected as a design

Option 2 - Amend legislation

Option 3 - Allow users of the designs registration system to file different file formats

Option 5 - Publication of an additional description filed alongside stills/video clips

Combining options

Assessment of impacts

Section D: Computer-generated designs

Options

Option 0 - Maintain the existing protection for computer-generated designs without a human author

Option 1 - Reform protection for computer-generated designs without a human author

Option 2 (preferred option) - Remove the existing protection for computer-generated designs without a human author

Option 3 (supplementary option) - Collect data as to whether AI has been used in the creation of a registered design

Questions:

Section D: Assessment of impacts

Section E: Miscellaneous Changes

Matter prohibited by law contained in a design application

Harmonising time periods for response to an official action

Removing the ability to file specimens

Provision to allow the registrar to share an application before publication

Powers to make a late objection

Warrant of validity and liability

Rectification of the register

Updating provisions relating to inspection of designs

Power to direct the use of forms

Priority claims

Assessment of impacts

Section F: Simplification of unregistered designs and overlap with copyright

Introduction

Evolution of UK design protection

Discounted options

Options

Option 0 - Do nothing and maintain the current system

Option 1 - Retain supplementary unregistered design, abolish design right (maximum simplification)