Major UK Intellectual Property Office consultation on changes to the UK designs framework

The government is seeking views on the following reform proposals:

Registered designs

In order to tackle ‘design theft’, ie registrations of designs that are not new, the government is consulting on a number of options to improve the system, including whether: the IPO should examine design applications for novelty; to introduce a bad faith provision; and to allow a post-registration opposition period (or pre-registration observation period) plus a late objection power for the registrar.

Deferment

In the UK, currently an applicant can choose to delay registration and publication of their design for up to twelve months, allowing applicants to keep designs confidential for that period whilst obtaining an early filing date. However, there is no explicit deferment provision in UK law. The government is seeking views on creating a statutory deferment regime. The government’s preferred model is permitting a maximum deferral period of 18 months from the earliest of the filing or priority date, and publishing basic data about the design (e.g. applicant, date, Locarno class) prior to publication.

Graphical user interfaces and animated designs

The government is considering various options to update the current system to make it easier for designers to file digital/animated designs. Options being considered include amending legislation to clarify that animations, transitions and GUIs are protectable designs; accepting additional file formats (video and 3D CAD); and setting technical parameters and publishing optional descriptions alongside stills and video to explain transitions.

Computer-generated designs (AI)

UK design law, like UK copyright law in relation to copyright works, contains provisions protecting computer-generated designs. As in the earlier consultation on copyright and AI, the government is considering whether to reform or clarify the regime. Its preference (as in the copyright consultation) is to remove existing protection for computer-generated designs, since the provisions have been little used and rapid development in AI means a new approach may be needed.

Simplification of unregistered designs and overlap with copyright

The government is considering how to simplify the designs framework for unregistered designs and the overlap between designs and copyright, to make it simpler and clearer for businesses to navigate the current patchwork of rights, without losing their existing protections.

The two main options being considered are: (i) to retain the Supplemental Unregistered Design (“SUD”) (which mirrors unregistered community design rights) and abolish the UK unregistered design right; or (ii) to create a single unregistered design (or harmonised dual structure), with unified qualification (disclosure-based) and harmonised term (the government’s preferred option is 5 years).

The government’s preferred approach in relation to the overlap between designs and copyright is not to implement any legislative change for now, but views are invited on various issues including:

• defining “artistic craftsmanship”;
• removing or redefining the originality requirement for unregistered designs; and
• creating or amending targeted exceptions to copyright protection (e.g. reintroducing a shorter copyright term for industrially manufactured works (similar to the now-repealed section 52 CDPA); harmonising spare parts provisions for all design rights; and amend the panorama exception in section 62 CDPA).

Post-Brexit SUD disclosure issues

After Brexit the government created the SUD to mirror the protection of unregistered Community designs for designs first published in the UK. However, there is no mutual recognition of disclosure, so a design which is first disclosed in the UK will be protected as an SUD, 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 has created complexity for designers operating across the EU and the UK. Options the government is consulting on include: recognising simultaneous disclosures made abroad in UK law; introducing a grace period; and treating EU (or worldwide) first disclosures as creating SUD if they come to the attention of relevant UK trade circles.

Enforcement and access to justice

The Call for Views indicated mixed views on criminal sanctions. As a result the government proposes a call for evidence on whether to extend criminal liability to unregistered design infringement. The government also proposes a call for evidence on whether to include registered design claims in the small claims track to improve SME access to justice.

IPEC small claims track and registered designs

At present, the IPEC small claims track only hears cases relating to copyright, registered UK trade marks, passing off and UK unregistered designs. When the small claims track was introduced to the IPEC in 2012, registered designs were specifically not included on the basis that they were considered too complex. However, the consultation has shown that respondents support including registered designs in the small claims track, in particular for consistency in providing greater access to justice at a low cost.

The government is asking for evidence from users of the design system to ascertain whether it would be appropriate, and if so in what ways, registered designs should be included in the IPEC small claims track.

Miscellaneous provisions

There are a number of additional miscellaneous issues identified by the government which, if addressed, are intended to streamline the UK design system. These comprise:

• Inclusion of a new provision in the Registered Designs Act to allow the refusal of a design which is prohibited under any other UK legislation (for example the Red Cross and Red Crescent), even where the specific sign / design is not listed as being prohibited.
• To streamline the design application process, amending the Design Rules to allow objections to designs (both substantive or formalities objections and design representation objections) to be made at the same time, and a time limit of 2 months for the applicant to respond to these objections.
• Removing the provision in the Registered Designs Act and Designs Rules which allow physical specimens to be filed at the IPO.
• Giving the IPO powers to share applications before publication with authorities (such as heraldry experts) so that the IPO can fulfil its obligation to refuse certain designs (for example those containing protected coats of arms or heraldic devices).
• Including a provision to allow the registrar to make a late objection (ie. after the design has proceeded to registration) based on observations from a third party.
• Limiting the liability of the registrar by including provisions in the Registered Design Act to clarify that the registrar does not warrant the validity of registered designs.
• Allowing rectification of errors on the designs register to be made and rectified by the registrar, rather than being required to apply to the court.
• Updating the Registered Designs Act to reflect that information about currently registered designs should be viewable online.
• Broadening the registrar’s power to direct forms so that forms can be directed for any purpose (rather than just the current three purposes) relating to the registration of a design and any other designs proceedings.
• Simplifying the process and improving consistency of approach for priority claims, by only requiring an applicant to provide details of a priority claim.

Comments

This is the first comprehensive review of UK design law since 2011 and has the potential to lead to substantial reforms. Simplification of the regime would be welcome for the majority of design system users, in particular designers and small businesses, many of whom currently struggle to navigate the patchwork of protections. Greater clarity and streamlining could also enhance the system’s credibility internationally, making the UK a more attractive forum for securing design protection.

From a practical perspective, there is concern that the proposed reforms could add complexity to the design system as the UK and EU regimes continue to diverge. The Consultation recognises that Brexit has already created additional hurdles for designers seeking protection in both the UK and the EU, but it is clear that the government has yet to settle on a definitive approach to some of these issues pending further stakeholder input.

It is for this reason that it is critical that users of the UK design system engage with the consultation, to inform and hopefully ensure that the new UK designs regime better serves those that use it. We are happy to assist and advise on any submissions to the IPO on the consultation. As noted above, the consultation is due to end on 27 November 2025, with the expectation being that the changes will be implemented by the end of 2027. What is clear is that whatever those changes might be, they will impact the filing, disclosure and litigation strategies of all users of the UK designs system.

Authored by Penelope Thornton and Adam Barratt.