UK introduces webmarking for product designs

Design owners now have the option of marking their products with a website address as a means of providing notice to infringers of their design rights.

With the introduction of the Digital Economy Act 2017 (the UK Government’s attempt at aligning UK law with the “new” digital age) design owners can now utilise webmarking as a means of providing notice to infringers of their design rights.

Under the current UK law,[1] design owners can only claim damages for third party infringement of their registered designs where notice of such rights are provided to the infringer. Where notice is not provided, an infringer can claim that they were unaware of the protected design and so any infringing activity is “innocent”.  In such cases, a design owner can only claim an account of profits and not damages. Therefore, to refute an “innocent” infringement defence product design owners mark their products (known as providing “constructive notice” to infringers).

Prior to 1 October 2017, owners of UK Registered Designs and Registered Community Designs had the option to either  mark their products with the word “registered”, or an abbreviation of such word, along with the number of the registered design as a way of providing “constructive notice” to third parties. However, when design registrations lapse, are renewed or are revoked these markings need to be updated on each protected design which is a time-consuming and expensive exercise.

To address this issue, the UK Government, through the Digital Economy Act 2017,[2] provided a more modern alternative that came into force on the 1 October 2017. Owners of UK Registered Designs can now mark their products with a website address provided that it is free to access and contains details of the product and its registered design number. This method of notice is more company-friendly than the previous regime as updating a website with the relevant design details is much easier and less time intensive than re-marking all of the relevant products. Equally, the new regime is more cost-effective as the costs involved in maintaining an online register of designs is likely to be minimal.

Importantly, the new regime merely provides an alternative approach for design owners to provide potential infringers with constructive notice of their design rights. It does not replace the pre-1 October 2017 system of marking a product with the word “registered”, or an abbreviation of such word, along with the number of the registered design. Equally, the changes only apply to UK Registered Designs and not Registered Community Designs.

These changes see UK registered design law align itself with the law surrounding patent marking.[3] As for unregistered designs, there is currently no relevant legislation indicating that products should be marked to prevent third parties from establishing an “innocent” infringement defence. However, it would be prudent to mark unregistered designs (either by webmarking or using the word “registered”, or an abbreviation of such word, along with the registered design number) even if that is only to alert potential infringers that your rights subsist.

[1] Section 9(1) Registered Designs Act 1949

[2] Section 33 Digital Economy Act 2017

[3] Section 15 Intellectual Property Act 2014

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