What's the development?

The UK IP Office has launched a survey on the UK's system for protecting designs. The survey follows a call for views on the system in 2022 and comes at the same time as the first set of changes under the EU design system come into force (see our article here). The survey will be followed by a consultation later in 2025.

The survey asks firstly about five key principles the UKIPO has identified as being important to the designs system and then about the definition of a design and how that can be future proofed. Responses must be submitted by midnight on 31 March 2025. 

Questions about the overriding principles

The survey asks about the following five key principles: cost, validity, speed, choice and simplicity. It asks which principles are most important, how the principles should be balanced and whether the system should be simplified.

Questions about the definition of a design

The UKIPO notes that developments in technology bring new challenges as to what is considered a design. For example, digital designs can be animated, and physical products might have associated digital characteristics which can only be experienced in specific ways (such as through augmented reality). Some users see growing equivalence between digital and physical products. 

The UKIPO wants to consider the impact of these changes in technology on the designs system, and how to futureproof the definition of design. The survey therefore asks whether the definition of a design should be broadened and – if so – what else should be protectable including:

• a wider range of digital designs (eg animated, augmented/mixed reality) 

• designs experienced through senses other than sight (eg fragrances/smells, sounds/audio designs, haptic/tactile designs, flavours/tastes) 

• designs arising from new technology (eg AI generated, 4D printing) 

• designs which are not visible in normal use eg under-bonnet elements of a car 

• other things (please specify).

What does this mean?

• The survey covers some of the headline topics the UKIPO will consider when considering potential changes to the new design system. It is much more high level than the 2022 call for views. The focus is on trying to tease out the key elements of the system that are important to stakeholders. 

• There are interesting questions about whether the current system of not examining designs really works and is cost-effective overall. The UKIPO used to undertake some examination of new applications but abandoned this in 2006 to align with practice at the EUIPO. In the 2022 call for views, respondents said that they valued the current speed of registration of designs in the UK but also noted the potential advantages of examining design applications. Respondents liked the idea of a two-tier approach (no initial examination but a novelty search required before enforcement) and/or the use of AI to speed up examination. This is touched on in the survey and will be explored further in the consultation later this year.

• The UK designs system is complex. In particular, there are two different types of unregistered design available which protect different but overlapping aspects of designs. Following the 2022 call for views, the UKIPO agreed to explore options to simplify the system, including the option of merging the two types of unregistered design. This is touched on in the survey and will form a key area of focus for the upcoming consultation.

• As with the 2022 call for views, the survey considers the definition of design and whether it is future proof given technological advancements. Interestingly, the types of design listed in the survey go well beyond the changes made at EU level to the definition of design (more here), including such things as fragrances and audio designs. 

• The UKIPO clearly has in mind how protection for designs overlaps with other IP rights. While consideration of this interaction is expressly out of scope of this survey, the UKIPO says that it will consider some of these interactions in the consultation that follows. This will mean the UKIPO revisiting the interaction between design and copyright law, a question the UK courts are grappling with given the different historical approaches of the UK and EU to these IP rights (see article here).

• The survey does not expressly cover the following issues, but these are likely to be covered in the longer consultation given the commitments the government made in 2022: (a) the lack of clarity about whether a first disclosure in the UK is required for supplementary unregistered design to arise, (b) a deferment provision, (c) the criminal sanction regime for designs and (d) ways to make enforcement easier for all rights holders potentially including whether registered designs disputes should be introduced into the small claims track of IPEC.

We are inputting into the survey in various ways and generally involved in helping to shape the designs system. Please talk to your normal contact or one of our team if you would like to discuss any aspect of this article.