Could a lack of confidence in design law reduce innovation in the UK?

UK designers are less likely to seek legal action if someone copies their work compared with the rest of Europe, according to new research.

Experts at the University of Nottingham tested the effectiveness of design case law in the 28 member states of the EU.

Among the big countries in the EU, the UK had some of the lowest numbers of cases brought to court per population, often with less favourable outcomes for designers. A high profile example of this is the Supreme Court case which ruled against the designer of Trunki suitcases.

The research comes 15 years after The Design Directive and Design Regulation, more commonly known as the EU design legal framework, was introduced. It is timely as European-wide consultation to evaluate the legislation is due to end on 30 April 2019.

The research, led by Professor Estelle Derclaye, an expert in intellectual property law at the University of Nottingham, in collaboration with Gilles Stupfler, a statistician also at the University of Nottingham, set about to test whether the law was being applied fairly across the EU and the outcome of infringement cases in the courts.

It looked at four types of design rights; two which cover national rights -Registered Design Rights (RDRs) and UK Unregistered Design Rights (UKUDR), and two which operate at an EU-wide level - Community Unregistered Design Rights (CUDR) and Community Registered Design Rights (CRDR).

Under CRDR businesses and designers can apply with a single application at the EU Intellectual Property Office in Alicante to have their design protected throughout all EU member states.

Professor Derclaye said that the framework had been largely effective and applied in a similar way by all member states’ courts.

She said: “This is very positive. We’ve seen the number of litigations grow steadily as the law was introduced and now reached a level where it has plateaued. Considering that there was no case law on this before it was introduced it shows that it has been interpreted well by courts and is broadly effective.”

But the findings showed that the UK businesses had less confidence in using the legal framework to protect their designs.

According to Professor Derclaye’s research the Netherlands had the biggest number of litigations, peaking at more than 200 per 100 million people in 2008, this was closely followed by France. The UK had comparatively fewer cases, peaking at less than 25 per 100 million people in 2013.

“It is worrying that in the UK there is a low level of litigation”, said Professor Derclaye. “This may be due to the cost of court procedure, which is more expensive than France or Germany, but we cannot rule out that there is a lower level of enforcement than in other countries. Neither the Court of Appeal nor the Supreme Court have ever found a CRDR or RDR infringed since October 2001.

“There is evidence that registered designs are difficult to defend in the UK and the perception is that design rights don’t give a broad scope of protection. This was perhaps evident in the Trunki ruling in 2015. This could be a concern if designers don’t feel their creativity or ingenuity is worth protecting so there is room for improvement at a country-level.”

The majority of court cases related to 3D designs and products as varied as car parts, chocolate bars, ski sticks, saunas and forklift trucks. The research showed that designers in other areas, such as clothing designs, predominantly relied on CUDR.

“What we did find surprising was that there was more litigation on registered design rights even in big-countries, i.e. RDRs, rather than on CRDRs”, said Professor Derclaye.

“The findings may be because RDRs are owned by small and medium-sized enterprises which have limited budgets or only conduct their work within their own country. Another potential reason could be that designs are cultural or local as designs for ski sticks and saunas may show.”

Professor Derclaye concluded that further research on the framework should examine how claimants rely on other rights such as trademark, patent and copyright and to what extent these influence design right cases.