Specialist lawyers have cautiously welcomed a softening of legislation to make a criminal offence of design infringement.
In the third reading of the Intellectual Property Bill in the House of Lords this week, the government accepted an amendment that would create a defence of ‘good-faith belief’ that a design was not copying another work, providing that belief is based on reasonable grounds.
The bill creates new design rights and establishes the new European unified patent court in the UK.
Isabel Davies, chair of the Law Society’s intellectual property working group, said the bill ‘is very significant constitutionally as a court over which the UK has no direct control will have the power to make orders relating to activities in the UK. A great deal more work on this aspect of the legislation is needed’.
She said that while the Society supports a criminal offence for design infringement, ‘it is vital that we strike the right balance between providing adequate protections for design owners but avoid creating an environment where criminal sanctions can be used inappropriately’.
The new law still has ‘a number of areas which require clarification and further refinement’, Davies said.
Her call was echoed by David Musker, chair of the design and copyright committee of the Chartered Institute of Patent Attorneys. Musker said that while the institute welcomed the proposed defence of good-faith belief in non-infringement, he said it would like to see further clarification.
The institute had previously warned that the bill could lead to innovators being jailed for 10 years for accidental infringements. ‘It could affect hundreds of retailers and designers who certainly are not deliberate criminals,’ the institute’s president, Roger Burt, said in a letter to The Times this week.
However in a reply, the designer Sebastian Conran said that existing civil remedies for infringement were inadequate. ‘Small companies simply cannot afford to go through an expensive legal process where it would seem that the only winners are the legal profession. We need criminal provisions as a strong sanction against deliberate copying.’
The bill has completed its passage through the Lords. It now moves to the House of Commons for its consideration. No date is yet scheduled.