Protection for Prior Users of a Registered Design

This is the third of a five part series looking at the effect of the Intellectual Property Act 2014 on design law in the UK. In this part we consider the rights given to prior users of a registered design. The new provisions give some limited protection to those who, in good faith, start to use a design (or have made serious and effective preparations to do so), prior to the registration of that same design by a third party. The prior user rights are limited in that the design can only be used for the same original purpose (i.e. the design cannot be applied to different articles beyond those already planned for). The prior user cannot be sued for infringement of the subsequently registered design provided the design is being used for the same original purpose. The third party who registered the design first is able to exploit the design as normal including developing new products. This change harmonises UK law with EU law, which has an identical measure. In part four of this series we shall consider the new criminal sanctions for intentional copying of a registered design.

If you have any questions concerning design law changes, please get in touch with your usual contact at Swindell & Pearson or Simon Foster at [email protected]. Simon is based in the East Midlands, at our head office in Derby.