28 March 2017

New UK provisions for webmarking will make it easier to enforce registered designs

The UK’s Digital Economy Bill 2016, which amongst other things includes a handful of new IP provisions, is now in its final stages before enactment.

Amongst these IP provisions, the Bill will permit products that are subject to UK Registered Design protection to be “webmarked” in order to help defend against “innocent infringement”.

Under UK law, in general terms, an “innocent infringer” is not liable for damages if they have infringed a UK Registered Design right, but can show that they were not – and could not reasonably have been aware – of the infringed right. At the moment, physical marking of products (and/or product literature) with a reference to the relevant UK Registered Design is used to help forestall the “innocent infringement” defence. However, updating product markings to reflect changes to registered designs can be somewhat demanding and costly in certain cases.

The provision of “webmarking” in the Digital Economy Bill 2016 allows UK Registered Design holders simply to mark a product (and/or product literature) with a URL to a webpage that relates the product to the relevant UK Registered Design(s). In this way, UK Registered Design right holders should ultimately benefit by reducing the burden (in terms of effort and perhaps in terms of cost also) of marking products.

Similar provisions for “webmarking” are in place for UK patents, as well as for US patents (in relation to which the practice is more commonly known as “virtual marking”). As a result, right-holders already have the option of providing a single webpage to alert the public to their patent rights (in various jurisdictions), and the Digital Economy Bill 2016 will extend this to UK Registered Designs.