Likewise, a person can be guilty of an offence if in the course of business they place on the market, import, exports, uses the product or stocks it for one or more of those purposes. The alleged offender needs to know or have reason to believe that the design has been copied to make a product exactly the same or substantially the same as the registered design. Also, the offender is acting without the consent of the registered proprietor of the design.
The defences to clause 35 Registered Designs Act 1949 as amended will be that the accused reasonably believed that the registration of the design was invalid; or that the copying did not infringe the right in the design, or reasonably believed that the person did not infringe the design right.
The new legislation will allow the for relevant products and articles to be forfeited pursuant to a Magistrates Court Order which will only be granted if the court is satisfied that an offence has been committed. The person aggrieved by the forfeiture order may in England and Wales appeal to the Crown Court; where there is such an appeal the granting of the forfeiture order may be delayed.
A person found guilty under the proposed new legislation could receive a prison sentence of up to 10 years and or a fine.
A summary conviction in the magistrates court limits the punishment to a jail term of up to 6 months and or a fine. Where the offending person is a body corporate or a partnership then the officers or partners will be liable for the misdeed, and each partner will be guilty of an offence unless they can prove that they were ignorant of the the offence or can demonstrate that they attempted to prevent the commission of the offence.
Further reports will appear in Blue Pencil after the first reading in the House of Commons.
Update on the Intellectual Property Bill
- Written by Julian Wilkins
The Intellectual Property Bill has had its third reading in the House of Lords on the 30th July 2013, and has now transferred to the House of Commons where it is currently awaiting a date to be allocated for its First Reading.
Amongst its provisions includes clause 13 which if the Bill receives Royal Assent will see the amendment to clause 35 of the Registered Designs Act 1949 whereby an criminal offence will occur if a person whilst in the course of business copies a registered design so as to make a product exactly or substantially the same to the registered design. In order for an offence to have been committed it will be necessary to prove that the alleged offender knew or had reason to believe that the design was a registered design, and that the copying was without the consent of the registered proprietor of the design.
Julian Wilkins is Editorial Director for Blue Pencil Media Limited. Julian has a LLB (Hons) in law and M.Phil in law as well as a Diploma in European law and was admitted as a solicitor in 1988; he practices in the area of media, entertainment, and intellectual property law as a consultant for Devereaux Solicitors in London. Julian is also a Notary Public and CEDR accredited commercial mediator. Julian has written for academic publications and contributed to an Exhibition Catalogue about 1960s photographer Philip Townsend. Julian is a member of the International Association of Entertainment Lawyers and also the British Institute of International and Comparative law. Julian is a finalist in The Media Lunch Club “Short Circuit” script competition to be held in November 2011. Julian’s comments “The rapidly changing world economy and technology is presenting incredible opportunities for the Creative Industries and Blue Pencil hopes to reflect and contribute to these changes.”