Webmarking – easier enforcement of UK Design Registrations

New rules brought in on 1 October 2017 make it easier for owners of UK Design Registrations to protect their rights through ‘webmarking’ their products. Serjeants’ Catherine Slater explains the benefits of this for businesses.

The existing rules and the importance of marking

Prior to 1 October, registered design owners could (and should) have marked their products with the word ‘registered’ (or an abbreviation) along with the relevant registration number or numbers.

Although not compulsory, the benefit of marking a product with this information was, and still is, to ensure that damages can be recovered from anyone infringing a design registration. The reason for this is that if an infringer can show that it was unaware, or had no reasonable ground for supposing, that a design is registered then it does not have to pay damages. In other words, ‘marking’ a product deprives an infringer of the opportunity to claim that it did not know that there was a design registration and therefore avoid paying any damages.

The new rules – Webmarking

Since 1 October, registered design owners can instead choose to simply mark their products with a web address – webmarking. That web address must then clearly show the registered designs associated with the product. It must also be easily accessible, free of charge and provide up-to-date information. The product must also be clearly identified by reference to any relevant model numbers or variants that exist.

While this may seem like an insignificant change it will be of particular use to rights holders who have a product that benefits from multiple design registrations and cannot, either for practical or aesthetic reasons, list all those registrations on the product. Such a scenario is increasingly likely in the UK where the design registration fees have recently been dramatically reduced. In the past a business might have held back on design registrations due to the cost, but there is now no reason to do so.

The new rules could also be of benefit to those who sell their products outside the UK since it will ensure that there is no question over whether, in another country, the marking is a false claim to registration in that country; for which there may be a penalty.

What you should do

Under the new rules there is still no obligation to mark products and businesses can continue to mark their products in the ‘old’ way if they wish. However, the important thing is that all UK Design Registration owners do mark their product in either way in order to have the best chance of being awarded damages in any infringement proceedings.

Want to learn more about webmarking or registered designs?

Speak to the patent and trade mark attorneys at Serjeants. Call 0116 233 2626 or contact us online here.

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