My Lords, I am grateful for the contributions to this short debate on these government amendments by my noble friend Lord Clement-Jones and the noble Lord, Lord Stevenson. I shall begin with a brief summary and then I fully intend to answer the questions, particularly those raised by my noble friend Lord Clement-Jones. These amendments make it absolutely clear that the criminal offence will apply to only those who intentionally copy a design in the full knowledge that it belongs to somebody else. They introduce more clarity for users in describing how two potentially conflicting designs are compared. They seek to ensure that legitimate follow-on innovation by business will not be caught under the offence, but also ensure that those who get too close to existing registered designs are rightly caught by the offence. I believe that we have got the balance right in setting the boundaries of protection for design rights.
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If the noble Lord, Lord Stevenson, will excuse the pun, the Government have deliberately chosen the word “intentional”, as we believe that the concept of intention is more familiar to the courts in terms of framing the mental element of a criminal offence and less likely to provoke legal debate than the term “deliberately”. In making this amendment, the Government have acted merely to remove uncertainty, which can be detrimental to innovation. The amendment will help to ensure that we do not deter anyone who legitimately seeks to innovate around an existing design.
I thank the noble Lord, Lord Stevenson of Balmacara, for his overall contribution to the Bill and for his early desire to make this part of the Bill better. I am glad, if I read him correctly, that he is comfortable. I am always happy if the noble Lord, Lord Stevenson, is happy.
I would like to address a number of questions that were raised by my noble friend Lord Clement-Jones. His first substantive point concerned the word “substantial”. He asked why that would not work. He argued that, because the term “substantial” is used in copyright legislation and therefore in the context of criminal sanctions for copyright offences, this provides a suitable precedent for using it in registered design sanction. However, in copyright law, it has been determined to have a “qualitative” as well as a quantitative meaning, such that, for example, a few bars of music
from a song, or a single still from a film, could constitute a “substantial part” of the whole work. Such a potentially wide meaning from an unrelated IP right does not provide for a sensible read-across to design legislation.
My noble friend also suggested that the amendments make the offence narrower. But as the Government have previously stated, the policy is to target acts which are “considered”. The amendments do not alter this policy, or make it harder to prove in practice. They simply clarify and reinforce the nature of the act which is inherent in the word “copying”.
My noble friend also asked why there could not be an extension to unregistered design rights. This is a matter that my noble friend has raised before. It is because of a number of fundamental differences between registered and unregistered design rights, which have been examined in detail previously both here and in the other place. These differences mean that it is often not possible for a legitimate business, be it large or small, to find out whether unregistered design rights protect a design or a part of that design. This creates a high level of uncertainty. The Government are simply not protecting and supporting our small businesses if we subject them to this level of uncertainty, especially given the huge number of unregistered designs in existence. The Government have made this distinction between registered and unregistered design rights, we believe, for good reason, and for the benefit of the UK design industry.
My noble friend Lord Clement-Jones also asked about the alternative wording and suggested—although I am not sure that he actually used these words—that we might use the informed user test. The Government have considered alternative wording carefully including the wording based on the phrase, “producing on the informed user a different overall impression”. However, this was rejected because it relates to the test for civil infringement in registered design law. The scope of civil infringement is much wider than the intended scope of the criminal sanction, which is of course restricted to intentional copying. Application of this phrase to the criminal sanction could lead to confusion for businesses.
Because this infringement test is wide, it is also likely to affect the ability of innovators to produce valid follow-on designs. It would require expert testimony, for example, about who is “the informed user” in a particular industry; such testimony would complicate criminal prosecution and can be contradictory, leading to delays in the proceedings.
The test is also still subject to interpretation and development by the EU courts. The Government believe that any uncertainty around such a test for a criminal sanction, which could affect personal freedom, would be unacceptable. As with the sanction in general, this is a fine balance to strike. But the Government do not believe that their amendment, which refers to “immaterial details”, restricts the application of the sanction to exact copies.
My noble friend raised the issue of intention in the Bill, and I shall expand on this a bit more in terms of the link to unregistered designs. New offences are not introduced lightly and the Government must ensure that they have been drawn sufficiently tightly and are
workable in practice. The Government believe that these would be difficult criteria to fulfil for unregistered design rights, as mentioned earlier, given the complexity of establishing basic facts such as whether the right exists, what parts of the design it relates to, and how long the protection would last.
However, in completing this analysis, the Government recognise that primary legislation is not the end of the process, and we are working with the relevant bodies, including ACID and its members, to explore ways in which we can improve the experience of designers in the UK. I hope that this will be of some comfort to my noble friend. For example, we are developing plans to introduce a more comprehensive IT system to facilitate the processing of registered design applications. In addition, we will be assessing our fee structure, having taken on board stakeholder concerns regarding the cost involved in registering numerous applications. We will also be evaluating the provision of information about protecting designs to make the system more accessible for businesses. I am confident that these measures will assist our design industry, and I look forward to working closely with members of ACID and other organisations as developments progress. This Bill and the excellent scrutiny given to it by noble Lords have been a catalyst for this further work with the UK design industry.
More widely, I am most grateful to noble Lords for the time and effort they have put into their scrutiny, and I confident that as a result we are making a series of important and positive changes to the UK intellectual property system which will support our designers, inventors and creators in the years to come. I commend the amendments.