The UKIPO have announced that from 1 October 2017 UK registered design owners will have a new option to mark their products with a website link instead of a registered design number. The introduction of webmarking brings registered designs in line with a similar change in the law for UK patents which has been in place since 1 October 2014, and a similar approach which has been successful in the United States. This change does not apply to Registered Community Designs.
Currently registered design owners can mark their products with “registered” and a registered design number. Marking of products can be important as damages are not payable to a registered design owner if a potential infringer is able to successfully assert that any infringement action was ‘innocent’. In other words, damages are not payable if the potential infringer is able to prove they were not aware, and had no reasonable grounds for supposing, that the design was registered. A potential infringer cannot rely on this defence if a product protected by one or more registered designs is clearly marked.
However, whenever a change in a design right occurs a product would need to be re-marked. This is particularly significant if several registered design rights relate to a single product and the rights lapse or are revoked at different times. Re-marking can be both time consuming and costly for the registered design owner.
Webmarking of products with a relevant website link potentially provides time and cost savings for registered design owners as a product would no longer be marked with up-to-date registered design number(s) directly. Furthermore, webmarking should make it easier for third parties to obtain up-to-date information regarding any registered design rights associated with the product.
A product marked with a simple website link will now be protected in the same way as if it was marked with a registered design number with two conditions: (i) the given webpage is accessible free of charge and (ii) the webpage clearly identifies which one or more registered design numbers apply to the product.
Providing clear information on the webpage should ensure that any registered design owner has the best chance of successfully obtaining damages in the event of infringement. Registered design owners will still have the option of marking a product with specific registered design numbers.
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