Designs (International Registration of Industrial Designs) Order 2017

Lord Henley Excerpts

Wednesday 6th December 2017 Grand Committee

Moved by

[Lord Henley]

That the Grand Committee do consider the Designs (International Registration of Industrial Designs) Order 2017.

[The Parliamentary Under-Secretary of State, Department for Business, Energy and Industrial Strategy (Lord Henley) (Con)]

My Lords, this order modifies the Registered Designs Act 1949 and the Registered Designs Rules 2006, and is an essential step in the United Kingdom’s ratification of the Geneva Act of the Hague Agreement for registration of industrial designs.

The Hague system for international registration of industrial designs provides a means of obtaining protection for designs in multiple countries, or with intergovernmental organisations, through a single application filed at the World Intellectual Property Organization—the WIPO. Membership of the treaty is becoming more popular, and recent signatories include Japan, the United States of America and South Korea. There are currently 66 members, including 18 EU member states, and the EU is also a member in its own right.

The Government want the UK to be the best place in the world to do business. The promotion of strong and effective international IP regimes can reduce the risks of trading internationally for UK businesses and create further export opportunities. UK designers and design-led business are part of a global industry and, as such, it is essential that they have the option to protect their IP cost effectively when trading abroad. Equally, UK membership of the Hague system will allow non-UK owners of designs to register their rights in the UK, thereby encouraging the manufacture, distribution or licensing of their designs in the United Kingdom.

Ratification of the Hague system forms part of a raft of measures to modernise the design framework, including the criminal offence for the intentional copying of registered designs and the reduction of design fees. I know from speaking to designers about the importance of design to the economy. A Design Council study found that the design economy generated £71.7 billion in gross value added. By joining the Hague system, UK businesses, especially SMEs, which wish to have designs registered across multiple countries will have a simpler, more cost-effective method for obtaining and managing their rights. Businesses will be able to save money on design registrations and protect their intellectual property with greater administrative ease.

UK businesses have been able to access the Hague system since January 2008 by virtue of EU membership. The UK has been planning to join the Hague system since 2011 to provide users of the international system with the option to designate the UK directly, rather than under the broader umbrella of an EU designation. By joining the Hague system, UK businesses will continue to have access after the United Kingdom leaves the EU, regardless of what is agreed during exit negotiations. This order will come into force when UK ratification of the Hague agreement with the World Intellectual Property Organization is complete.

In conclusion, this order is essential to make the required modifications to the Registered Designs Act 1949 and Registered Designs Rules 2006 to give effect to the Hague agreement in United Kingdom law. Ratification of the Hague system forms part of a broader designs modernisation portfolio, intended to refine and streamline the designs legal framework so that the UK can provide a first-class, fit-for-purpose system for our design-led companies. We are committed to ensuring that United Kingdom businesses continue to have access to the international system once the UK has left the EU. Joining the agreement is essential to ensure that we achieve just that. I beg to move.

--- Later in debate ---

[Lord Stevenson of Balmacara]

That is very good news indeed. If it is moving in that direction that picks up the point I am making. There is an unexplored case for more work here, which will bring benefits to UK plc in time.

As I was saying, I was going to grandstand a little on the instrument to ask a couple of questions that I am very confident the Minister will not be able to respond to directly. I am happy to have a letter on them. The first is specifically on the consultation exercise. The Minister touched on this in his opening speech. The comment is made that the UK does not need to keep its own register of registered design rights because after we accede to the Hague agreement, which is what we are doing today, it automatically confers protection on the UK because the UK signed up to the Designview database, operated by OHIM. However, what is the mechanism under which we will continue to have access to it after Brexit? If it is in any way tied to membership it will raise, as the noble Lord, Lord Clement-Jones, said, considerable difficulties in negotiating a fair price and the conditional arrangements. If there are to be cost barriers that will further diminish the pressure on people who wish to register designs. It is important and clearly a useful tool for protecting design rights, but if it is inaccessible it will obviously not be of any value. WIPO and the role it plays are very valuable. The IPO does not have much of a role in this. It again seems a slightly missed opportunity to beat the drum for registration, but if the connection is directly to WIPO and we are to be affected by Brexit, clearly that is a problem.

Secondly, the Minister may be aware of a Supreme Court decision in the Trunki case, PMS v Magmatic. It raised the interesting question of whether one could register or even protect shapes of articles. In this case, the well-known Trunki is a small ride-on suitcase that children use rather irritatingly, at speed, in airport lounges, which my ankles have felt over the years—not my children, I confess; there were third parties involved. The case raised the interesting issue that our systems do not allow anyone who has a visual representation or design representation to register it. As I understand it, the Hague agreement has some flexibility about what can or cannot be registered. It would be interesting to get a sense from the officials in due course about whether they think it would be possible to use the flexibilities in the Hague agreement to allow those talented members of our design profession who design representation to register those designs. I look forward to hearing from the Minister in due course.

[Lord Henley]

My Lords, I am grateful to the noble Lords, Lord Stevenson and Lord Clement-Jones, for their responses. As they said, it will be important that I write with a little more detail on this. I certainly promise to do so. The noble Lord, Lord Clement-Jones, was alarmed about the visibility of the Intellectual Property Office and of these matters more generally.

[Lord Clement-Jones]

I am a huge fan of the IPO. I merely say that it has reduced the fees for registered designs. That made me even more of a fan, but I am concerned about the visibility of the Hague system.

[Lord Henley]

I am grateful that the noble Lord said that because I was going to refer to the exchange between my noble friend Lady Neville-Rolfe and the noble Lord, Lord Stevenson, on the Intellectual Property Office, which showed that it is doing a good job. One should give it credit for that, but I take the noble Lord’s point that this is really more about the visibility of the Hague system. I am not sure there is much we can do other than to continue our engagement with business representatives about these matters to promote the importance of Hague and designs in general. We will continue to do that.

As the noble Lord, Lord Stevenson, asked, we will also continue to promote the benefits of registration. We know that registrations with the UK IPO are rising. Since we reduced the fees in October 2016, as referred to in the most recent intervention by the noble Lord, Lord Clement-Jones, we have seen an increase of more than 100%. There is always more to do to raise awareness, and we will do what we can through programmes of business outreach. We want to get over the message that it is important for businesses to register when it would be of benefit to them, and we will continue to do that.

As I have said, I would prefer to go into greater detail on these matters in a letter to both noble Lords, but I am grateful for their general support and recognition that we want to approve the order today and see how we get on thereafter.

Motion agreed.