Commentary Part 1: DESIGNS Section 13: UK Registered designs – Offence of unauthorised copying etc. of design in course of business
49.The section inserts a new section, section 35ZA, into the RDA. This makes the intentional copying of a UK or EU registered design a criminal offence, in certain circumstances. For example, the copied design must have been registered prior to the copying (and not registered after the copying has taken place).
50.New sections 35ZA(1), (2) and (3) of the RDA require, for a criminal offence to take place, intentional copying and doing so or committing another act (such as putting the product on the market) to take place in the course of business. They specify the various conditions that must be satisfied in order to prove that an offence has been committed, for example, establishing that the person accused acted without the consent of the registered design holder, and knew or had reason to believe that the design was a registered design or that the registered design had been intentionally copied. Although the offences provide that a person must be acting in the course of business, under section 35ZA(6) the use of a product for a purpose which is merely incidental to the carrying on of the business will not count as using the product in the course of a business.
51.New section 35ZA(4) and (5) of the RDA make provision for defences to the offences. There will be a defence if the defendant can show a reasonable belief that the registration of the design in question was invalid. Nor will a defendant be found guilty if they can show that they did not infringe the right in the design in question, or that they had a reasonable belief that they did not infringe it.
52.New section 35ZA(7) clarifies that the offence also applies to designs registered in the EU (Registered Community Designs)(10).
53.New section 35ZA(8) sets out the penalties the offence carries with it: a fine and/or a prison sentence of up to ten years. The offence is triable either way, that is, on summary trial (in a magistrates’ court) or trial on indictment (in a Crown court), depending on the severity of the case. The offences, including the mode of trial and penalties, reflect existing criminal sanctions for trade marks(11) and copyright(12).
54.Section 13 also inserts new section 35ZB into the RDA, which provides Trading Standards Authorities with similar powers of enforcement for design offences as they have in relation to copyright and trade marks.
55.Section 13 also inserts section 35ZC (which deals with forfeiture powers in England, Wales and Northern Ireland) and section 35ZD (which deals with forfeiture powers in Scotland) into the RDA. The separate sections reflect the different legal systems in the jurisdictions. These forfeiture powers allow, in certain circumstances, a court to authorise the removal of copies of registered designs, or items which have been used to make them, from the premises of those people under investigation. These copies or items may later be destroyed or passed on to another person in order to be recycled or re-used in some way.