It is important that UK registered design owners mark their associated products in order to inform third parties of their registered design rights. Not only does this deter would-be infringers, but also helps to prevent “innocent infringement”. Under the UK Registered Designs Act, damages will not be awarded in infringement proceedings if the defendant can prove that they were not aware that the design was registered. This “innocent infringement” defence can be prevented by suitably marking products. Conventionally, this means marking the product with the term “Registered” (or equivalent) together with the relevant design number. However, such marking takes up valuable space on the product, and is difficult to update.
As of 1 October 2017, UK registered design owners are now able to mark their products with an internet link to a website that clearly associates the product with the relevant design number(s). The new provision to allow so-called “webmarking” will make it easier for design owners to correctly mark their products – for example, if the status of a design right changes it is far easier to update a website than to change the physical marking on a product. Webmarking may also mean that less space is required for marking a product, especially if the product is protected by a number of designs.
Webmarking has been available for patent holders since 2014, and products having both patent and registered design protection will be able to be marked with a single internet link.
The UKIPO’s guidance on this matter can be found here. Importantly, this notice explicitly states that the introduction of webmarking does not apply to European Community registered designs, and we recommend that products protected by EC designs continue to be marked in the conventional manner.