Design right Infringement – Design rights are a type of intellectual property which protect the visual appearance of a product. If a third party uses or copies a protected design without permission, they may be liable to the design owner for design right infringement.
What is design right?
Design rights protect the appearance of a product or part of a product. This can include its shape, configuration, feel, texture and elements of surface decoration. Design rights do not protect a product’s functionality which is the realm of patent protection.
Design rights can be registered or unregistered.
To be eligible for registration, a design must be ‘new’ and have ‘individual character’. Registration is straightforward and lasts for up to 25 years, provided it is renewed every 5 years. Unregistered design arises automatically. The UK provides 2 types of unregistered design rights; UK Unregistered Design Right, (UDR) and Supplementary Unregistered Design, (SUD). Both require that a design be novel but protect different aspects of a product and last for different lengths of time; UKUDR is more limited in scope and can last for up to 25 years, whereas SUD has a broader application but only lasts for 3 years.
What is design right infringement?
If a third party reproduces a design protected by registered or unregistered design rights without permission, that third party may be liable for design rights infringement. The test for the infringement of registered designs differs from that for the infringement of unregistered designs.
Registered designs give their owner a monopoly over the design. This means they have the exclusive right to make, market, use, sell, import, export and stock any product incorporating the design. The exclusive right extends to designs which are similar to the registered design.
The rights granted by a registered design allow its owner to prevent reproduction by any third party regardless of whether or not they copied, so if the third-party design was the result of independent creation, its designer can still be liable for design rights infringement.
Broadly speaking, there will be registered design right infringement if the accused product does not produce a ‘different overall impression’ on the ‘informed user’. The application of these terms involves comparing the registered design and potentially infringing one, considering designs existing in the relevant field at the time and reviewing previous case law. Design rights infringement is a technically complex area of law, and the advice of a solicitor specialising in design right infringement will almost certainly be needed.
Unlike registered design rights, unregistered design rights (both UKUDR and SUD) do not bestow upon their owner a monopoly over the design in question. As such, unregistered design infringement occurs only where there has been third-party copying (exactly or substantially) of the protected design; if the accused design was developed independently, there will be no unregistered design right infringement.
How do I bring a claim for design right infringement?
The technical and specialist nature of claims for design rights infringement means that they are dealt with by specialist intellectual property courts.
Court action is always the last resort, however, and design right infringement solicitors will strive to settle disputes before they reach that point. This may be by negotiating an agreement with the other side through correspondence and discussion or engaging in alternative dispute resolution methods such as Mediation.
What are the remedies for design rights infringement?
The remedies for design rights infringement are similar to those which apply to other intellectual property rights and may include –
- The payment of damages by the Defendant;
- An injunction to prevent further infringement;
- Delivery up of any stock of the infringing product;
- The payment of the Claimant’s legal costs by the Defendant – please note that a successful Claimant will not receive all of their legal costs; a design rights infringement solicitor will advise on the rules relating to costs recovery in the relevant Court.
These remedies may be agreed under the terms of any settlement reached between the parties or ordered by a Court if the matter proceeds to trial.
What do design right infringement solicitors do?
Design rights infringement is a niche, complex area of law. Design right infringement solicitors specialise in acting for both design owners and those accused of infringement.
A design rights infringement solicitor will consider the nature and extent of design rights relevant to a design, compare the protected design with the accused one and with other designs available in the relevant field, and advise on the strength of any design rights infringement claim.
They will manage the matter from the initial meeting with you through to trial or, where possible, earlier settlement, seeking the best possible outcome for you, and guide you through the relevant processes as required.
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