Can you infringe registered designs?
If you’ve registered a design in the UK or Europe, then you’ve got specific legal rights over a particular combination of visual features. The main benefit of these rights is that you can enforce them if a third party tries to infringe them by making, selling or importing a product with those features.
Yet some businesses worry that enforcing their registered design rights is more effort and cost than it’s worth. However, litigation in court isn’t the only option. Here’s how businesses can turn registered design enforcement to their commercial advantage.
What legal protections do registered designs give?
When a business or individual secures a registered design, it gives them exclusive rights over the specific combination of features shown in the application. This means no third parties can make, sell or import a product with this particular appearance, shape or composition.
Registered designs don’t protect any mechanical or technical aspects of a product. For example, if you create a tracked wheelbarrow, then a patent would protect its functional elements, while a registered design would give you rights over how it looks.
Do unregistered designs have the same protection?
Unregistered designs or ‘design rights’ apply as soon as a product is designed or put on the market. You don’t need to pay a fee or file any applications to secure these rights. However, these are not monopoly rights, the regulations are complicated and the protections don’t last as long as a registered design. This can make enforcement more challenging.
What counts as registered design infringement?
The key test a court uses to decide if a registered design has been infringed is based on the ‘overall impression’. This is when an ‘informed user’ in the field in question (for example an observant purchaser of the product) compares the ‘overall impression’ of the registered design and the defendant's design. If the overall impression is judged the same, then the case against an infringer can be proven.
Elements such as the level of design freedom the third party has and how clear the features in the registration images are also taken into account. For a case of infringement to be brought, the third party must have made, sold, imported, exported, stocked or used a product which violates the ‘overall impression’ test.
What to do when infringement happens
If you believe a third-party has infringed your registered design rights, then the key is not to panic or act impulsively. Instead, get some professional legal advice and follow these steps.
Collect evidence
Even if your plan isn’t to take your case to court, it’s best to gather as much information as possible in case of litigation. There must be a clear link between the infringement action and defendant, as well as proof that the ‘overall impression’ test has been met. Getting a professional to assist with this can help you build a strong case.
Decide if you want to act
Once you’ve gathered all the information together, it’s important to examine it and decide the best plan of action. This is the best time to get a legal advisor to help you determine whether a claim is likely to be successful or not. This can affect your strategy.
Contact the infringer
In most cases, the next step is to contact the suspected infringer with a ‘letter before claim’. This needs to comply with a code of practice, so it’s important that a qualified legal professional writes and issues this letter.
Try to reach settlement
Once a ‘letter before claim’ is issued, the alleged infringer may contact you to try and avoid court, or you can reach out to them to put a deal on the table. At this point, you can enter mediation or commercial negotiations to try and find a mutually beneficial outcome. This may include a licensing agreement, compensation for damages or royalties, or the delivery and destruction of infringing items.
Enforce your rights
If no out-of-court settlement can be reached, or the infringer ignores your letter before claim, then the case will go to litigation.
If you’re running the claim in the UK, you might also be eligible for the Short Trials Scheme, which can make the process faster and more cost-effective. Applying to the Intellectual Property Enterprise Court rather than the High Court can also help you resolve the case in a quicker, less costly way.
Regardless, having an expert legal team will help you run the most effective case possible. So make sure you’ve got the best advisors on board to enforce your rights and make sure you get the best outcome for your business.