The UK has the largest design industry in Europe and some of the most favourable (albeit complex) design laws. If you have a design infringement issue it is essential that you seek professional advice without delay.
What is a design right?
Design rights can be used by businesses to protect the appearance of their products and are a useful tool to prevent others from reproducing the designs of their original products.
In the UK there are four different types of design rights:
- registered Community designs
- unregistered Community designs
- UK registered design rights
- unregistered design rights
Unregistered Community and UK design rights arise automatically following the creation of a design provided certain requirements are met. The scope of each varies, but in general they can be used to protect the shape and configuration of 3D products. These rights may be infringed if a third party copies the design of a product without the permission of the owner of that design.
Registered Community designs and UK registered design rights must be registered with the European Union Intellectual Property Office (EUIPO) or the UK Intellectual Property Office (UKIPO) respectively. Registered designs can be used to protect the appearance of a product, including its shape, patterns and colours, provided the design is new and has individual character. These rights will be infringed if anyone else uses the design (or which uses any design which does not produce a different overall impression on the informed user). This means that the competitor should not escape being liable for infringement if that person come up with the design independently or simply made trivial changes to the registered design.
Cease and desist letters
Cease and desist letters can be a practical way of resolving design infringement disputes without recourse to the courts. If you are sending a cease and desist letter, you need to set out your rights, explain why they are infringed and explain what needs to be done and by when if the matter is not to escalate.
If you have received a cease and desist letter, you will need to give consideration to whether the intellectual property is valid and has indeed been infringed and, if so, whether the rights holder is entitled to the remedies they are seeking. You will need to respond within a given period of time setting out your position and, if appropriate, making an offer to settle.
Care needs to be taken in sending and responding to cease and desist letters. If you are considering sending or responding to a letter we strongly encourage seeking legal advice.
What remedies are available for design infringement?
Compensation for design infringement will vary from case to case, but usually includes:
- An injunction preventing the infringement.
- Recovery of damages or an account of the infringer’s profits.
- Delivery-up or destruction of any infringing goods.
- Recovery of a portion of the legal costs incurred enforcing the design rights.
How we can help
We can help you with the following:
- Assess the prospects of success for design infringement.
- Prepare a cease and desist letter or, as appropriate, a response to any cease and desist letter, clearly setting out your position and complying with all requirements of the UK courts.
- Look into practical ways to resolve your dispute without court action.
- If your dispute is not resolved and goes to court, robustly presenting your case.
UK litigation expertise
Our design experts are experienced in advising a range of clients, from start ups to multinational brand leaders, on a full range of issues relating to product design, packaging and branding, and have acted in major design cases.
Our solicitors have extensive expertise in acting in UK court cases in the High Court (Chancery Division) and the Intellectual Property Enterprise Court (IPEC) across a wide range of industries and technical disciplines. We are also highly experienced in advising clients in, and co-ordinating, multi-jurisdictional disputes involving courts in Europe, Asia and the US.
Why we are best placed to help
We are a leading UK intellectual property firm, dedicated to protecting and enforcing our clients’ IP rights. We have specialised in IP protection for over 125 years and are ranked top tier in all the UK legal directories (Chambers UK, IP Stars, Legal 500, IAM Patent 1000). Whether a large corporation or a small to medium sized enterprise, we are committed to providing only the best IP advice available.
Contact us with this form, by telephone or by email.
We offer a free initial consultation in order to help you understand the legal and practical issues relating to your case. This will enable you to decide what action to take, with no obligation to work with us at that stage.
We are known for our clear, reliable and cost-effective advice and have many years of experience of successfully protecting and fighting for our clients' rights.