Allegations of infringement of design rights are serious and potentially expensive but it is not just an issue for designers and manufacturers - those that buy or import items to deal with commercially can also find themselves at risk of being accused of infringing someone else’s design rights.
In this instance the design rights that are being considered are ‘unregistered design rights’, which can be UK and Community Rights. Design rights relate to the appearance of a product resulting from its features, for example, the lines, contours, shape, configuration, texture and/or materials of the product itself (depending on which right is being relied upon). There are some exceptions that mean features cannot benefit from design rights, for example, where the features are dictated by technical function, or where there is a ‘must fit’ requirement.
Unregistered designs have no symbol which can be utilised to clearly show design right and further there is no obligation under UK law for the items to be marked. Different parts of the same item may or may not receive protection.
Design rights are an important form of Intellectual Property protection in many fields (because of the fact that they do not need to be registered and arise automatically subject to the criteria being satisfied) but in particular those fields where the items might have a short shelf life and high turnover, such as the fashion industry.
The owner of a design right has the exclusive right to make articles to the design and to make a design document which enables the items to be made. So, if a third party, without a licence from the design right owner, does or authorises another to do anything which is the exclusive right of the design right owner this will be a ‘primary infringement’. Most people comprehend that copying or making items which are exactly the same or substantially similar to the original design will be actionable by the design right owner.
Increasingly common, however, is the pursuance by the design right owner of ‘secondary infringers’, i.e. those that have no hand in the design or manufacture of the item but have commercial dealings or commercially import items which the infringer knows or has reason to believe are infringing items. Crucially, case law has shown that ‘reason to believe’ can be satisfied simply by being aware of substantially similar items, belonging to a competitor, in the market before importing the items.
Furthermore, if the design rights owner is relying on Community Design Rights then there is no requirement for knowledge on the part of the person that is alleged to have infringed. The implications for businesses can be significant, in addition to the legal fees that will be incurred in addressing any correspondence alleging design right infringement; a design right owner can seek the following by way of remedy:
- Damages (see comments below on innocent infringers)
- An injunction preventing further infringement
- An order for delivery up or destruction of the infringing articles
In respect of innocent infringement, the party alleged to have infringed does have a defence that can be raised in respect of a claim for damages. However, there are instances where although there might not be a claim for damages the party may have to provide an account of profits in respect of the infringing items and this, of course, does not obviate the other remedies.
It is worth bearing in mind that there is often an overlap between the different areas of Intellectual Property protection and you should always take legal advice if you believe that someone is infringing your design rights or you have been accused of infringing someone else’s design rights.