As the owner of a design right, you are able to take action against another party if they market a product that is too visually similar to yours, without your permission. If their product is identical to your design, or if it differs in some ways but the impression the consumer takes from their product matches your design, you may be able to take action.
If you believe your design right has been infringed, a specialist attorney from Keltie can help you to assess your case. We can determine what registered and unregistered rights you have in place and how robust those rights are. We can also determine the extent to which the other party’s design overlaps with your rights, in the context of the design field and any technical considerations that might limit the scope of your design rights.
Thank you
Design infringement is sometimes confused with copyright infringement. These are not the same - though it is possible for design infringement and copyright infringement to occur at the same time. Copyright is a separate right to design right: it can cover works such as literary, dramatic, musical, and artistic works, and works of artistic craftsmanship. Sometimes a work might be covered by both copyright and design right. If copyright is relevant to a potential design infringement dispute, Keltie will be able to identify this and advise you and your best course of action.
With our help, enforcing your registered design rights against another party could be simpler than you think.
If you have reason to believe that another party is infringing your design rights without permission and you want to take action to prevent it, we can help. We will initially talk to you about your commercial aims and priorities, and get to understand the problems the other party’s activities are causing for you. We will assess the strength of the case, the likely behaviour of the other party, and we will help you assimilate supporting evidence.
We will then work with you to assess the appropriate next steps, keeping in mind your objectives. There are many options, including issuing a demand letter, conducting informal negotiation, entering mediation or arbitration, or taking court action. Depending on the course of action, it may be appropriate to involve other legal professionals, such as a solicitor or barrister.
The overlapping nature of rights in this field means we can use registered design rights, unregistered designs and even copyright to secure a favourable outcome for our clients. A demand letter is a typical first step, insisting that the other party ceases commercial activities relating to the infringing article. If this first stage does not result in an acceptable result for our clients, we would discuss escalation.
The skill of our attorneys and the case material they assemble in their work, and in the practical commercially-focussed approach to disputes, makes it unusual for a claim to reach the courts. If a client did want to take out legal proceedings, we would work with specialist solicitors with expertise in design litigation. By using the most qualified professionals in specialist areas, we get the best results for our clients.
The Keltie difference begins early, at the point a registered design is filed. Our sophisticated design filing strategies aim to set you up for success with design infringement. We consider the ramifications of an infringement of a registered design from the outset, and we craft the scope of a registered design to give a strong infringement case when the time comes.
When the time comes to enforce a design, we act fast. We provide quick and clear assessments of the case, always keeping in mind your commercial objectives. Where necessary, we work with a network of the very best legal professionals to provide complementary litigation support, and we can pick professionals to suit your needs and objectives.
The best means of preventing both design infringement and the need to take action to protect your design rights, is to involve a specialist attorney from Keltie at the very outset of your project. By understanding the ideas and inspiration behind your idea, we can craft the most comprehensive yet flexible strategy to offer you the maximum protection.
If you need help and advice on design protection or enforcement, get in touch today.
Services you may be interested in
Decades of experience as attorneys, engineers and scientists in industry and research underpin the approach of our patent team. We are resolutely commercial and take time to understand your technology and your business.
Keltie’s patent attorneys are skilled not only in patent searching, but in interpreting the output of a patent search, and in helping you understand what it means for your technology and your business.
Why file a patent application? Patents can serve multiple purposes during their lifetime. They grant the owner a period to enjoy the exclusivity of their invention before others can use it. They give the owner powerful rights recognised in law to prevent infringement. But they are also valuable intellectual property which can enhance the ability of the owner to exploit their technology commercially through licensing or sale of the invention.
A key reason to invest in patent protection is to prevent others from copying your innovation. The patent system is intended to allow you, as a creator, to enjoy exclusivity around your technology for a set period of time. Patents allow you to leverage that exclusivity in order to develop your commercial position.
What is the Patent Box? Patent Box is a tax incentive scheme designed to encourage innovation within the UK. Introduced in 2013, it is a government-backed initiative whereby company profits which are derivable from patented technology are taxed at a lower rate than standard corporation tax. The system is intended to provide a strong and supportive environment for innovation within the UK.
The attorneys in our Trade Mark Group are among the leading brand protection experts in the UK and Europe. Through our associate network, we coordinate brand protection all over the world. The Group comprises multi-lingual European and UK trade mark attorneys with backgrounds in law, engineering and business. Their expertise extends through the full lifecycle, from searching and filing through to opposition and litigation, including enforcement and appeal. The Group also has vast experience in online enforcement.
Before you start using a trade mark, it is good practice to conduct a search to check that the trade mark is free to use. Conducting this type of search can be challenging because there are so many trade marks in use across many different fields of commerce. This makes it difficult for people without trade mark qualifications to navigate other brand-owners’ rights, and avoid or manage potential conflict.
How to file a trade mark The trade mark filing process can be relatively straightforward. In theory, all an applicant needs to do is access the relevant trade mark website, enter the word they wish to create a mark for, add the relevant goods and services to apply to the mark and pay the fee.
What is trade mark protection? Trade mark protection is a means of securing a monopoly right in a word, logo, shape, colour or sound that acts as an identifier of origin, allowing consumers to immediately determine the source of the goods or services offered under that particular trade mark or brand.
Keltie's attorneys have an unusual wealth of expertise and experience in design rights. We help clients protect their designs, exploit their rights and mitigate risks.
If you are launching a new product there is a risk that it will infringe third party design rights. You can reduce the likelihood of costly conflict down the line, or at least be better informed of potential risk, by conducting a design search and clearance assessment before product launch. To do this, we search for relevant earlier rights - both registered and unregistered designs - help you assess the risk these pose to you, and guide you in any action that you might take to reduce and mitigate risk.
To protect your design with a registered right, a formal application must be made to the appropriate IP office. Obtaining a design registration is relatively quick (a matter of weeks or months in the EU and UK), which can be very useful for creators because it means rights and therefore protection can be granted swiftly.
As the owner of a design right, you are able to take action against another party if they market a product that is too visually similar to yours, without your permission. If their product is identical to your design, or if it differs in some ways but the impression the consumer takes from their product matches your design, you may be able to take action.
What is online brand protection? Protecting the value of your brand online is a lot to do with reputation management. In the age of the internet and social media, brands are global, accessible and more easy to engage with than ever before. Online brand protection services from Keltie seek to protect the credibility and equity you have built within your business and include our enforcement, monitoring and detection capabilities.
What is online brand monitoring? Monitoring involves the process of observing and tracking uses of your brand online. It is a key aspect of your business’ operations to both understand your customers’ sentiment towards the brand and uncover any instances where your intellectual property rights have been infringed.
A domain name provides a platform for visibility of a brand in an online space. It is a destination address for the web traffic generated around a brand name. However, simply put, a domain is a word, and a word can be trade marked. Often, people secure a domain name first in their process of creating a new product or service. Whilst an online presence is a key part of launching a new brand, it is a mistake to think that because you own a domain name, you will be able to secure a matching trade mark. The process should work the other way around - where a domain name becomes an additional asset secured following the clearance and registration of a trade mark.
People who work in this area
Shakeel (Shak) founded Keltie's IT, Telecoms and Electronics practice over 20 years ago and heads up a talented team who advise on patent issues regarding various areas of technology, but primarily in electronic and software technology.
Emma graduated from Imperial College London in 2009 with a master's degree in Physics, before continuing her studies in the field and at Imperial College by undertaking a PhD in the Photonics Group, followed by a year and a half as a Research Assistant. During this time her research focused on the development of high power diode pumped solid state lasers, using both end-pumped and side-pumped geometries, for use in medical and industrial applications in particular.
Philip specialises in patent matters in the fields of physics, electronics, mechanical engineering and information technology. He has particular experience in automotive engineering, together with expertise in mobile telecommunications, semiconductor devices, thermal printing technology and consumer electronics; including ink-jet and laser printers, projectors, digital cameras and LCD displays. In addition to drafting and prosecuting patent applications before the EPO and UKIPO, he also advises on the infringement and validity of UK and European patents and deals with registered designs. Philip also has experience of carrying out patent watches, freedom to operate searches and European opposition work.
Anthony entered the patent profession in 2009, initially working at a large agrochemical company, before moving into private practice in 2015. During his time in private practice, Anthony has also worked on secondment for a biotechnology company in Switzerland and an academic institute in the UK.
Joeri is a UK, Dutch and European patent attorney with more than 15 years of experience in supporting his clients’ IP needs with high quality drafting, prosecution and opposition work and sound commercial and strategic advice. He has helped many clients to use their patent portfolio for the benefit of their business or to strategically move around the competition’s IP. Joeri spent a considerable part of his career in-house at a large and innovative multinational corporation, where he developed a deep love for combine harvesters and other agricultural technology.
Eddie studied Natural Sciences at the University of Cambridge, specialising in organic and biological chemistry. Prior to specialising in chemistry, Eddie also studied materials science and physics options.
Ben's practice focuses on securing and enforcing trade mark rights in the UK and globally for many well-known clients in sectors ranging from insurance and alcoholic beverages to entertainment and retail. He has particular experience in managing worldwide searching programmes to clear trade marks for use and registration, as well as managing due diligence exercises in support of mergers and acquisitions.
Mark is an experienced patent attorney who brings a background as a mechanical engineer to bear in his work with a broad range of clients and technologies, and always enjoys getting to the heart of an invention and its importance to his client.
Charly graduated from the University of Bristol in 2017 with a first class Master’s degree in Engineering Design. Her degree covered a range of multidisciplinary topics and towards the end of her studies she specialised in composite structures and advanced materials.
Having started her career in 1986 with an established trade mark and patent attorney firm, Rosemary joined David Keltie in founding David Keltie Associates, now Keltie in 1988, becoming a partner in 1994. She is a Chartered Trade Mark Attorney and Member of the Chartered Institute of Trade Mark Attorneys.
Gemma specialises in patents in the field of Mechanical and Chemical Engineering and has a wealth of experience covering a broad range of technical fields including automotive, aerospace, composites, powder metallurgy, industrial and medical gases, medical devices, food processing, battery technology and downhole oil-well technologies. Gemma works with clients of all sizes from start-ups to multinational corporations and is known for her easy and approachable manner.
Dev represents biotech and chemicals clients based in the UK, Europe, and US. He has worked in the life science and chemicals specialisms for over 25 years and has established a practice focusing on provision of strategic advice to early stage and rapid growth technology companies. Dev enjoys working with a wide variety of clients to help them develop valuable IP positions most often for companies seeking to partner or licence their technology.
Sean deals with all forms of intellectual property but spends most of his time on patents and designs. His patent practice extends over a huge range of technologies, from catalysts to computers. He is also involved with designs ranging from textiles to logos.
Sullivan leads Keltie's Sustainability Practice, and deals with technologies in many sectors, across the full range of engineering disciplines, including mechanical, electronic, materials, control systems, and software-related inventions.
Tom read Natural Sciences at the University of Cambridge, studying chemistry and physics before specialising in Materials Science with areas of study including: thin films, energy harvesting, thermodynamics, biomedical materials, materials for optoelectronic devices, and nuclear materials. Tom’s Master’s project involved the study and construction of sustainable composite structures for use in magnetoelectric energy harvesting devices and free standing thin films for use in such devices.
Alistair joined Keltie in 1997, following two years with a Glasgow-based patent and trade mark firm. Having qualified in 1998 to become a Chartered Trade Mark Attorney, European Trade Mark Attorney and Member of the Chartered Institute of Trade Mark Attorneys, he has been a partner in the firm since 2003. Based in the firm’s London office, Alistair is co-head of Keltie's trade mark practice, specialising in trade mark, design and copyright law.
Joseph’s core interests lie in the fields of materials, manufacturing, sustainability and digital technologies. These stem from a varied route to a patent career, via mathematics and nuclear engineering. Joseph enjoys the process of getting absorbed 'into a creation' and appreciating the detailed work and thought that goes into it. He also enjoys the diversity of working with clients of all sizes from large international companies, to UK-based SMEs and independent inventors.
Jonathan is a Partner in the Life Sciences and Chemistry team and leads Keltie's Cambridge office. He has extensive experience of working with clients in a wide range of technology areas including agri-tech, sustainability, pharmaceuticals, chemistry, therapeutic treatments, personal care devices, medical devices, medical diagnostics, healthcare, biotechnology, regenerative stem cell therapies, food packaging, gene-editing (CRISPR), CAR-T cell-based therapies, materials, catalysts, energy technologies and cosmetics.
Timo joined Keltie in 2017 after graduating from the University of Birmingham with a first class Master’s degree in Mechanical Engineering. At university, Timo’s studies covered subject areas including advanced mechanics, sustainable energy systems, advanced vehicle engineering, biofuels and combustion, and micro and nano technologies. Timo completed his dissertation project in partnership with the Dearman Engine company, focussing on the application of polymers in cryogenic ambient expansion engines and in particular on in-cylinder lubrication methods. Timo gained industrial experience alongside his studies, undertaking internships at Cummins Turbo Technologies and at Jaguar Land Rover where he was part of the Special Vehicle Operations team working on a limited-edition Range Rover project.
Jo is one of the partners in the Engineering Group at Keltie and has worked as a qualified attorney in general physics and engineering fields for 20 years. She has a particular specialism in automotive engineering, in particular fuel injection systems and injection control strategies, but also with powertrain systems, brakes and engine control systems. Jo has worked with several prominent and multi-national companies in the automotive sector and has managed their extensive, global patent portfolios. She also advises on infringement and freedom-to-operate strategies.
Laura is a Partner in the Life Sciences and Chemistry team. She has a broad academic background in biochemistry and specialises in patent matters relating to biotechnology, precision medicine, immunology, gene therapy, pharmaceuticals, medical devices, stem cells and regenerative medicine, diagnostics, medicinal chemistry, and chemical technology such as petrochemicals and catalysts.
Mark is a UK patent and design attorney and European patent attorney with a technical background in high energy physics. In 2012, Mark began his PhD in Physics at the University of Birmingham where he was part of the particle physics group. He studied the properties of top-antitop quarks produced at the Large Hadron Collider. As part of his research program, Mark worked at CERN in Geneva for 15 months, assisting in the operation of the ATLAS experiment, before completing his PhD in 2016. Mark previously studied Mathematics and Physics at the University of Warwick, where he graduated with a first class Masters degree in 2009.
Manuela's substantial trade mark practice ranges from clearance searches and prosecution, due diligence projects, oppositions and other contentious matters, negotiations and IP focussed contracts. She manages a significant number of worldwide trade mark portfolios being responsible for their overall strategy. Her client base and experience cover a broad spectrum of industries, but in particular, sports, pharmaceuticals and fashion.
Eleni deals with due diligence, filing and prosecution of trade mark applications around the world. She is also involved in copyright, design and company name matters. She has experience in clearance searching and preparing trade mark filing strategies, in addition to advising on registrability, infringement, passing off and the validity of trade marks. Eleni deals with contentious matters including filing and defending opposition, invalidation and revocation actions. She has experience in brand protection over a range of industries, particularly, luxury goods, gaming, retail, fashion, oil, automotive, food and drink sectors. Eleni is also a regular contributor to the CITMA Review.
Mike has a broad academic background in chemistry, medicinal chemistry, biochemistry, molecular biology and cellular biology, which experience was greatly enhanced during nine years of cutting-edge research in fields of biochemistry and molecular biology. He has authored many peer-reviewed publications and is an inventor of many patents.
Rhona graduated from the University of Glasgow in 2018 with a first class Master’s degree in Biomedical Engineering. During this time, she spent six months at a biomechanical engineering lab at Ecole Polytechnique in Paris, where she worked on a project that involved modelling the migration of endothelial cells. Rhona then went on to study for a PhD in Optical Medical Imaging with Healthcare Innovation and Entrepreneurship, a PhD that was jointly awarded by the Universities of Edinburgh and Strathclyde.
Monica is a UK patent and design attorney and European patent attorney with a technical background in computational materials science. Her current patent practice bridges a range of technical fields including software technology, materials science, nanotechnology, electronic devices, fuel production and storage systems, cryptography and financial technologies.
Colin’s professional experience spans a variety of technical areas, including software- and mathematical-based technologies such as Artificial Intelligence / Machine Learning, e.g. for drug discovery, electronics-based technologies such as consumer electronics and embedded electronic control system applications, and engineering technologies such as in the automotive, wind energy and agricultural sectors.
Mark is part of Keltie's IT, Telecoms and Electronics team and advises on all parts of the patent process including invention harvesting, patent drafting and prosecution, oppositions and appeals, IP audit, portfolio management and IP due diligence work including freedom to operate opinions. Mark also advises on design issues including the preparation and filing of registered designs. Mark represents SMEs, multinational clients, individuals and universities at the UKIPO, EPO, WIPO and EUIPO.
Amelia studied physics at the University of Liverpool and graduated with a first in 2016. Her studies included semiconductor applications, material physics, nuclear physics and quantum and atomic physics. Amelia has work experience in biophysics research, medical device manufacturing and machine testing and interned at Manchester Medical School and The Christie Hospital in 2015, where she analysed MRI data with an oncologist and clinician scientist.
Amelia joined Keltie in February 2017 and qualified as a Chartered Trade Mark Attorney in 2020. Amelia is responsible for the management of a wide range of UK, EU and International trade mark portfolios. She advises on trade mark clearance, filing strategy, prosecution and registration matters. Much of Amelia’s work involves representing clients in settlement negotiations, opposition, invalidity or revocation proceedings and working with solicitors and overseas counsel.
Nathaniel joined Keltie in 2016 and has experience in drafting and prosecuting patent applications from a wide range of technological fields. His work principally relates to high-tech sustainability technologies in the automotive, agricultural, and renewable energy fields, amongst a broad portfolio that stretches from electrical and industrial power management systems to fashion, packaging and consumer products.
As a member of Keltie’s IT, Telecoms and Electronics team, Samantha specialises in handling software and computer-implemented inventions, and particularly enjoys working with clients applying emerging ‘next generation’ digital technologies (such as artificial intelligence, machine learning and 5G) across a variety of technical fields. She is especially interested in the application and cross-over of such technologies in the field of precision medicine.
Sarah graduated from Imperial College London in 2015 with a Master’s Degree in Physics with a Year in Europe. Her studies included a wide range of Physics topics which included quantum mechanics, plasma physics, quantum computing, general relativity, cosmology and electromagnetism.
Emily specialises in the fields of materials science, engineering and design. She leads the Advanced Materials and Manufacturing practice at Keltie, and co-leads the Design Group. Her practice covers a wide range of technical fields including nanotechnology, glass processing, advanced materials, energy storage, construction, packaging, food technology, medical devices, automotive and aerospace engineering, electronics, software and user interfaces.
Charlotte joined Keltie in 2008, after graduating from the University of Birmingham with a law degree, qualifying as a Chartered Trade Mark Attorney in 2013 and obtaining the IP Litigation Certificate in 2016. After spending 12 years at Keltie, Charlotte spent four years developing and heading up trade mark practices at London law firms. Charlotte re-joined Keltie in 2023 as Partner of the trade mark practice.
David is a Chartered Trade Mark Attorney. His responsibilities include the prosecution of trade marks, trade mark audits, conducting clearance searches and handling contentious matters such as trade mark opposition proceedings, infringement matters, revocation and invalidity actions.
Sectors we work in
No matter what your product, aesthetics are invaluable. They are the first impression of a product: the contours, shapes, colours and textures that catch our eye as we see, use and interact with it. Not only does a distinct aesthetic have its own value, but it can enhance function, reinforce brand recognition and loyalty, and drive consumer choice.
Keltie’s specialist AI and Quantum Technologies team is one of the largest in the UK. We are the heavy hitters: Neural Networks, Game Theory, hidden Markov models, Long Short-Term Memory networks, post-quantum cryptography - nothing phases us.
Branding has a key role to play in any industry. Brands are the flags that fly on behalf of a business or product. They are an identifier of origin that allows consumers to recognise where their products or services are coming from, so it is crucial that those brands resonate with consumers. They must also be kept free of problems that inhibit their ability to be the vehicle that drives a business.
Whether it is the development of novel materials and compounds, or the improvement of industrial processes to make them cleaner or more productive, chemical sciences underpin many of the aspects which are key to addressing the challenges of the 21st century. The diversity of innovation in chemistry is vast, with industry-leading companies combining resources and skills to create new products designed to solve problems and enhance our understanding.
Engineering inventions can be found in hugely complex products, or deceptively simple creations. They can encompass almost any field of technology, and often several fields at once.
More so than almost all other scientific fields, our knowledge, understanding and expertise in biology has increased at a phenomenal pace over the past few decades. Since the high throughput sequencing power used in the human genome project was unleashed at the beginning of the 21st century, multiple '-omics' disciplines now characterise a diverse field that offers such enormous potential for medicine, food production, wellbeing and human expression.
Modern technologies and advancements in product design and manufacturing contribute to our being able to lead a more sustainable and improved lifestyle. These in turn are increasing both the expectancy and quality of life we are able to enjoy as consumers by combatting health challenges and diseases, improving diagnostics and developing new therapies.
Materials science and the technologies involved in manufacturing processes underpin almost every element of technological development. The function, quality, longevity and financial value of products are all impacted by their material make up and the mechanisms involved in their production.
Precision medicine, also referred to as personalised or stratified medicine, is an emerging approach for disease treatment and prevention in which medical decisions, treatments and products are tailored to a subgroup of patients by taking into account the individual characteristics of each patient.
There are few greater challenges than starting a company from scratch but the rewards for taking a great idea or innovation and turning it into a successful business are substantial. At their inception, new companies grow quickly, driven by the dedication of owners and their will to make them profitable, but usually with limited financial resources. In order to become established and find a strong position within the market, startups need to attract external investment.
Sustainability or Green Technology is a hugely prominent sector as public consciousness, awareness and engagement with the ‘green agenda’ grows. As consumers, our behaviour can have a significant environmental impact and has prompted substantial strategic and financial support from national governments and the UN as they look to industry to develop sustainable solutions, products and technologies.
The rise of the internet and modern telecommunications has been underpinned by our ability to program computers to carry out complex operations. Almost every aspect of our lives has been advanced by developments in technology and software, making previously slow or complicated processes easier, faster and in some cases, cheaper.
Related knowledge
Working with start-ups – interview with Dev Crease.
Insights into the automotive sector with Joanne Hopley
UK Corporation tax U-turn increases the allure of Patent Box scheme
Women and IP: a continuing journey
Gene Editing : CRISPR breakthroughs highlight IP questions
Keltie launch DICE on World Earth Day
Pride Month and Beyond: The journey towards Diversity and Inclusion in law firms
An interview with Sullivan Fountain, Partner at Keltie
Q&A with Rising Star, Jesús Enrique Vargas Millan
Keltie team members join INTA committees
The Gold Standard - Keltie Recognised in WTR 1000 2024
21.09.2023
Deadline approaches for the EPO’s “10-day rule”The “10-day” rule, which determines how the response deadlines to certain European Patent Office (EPO) communications are calculated, is to be abandoned from 1 November 2023.
19.09.2023
Post-Brexit Representation for Trade Marks and Designs Before UKIPOWhile the initial effects of Brexit on trade mark and design registrations are baked into our consciousness, one noteworthy aspect will only take effect at the start of next year. Trade mark and design owners should consider appointing a UK address for service to reduce the risk of third-party challenges being successful by default.
06.02.2024
Where fashion meets legality on social mediaUnlock the secrets of the fashion world's legal runway with our latest article, featuring Keltie's collaboration with CITMA and UKFT.
Thank you
