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.
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.
12.09.2022The long-term impact of Brexit on trade marks and designs
Six years on from the Brexit referendum, we can happily say that the measures put in place for trade marks and designs have been successful in delivering a smooth transition. But IP owners now need to pay attention to upcoming changes to rights of representation, particularly in light of the huge growth in applications at the UK IPO.
21.09.2023Deadline 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.
19.09.2023Post-Brexit Representation for Trade Marks and Designs Before UKIPO
While 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.