Claimant’s Guide to Design Right Infringement

What are design rights?

Design rights protect the appearance, shape and configuration of a product and can be registered or unregistered.  Design owners can apply for a UK Registered Design mark or a Community Registered Design mark.

A registered design must meet certain criteria and must be: 

• Novel;
• Of individual character; and
• Not excluded by statute.

Protection lasts up to 25 years and the rights are renewed every five years.  Registering a design is relatively low-cost and is appropriate for industries such as fashion where design is fundamental in recognising and selling the product.

If a design is registered, subject to meeting the criteria, it will have a right against copying.  Protection is given at both the UK and EU level.  The EU right is much broader but only lasts for three years.  The UK right gives ten years’ worth of protection from when the product was first marketed.

Types of design right infringement

Design rights give the designer the exclusive right to reproduce the product and to record the design of the product with the purpose of reproducing it. There will be primary infringement of a design right if the designer’s design is reproduced or recorded without the designer’s permission.

How to bring a design right infringement claim

Design right infringement claims can be extremely technical and complex meaning they are often dealt with by specialist courts in both England and Wales.  For this reason, we always recommend that claimants in design right infringement proceedings instruct specialist intellectual property solicitors.  It is also quite common for a specialist intellectual property barrister to be instructed as well in order to represent claimants in court.

If infringement proceedings are contemplated, a claimant should first write a letter of claim to the potential defendant(s).  This letter of claim should put the defendant(s) on notice of a claim and give the defendant(s) a reasonable amount of time (normally between 14 and 28 days but could be up to 3 months in complex cases) to respond to the claims made against them.  The letter of claim must sufficiently identify the design right(s) relied upon to enable the defendant(s) to evaluate them and formulate a view on infringement.  The best way to do this is to provide a copy of the design document or a photograph of the design and compare this to the infringing design.  All parties involved in design right infringement claims are expected to act reasonably in exchanging information and evidence prior to court proceedings being issued.

High-value claims for design right infringement

If the claim cannot be resolved then it is likely court proceedings will need to be issued.  High-value claims for design right infringement are brought in the High Court, specifically in the Intellectual Property List of the Business and Property Courts.  Lower value claims are brought in the specialist Intellectual Property Enterprise Court (IPEC) where capped costs operate.  IPEC also has its own small claims track which deals with design right infringement cases which are worth less than £10,000. 

Only the owner of the design right can bring infringement proceedings.  If the design rights in the relevant design are jointly owned, any of the joint owners can issue a claim. 

To issue court proceedings, specific court documents will need to be drafted.  These are a claim form and particulars of claim.  There will also be a court fee payable to issue court proceedings which depends on the value of the claim and the relief sought.  We always recommend that these documents are drafted by a barrister with assistance from a solicitor in order to ensure they comply with the court rules.  These documents will identify the parties, state the cause(s) of action and the remedies sought. 

The defendant(s) will then be given an opportunity to file and serve a defence to the claim (normally within 28 days of the court proceedings being issued but extensions of time can be agreed). 

After that, the court is likely to order the parties to take the following steps to prepare the case for trial: disclosure of documents, witness statements and experts reports.  It is our experience however that most design right infringement cases settle without the need for there to be a trial.         

Remedies available if the claim is successful

The remedies for design right infringement are very similar to the remedies available in other intellectual property infringement claims and include: 

• Basic or additional damages;
• An injunction to prevent further infringement of the design right;
• An order for delivery up or destruction of the infringing goods; and
• Recovery of costs incurred in bringing the claim.

Recover damages

A claimant who succeeds in establishing design right infringement can recover damages.  Claimants can elect either for an account of profits or an inquiry into damages.  Damages are intended to put the claimant in the position it would have been in had the design right infringement not occurred, while an account of profits is intended to make the defendant give up the profits made as a result of the design right infringement.  Before deciding whether to elect for an account of profits or an inquiry as to damages, the claimant is entitled to seek certain outline commercial information about the defendant. 

Interim injunction

An interim injunction is an injunction granted before trial.  A design right owner may want to seek an interim injunction to prevent further design right infringement before the trial takes place.  In order to obtain an interim injunction, a claimant must satisfy the court that there is a serious question of design right infringement to be tried and that the claimant has a real prospect of success of proving design right infringement.  If the court is satisfied of this, it must then consider the “balance of convenience” test which requires the court to consider whether the inconvenience to the defendant, if the injunction was granted, would outweigh the convenience to the claimant.  Where the factors appear to be evenly balanced, the courts will try to preserve the status quo. 

Final injunction

A final injunction is a court order prohibiting a defendant from infringing the claimant’s design rights further.  This will be granted to a claimant who succeeds in establishing design right infringement at trial.  

Design right owners can also apply to the court seeking an order for delivery up of infringing copies of the infringing work or articles which the defendant has in his possession, custody or control.  A design right owner also has the right to seize infringing copies in respect of design right work that the design right owner would be entitled to apply for an order for delivery up.  In addition to this, an order can also be obtained from the court that infringing copies or articles seized or delivered up are to be destroyed or forfeited to the design right owner. 

Finally, successful claimants in design right infringement proceedings are normally entitled to recover their costs from the unsuccessful defendant.  As a general rule, normally 70% of costs are recoverable unless capped costs apply.  Conversely, an unsuccessful claimant in design right infringement proceedings will be liable to the defendant’s costs in successfully defending the claim.

We're here to help

Our specialist intellectual property disputes team routinely advises on a broad range of disputes relating to design rights along with other intellectual property disputes relating to copyright, trademarks, patents, confidential information and data protection. 

The team is also highly skilled at advising on reputation management issues and are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally.  If you need advice on design rights or other intellectual property infringements, please do not hesitate to contact a member of the team today.    

Telephone: 0161 941 4000

E-mail: lawyers@myerson.co.uk