Defendant’s Guide to Design Right Infringement

Published 12 August 2020 | Myerson Solicitors

News || Intellectual Property Solicitors || 5 min read

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.

Defences available in a design right infringement claim

There are certain defences available if you find yourself accused of design right infringement as follows:

A possible limitation defence exists which means the Court can reject claims in certain circumstances as follows. Design rights last for the lesser of:

Either 15 years from the end of the calendar year when the design was first recorded in a design document or when an article was first made to the design; or

10 years from the end of the calendar year when articles made to the design were first made available for sale or hire.

The Copyright, Designs and Patents Act 1988 (CPDA) provides for any person to be entitled to a licence in the last 5 years of the term of the design right to do anything as regards the design right which would otherwise be an infringement of the right.

The Crown has certain rights to exploit articles without the licence of the owner of the design right for purposes relating to specified services of the Crown (national or foreign defence or health services), subject to agreed compensation or, failing agreement, as determined by the Court.

Designs can only be protected as long as they are not commonplace at the time of creation or excluded by any other provision of the CDPA.

Designs must be original in order to qualify for protection. Although a design could be original in its combination of shape and surface decoration, it could nonetheless fail to attract protection because the CDPA treats the separate aspects of shape and decoration differently, because the former is subject to design right law and the latter is subject to copyright law.

Design rights cannot subsist until either the design has been recorded in a design document or an article has been made to the design. Ideas which have not been recorded in this way will not (until such time as a record is made) be protected by design right and may only be capable of protection as know-how or trade secrets under the law of confidence.

Design rights only protect the design as shown rather than the method of achieving it. If the method concerned is an invention, it may well qualify for patent protection. This exclusion is designed to ensure there is no overlap between the scope of design rights and patents.

Design rights do not subsist in the features of shape or configuration which:

Enable the article to fit with another article so that either article can perform its intended function (this is known as the “must fit” exception); or

Are dependent on the appearance of another article which forms an integral part (this is known as the “must match” exception).

Design rights do not subsist in mere surface decoration. Surface patterns which are decorative can be protected by copyright or as registered designs.

A third party may challenge the subsistence, the term or the identity of the first owner of a design right.

What happens if you breach design right law?

There are various remedies available to design right holders where design right infringement is proven including:

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.

Recovering 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.

Successful Claimants

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.