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:
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.
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.
There are certain defences available if you find yourself accused of design right infringement as follows:
There are various remedies available to design right holders where design right infringement is proven including:
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.
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.
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.
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