If you believe your design has been infringed - ie that someone is using it without your permission - you can take action. Use includes manufacturing, selling, importing or exporting goods featuring the design.
How you protect against infringement depends on whether your design is registered or not.
Giving notice of your registered design rights
As an owner of a registered design, you can give notice of your rights by marking your product with the relevant registered design numbers. This could help stop accidental infringement or help you get damages if someone does infringe your right.
You can mark your product with a web address or the registered design number. If you mark with a web address, the link must lead to a webpage that is freely accessible and clearly sets out the registered design number(s) relevant to that product. Webmarking or virtual marking should make it easier for you to maintain, and for others to access, a current list of design rights pertaining to your product.
Registered design infringement
If you suspect infringement, you should first write a warning letter to the other party. They may genuinely be unaware that they are infringing, or stop once their infringement has been 'discovered' by the design owner.
If they continue to infringe, you can start civil proceedings against them, even if the infringement is unintentional. You can sue for damages or the court can order a withdrawal of the infringing product or destruction of remaining items.
Intentional copying of a UK or EU registered design, without explicit consent from the design owner, is a criminal offence. See more on registered designs.
Unregistered design infringement
Unregistered designs are trickier to defend. You may still want to send a warning letter to the person or business you suspect of copying your design. You can still take court action if they continue to infringe. However, in order to succeed, you will have to prove that you hold design right and that the alleged infringers have actually copied your design - as opposed to having merely produced an article that looks the same as your work. This can be difficult and expensive. Read about unregistered design right.
Alternatives to court action
If there is a dispute about design rights or registration, legal action should be the last resort. If you take action without prior contact with the other person, or without attempting alternative dispute resolution, the court may penalise you.
You may be able to avoid a court hearing by negotiating with the infringer or using an alternative method of dispute resolution such as intellectual property mediation.
The advantages of mediation are that it:
- enables both sides to agree on a course of action
- covers a broad range of issues - not just the design dispute
- settles disputes more quickly
- makes more efficient use of judicial resources
- can have positive results for everyone involved
You may even come to an arrangement to license the infringer to use your design, in return for payment of a fee.
Design law is complicated. Before taking any legal action, or if someone is accusing you of infringement, you should seek professional advice. Trade mark attorneys and patent attorneys specialise in this area.