Design infringement in the UK: official guidance

UK internet users who key in the search terms 'design' and 'infringement' into their browsers may find that the first website they encounter, other than those of law firms, is that of the UK government's Business Link.  The page reproduced below and accessible here is one of a series of pages that provide advice and some further links on a selection of design-related issues.

Design right and registration

Defend your design against infringement

Your designs are likely to be an important part of your business' success. You'll probably want to take action against anyone who makes, offers, puts on the market, imports or exports the design, or stocks the product without your permission.

If your design is registered

If you think your design is being infringed, send a carefully worded warning letter to the potential offender. They may be genuinely unaware of the infringement or they might stop when they know they've been found out.

If this doesn't work, you're entitled to sue anyone who infringes your design for damages whether the infringement is intentional or not.

If you suspect infringement and you're only at the stage of applying for design registration, you should contact the Intellectual Property Office Central Enquiry Unit on Tel 08459 500 505 and ask for urgent examination and registration of your design.

If your design isn't registered

Again, it's worth sending a carefully worded warning letter to the person or business you suspect of copying your design.

If this doesn't work, you can still take court action. However, 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 prove difficult and expensive.

Seek advice

Design law is a complicated area and it's advisable to seek help from a legal expert if you think someone is infringing your design. Trade mark attorneys and patent attorneys specialise in this area. Find a patent attorney on the Chartered Institute of Patent Attorneys (CIPA) website- Opens in a new window. You can also search for a trade mark attorney on the Institute of Trade Mark Attorneys (ITMA) website- Opens in a new window.

There are alternatives to legal proceedings. It may be possible to avoid a court hearing by entering negotiations with the infringer or using an alternative method of dispute resolution such as mediation. You may even come to an arrangement to license the infringer to use your design, in return for payment of a fee.

The Intellectual Property Office mediation service specifically mediates between businesses and individuals involved in intellectual property disputes. Find out about the mediation service on the Intellectual Property Office website- Opens in a new window.

It will probably please patent and trade mark attorneys greatly that they are mentioned, while the words 'solicitor' and 'lawyer' are not.  But that's not a problem unless you are a solicitor, or unless you aren't a solicitor and assume that they can't help you (which, in the case of non-IP specialists, is generally true).

A bigger problem is that which relates to the carefully worded warning letter: the advice here doesn't make it clear what the sender of the letter has to be careful about.  A designer who thinks his rights are being infringed might reasonably assume that he has to be careful to make his warning as specific as possible as to what he'll do if the alleged infringement doesn't stop there and then -- but the real danger is that of making groundless threats to bring infringement proceedings in respect of UK registered and unregistered designs (Registered Designs Act 1949, s.26; Copyright, Designs and Patents Act 1988, s. 253).

The Intellectual Property Office's advice under 'design' and 'infringement' comes out here,

Design infringement

By registering a design the proprietor obtains the exclusive right for 25 years (provided renewal fees are paid every 5 years) to make, offer, put on the market, import or export the design, or stock the product for the above purposes.

These rights are infringed by a third party who does any of the above with the design, for commercial gain.

How to avoid infringing

Design applicants have to provide a copy of their design. You can ask us to check if your design would infringe an existing design. If it would infringe, you may be able to agree terms with the owner, or even buy the design from them. If you find you are infringing get professional advice quickly from a patent attorney, trade mark agent or a solicitor, because the owner can sue you.

What if someone sues you for infringing?

There are two basic types of defence if someone claims you are infringing their design:

• You are not infringing - what you are doing does not infringe their design, or
• The design is invalid - you can take legal action to challenge the validity of the design. If you win, their design may be cancelled (revoked). The loser usually has to pay the legal costs of both sides, so think hard before starting legal action.

If someone intends to sue you for infringement, you can try to reach agreement with them on using their design.

I think someone else maybe infringing, what should I do?

Get professional advice. You may be able to get a court order to force the infringer to cease trading. You should then consider whether to negotiate or to take legal action for compensation. However, infringement actions must be taken to the High Court, we do not handle such actions.

This page at least has the virtue of mentioning solicitors, though it somewhat dismissively describes trade mark attorneys as 'trade mark agents. It doesn't mention threats though.

Business Wales's design infringement page (here) mentions solicitors, but says nothing about letters or the dangers of making unwarranted threats.  The Scots don't seem to have any official government advice, while that for Northern Ireland (here) looks quite like the Welsh, but is developed in conjunction with the IPO.

Does anyone think it might be a good idea to have a British public sector IP co-ordinator, so that a higher level of more useful and helpful advice can be provided which, since design law is the same throughout the UK, is at least consistent?