This note briefly looks at the four main defences to unregistered design (UDR) infringement.
1. Challenge for validity – the defendant can challenge the validity of the UDR, for example by arguing that the design is commonplace.
a. A party to a dispute as to subsistence, term or first owner of an UDR can refer the matter to the Comptroller- General of Patents, Designs and Trade Marks whose decision is binding on the parties (s246(1)).
b. The rules for bringing such proceedings are set out in the Design Right (Proceedings before Comptroller) Rules 1989.
2. Innocent Infringement – it is a partial defence for the defendant to show that he did not know (and had no reason to believe) that:
a. (for primary infringement) UDR subsisted in the design – in which case the defendant is not liable for damages; or
b. (for secondary infringement) the article was an infringing article – in which case the defendant is liable only for damages not exceeding a reasonable royalty.
3. Compulsory licence – in the last five years of the UDR term any person may licence an UDR (and thus avoid any infringements),
a. Should the owner and licensee not be able to agree to the terms of the licence then the terms will be settled by the Comptroller-General of Patents, Designs and Trade Marks (s237(2)), in the downtime before the decision is made the licensee may use the UDR;
b. The licensee can expect to pay a royalty for the licence which will vary depending on the facts of the situation.
4. Use by the Crown a government department may use a design for supplying articles for defence and health-service purposes if it pays compensation to the owner in an agreed amount (or if no agreement is reached then as determined by a court) – ss240-244.