Infringement of a UK registered design occurs when a person does anything which infringes the registered proprietor’s exclusive right to use the design or any design which does not produce a different impression on the informed user. Therefore infringement is not limited to the exact design or limited to the original article. Infringing acts include making, offering, putting on the market, importing, exporting, or using the product without the consent of the owner (section 7(2)). A number of acts are specifically allowed in relation to UK registered designs and therefore do not constitute infringement: An act which is done privately and for non-commercial purposes; an act which is done for experimental purposes; an act of reproduction for teaching purposes, provided the reproduction is fair, does not unduly prejudice the normal exploitation of the design and mention is made of the source; if the product has been put on the market in the EEA by or with the consent of the owner (in other words, the right is “exhausted” within the EEA); repairing a complex product to its original appearance by replacing a component part. (This is an area of ongoing dispute between original equipment manufacturers, independent spare parts producers and legislators.); acts committed before the grant of the registration certificate. (Section 7A, RDA.)
Where proceedings involve an article to which a design not identical, but substantially the same, has been applied, the court will determine the scope of the monopoly in the claimant’s design. If key novel features have been taken, the design is infringed. The defendant may challenge the validity of the design by way of counterclaim. However, although it was once the norm for both parties to adduce expert evidence to support their cases in a registered design action, the courts are now doubting the usefulness of such evidence on the basis that the very essence of a registered design is the eye of an informed user, a matter rarely requiring technical assessment. Expert witnesses are now rarely used.