If someone says your product copies their registered design or trade mark, stay calm. UK law protects businesses that used a design first: if you made or sold your product before someone else registered it, you can usually keep using it. This is called a “prior use” defence, which includes the use of a product you genuinely created (not if you copied their design). The key is gathering evidence to prove when and how you developed the product.
Gather Your Own Evidence
Collect clear records from the time you first made or launched your design. This could include:
- Invoices and receipts – dated sales orders or delivery notes showing you made or sold the item.
- Design sketches or prototypes – dated drawings, notes or photos of early versions of the product.
- Social media or ads – dated posts or adverts of your product. Social media posts can be valid proof of early disclosure.
- Website listings or archives – snapshots of your product page or an Amazon or eBay listing (use the Way back Machine or Amazon’s “first available” date).
- Emails and brochures – any dated emails, brochures or flyers describing the product.
The more evidence you can show, the stronger your case. For example, an invoice plus a dated photo of the product, or a customer review with a clear date, can work well. Make sure each piece clearly matches your product and shows a date. If possible, have a colleague or customer witness the facts too.
Use Blockchain Timestamping
A modern approach is blockchain timestamping. Our service – BlockProtect let you upload your design and get a secure digital timestamp. In simple terms, blockchain is like a tamper-proof digital notary. When you upload to BlockProtect, it creates a unique blockchain code and a certificate of ownership. This certificate shows your design and the exact date it was recorded on the blockchain, which is nearly impossible to alter.
Experts say blockchain is ideal for timestamping IP evidence, and courts in some countries already accept blockchain records as proof. In effect, this gives your design an official online “birth certificate.” BlockProtect is easy to use – no tech skills needed. You register, upload your file, and download the proof. A free or low-cost plan will give you a date-stamped record that complements your traditional evidence.
Blockchain use in Registered Design Protection
Blockchain technology has revolutionized various industries, and its potential in registered design protection is becoming increasingly evident. By providing a decentralized and immutable record of ownership, blockchain enhances the credibility and accessibility of intellectual property evidence.
When you utilize our service, BlockProtect, you’re not just securing your design; you gain an added layer of assurance that traditional methods cannot match. The timestamp generated by blockchain ensures that your design’s creation date is verifiable and tamper-proof, making it an invaluable asset in any legal dispute over intellectual property.
Understanding Different Types of Design Protections
When it comes to safeguarding your creative designs, it’s essential to be aware of the various forms of legal protection available. The main types include registered design rights, unregistered design rights, and copyright. Each serves a unique purpose and offers different levels of protection.
Registered design rights provide formal recognition for your design, granting exclusive rights to its visual appearance. This means that others cannot reproduce or use your design without permission. By registering with BlockProtect, you bolster this protection with an immutable blockchain record, enhancing the legitimacy of your claim.
Registered designs and their application process
Navigating the application process for registered designs can seem daunting, but understanding the key steps is crucial for safeguarding your creative work. The journey typically begins with a detailed preparation phase that includes creating high-quality representations of your design, which accurately reflect its features and aesthetics.
Once you’ve gathered your materials, you’ll need to complete an application form that outlines the specifics of your design. This includes providing information such as the name of the designer, a description of the design, and any relevant classifications that pertain to your creation.
Differences between registered and unregistered designs
When comparing registered designs and the Registered Designs Act, it’s vital to recognise their distinct attributes and implications for creators. Registered designs protect the appearance of a product and the whole product, offering a higher degree of protection for an artistic work; they are officially recorded, granting the owner exclusive rights to use, reproduce, and license the design. This formal recognition also allows for legal recourse against infringement, making enforcement easier and often more effective in any potential litigation.
Conversely, unregistered designs provide limited protection that arises automatically upon the creation of the work. While they may safeguard your design against copying, particularly in certain jurisdictions like the UK, they lack the comprehensive legal backing that comes with the use of the design that demonstrates individual character in a registered community design, especially when it comes to potential disputes with an informed user or a third party.
Where is the burden of proof in a registered design infringement case?
In a registered design infringement case, the burden of proof lies primarily with the owner of the registered design. It is their responsibility to establish that the offending product or design infringes upon their registered rights. In such cases, this may involve demonstrating the invalidity of the defence presented by the alleged infringer, showing that the design in question is identical or substantially similar to their registered design, thereby violating exclusive rights granted under registration.
To meet this burden, the owner must present clear expert evidence, which may include showing documentation of the registration itself, high-quality images or representations of both designs, and any marketing materials that underline the uniqueness and originality of their creation.
Take the Next Steps
If you do get a formal notice, act quickly. In the UK, the IPO’s invalidation process costs only £48. With strong evidence, the registered design may be cancelled – you could even claim any lost earnings during the takedown. It may sound daunting, but at Lawdit Solicitors, we can guide you through the process to make it as smooth as possible.
How to make a registered design infringement claim
To make a registered design infringement claim, follow these key steps:
- Gather Evidence: Start by collecting all relevant evidence that supports your claim. This includes your registration documentation, detailed images of your design and the alleged infringing product, and any promotional materials showcasing your design’s uniqueness.
- Conduct a Comparison: Analyse the alleged infringing design against your registered design. Identify specific aspects where the two designs are identical or substantially similar, highlighting features that would likely confuse consumers.
- Seek Legal Advice: Consulting with a qualified intellectual property attorney is crucial.
What gets compared in a registered design infringement case
In a registered design infringement case, several critical factors are examined to determine whether the infringing product bears substantial similarity to the registered design. Here’s what gets compared:
- Overall Impression: Courts assess the overall aesthetic of both designs, particularly in terms of how they may create a different overall impression on the average consumer, especially during infringement proceedings. The focus is on how an average consumer perceives them, particularly in terms of visual appeal and distinctive features.
- Shape, Configuration, and Decoration: The physical attributes—such as shape, form, and arrangement of elements—are scrutinized. Any distinctive contours or lines that set your design apart, or part of a product should be highlighted.
- Colour and Texture: The use of colour schemes and textures, plays a significant role in differentiating designs. Courts look at whether the infringing product employs similar colours or finishes that may lead to consumer confusion.
- Material Composition: The materials used in your registered design versus the alleged infringement can also be pivotal. Similarities in material types can influence the overall impression and desirability of a product.
- Contextual Use: How both designs are presented in the marketplace is assessed as well.
Remedies for registered design infringement
In cases of registered design infringement, including design right infringement for commercial purposes, several remedies may be pursued to address the violation and protect intellectual property rights, including those available to a licensee. These remedies can include:
- Injunctive Relief: An injunction can be sought to prevent the infringing party from continuing to manufacture or sell products that violate the registered design, potentially leading to a final injunction. This legal remedy aims to halt further infringement and protect the market position of the original design owner, and may involve taking legal action if necessary.
- Damages: The registered design owner may seek monetary compensation for losses incurred due to infringement.
Common Misunderstandings in Registering Designs
Many individuals and businesses hold misconceptions regarding the intricacies of registering designs, which can lead to significant pitfalls. Here are a few common misunderstandings: The date of registration, as indicated by the certificate of registration, is crucial in understanding how registration affects legal rights.
- Automatic Protection: Some believe that merely creating a design grants it automatic legal protection. In reality, registering your design with the intellectual property office is essential for securing exclusive rights and enabling enforcement against potential infringers until such time as the registration is completed.
- Duration of Protection: Another common myth is that registered designs provide perpetual protection. In truth, such protection lasts for a limited period—typically up to 25 years—after which licence renewal or re-evaluation is necessary.
- Global Considerations: There is a prevailing assumption that the registration of a design is applicable worldwide by simply securing it in one jurisdiction. However, the proprietor of the design rights vary significantly across borders, necessitating separate registrations to ensure protection in different countries.
- Overlap with Copyright and Trademark: Some individuals mistakenly believe that registering a design suffices for all intellectual property protections. It’s crucial to recognize that designs may also qualify for copyright or trademark protection, depending on the context of use and marketing. Each form of protection addresses different aspects of intellectual property and often requires distinct application processes.
What are the key steps in defending a registered design?
Defending a registered design involves several key steps. First, gather all relevant documentation to support your design’s originality. Next, assess the claims against your design and formulate a response. Finally, seek legal advice if necessary to navigate potential disputes while ensuring compliance with intellectual property laws.
