Remedy Against Threats of Infringement of a Registered Design

Care must be taken when threatening a third party with proceedings for infringement of a registered design that the design registration in question is in fact valid.

This is a very subjective area as it requires an assessment of whether the any element of the design can be said to be truly new or unique. The fact that a registration has been granted by the relevant registry, for example the UK Intellectual Property Office, does not necessarily means that it is valid. This is because will not conduct any in depth search in respect of the ‘new’ requirement. This is because due the number of designs published, but not necessarily registered, in any particular market, it would simply not be possible for it to conduct a definitive search. Therefore it is subject to challenge.

The problem with this lies in the existence of a statutory provision to protect third parties from unjustified threats. Section 26 of the Registered Designs Act 1949 states:

“(1) Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the right in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in the next following subsection. (2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of the right in a registered design the registration of which is not shown by the [claimant] to be invalid, the [claimant] shall be entitled to the following relief, that is to say:— (a) a declaration to the effect that the threats are unjustifiable (b) an injunction against the continuance of the threats and (c) such damages, if any, as he has sustained thereby.”

The one saving provision is subsection 3 of the above section which states: “For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section”.

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