A design right is one which does not require any form of registration. Introduced by the Copyright, Designs and Patents Act 1988 (CDPA) it seeks to protect the appearance of a purely functional product.
Design right is valid for the lesser of ten years from the first marketing of articles made to theÂ design or 15 years from the creation of the relevant design document, and is subject to licencesÂ of right in the last five years of the term.
(section 226(1), CDPA) permits an owner of design right to claim the exclusive right to reproduceÂ a design for commercial purposes by making articles to that design or making a design document forÂ the purpose of enabling such articles to be made
Reproduction of a design is defined as copying the design so as to produce articles exactly orÂ substantially to it (section 226(2), CDPA).
There are 2 forms of infringement
1. Primary infringement occurs when a person, without the licence of the design right owner,Â does or authorises another to reproduce the design by doing the restricted acts (section 226(3),Â CDPA). This is similar to the corresponding provision in copyright law (section 16(2), CDPA
2. Secondary infringement, however, involves commercial importation of, or dealing in,Â articles which the infringer knows or has reason to believe are infringing articles (sectionÂ 227(1), CDPA) (there is a similar requirement for knowledge on the part of the secondary infringerÂ under copyright law).
What do I do when my design is infringed?
An infringement of design right is actionable by the design right owner (section 229(1), CDPA).Â However, if the design right owner has granted an exclusive licence (which complies with theÂ requisite formalities as set out in section 225(1) CDPA), the exclusive licensee and the designÂ right owner have concurrent rights (section 234(1) and (2), CDPA). Where concurrent rights existÂ and either the design right owner or the exclusive licensee brings an action for infringement,Â both must be parties to the action, except with the court’s leave, or for the purpose of obtainingÂ interim relief (section 235(1), CDPA). While the letter of claim and the advice in this draftingÂ note refer to the design right owner, rather than the licensee, they apply equally to licenseesÂ unless otherwise stated.
Before sending a letter of claim, it is vital to check that the design in question satisfies theÂ following requirements as to originality and qualification.Â