How to respond to a design infringement allegation

How to respond to a design infringement allegation

'I have been accused of infringing someone’s design. What should I do?’

When a letter lands on your desk accusing your business - and perhaps you personally - of infringing someone's design then no matter how long you have been in business, it's likely to come as a shock. You might be dealing with a misconceived complaint or have made a genuine mistake, we can help protect you in this this difficult situation.

Before you contact a design solicitor

  • Don't be alarmed – this happens to many hardware, creative and technology companies at some point in their journey.
  • Do not respond – yet – even to 'without prejudice' letters without first consulting with an IP solicitor.
  • Set any deadlines referenced in the letter, diarise some time to deal with this matter and have a conversation with an IP solicitor as soon as possible.

At this point, you may also be weighing up whether to reduce risk by stopping selling, offering for sale, or importing the allegedly infringing product or stop using the allegedly infringing process – if this is possible. If you are considering this route, our corporate, commercial and civil litigation colleagues will support the IP team in advising whether this could impact on your existing contractual obligations.

Triage

Once you share the letter with our team of IP solicitors, we will triage the situation – calculating if there is a real risk of imminent litigation and if so in what jurisdiction, for what cause and with what consequences. Armed with this information, our team of solicitors will build a personalised strategy.

Strategy

The components of a good strategy include:

  • Identifying what this claim means to you, and
  • Considering the next steps.

Together we will work jointly to answer a series of questions – some you will answer, some we will:

The Accuser:

  • Who sent the letter? Solicitor? Business owner? The attorneys who drafted the other design? What is their reputation? What country are they in? 
  • What’s the backstory? Is there a prior relationship? The hardest design disputes are often between people who once worked together.
  • Will you come across the complainant again in future? How? Is this a tight-knit industrial sector or are these people you never heard of?
  • Has the complainant got deep pockets? Has the complainant got investors with their own agenda?
  • Are they threatening to seek a court order to stop your activities until the case settles (an interim injunction)?

The Complaint:

  • Does the complaint appear well-founded, a try-on, or somewhere in between?
  • Are all the legal hurdles for design infringement addressed? Accurately? We will work through these and spot gaps.
  • Have they supplied evidence? Would it stand up in court?
  • Can we see some procedural hurdles to put in their way? If so, would this serve a long-term commercial purpose? 
  • Which of our hundreds of previous cases does this most closely resemble?
  • Realistically, what would the IP judges we appear before make of this?

You:

  • What resources of time and money do you have to fight this?
  • How high are the stakes for you and the complainant?

Registered Designs: counter-attacking

In most registered design cases, a counter-attack of some form is mounted to revoke or invalidate the registered design relied on, or to contest its ownership

Most registered designs are members of families extending beyond the UK – any of them might be liable to attack through procedures within the design office where they are proceeding such as observations, opposition, or revocation actions. 

If UK proceedings are issued, the majority of defences are accompanied by a counterclaim asking the court to invalidate the registered design relied on (rendering it null and void). 

Invalidity counterclaims usually invite the court to find that the registered design should not have been registered as the design was not a true invention, either because it lacked novelty or because it is too like previous registered or unregistered designs. 

Remember, to identify the best strategy, you and our design solicitors must exchange information until you establish what this inbound accusation means for the business and whether you have the finances to mount an outbound counterclaim. Potentially, you consider bringing in civil litigators to support us on any contract or misrepresentation claim that you may be able to bargain with. 

Unregistered Designs: counter-attacking

If the allegation relates to an unregistered design, that means your opponent needs to prove that it qualifies for legal protection – they will not have the benefit of any certificate to demonstrate this. It may turn out that the alleged design does not qualify, has expired, or that the complainant is not its true owner.

The response to a design infringement letter

Our next steps will take into account the many similar cases we have seen before. Sometimes the most sophisticated strategy results in a short letter – sometimes you won’t even tell your accuser that you are represented. Sometimes attack is the best form of defence. Sometimes a show of respect is required to smooth troubled waters. What we can promise is that the strategy will be tailored to you.

In the limited number of design cases that go to court, accusers need to show that:

  • They have a valid registered or unregistered design which is in force
  • You have done something which is capable of infringing that design
  • They did not consent
  • What you did is connected to the target jurisdiction
  • There are no statutory exceptions or defences available to you
  • They are the people entitled to a remedy
  • (If they want an injunction) you intend to continue doing what they complained of

Paying damages usually wouldn’t be dealt with by a court until all the questions above had been dealt with – usually at a second trial. Typically, the legal costs of taking a claim to trial is often larger than the eventual theoretical damages awarded, Our low cost model can help keep legal costs to a minimum.

To find out more about designs, read our article FAQs: registered design rights. But if you receive an accusation of designs infringement – contact us immediately.

About the Author

Lindsay Gledhill

Lindsay Gledhill

Head of Intellectual Property
Lindsay Gledhill is Head of Intellectual Property at Harper James. She has specialised in intellectual property exploitation and dispute resolution since 1997. She trained and qualified in Cambridge’s top intellectual property firm during the 'dot com boom', then spent four years at top 50 firm, Walker Morris.


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