If you’ve read our guide to registering a design right, or our introductory guide to intellectual property, you’ll know that design rights protect you from other people copying how your products look, including their shape, configuration, or decoration.
Even if you have design right registrations in place, that may not be enough to stop someone from copying your designs. And with unregistered designs, it may be even harder to prevent this copying. So, what can you do to enforce your rights?
Our guide highlights your options for preventing further infringement from occurring, and perhaps even for obtaining compensation from the infringer, if the infringement has caused harm to your business.
How can design right ownership be proven?
If you have any three-dimensional design that’s original in its shape/configuration and is a new idea, you’ll automatically have design rights for it.
And if you want to prove your registered design rights, you can simply point anyone in the direction of the digital, publicly viewable record of your registration online.
You’ll also need to double check that your design rights registration is still valid. (It’s important to inform the IPO if you change your name, address or email address, and you must renew your design registration every 5 years if you wish to keep it.)
It can be trickier, where the infringement takes place somewhere else, beyond the boundaries of any national registered protection you have in place. This is a challenge faced by many brands who have registered their design rights in their home country, only to later discover that unscrupulous copycats have essential free-ridden on all their efforts and success and misappropriated their marks for use in another country.
In this scenario, we recommend speaking to a lawyer. There are certainly options that you can consider, but they may differ significantly from one type of business to the next and it’s advisable to get an expert steer on what’s going to be most successful and budget-friendly in all the circumstances.
Your design rights don’t necessarily need to be registered to be enforceable. Unregistered design rights can automatically protect any three-dimensional design that is original (novel) in its shape and configuration and a new or uncommon idea.
Gather your evidence
For the infringement to be recognised, someone would need to have either made, disposed of, sold, supplied or imported your design right protected item.
The clearer the evidence of the infringement the better. As far as you can, you should include evidence of how the infringement has caused your business damage, such as a loss of sales or a negative impact on your brand’s reputation.
What are the options for design right enforcement?
Once you have your proof of ownership and infringement, you can correspond with the infringer to try and get the infringement rapidly and amicably brought to a close.
Initially, you may choose to send this communication directly. We have a template first communication that you can easily configure for exactly these purposes.
You’ll also find a more demanding follow-on version of this communication, threatening legal action unless the infringement is ceased, on Farillio.
Finally, there’s a letter that you can also send yourself, threatening legal action unless the infringement is ceased (called a ‘cease and desist’ letter ).
And if the infringer still doesn’t respond to your satisfaction to these communications, Farillio’s expert legal partners can send a lawyer’s letter to the infringer on your behalf, emphasising that legal enforcement steps will be or have now been taken and requesting co-operation before matters go any further. It’s worth getting a quick view on your prospects of success from a legal expert at this stage, especially if the infringer is proving tricky to find, is unresponsive and/or is based outside the UK.
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