Designs are at the heart of creativity, combining innovation with aesthetic appeal to set products apart in a crowded marketplace. Think of the design of the most innovative products like the Swiss Army Knife or Bic’s Cristal Ballpoint Pen. As a business, protecting novel designs is important, but what happens when someone accuses you of infringing on their design rights?
When dealing with registered or unregistered designs, understanding the defences available to you can help starve off costly Intellectual property litigation.
Defending against a design infringement claim should start with you understanding your rights and the defences available. From proving independent creation to challenging the originality of the claimant’s design, several defences exist to counter a claim effectively.
Design rights are specifically concerned with the visual appearance of a product, such as its shape, pattern, or texture. They differ from trademarks, which protect elements like logos or brand names, or patents, which protect the invention. It’s important to understand that copyright and design rights, while sometimes interconnected, serve distinct purposes. For instance, if a copyrighted document, such as a drawing, includes a design protected under design rights, infringement of the copyright in the drawing does not automatically amount to infringement of the related design right. This difference underlines the need for careful assessment of each intellectual property right when addressing potential violations.
This post however explains key defences against design right infringement, helping you understand how to protect your creative designs.
Defences for Design Infringement
There are a few defences available for design infringement, whether they are registered or unregistered. We outline them as follows.
Different Overall Impression
One of the primary defences against a claim of design infringement is to argue that the infringing product creates a different overall impression on the informed user compared to the registered design. This can be supported by a side-by-side comparison, emphasising the key differences between the two.
In some cases, expert evidence may be relevant, especially in complex matters. However, as established in the Spin Master case, the court clarified that expert testimony regarding whether the alleged infringement creates the same or a different impression on the informed user is generally not appropriate in cases involving consumer products.
Who is the informed user in design?
The "informed user" is someone who is reasonably familiar with the design in question, such as a consumer who pays attention to the design details of similar products. Their role in design infringement cases is to assess whether the accused design creates a different overall impression compared to the protected design.
No Design Protection
It may also be possible to challenge the design right holder’s protection by attacking the validity of the design itself. One approach, potentially by way of counterclaim, is to argue that the design in question either did not qualify for protection or was excluded from it from the outset.
For UK registered designs, it can be argued that a design does not qualify for protection if it does not represent the appearance of all or part of a product, as determined by features such as lines, contours, colours, shape, texture, materials, or ornamentation. For instance, the legislation explicitly excludes computer programs from the definition of “product,” so a defendant could argue that any design rights claimed in a computer program are not valid and do not subsist.
Validity
Another defence against design infringement is to challenge the validity of the right holder’s designs. For UK registered designs, this involves asserting that the design lacks novelty or individual character.
A design is considered “new” if no identical design—or one differing only in immaterial details—has been made available to the public before the relevant date.
Innocent Infringement
‘Innocent infringement’ is when an individual, at the time of infringing, did not know or had no reason to believe that they were infringing someone’s design. In such cases, the individual is not required to pay damages but are still subject to injunctions and orders for delivery up (sending infringed goods to the claimant for someone to dispose of).
Just like with any other intellectual property, design rights are territorial. You can only sue for infringement if someone has used your UK registered design in the UK. That does not necessarily mean that they have made products here: they might have imported them from anywhere.
Unjustified Threats
In some cases, an alleged infringer may have grounds to claim that the right holder has made unjustified threats of infringement action. Bringing a claim for unjustified threats can offer a tactical advantage to the alleged infringer. By initiating this claim (as the claimant rather than the defendant), they can put the right holder on the defensive and gain control over the timeline of the proceedings. However, it may also be appropriate to raise a counterclaim for unjustified threats after the right holder has initiated an infringement claim.
Facing a design right infringement claim can be confusing, but understanding the defences available is a good start. Whether it’s proving independent creation, questioning the originality of the claimant’s design, or highlighting insufficient similarities, these defences are crucial tools in protecting your works. Both registered and unregistered designs have their own complexities, making it essential for designers and businesses in obtaining legal advice.
Remember, every design tells a story. Make sure yours is one of innovation and resilience, supported by a thorough understanding of the laws that protect your creativity.
