Designs are key assets for many businesses and there are several aspects that are vital to success. In this guide from our Designs for Life series, we take a look at defending against infringement claims.
When bringing a new design to market, it is also a risk that sometimes, even if a business has obtained its own rights, it may find itself accused of infringing a third party's rights. In this regard, it is important to remember that the mere granting of design registrations (as with other IP rights) to an applicant does not mean it does not infringe a third party's rights.
When accused of infringing a third party's rights, and if an amicable settlement cannot be reached, there are ways not only to defend against the claim but also to strike back. Not only can a defendant show that it does not infringe the disputed rights, but the validity or subsistence of the rights being asserted can also be attacked.
Registered designs are infringed by any design with the same overall impression. To defend against allegations of infringement, you will, therefore, need to show that your product creates a different overall impression. This is judged from the perspective of the informed user (i.e. someone familiar with the products in question, typically a consumer and/or wholesaler/retailer dealing in the relevant products). When assessing the "overall impression", case law is clear that it is judged by reviewing the whole product - however, it is helpful to identify differences/similarities.
The informed user will give different weight to different aspects of the design, e.g.:
- is the original design new and innovative, if so, the design will be given a relatively wide scope of protection. If there are similar products or features which form part of the design corpus, any similarities in these products/features will be given less weight when assessing the overall impression.
- are there any design restraints for this type of product? If there are none, then a wider scope of protection can be afforded. Aspects of the design where there are design restrictions will be given less weight.
- looking at the representation of the registered design – is it by way of coloured CAD renders, which affords narrower protection than black and white line drawings would have done. These are typically considered to show colour contrast / different colours. The informed user should consider the impact of the different colours on the overall impression.
Continuing Unregistered Community Design (CUCD) and Supplementary Unregistered Design Right (SUDRs)
CUCD and SUDRs are similarly infringed by any design that does not produce a different overall impression, so the above analysis on registered designs is applicable. However, in addition, the accused design must result from copying. It is also important to note that copying can be inferred if the designs are sufficiently similar, and it is for the defendant to provide evidence to rebut these allegations. As a result, it is especially important that records are kept to show that no copying took place, by having a cogent design story of the accused design and how it was created to combat allegations of CUCD or SUDR infringement.
UK Unregistered Design Right (UKUDR)
UKUDRs are infringed when the design is copied so as to produce articles exactly or "substantially" to that design. You would, therefore, undertake a product-by-product comparison to assess similarities and differences. The claimant would also have to prove you have copied, which can be inferred if the designs are sufficiently similar, and it is for the defendant to provide evidence to rebut these allegations. As a result, it is especially important that records are kept to show the design story of the accused design and that no copying took place, to combat allegations of UKUDR infringement.
Attacking validity of designs
If your design is found to infringe, you would need to argue that the original design is not valid. To do so would require an assessment of pre-existing designs in the field and arguing:
- Registered designs, CUCD and SUDRs. Registered designs, CUCDs and SUDR must be new (i.e. there must be no identical prior designs/designs with only minimal differences) and must have individual character (i.e. it must produce a different overall impression to previous designs).
- UKUDR. Registered designs UKUDRs must be original (i.e. not slavishly copied) and not commonplace (i.e. common with the design field).
Gowling WLG's Brands, Advertising and Designs team is a leading designs law team and are actively involved in shaping designs law. We have acted on a number of the significant, reported designs law cases in the UK over recent years, and have been the proud holders of the MIP Designs Firm of the Year Award for four years (2019–2022). We act for a number of design-led clients.