Design Right Infringement Solicitors

What are Design Rights?

Design rights protect the appearance, shape and configuration of a product and can be registered or unregistered. Design owners can apply for a UK Registered Design mark or a Community Registered Design mark.

A registered design must meet certain criteria and must be:

• Novel;
• Of individual character; and
• Not excluded by statute.

Protection lasts up to 25 years and the rights are renewed every five years. Registering a design is relatively low-cost and is appropriate for industries such as fashion where design is fundamental in recognising and selling the product.

If a design is registered, subject to meeting the criteria, it will have a right against copying. Protection is given at both the UK and EU level.  The EU right is much broader but only lasts for three years. The UK right gives ten years’ worth of protection from when the product was first marketed.

What is Design Right Infringement?

Design rights give the designer the exclusive right to reproduce the product and to record the design of the product with the purpose of reproducing it. There will be primary infringement of a design right if the designer’s design is reproduced or recorded without the designer’s permission.

What Remedies are Available for Design Right Infringement?

The remedies for design right infringement are very similar for the remedies for patent infringement and include:

• Basic or additional damages;
• An injunction to prevent further infringement of the design right;
• An order for delivery up or destruction of the infringing goods; and

Myerson are members of the Intellectual Property Lawyers Association (IPLA).  The IPLA is an association of approximately 66 law firms who have an established intellectual property department.  The fact we are a member of the IPLA demonstrates that we have extensive and detailed experience in the conduct of IP disputes in the UK.  One of the main objectives of the IPLA is to lobby for improvements to IP law and practice for the benefit of those who hold IP rights.

Separation of Intellectual Property Rights

This matter started as a contentious shareholder dispute between two 50/50 shareholders.  A deal was reached to split the intellectual property rights (comprising many registered trademarks, unregistered design rights, sketches, product development know-how and an ongoing patent application held across several companies) on a worldwide basis.  The deal involved us drafting several licence and assignment agreements with negotiated restrictions on the use of intellectual property, provisions for the development and sharing of know-how, maintenance of the patent and complex rules governing the development of sufficiently different product lines by each shareholder.