Enforcement of a registered design in case of infringement
Copying is so prevalent in many design-led industries that it is has become almost accepted as normal. Yet the registered design system provides a simple and comparatively low-cost method to protect creativity. When infringement occurs, a number of key tools exist to assist enforcement and defence.
This is a guide to enforcing registered design rights, click here for an introduction design rights and how to register them.
Enforcement: how to identify infringement
Infringement of a company’s designs can occur accidentally or deliberately. For example, a company may ‘accidentally’ launch a product with a similar design not realising that it is a proprietary right; more commonly, however, that copying will be deliberate, particularly where a counterfeiter is attempting to pass off a fake good as a legitimate item.
Some instances of copying may be easy for a company to identify; for instance, where a competitor launches a product using a similar design motif. In the case of counterfeiting, however, it will often be difficult for a company to identify design infringement, unless they have a design watching programme in place. Such programmes function in a similar way to trademark watching programmes (click here for further information on Novagraaf’s trademark watching services), and can provide a simple and rapid means to spot and act against registered design infringement.
Enforcement: defence of a registered design
Once infringement has been identified, the next step for registered design rights holders is to settle on a strategy for action. The approach can vary considerably, depending on the right and where it is being used; however, as a general guide, registered design rights holders are advised to tailor their offensive strategy proportionately to the size of the threat. You can generally halt an ‘accidental’ infringement, for example, by sending a cease and desist letter to the infringing party. A more malicious or persistent threat will require a more robust course of action; particularly, when looking to force the shutdown of a manufacturer of counterfeit goods.
You may also find yourself the subject of a cease and desist action if you launch a product that allegedly infringes another party’s registered design rights. For this reason, it is important to conduct a registered design right search before a new product is launched. Failure to do so may result in an expensive redesign exercise if a product has to pulled from the market due to an infringement claim. Your attorney will generally conduct such a registered design search as part of the design registration process.
Speak to your attorney for tailored advice on how best to protect your design rights in the territories of most interest to you.
Registration requirements: further information
You can find out more about obtaining design protection, and the processes for enforcing and exploiting design rights here. Alternatively, contact our customer support team using the contact form at the top right of this page.