‘Academic’ Intelligence: An Overview of Registered Design Right, Part Two

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A continuation of last Monday’s entry, today’s article will opt to present the reader with an overview of the process and requirements for establishing a valid registered design infringement claim.

As with other intellectual property rights, the best way to approach the above is to adopt a five- stage approach.

Stage One: Subsistence

As noted previously, much like trademark, establishing subsistence in a registered design is as simple as referring to the register. It must, however, be noted that a registered design right is only valid if renewed (it must be renewed every five years, see s. 8 (2) Registered Designs Act 1949 (‘RDA)).

Furthermore, it must be noted that the author of the design is not always the legal owner; it must, therefore, be confirmed that the claimant in an infringement claim is the actual owner of the right. For instance, designs created in the course of employment are owned by the employer and commissioned designs are owned by the person who has commissioned them (see ss. 2 (1B) and s. 2 (1A) RDA, respectively).

Stage Two: Infringing Act

In order to qualify as an ‘infringing act’, an act must be done for commercial purposes and without the consent of the owner (see s. 7A (2) (a) RDA). The acts included are outlined in s. 7 (2) RDA; a non- exhaustive list which includes making a product to the design as well as offering, importing, keeping stock or using such a product.

Stage Three: Comparison

The test used for affirming whether the design in question infringes the claimant’s design, as it appears on the register, is the same as the one used to ascertain the ‘individual character’ of a design. Namely, for the claimant to satisfy the ‘comparison stage’, the defendant’s design must give the informed user a sense of déjà vu and remind the user of the claimant’s design (as registered). The informed user is one who has become familiar with the product through use and is, thus, familiar with the product trends in the relevant area at any point of time.

Stage Four: Defences

There are four statutory defences available to the defendant that are worth noting down, namely:

• If the act is done for non- commercial purposes- s. 7A (2) (a) RDA
• If it’s used for experimental purposes- s. 7A (2) (b) RDA
• If it’s used is for teaching purposes, so long as it does not prejudice the normal exploitation of the design- s. 7A (2) (c) RDA
• If it relates to use of component spare parts for repair of complex products – s. 7A (5) RDA

Stage Five: Remedies

The remedies that the claimant can obtain are outlined in ss. 24A- D RDA and include injunction, account of profits OR damages, destruction or delivery up of goods, etc. It must be noted that there are no damages available against an innocent infringer (s. 25B RDA).

To conclude, as registered design is a ‘monopoly’ right, establishing a valid infringement claim against a third party is easier than doing so in copyright or unregistered design cases as the claimant need not prove subsistence if he is registered as the ‘owner’ of the right on the register.