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

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Today’s entry is a continuation of last Monday’s article on the intellectual property (‘IP’) right  of unregistered design (‘UDR’). As such, it will explore the various criteria that need to be met by a claimant in order for him to be able to pursue a valid UDR infringement claim against an infringer.

As previously noted, UDR is one of the weakest IP rights. This is mainly because it is a non- registrable IP right and, as such, is not a monopoly right. That is to say, much like the case with copyright, the owner of the UDR cannot automatically enforce the right on other parties and has to establish that UDR subsists.

Prior to going into any further detail, it must be noted that the first owner of the UDR is its designer (s. 215 (1) Copyright, Designs and Patents Act 1988 (‘CPDA’), ‘designer’ defined in s .214 (1) CPDA).

If the designer has come up with the design in question in the course of his employment, his employer automatically become the owner of the UDR (s. 215 (3) CPDA).

Similarly, if the designer has been commissioned to come up with the design, the commissioner will automatically become the owner of the UDR (s.215 (2) CPDA).

A UDR infringement claim, as is any other IP right claim, best approached in five steps, namely:

Step One: Subsistence in UDR

The person bringing the claim must prove that UDR subsists and he is the rightful owner.

This has already been discussed last week à

See << http://myveryownhell.blogspot.co.uk/2013/03/academic-intelligence-on-unregistered.html >>

Further, as per s. 216 CPDA, it must be established whether UDR’s duration has not already lapsed. UDR will last either for fifteen years from the end of the calendar year in which the design was first recorded in an article, etc. OR ten years from the date of the design’s commercial exploitation.

Step Two: Infringing Act

For there to be an actionable claim, the defendant must have committed an infringing act without the owner’s consent. Examples are commercially exploiting the design without the owner’s consent (s. 226 (1) CPDA), making articles to the design (s. 226 (1) (a) CPDA) and recording the design in a ‘design document’  (s. 226 (1) (b) CPDA).  Id est, turning a 3D design into a 2D drawing without the owner’s consent is, too, considered an infringement.

Step Three: Comparison

The claimant must show that the defendant has copied his design without his consent and in order to produce the same or an identically similar product for commercial purposes (s. 226 (2) CPDA).

If the claimant can show a causal link between his design and the third party’s design (e.g. by showing that the third party had access to his design at the time of the alleged infringement), there is a presumption that the third party has copied the design.

Put simply, the burden of proof is shifted onto the defendant to prove that he has not copied the claimant’s design and has come up with it independently.

Step Four: Defences

The defendant will usually argue that the claimant has not made out his claim in that he has failed one of the above steps (failing to establish subsistence in the UDR, no infringing act, failure on comparison, etc).

Step Five: Remedies

As per s. 229 (2) CPDA, the claimant can obtain an injunction, an account of profits OR damages, delivery up or destruction of goods, etc.

No damages against an ‘innocent infringer’ can be awarded as per s. 229 (3) CPDA.

Further, if there is a flagrant infringement or the defendant has gained a substantial benefit, the court is allowed to award additional damages to the claimant as per s. 233 (1) CPDA.

Finally, it must be noted that a defendant can also be liable for secondary infringement (s. 227 CPDA) if he imports or deals for commercial purposes with a product which breaches UDR.

In the light of the above then, it might sometimes prove quite challenging for a claimant to pursue a successful UDR infringement claim for the reasons discussed above.

Pursuing such proceedings and defending a UDR can be quite costly and time- consuming which is partly the reason why UDR is not used as much as other IP rights.