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Design rights

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honeychop
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PostPosted: Sun Feb 10, 2013 3:58 pm    Post subject: Design rights Reply with quote

Hello - I know this is a copyright forum, but before I start to spend lots of money on a solicitor I'd like to know if I am within my rights.
I have invented a product which is a re-design of an existing product.
To illustrate: e.g kettles are/were historically wide and shallow but I've invented a tall slim version.
Does the same job but looks different.
I have been selling my product for over a year and have had good success, however now someone has copied my design, even down to replicating my photographic publicity, using the same colours and text as me.
What can I do? They have used a diiferent trading name as I legally protected this initially, but otherwise you'd be hard pressed to see the difference between us.
I have read up on registered design rights and think I probably do have a leg to stand on but am not sure how to proceed.
All thoughts would be greatly welcomed as I am an independent inventor who has other inventions I'd like to follow through but am now feeling very disheartened.
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AndyJ
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PostPosted: Sun Feb 10, 2013 6:05 pm    Post subject: Reply with quote

Hi honeychop,
Welcome to the forum. You mention that you've read up on registered design rights, but you don't say if you have in fact registered your design. I will assume you haven't, in which case it is unregistered design right (UDR) which is likely to be of most help. The main details on UDR can be found within Part III of the Copyright Designs and Patents Act 1988, while the law on registered designs (RDR) is contained in the Registered Designs Act 1949.
UDR comes into existence, like copyright, when a design is first recorded in some way, such as in a technical drawing or a model or prototype. To qualify for UDR the design must determine the shape and configuration of the whole or a part of an article and it must be original in the sense that it is not closely based on an existing design or something which is commonplace. The features of the shape or configuration must not be determined by the function of the article - in other words the features should be merely aesthetic even though the underlying part may have a purely pratical purpose. And UDR cannot apply to surface decoration.
So one of the first things you need to establish is that your design came into being before that of your rival: in other words establish that you did not in fact copy him. This can done by producing any original drawings or sketches which have a date on them. If you use CAD or similar software then electronic date stamps on the files may be sufficient. If you can't provide a date for the drawings (don't be tempted to add a date now as forsenic examination may reveal this and your case would instantly fail), then the next best thing would be any early correspondence relating to the making of protoypes etc, or failing that, relating to full production. You then need to try and establish when the other company first started producing their product. Bear in mind that unlike RDR, UDR is not a monopoly right, it only prevents the commercial exploitation of your design by someone else.
Then the next step is look at all the other products on the market with a similar form to yours (ie tall and slim) and see if any of these which pre-date the introduction of your design could be said to be similar enough to undermine any originality in your design. It is best to be as objective as possible in this exercise because if you don't do it, your rival certainly will and if they can convince a court that your design is unoriginal your case will fail.
The devil is most definitely in the detail. The further away from a practical purpose any of your design features fall the greater the chances of your design (or parts of it) being original, and if these same features have been substantially copied by your rival, this strengthens your case. but remember that surface decoration alone does not attract protection, so the fact that your rival may have produced some thing using the same colours for the same parts will probably be discounted when taking into account the overall similarities. (RDR does not have this exclusion so it provides much stronger protection).
I assume that the rival is selling their products within the EU. If so then you can bring a claim, irrespective of where the other product was designed or manufactured. It may be that you can only bring a claim for secondary infringement (see section 227) against someone who is importing the other product into the UK, if the actual manufacturer does not have a presence in the EU.
This factor (secondary infringement) also has a knock-on effect on any remedy available to you if the importer pleads that he did not know and had no reason to believe that the article concerned was an infringing article. In such circumstances only damages equating to a reasonable royalty can be obtained, and no injunction to prevent further importation or selling of the articles.
However if the infringement is not secondary - ie the firm manufacturing the articles has a presence in the EU - then the remedies are somewhat stronger: an injunction, damages or an account of profits, and an order for delivery up of any stock of infringing articles.
I've mentioned the EU a couple of times, and it is worth mentioning the parallel right known as Unregistered Community Design Right (UCDR) which would be especially useful if the other company is based in elsewhere in the EU rather than the UK. The second advantage of UCDR is that it does not exclude the surface decoration as an aspect of design. You can pursue a UCDR claim through the British courts. There is a useful summary of the differences between UK and comunity design rights on the IPO website.
Which brings me to my final point. You really don't want to take this matter to court if you can avoid it. It will be expensive, drawn-out and there is no guarantee of success, or indeed of getting any damages paid even if you win. Small, fly-by-night companies who see they are going to lose a case will often file for bankruptcy or winding-up so that there are no assets available to pay you. Meanwhile another company will have bought all their stock and begin trading so starting the whole process up again.
Rather than going straight to a solicitor, having done the tests I mentioned earlier and satisfying yourself that you have a case, go to your local trading standards and in parallel talk to ACID. Only after those two avenues have been exhausted would I suggest you pay out good money to a solictitor for advice on what to do next.
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AndyJ
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PostPosted: Sun Feb 10, 2013 6:33 pm    Post subject: Reply with quote

Just a quick afternote.
I neglected to address your point about your publicity material being copied. This will almost certainly amount to copyright infringement especially if your photographs have been used in their material. That should be a relatively easy thing to establish, but that won't directly help you with your primary concern, namely the sale of copies of your product.
However I think that the existence of such blatant copying of your publicity material collaterally strengthens your design right case and when set against a defence of 'innocent infringement', could amount to evidence of bad faith. It also possible - but I wouldn't suggest this as a way forward - that what the other company are doing amounts to passing-off, ie they are trying to fool potential buyers that their product is the same as yours.
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honeychop
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PostPosted: Sun Feb 10, 2013 8:03 pm    Post subject: Reply with quote

Thank you so much for your comprehensive response. You are correct in assuming that mines is an UDR. I have considered your points regarding whether I have copied someone else and feel that I have not. I am able to evidence my product as having been available longer than my copier and I have documented proof of proof of sales etc going back over the past year. I am assuming that this would count as evidence. I am a direct retailer and co not sell via and third parties.
Do you think I should therefore start by writing to my copier to say that I have sought advice etc and have consulted with the IPO - which I have found very helpful. So far my rival is selling only in the UK and appears to have just recently come into existence so I was hoping to find a way of nipping it in the bud as it were.
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AndyJ
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PostPosted: Sun Feb 10, 2013 8:37 pm    Post subject: Reply with quote

Hi honeychop,
You may only get one chance to make a 'reasonable' approach to your rival to get them to desist, so don't blow it by over hasty action. Speak to your local trading standards tomorrow morning and I also suggest talking with ACID who will have links to friendly trading standards offices (not all local trading standards offices are trained or funded to take on IP cases), and so long as the copier's product is on sale in their area, any trading standards office could take on the case initially.
Then if you are determined to contact the other supplier, I suggest a properly drafted letter will be essential, preferably one drafted by a solicitor but that is likely to cost your several hundred pounds, unless ACID are prepared to take up your case.
Be careful about writing letters yourself. Send two or more and you could be accused of harassment (even though you may have good grounds) and you could also fall foul of a provision in design right law concerning groundless threats. Whilst I am not suggesting that your claim is groundless, if your rival wishes to take this up as a counter claim, only a court will be able to decide on that matter, and so you may be dragged into litigation for all the wrong reasons, and lose the initiative.
I agree with you that the sooner you are able to get the other company to stop, the less will be the damage to your sales, but if this is the only product they sell, they may not be willing to give up the fight that easily, so it is important to have a full game plan that looks at all the likely eventualities. For that you will need advice from the experts like ACID.
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honeychop
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PostPosted: Mon Feb 11, 2013 11:51 am    Post subject: Reply with quote

Thank you so much for this - I shall follow up on all the points you have raised. I have looked at ACIDs website and it does look very comprehensive. My first stop will be trading standards, I shall hold back on writing as yet. I think my copied product is only on sale in one retail outlet
Groan............


Last edited by honeychop on Tue Feb 12, 2013 9:01 pm; edited 1 time in total
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typonaut
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PostPosted: Mon Feb 11, 2013 12:07 pm    Post subject: Reply with quote

honeychop wrote:
It being on Ebay, does this make a difference to things???


You may be able to claim that it for sale "everywhere" in the UK, and also in Luxembourg (because eBay is based there), consequently you may be able to have any trading standards office help you (or not).

Can you not just point us at the "thing". It is always easier to give some relevant feedback if we can see what you are talking about.
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honeychop
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PostPosted: Mon Feb 11, 2013 12:24 pm    Post subject: Reply with quote

Sorry !!!
Didn't even think to point you at my product Smile)))))))

OK - so my product is also for sale, and has been for over a year. I also sell direct and through retail outlets.
My name is trademarked.


Last edited by honeychop on Mon Feb 11, 2013 11:21 pm; edited 1 time in total
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honeychop
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PostPosted: Mon Feb 11, 2013 9:27 pm    Post subject: Reply with quote

Hi - if you've sent me a private message the forum is saying as I'm new I'm not allowed to access it for a few days Sad
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AndyJ
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PostPosted: Mon Feb 11, 2013 10:21 pm    Post subject: Reply with quote

Hi honeychop,
The pm was from me. I suggest you edit your last post to remove the [ redacted ] details. My reasons are in the pm.

Andy
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Last edited by AndyJ on Mon Feb 11, 2013 11:36 pm; edited 1 time in total
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honeychop
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PostPosted: Mon Feb 11, 2013 11:24 pm    Post subject: Reply with quote

done - thanks for the advice. I now wait, intrigued, to view your PM .......
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AndyJ
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PostPosted: Mon Feb 11, 2013 11:35 pm    Post subject: Reply with quote

Honeychop,
Now that you've edited your posting I think I can post my concerns here:
Given that this could go to litigation at some stage I would advise you not to disclose too many details here because it is a public forum.
Clearly what we are contributing is not legal advice and so is not protected by privilege as would be the case if you were speaking with your solicitor. But there is no point in alerting the rival company to the details of your case and possibly giving them advance notice of any action you might wish to take.
By editing your previous posting you have removed anything which might lead the other party here, via a Google search on the words you used. Not one hundred per cent foolproof, but a wise precaution I suggest.
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honeychop
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PostPosted: Tue Feb 12, 2013 8:08 am    Post subject: Reply with quote

Thank you again for this.
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honeychop
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PostPosted: Tue Feb 12, 2013 8:14 pm    Post subject: Reply with quote

still currently unable to read your PM Sad
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AndyJ
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PostPosted: Tue Feb 12, 2013 8:41 pm    Post subject: Reply with quote

honeychop wrote:
still currently unable to read your PM Sad

Don't worry, it's almost exactly the same as what I posted in my last post.
However it is very annoying that the pm feature is set up in this way. The forums have in the past attracted a large amount of spam and I believe CopyrightAid (the Admin) has got the filters set to stun for this reason. That is why when members first join they cannot post hotlinks. I suspect something similar may apply over access to pm.
Andy
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