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Product design infringement by large UK company

 
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Taeolian
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PostPosted: Tue Sep 12, 2017 6:21 pm    Post subject: Product design infringement by large UK company Reply with quote

Hello,

I am writing here in search for some advice about what should I do in my design infringement situation.
I will try to explain the situation briefly.

I am from a small EU country called Estonia and in 2015 I designed a product, which I am selling over web and I also have different re-sellers all over Europe (including UK). The design of the product is registered in EUIPO since 2015. A year and a half later a large British retail company started to sell a cheaper copy of my design – my product costs around 135 pounds, theirs is 37. Their product has very small differences to mine – it is made out of thinner material and the outer curves are slightly different, but the overall appearance is the same and the technical solutions are exactly the same. Even the overall dimensions are within 5 mm difference.
They are not the only company to sell a cheap copy of this product (it is done all over the world), but they are the first really big company that does it and I haven’t found a copy like that for sale from anywhere else. Therefore at this point I assume that this particular product is related only to them.

I have had a formal correspondence with them for last 8 months (they removed the product from online sale, I don’t know whether from shops as well) and in the very beginning they said that they were only the „innocent“ dealers, but now in the correspondence they have admitted that their in-house designer "designed" the product, they have bought all the parts and materials for manufacturing and they have ordered the manufacturing. For some reason they do not want to give me the name of the manufacturing company.
The numbers of manufactured, sold and products removed from the sale don’t add up. There are other confusing details and contradictions, but bringing them all out here would be a waste of space.

All in all this is now a situation were documents of legal text are being sent and nothing moves on. In their eyes they have done nothing wrong and this is an „accident“ in which their designer miraculously came up with the same design as mine...
They are trying to make a contract with me offering the total income from the sale, which they claim is around 7000 pounds. I have seen no documents that prove that claim.
All this seems ridiculous to me and therefore I ask for advice about what to do now.

I have two main options in mind at this point:
1) Ideally I don’t want to get into a legal process in a foreign country that will take several years and a lot of money out of my life, unless there is enough money in it for me. From where can I get an adequate estimate whether to get into the court system or not and what could be the fine for them?
2) Come out to public and try to make this matter as big as possible. It is a large international company (turnover in billions) and it would make a good story for the right media. The problem is I have no idea where to go with this story in UK. From where can I get the best information about the contacts in large media that deal with these kind of matter? The right journalists would be interested about this.

If you don’t have an answer for me then perhaps you know a place I can turn to ask for it. Google is very large and finding the right info about another country's legal system from it is turning out to be rather difficult.

Your help is much appreciated.
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AndyJ
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PostPosted: Tue Sep 12, 2017 9:34 pm    Post subject: Reply with quote

Hi Taeolian,

While I understand your difficulty in finding out the finer details of how the UK legal system works, you really have no need to worry. Because you have an EU-wide registered design (known as a Registered Community Design) the law which is applied to protect it is the same right across the EU, even though it may be a national court which actually enforces the law. Here's what part of the EU Regulation (6/2002/EC) - sorry, I can't find a version in Estoian although there will be one - on the subject says:
Quote:
A registered Community design confers on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having consent from using it in the course of trade.

Article 19 of the Community Design Regulation

RCD is a monopoly right and there is no defence of innocent infringement. If, to the eyes of an informed user, the other company's product looks pretty much the same as your design, and there are no technical reasons why the product must be designed that way, then infringement will have been proved. This means that it is relatively easy to get a judgment in your favour, which ever court you use. In theory that could be a court in Estonia, as long as the other company also has a trading presence in Estonia. But generally EU rules concerning disputes within the EU usually require legal action to be instituted in the country where the defendant is based. and this makes any sanctions ordered by the court easier to enforce. In your case the relevant court would the UK Intellectual Property Enterprise Court (IPEC) in London. This specialised court has various simplified procedures which make it both quicker and cheaper than more traditional courts. You don't even need to use a lawyer to present your case in court. Here is a copy the Guide to the court.

However I think that since the other company has pretty much admitted to copying your design it probably won't be necessary to go to court. If they have offered to settle the matter for ₤7000, I think it is fairly clear there is a far larger amount involved. However discovering exactly what profit they have made from selling their copies could prove difficult without a court order requiring them to reveal the details. At the very least you will probably need a lawyer to negotiate with them as they will undoubtedly employ their own lawyer if they are a big company. I'm sure a competent Estoian lawyer who speaks good English could do this for you, as he/she will be fully aware of the EU law on the subject. Alternatively you could ask an Estonian lawyer to liase with a UK legal firm on your behalf, which might be cheaper than engaging your own UK lawyer.
You may also be able to get some help from a UK organisation for designers called Anti-Copying in Design (ACID). However I'm not sure about their policy on assisting non-British companies.


I hope this helps you. Good luck with your claim.
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Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Taeolian
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PostPosted: Wed Sep 13, 2017 7:44 am    Post subject: Reply with quote

Hello AndyJ and thank you for your reply.

I do have a lawyer from Estonia and so have they in UK and all our communication has been going through lawyers from the very beginning.

Although we are in the European Union, we still have rather different laws when it comes to infringement in each country. For example in Estonia the law is rather well built up considering the violation side, but the compensation or fines are very small. So the infringer can simply pay the small fine and then keep going until next time where the fines are small again. And the simple matter of fact is that there are no lawyers in Estonia who have actual experience with UK law system in this matter. I have looked. My lawyer is very good in the Baltic region, but he simply doesn’t have the knowledge about the details about the UK laws in this matter. And there is no reason to blame him for this because I am among the very few who at least tries to do something against a large foreign company in this kind of situation.

One of the best intellectual property lawyers in the Baltic-Finland region has offered me a contact with a UK legal firm that I could turn to with this matter. The problem is that companies like that expect me to pay them around 1500 for a consultancy about paragraphs, whether to turn to court and what is the process that I have to take and how much would I get from it at the end. I have asked from several places and the attitude and the price range is the same. It’s not a blame. Simply at this moment it seems a bit of a waste in my eyes considering what I might get from it.

At this stage the main question for me is that would the going to court be worth the effort? In Estonia I would do it because I am physically here, I have a good lawyer and I know how much effort it takes and how much it would cost me in money and time. But this is a case of turning against a very large company in a foreign law system and that company can really spend money to defend itself. Yes, I have my pride and I would like to defend it, but if that means getting into a legal fight that takes tens of thousands from me during all that process (for example I don't even know what and how much it would cost me in legal fees) and most likely at least a year working with a lot of documents and then end up with a 10 000 pound compensation instead of the 7000 that they are offering me right now, then well I have to admit that my life and my nerve cells are more valuable to me than my pride. It all can happen because at this stage I don’t know whether they are lying about the profit they have earned or not. If they are not lying then can the court simply say that take the 7000 and be happy with it? Because in Estonia the court can say that...

Thank you for your link to the court guide. I will go through it later today.
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