Design rights

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honeychop
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Post by honeychop » Tue Feb 12, 2013 8:57 pm

Thanks for your reply - that made me laugh "set to stun" :-)

So did you get chance to have a look at the issue I am facing and do you think I should set the ball rolling with a cease to desist letter?

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AndyJ
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Post by AndyJ » Tue Feb 12, 2013 9:55 pm

Hi Honey (I think we're on first name terms now LOL)
First of all you need to decide exactly what outcome you are seeking. Let's look at 3 options:
1. If you just want the other company to stop copying your design, then a cease and desist letter might do the trick, but equally it might not, and so you need a fall-back position, for example the determination to begin full litigation if necessary, with the attendant costs, delays and frustrations that may entail.
  • This option has two disadvantages: they could change a few significant parts of their design so that they no longer infringe, but still continue to compete with you in the same marketplace, and secondly you don't get any financial recompense even if they do cease and desist. The advantage is that if they do stop trading in their design you regain your market share
2. Or do you want them to pay for a licence from you to continue using your design? This option would clearly have the advantage of bringing in extra income, and your licence could restrict the territories in which their licensed product could be sold, as you would probably wouldn't want them directly competing with your sales. Again this might need the fall back option but the terms on which you would start negotiations would be less confrontational because ultimately if this approach succeeded, you would cease to be competitors. In the longer term, you could licence them to sell your product exclusively, while you get on with your next product design.
  • Option two gives you more control through the terms of the licence, but it means they are still potentially taking customers from you, albeit perhaps in territories which you may not currently be interested in serving (for example outside mainland Britain, perhaps).
3. Or do you want both for them to cease using you design and to pay you damages? If you go for this then suing in the courts is the only real path. This is the nuclear option so you don't really need a fall-back plan. But it could be high risk. Without discussing your product in detail (which would not be advisable on the open forum) it is hard to evaluate the strength of your case in the way a court might examine it.

These options aren't really stages along a path. With options one and two there is the element of a game of poker, in that they may not know the strength of your hand (or their own) and just choose to ignore you without taking proper advice. Part of the poker game involves how you play your hand. A poorly drafted cease and desist letter may irreparably damage your chances of getting them to cease, and with option two, they are only going to enter into a licensing agreement if they consider you have a strong enough case to close them down if they don't agree. However option 3, realistically, involves lawyers from a fairly early stage and the realities of the situation will no doubt be pointed to both sides, such that a settlement may be reached outside the court.

So for all the reasons I have stated, I would advise against hasty action until you have had professional advice. At best that will be free advice from ACID, or failing that costly, but valuable, advice from a solicitor who specialises in intellectual property work. With the best will in the world, neither Typonaut nor I can provide through the forum, that level of advice which comes with a proper client/lawyer relationship.
Last edited by AndyJ on Thu Feb 14, 2013 10:25 am, edited 2 times in total.
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

typonaut
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Post by typonaut » Thu Feb 14, 2013 10:15 am

Given that Andy (I presume) and I have seen the item in questions, and probably others have too... what part of it are you claiming a design right for?

The main upright part appears to be generic in nature (as a three dimensional object), is the part attached to this your own design? Or are you claiming a design right for the assembly of the two items?
Any comment on this forum is just banter, it is not legal advice.

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