Have I infringed?

DonnaD · Post by **DonnaD** » Mon Jun 12, 2017 9:22 am

Hi there everyone. I'm looking for some advice regarding contact I received recently stating I have copied someones dog collar design. The important points are: the collars look almost identical and I am not denying this. This person without a doubt has been making them longer than I have and I have no way of proving I didn't copy her. These particular collars are specific to a particular breed so are therefore a particular shape (lurcher/sighthound). The patterns used are different. I have not sold a single item - I have just posted the new design on my Facebook page which was well shared and I guess how she was made aware of my existence.

In a panic I did some digging online and have since found a few other people making this collar (or very similar) for longer and it would seem that a French gentleman has actually registered it on the design right gov.uk website over 8 years ago. I'm worried I'm infringing and I really don't want any legal proceedings. Additionally, it would appear some people have registered standard dog collars on this design right website - how is this possible? Are all my collars in breach of infringement? I shall try to stay positive!

Thanks for any advice

AndyJ · Post by **AndyJ** » Wed Jun 14, 2017 8:27 pm

Hi Donna,

Sorry not to have responded to your posting before now. I've been away for a couple of days.

The first thing we can do is almost certainly rule out any copyright infringement. From what you have told us, it is fairly unlikely that collars for dogs would qualify as 'works of artistic craftsmanship'. I say this with some confidence following a case from a few years ago (known as Lucasfilm v Ainsworth) which established that articles whose purpose is largely practical in nature would need a good deal of artistic merit beyond just the skill of a half decent leather worker, to qualify.

So that's the good news.

Unfortunately if the other design has been registered, any design such as yours which does not produce a different overall impression on an informed user, may well infringe the registered design, if it is made (other than for purely private purposes), offered for sale, marketed or exported without permission of the registered owner of the original design. Design right is a monopoly right so it doesn't matter if you produced your design independently.

However there are some caveats. Firstly if the purpose for which the article is made can only be met by designing a product in a particular way, then the validity of the original design may be challenged. It could also be challenged on the grounds that the registered design lacked novelty at the time of registration, that is to say products of a similar design were already on the market. By way of an example, here's a pdf of a Hearing Officer's decision concerning a claim of invalidity for the registration of a design for a dog lead, to give you an insight into how these decisions are reached.

And finally, registered design right only lasts for a relatively short period (compared to copyright). There are two types of registered design: ones made under the UK's Registered Designs Act 1949 (RDA), and those made under the auspices of European Union regulations which are known as Registered Community Design (RCD). In both cases the maximum period of protection is 25 years but registration must be renewed every 5 years or the protection lapses. If this French person used the European version, RCD, then this will also show up on the IPO website, with an EU reference number. There are a couple of differences, the main one being that under the UK system 'innocent' infringement (ie where you were completely unaware that the other design was registered) whilst infringement may be proved, the remedies available the registered owner do not include an entitlement to damages, and the only action he can ask the court to take is an order to prevent you from selling your design (an injunction) and an order for the seizure/destruction of any existing stock. Unfortunately this provision does not apply in the case of a RCD. The second difference is that, if the UK registration has lapsed because it was not renewed on time, under the UK law any threat to sue you may itself be actionable under section 26(1) of the RDA. This would not apply to a RCD which had lapsed.

So the first thing to do is go back the the IPO website and check what type of registered design is involved, and secondly whether the original registration has been correctly renewed. Depending on the answers to these two questions, you will probably know if you face any risk of being sued and thus whether you may need to come to a settlement with the complainant, assuming that they are the actual owner of the registered design. If they merely have a licence from the design owner, they are unlikely to have the right to bring a claim against you (there could have been some assignment of rights, so don't take this as being an invariable rule!).

DonnaD · Post by **DonnaD** » Wed Jun 14, 2017 10:23 pm

Thank you so much for your very informative reply. The person has not indicated they'll take it further, just a request I reconsider producing them via Facebook (I have since modified the design). I have searched the IPO and they do not have any of their designs registered as far as I can see but she was adamant the design was original to her. Of course, I use different patterned fabric and hardware and things but the shape and composition is the same. I have a book about the Dog Collar Museum at Leeds Castle which has a crude version in it from the 18th century. The one registered I found is fully registered and active but looks as though it's made from entirely leather whereas mine is a mix of fabric/tweed and leather. I have since found another seller that uses the exact same shape and composition. It's confusing to know where the line gets crossed. I don't really want to contact the person again but I imagine she'll be periodically checking my website from now on to ensure I'm not selling the collar in question. I only made one practice one which I used on my own dog.

Scenario: If I were to make a collar, which I believed to be original, and registered it today and it got accepted, what would happen if someone got in touch next year and claimed the design to be theirs and had proof they'd been making it for a number of years but had not registered it? Could they take me to court? How would I prove I hadn't 'copied' and how could they provide evidence I had?

I think I shall take photos and document any future designs, as I normally just potter away and don't take notes of anything.

This is meant to be fun, right?

Thanks again.

AndyJ · Post by **AndyJ** » Thu Jun 15, 2017 6:09 am

Hi again Donna,

I'm glad that the other person doesn't appear to be eager to take matters further at this stage. In any case, if you only made one for your personal use, you might well be covered by the exemption for that purpose, unless it was pretty clear from the Facebook posting that you were offering the design for sale.

If the other woman has not registered her design, she may still be able to take advantage of something called unregistered design right (UDR), but this has a much shorter period of protection and all the same grounds for challenging the validity of a registered design also apply to UDR, as does the non-availability of damages as remedy for innocent infringement. The most significant difference lies in the fact that with UDR, any surface decoration (ie colour or pattern) is not protected. The test for infringement is also different in that it becomes a subjective test of whether the second design (yours) is exactly or substantially the same as the one for which UDR is claimed. It would be up to the claimant to prove that copying has occurred.

If you apply to register a new design then it can be challenged at two points in the process: first, during the 2 month 'examination' stage of the registration, after details of your application are published by the IPO. This is known as an opposition and would be decided fairly informally by a hearing officer (this was what happened in the case I linked to in my earlier reply). His/her decision can be challenged. The second opportunity would come if you decided to sue someone for infringement of your design. Normally this would be done in court. The defendant might provide the defence that your registration was invalid on the grounds already mentioned. In either case there is no penalty resulting from a successful challenge, other than that your registration would be cancelled and you would lose your registration fee. There is very little by way of costs involved in a hearing of an opposition (quite often done on paper without the need for an actual hearing). A court case (see below) for infringement might involve more cost because of the other factors involved in bringing an infringement claim.

And yes, it is a very good idea to document your design process with dates, and if practicable, witness signatures, Of course it is hard to prove a negative such as the fact that you have not copied someone else's design, but showing your own experimentation or the steps taken to arrive at your design would be the next best thing.

You can find out more about the pros and cons of registering, and design protection more generally, on the ACID website.

And if you are interested in seeing how a court goes about deciding if there has been copying in design cases, see this judgment from a couple of years ago: Bodo Sperlein Ltd vSabichi.