Hi,
My wife use to work for a small company that was manufacturing storage solutions for campervans. She has left the company and started her own business making and selling similar peoducts. There was no confidentiality or anything like this signed and she left as her ideas were not taken serious.
Anyway now she is selling products that share same idea in principal but features and brand logo is different (orientation of compartments is different but overall concept is same. Now she received a threat that she will be taken to court if products not removed within 24h.
Can she carry on or not please?
Thank you
making and selling similar products on Ebay
Re: making and selling similar products on Ebay
Hi racer and welcome to the forum,
You don't mention if the caravan accessories company specified what infringement they were alleging, but it probably doesn't involve copyright, since copyright is rarely applicable to manufactured products, as opposed to handcrafted items.
So it is more likely they are referring to something called design right. There are two forms of design right: unregistered and registered. If the company had registered their designs for the particular items which are in dispute, I would have expected them to mention this, and have quoted the registered design number. It is therefore more likely that they are relying on unregistered design right (UDR). This is something which comes into existence once a design has been committed to paper in the form of design drawing etc, although the term of protection (10 years) usually starts from when the end-product made to that design is first marketed. You can read what the law on UDR says in Part III of the Copyright Designs and Patents Act 1988. Just as with copyright, ideas (concepts) alone are not protected by UDR, only the actual appearance of the object.
To qualify for UDR, the design must be original, and it must have been designed by a British national or someone living within the UK (so for instance it can't apply to something designed in China etc). Secondly what is protected is the shape or configuration of the product, but not any surface decoration (paint colour or pattern etc). And any feature which is there solely in order to make the object function or fit into another object is excluded from the protection. The test for originality is based on what is already on the market and only if the product for which UDR is claimed is substantially different in appearance from an earlier product will it be deemed 'original'.
And the test for whether a second product has infringed the UDR of the first product is somewhat similar. That is to say, would a reasonably attentive consumer believe that the second product was identical or substantially similar to the first (original) prouduct. The comparison would only be based on the shape or configuaration of the two products and without taking into account the colour or any surface decoration. In order to be successful, the claimant would need to prove this to the court's satisfaction, on the balance of probabilities, and it is not necessary for the defendant to disprove it. Furthermore there is a defence which, if accepted, would mean that damages would not be awarded to the claimant. This defence relies on the defendant not having known UDR existed in to original product. This is actually quite hard to prove since ignorance of the law is not accepted, and would usually only succeed if the defendant asserted that the the design was commonplace and therefore the claimant was unable to meet the originality criterion, and thus UDR did not if fact apply to the orignal product. Furthermore, a potential defendant is protected if the claimant makes unjustified threats in relation to their action against the defendant.
Obviously I can't say anything about how this might apply in your wife's case, so you will need to try and objectively apply the principles outlined above to your situation. Maybe you could ask the opinion of an unbiased friend who knows a little bit about caravan/camping accessories.
You don't mention if the caravan accessories company specified what infringement they were alleging, but it probably doesn't involve copyright, since copyright is rarely applicable to manufactured products, as opposed to handcrafted items.
So it is more likely they are referring to something called design right. There are two forms of design right: unregistered and registered. If the company had registered their designs for the particular items which are in dispute, I would have expected them to mention this, and have quoted the registered design number. It is therefore more likely that they are relying on unregistered design right (UDR). This is something which comes into existence once a design has been committed to paper in the form of design drawing etc, although the term of protection (10 years) usually starts from when the end-product made to that design is first marketed. You can read what the law on UDR says in Part III of the Copyright Designs and Patents Act 1988. Just as with copyright, ideas (concepts) alone are not protected by UDR, only the actual appearance of the object.
To qualify for UDR, the design must be original, and it must have been designed by a British national or someone living within the UK (so for instance it can't apply to something designed in China etc). Secondly what is protected is the shape or configuration of the product, but not any surface decoration (paint colour or pattern etc). And any feature which is there solely in order to make the object function or fit into another object is excluded from the protection. The test for originality is based on what is already on the market and only if the product for which UDR is claimed is substantially different in appearance from an earlier product will it be deemed 'original'.
And the test for whether a second product has infringed the UDR of the first product is somewhat similar. That is to say, would a reasonably attentive consumer believe that the second product was identical or substantially similar to the first (original) prouduct. The comparison would only be based on the shape or configuaration of the two products and without taking into account the colour or any surface decoration. In order to be successful, the claimant would need to prove this to the court's satisfaction, on the balance of probabilities, and it is not necessary for the defendant to disprove it. Furthermore there is a defence which, if accepted, would mean that damages would not be awarded to the claimant. This defence relies on the defendant not having known UDR existed in to original product. This is actually quite hard to prove since ignorance of the law is not accepted, and would usually only succeed if the defendant asserted that the the design was commonplace and therefore the claimant was unable to meet the originality criterion, and thus UDR did not if fact apply to the orignal product. Furthermore, a potential defendant is protected if the claimant makes unjustified threats in relation to their action against the defendant.
Obviously I can't say anything about how this might apply in your wife's case, so you will need to try and objectively apply the principles outlined above to your situation. Maybe you could ask the opinion of an unbiased friend who knows a little bit about caravan/camping accessories.
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
Re: making and selling similar products on Ebay
Thank you very much for this very extensive and helpful help. This product is also made in countries like Poland or China so I doubt that UK seller will have UDR. In the message they simply threatened my wife to remove the advert from eBay within 24hr or we will hear from their solicitors. That was all.