Consider the following common predicaments -

Scenario A

QT designs and imports various nursery products, including drinking cups. These are manufactured overseas and sold under the brand of their main customer - a major High Street multiple. They are very popular and have become a best seller.

QT have their own designers including a lead designer who used to work for the main competitor.

A writ has been issued against both QT and their customer. The competitor alleges various IPR breaches and seeks damages, profits and legal costs, which could run into hundreds of thousands. It demands immediate removal of the best selling cup from the market.

This is intensely embarrassing for QT, keen to keep their largest customer happy, and in addition will result in a substantial loss of sales.

Scenario B

XYZ is a small independent designer and retailer of unique children's nursery furniture. 

Their designer independently creates a new cot which is so well received it appears in magazines and on internet review sites.  A competitor, Goliath Corp, has a registered design for a virtually identical cot.

Goliath becomes aware of XYZ's design after seeing it in a trade magazine and contacts XYZ, claiming infringement of their registered rights. 

Unfortunately neither QT nor XYZ did any preliminary work to protect themselves before launching their products. Will they regret it ?

Design Problems

There were risks inherent in a designer working on the same type of product as when he was with a competitor (as in Scenario A). Success with earlier designs may make them think ‘This worked really well. Better just tweak it a little.'

Indeed the customer may have pushed the designer to get as close as possible to a previous popular design. Where a customer has serious commercial muscle, this can be hard to resist.

A court will look for the ‘overall impression' created by each design.

If the earlier design is not registered, evidence of copying needs to be shown. The competitor may say a common designer suggests copying.  If the competitor can show close similarity plus knowledge of the earlier design, the Court is likely to rule in the competitor's favour.

If the earlier design is registered, however, the competitor does not need to prove copying.  Even independently created designs, as in Scenario B, can therefore infringe the rights of others.  If the ‘overall impression' is sufficiently similar, even though created independently, the Court is likely to rule that XYZ has infringed Goliath's registration.

Tips on Prevention & Protection

In order to avoid infringing other's rights, make sure your designs are original. 

Do not be tempted to ‘tweak' best selling designs as you will still infringe the rights of the original design owner.  As mentioned last month, there is no legal rule that allows you to make five changes to a product to avoid infringing - this is simply a myth. 

You can search for registered designs. This lets you see what others have protected, to ensure you do not infringe their registered rights.  

If a new design is received well in the industry and you want to protect your rights in it, you can register it up to one year after the design was created (or placed on the market).  This gives you time to find out whether the design is popular, and therefore likely to require protection, if you are to stop it being copied by the competition.

Litigation Risks

Litigation should be a last resort. It is slow, unpredictable and costly.

If you are QT or XYZ, however, you do not have the luxury of saying ‘No thank you.' You either defend or cave in. However much you may want to avoid legal costs, caving in rarely seems an attractive option.

Defending such proceedings calls for:

• Realistic assessment of your case
• An understanding of the process
• Focusing on commercial realities

Directors often resist advice on matters they feel qualified to judge. Who is best placed to judge ‘overall impression', the ‘infringer' who has been in the industry many years perhaps, or an outside adviser?

The real answer lies in litigation costs. These are very high.They are hard to justify under any circumstances especially against legal advice.

Directors putting egos first will come unstuck but a queue will form outside their door made up of the many advisers happy to agree with anything they say. After spending £100,000 only to lose, they may not look quite so good.

Jennifer Norris

Tel: 0113 245 2388           

E mail: jkn@udl.co.uk