Infringement and Validity
It is an infringement of a registered design to use the design of that registration (or any design) that does not produce on the informed user a different overall impression, if the use has not received consent from the owner of the design registration. In this instance, “use” includes manufacturing, selling, importing or exporting goods featuring the design.
The term “different overall impression” is considered equivalent to the term “individual character” which is a requirement for registration. To assess the overall impression created by a design, consideration must be given to other similar designs and the freedom afforded to the designer when producing his design.
A successful action for design infringement can lead to the award of damages or an account of profit, as well as costs against the infringer. Due to the high costs of court actions in the UK, the costs involved for each party can be significant.
There are several defences against an allegation of infringement, the most important of which are that the act is done privately and not for commercial purposes, and that the act is done for experimental purposes.
A registered design is invalid if it does not comply with the requirements for registration, in particular, that the design was new and had individual character at the date of application.
An application for a declaration of invalidity can be filed by any interested party. However, invalidity is usually considered as a defence against an allegation of infringement. This may be in negotiations prior to an action being brought for infringement, or as a defence to such an action.
In order for a declaration of invalidity to be successful, proof must be found of the lack of novelty or lack of individual character. This must include details of the prior publication of the design by a party other than the proprietor (if within twelve months of the application date) or by any other party (if more that twelve months prior to the application date). In order to prove a lack of individual character, an assessment of other similar designs at the application date must be made to show the differences between these other designs and the application, and to demonstrate the degree of freedom available to the designer.