Design infringement: What should I do if I believe someone has copied my design?

Businesses sometimes overlook design rights in their brand protection strategies. However, design rights offer invaluable protection for a product’s visual appearance and aesthetics. They cover both two-dimensional designs, such as logos and graphics, as well as and three-dimensional ones, such as the shape of a product. 

In this guide, the intellectual property solicitors at Harper James discuss what evidence you need to prove that someone has copied your design and the steps you need to take to enforce your design right.

Are you sure that your design was copied?

If someone uses a design you developed, they may be liable for design right infringement. Whether or not the third-party design constitutes infringement depends on whether your design is registered or unregistered.

Registered Design 

Registering a design with the UK Intellectual Property Office gives you a monopoly over the use of that design. Having a monopoly means you can object to anyone using the same or a similar design without your permission, even if they created their design independently of yours. 

For someone to infringe on your registered design, their design must not produce a ‘different overall impression’ on an ‘informed user’. Deciding whether a given design satisfies these tests requires a detailed comparison of your design and theirs. 

Given that design right infringement hinges on what a product looks like, it’s helpful to consider a real-life infringement case. 

Marks & Spencer v Aldi 

In yet another supermarket IP feud, Marks and Spencer accused Aldi of infringing the registered design right in its light-up festive gin bottle.

Both Marks & Spencer’s and Aldi’s bottles portray a wintry forest scene and feature a light at the base that illuminates them. When the bottles are shaken, gold flakes disperse. 

The Court agreed with Marks & Spencer that Aldi had infringed its registered design right. The Judge commented that the cumulative common features between the bottles were striking, and the differences were minor. 

Unregistered design 

Unregistered design right arises automatically. You need not register your design to obtain protection, so it can be useful in industries where shelf lives are short, such as fast fashion. These rights only give you the right to prevent copying.

This means that anyone who uses the same or a similar design to yours will only be liable for infringement if they copied it. If they developed theirs independently, there would be no infringement.

How do I prove that my design was copied?

If you have registered your design, you do not need to prove it was copied to succeed in an infringement claim since you have a monopoly over that design.

However, you do need to show that the third party’s design does not produce a ‘different overall impression’ on an ‘informed user’. As we have explained above, this essentially hinges on what the two designs look like.

If you have not registered your design, you must prove copying to establish infringement. Sometimes, design owners have direct evidence of copying, but more often than not, they must rely on circumstantial evidence to prove their case. The evidence must establish that the third party had access to the original work and must have used it when creating theirs because of the similarities.

Examples of the types of evidence that can help you prove your design was copied include the following:

•  Details of how, when, and where you created your design. This might include design sketches, correspondence, and CAD files. 
•  Details of when you first made your design available to the public, for example, at trade fairs or in shops. 
•  Details of the extent to which your design was made available, such as where it was sold. Documentation such as contracts between you and resellers, purchase orders, and screenshots of your design on sale can all help prove this point. 
•  Any other evidence that the third party had seen your design, such as if they attended a trade show at which you exhibited it or bought a product incorporating your design. 
•  A comparison of the two designs highlighting the similarities. 

What should I do if someone copies my design?

As soon as you become aware that someone has copied your design, you should collect the evidence as well as proof of the infringement. For example, you might buy an infringing product or take screenshots of the product on sale. The more evidence you can gather, the better. 

You should not delay seeking legal advice while you gather evidence, since the longer the infringement goes on, the more damage it may cause to your business. If the issue is causing you serious harm, your solicitor may advise seeking an ‘Interim Injunction’ compelling the third party to remove their design from sale pending resolution of the dispute. 

Enforcing your design rights

This is a complex area of law, so expert legal support is usually needed to enforce your rights effectively. However, taking legal advice does not necessarily mean you will end up in Court. In fact, the vast majority of design right infringement cases settle long before trial, with some settling before the design owner even issues a claim. 

Your solicitors will contact the other side to put them on notice of the issue and inform them that you will take legal action if they do not cease their infringements and pay you damages. Some design right cases are resolved at this stage. Others may take longer, but most settle through negotiations between the parties’ legal advisors. 

In the event court proceedings are necessary and you are successful with your claim, you may be entitled to an injunction and damages. An injunction is a Court Order that prohibits someone from doing specific acts. Damages compensate you for the financial losses the infringement caused. Alternatively, you may opt for an account of profits, whereby the third party pays you the profit they made from their infringing activities. 

Summary

With the proliferation of copycat products, being able to prevent others from using your product design is essential in maintaining your distinctiveness and preserving your market share.

Design registration is low-cost and fast and provides a monopoly over the registered design for a prescribed period of time. Securing registrations not only makes enforcement easier but also acts as a deterrent to third-party infringement.