Raising the ante against infringements of your registered designs

As from 1st October 2014, the stakes will be raised for those who deliberately copy designs of others registered in the UK or European Community.

Written by the Intellectual Property team at Taylors Solicitors.

Both designers and those commissioning registered designs may have felt the civil remedies for infringement do not go far enough to deter the ruthless from slavishly copying the fruits of their hard work and investment. Well, that is about to change as a new criminal offence will be introduced to catch such wrongdoers.

The offence can result in large fines or even (in the worst cases) imprisonment for up to ten years. It will catch those who intentionally copy the UK or European Community registered designs of others, when they know or have reason to believe the design they are copying is registered.

Further, this ‘copying’ offence is backed up by an additional criminal offence for those who intentionally use an unlawfully copied design. So palming off the manufacture to someone else is not going to get a business off the hook or provide a loophole to be exploited.

The offences though are limited to intentional copying or use in the course of business activities, and will not apply to those who copy an article for private use only, or are unaware they have copied a registered design or used such copy. Likewise, the copy must be exactly the same as the registered design or have only immaterial differences.

The new offences should be welcomed by those who hold registered designs as a further potential weapon in their arsenal. However, the offence will not have blanket application to all infringements and is likely to be triggered only in blatant cases of intentional copying.

It is also worth bearing in mind that the offence will require proof of guilt to the criminal standard of ‘beyond reasonable doubt’ – which is much higher than the civil standard, namely on the ‘balance of probabilities’. Criminal guilt also does not necessarily result in adequate financial recompense to the right holder.

So in practice, victory against the infringer on the (lower) civil standard of proof will still be necessary in many cases. However, the claimant should seek inclusion of a ‘penal notice’ in the terms of any undertaking to stop using the relevant design, which should then be incorporated into a court order. A penal notice is a term which provides that if the infringement is repeated then committal to prison looms. This method could kill two birds with one stone by achieving financial remedies but also making the threat of criminal sanctions for further breach very real. Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).