By registering a design the proprietor obtains the exclusive right for 25 years (provided renewal fees are paid every 5 years) to make, offer, put on the market, import or export the design, or stock the product for the above purposes.
These rights are infringed by a third party who does any of the above with the design, for commercial gain.
How to avoid infringing
The Intellectual Property Office can not advise you on whether your design would infringe an existing design. If you are concerned that you may be infringing, you may wish to obtain professional advice from a patent attorney, trade mark attorney or a solicitor.
If you are infringing you should be aware that the owner may be able to sue you. The legal practitioner may also be able to advise you on agreeing, if it is possible, some form of terms between you and the owner of the registered design (such as licensing the right to use the design or buying it from them).
What if someone sues you for infringing?
There are two basic types of defence if someone claims you are infringing their design:
- You are not infringing - what you are doing does not infringe their design, or
- The design is invalid - you can take legal action to challenge the validity of the design. If you win, their design may be cancelled (invalidated). The loser usually has to pay the legal costs of both sides, so think hard before starting legal action.
If someone intends to sue you for infringement, you can try to reach agreement with them on using their design.
I think someone else maybe infringing, what should I do?
Get professional advice. You may be able to get a court order to force the infringer to cease trading. You should then consider whether to negotiate or to take legal action for compensation. However, infringement actions must be taken to the High Court of England and Wales, the High Court of Northern Ireland or the Court of Session in Scotland. The Intellectual Property Office does not handle such actions.