Registered Designs (Infringement and Validity) Flashcards
What does the proprietor of a registered design has the exclusive right to do?
The registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
Using a design includes:
- making;
- offering;
- putting on the market;
- importing;
- exporting; or
- using
a product in which the design is incorporated or to which it is applied, or stocking such a product for any of the above purposes.
NB this is MODUIK but with the following changes: offering to dispose becomes merely offering, disposing becomes putting on the market, keeping becomes stocking for any of the above purposes, and importing is joined by exporting. It can be thought of as MOPUIS (remembering to include exporting with importing).
In determining whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration (just as it is when determining individual character).
The above rights are subject to any limitation (such as a disclaimer or declaration of partial invalidity by a court) attaching to the registration in question.
What are the exemptions to infringement?
- An act which is done privately and for purposes which are not commercial.
- An act which is done for experimental purposes.
- An act of reproduction for teaching purposes or for the purpose of making citations provided that the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design.
- The use of equipment on ships or aircraft which are registered in another country but which are temporarily in the United Kingdom.
- The importation into the United Kingdom of spare parts or accessories for the purpose of repairing such ships or aircraft.
- The carrying out of repairs on such ships or aircraft.
Explain how a spare part can be used without infringing a design right in that part.
The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.
Easier to remember version: The use of a component part to repair a complex product so as to restore the latter’s original appearance does not infringe any registered design right in the component part.
Note the limitation in this law: “so as to restore its original appearance”.
Basically, if a car has a headlight that’s protected by registered design, you can make and use a knock off headlight but only if it’s used to replace the original headlight and the appearance of the car is unchanged. If it’s for changing the colour of the headlight or upgrading the car’s appearance in some other way then it’s not allowed.
Explain prior use rights.
The usual third party rights apply to those using the design in good faith before the priority date (same as patents).
When can action for infringement be taken?
After the certificate of registration has been issued, in respect of any infringing act committed after the registration date (the filing date).
Explain the innocent infringement rules.
Damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.
The mere marking of a product with “registered” or similar is not enough to invalidate this defence unless the design number or an internet link (which is accessible to the public free of charge and which clearly associdates the product with the design number) accompanied the words in question.
However, the proprietor remains entitled to seek an injunction against an innocent infringer.
Same as patents.
What is the “order for delivery up” infringment remedy?
Where a person
- has in his possession, custody or control for commercial purposes an infringing article, or
- has in his possession, custody or control anything specifically designed or adapted for making articles to a registered design, knowing or having reason to believe that it has been or is to be used to make an infringing article
the registered proprietor may apply to the court for an order that the infringing article or other thing be delivered up to him. The registered proprietor may further apply for those goods to be destroyed.
NB this is a standard infringment remedy (patents also have this).
What is an infringing article?
An article is an infringing article if its making constituted an infringement of the registered design in question [which means it must have been made in the UK].
An article [made outside of the UK] is an infringing article if it has been or is proposed to be imported into the UK, and its making in the UK would have constituted an infringement of the registered design in question.
Same as copyright and UDR.
Explain the burden of proof in determining whether something is an infringing article during infringement proceedings.
If it is shown hat an article is made to a design that is or has been a registered design, it shall be presumed that the article was made at a time when the registered design was in force (and is therefore an infringing article), unless proven otherwise (burden of proof is therefore with the alleged infringer).
Same as copyright and UDR.
What are the rules for actionable threats?
Same as patents.
Explain the criminal offences relating to registered designs.
A person commits an offence if, in the course of business, intentionally copies a registered design so as to make a product exactly to that design, or with features that differ only in immaterial details from that design, and the person does so knowing, or having reason to believe, that the design is a registered design, and without the consent of the registered proprietor of the design.
A person also commits an offence if, in the course of business, the person OPUIS (M is covered by the above) such a product wihtout the consent of the registered proprietor of the design, and the person does so knowing, or having reason to believe, that a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly to the design or with features that differ only in immaterial details from the design, and the design is a registered design.
It is a defence for a person charged with one of the above offences to show that the person reasonably believed that the registration of the design was invalid, that the person did not infringe the design or reasonably believed that he did not do so.
The penalty is imprisonment or a fine.
To what extent are pre-filed, post-published registered designs considered to be prior art.
They are considered to be full prior art, but only if UK registered designs.
Who can apply to the registrar for a declaration of invalidity?
Anyone can if the grounds are: the design not falling within the legal definition of a design, lack of novelty or individual character, or excluded matter.
Only the proprietor of a pre-filed, post-published design can apply if his design is the grounds for invalidity.
Only the entitled person can apply if the grounds are lack of entitlement.
A design can also be declared invalid if it constitutes an unauthorised use of a copyright work. Only the owner of the copyright can apply in this case.
From when is invalidation effective?
Retrospectively from the date of registration (which is the date of filing). This differs from cancellation, which is effective from the date of cancellation itself.
