Unregistered Designs (Infringement) Flashcards
How does exhaustion of rights compare to patents and copyright?
It applies from the EEA to the UK but not vice versa - same as patents and copyright.
What is primary infringement of an UDR?
Reproducing (i.e., copying) a design for commercial purposes by making articles exactly or substantially to that design, or by making a design document recording the design for the purpose of enabling such articles to be made (but see S236 below), infringes the URD in the design.
Someone without a licence also infringes by authorising someone else to do any of the above.
It is necessary to who copying in order to succeed in a primary infringement action. (This is why it is good practice to have a random dent or bump in your design somewhere so that someone using your design as a mould to create quick and cheap copies can be caught out.)
S236: Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.
Basically, wherever there is an overlap between copyright and UDR, the copyright overrules the UDR. An example is design drawings: they have copyright as artistic works and UDR subsists in the design they disclose. S51 specifies that making 3D articles to the design does not infringe the copyrigiht in the design drawings, but S236 specifies that copying the drawings themselves (indirectly or directly) would be an infringement of the copyright only and not the UDR. Thus, copying a design document would only be a primary infringement of an UDR if there were no original design drawings in the first place.
See the examiners’ comments under Q6 of the 2004 D&C paper: https://www.cipa.org.uk/wp-content/uploads/2021/04/2004-DC-Examiners-Comments.pdf
Define “infringing article”.
An article is an infringing article if its making constituted an infringement of the UDR in the 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 UDR in the design in question.
(Same as copyright.)
NB design documents themselves are not considered as infringing articles even if their making would have been a primary infringement.
Explain the burden of proof in determining whether something is an infringing article during infringement proceedings.
If it is shown during infringement proceedings that an article is a copy of a design and that an UDR subsists in the work or has subsisted at any time, it shall be presumed that the article was made at a time when an UDR subsisted in the work (and is therefore an infringing article), unless proven otherwise (burden of proof is therefore with the alleged infringer).
(Same as copyright.)
What is secondary infringement of an UDR?
A person infringes a design right in a design if, without the licence of the design right owner, they:
- import into the UK for commercial purposes;
- have (i.e., keep) in their possession for commercial purposes; or
- sell, let or hire or offer or expose for sale, let or hire, in the course of a business;
an article which is and which they know or have reason to believe is an infringing article (thus, knowledge is a factor in secondary infringement, as opposed to primary infringement).
What are the remedies for infringement?
Same as for patents.
Explain the rules around innocent infringement of an UDR.
For innocent primary infringement, no damages are payable if the defendant can show that, at the time of the infringement, they did not know and had no reason to believe that an UDR subsisted in the design [and that the design qualified, obviously].
Ignore the following bit, because it doesn’t make sense. If they didn’t know then there is no secondary infringement.
For innocent secondary infringement, damages are capped to a reasonable royalty (and no other remedy is available) if the defendant can show that the infringing article was innocently acquired by them or a predecessor in title (i.e., they did not know and had no reason to believe that the article was an infringing article).
What are the exceptions to infringement?
The following acts do not infringe an UDR:
- an act done privately and for purposes which are not commercial;
- an act done for experimental purposes;
- an act of reproduction (i.e., copying) for teaching purposes or for the purposes of making citations [unknown meaning, just rote learn], provided in either case that the act is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design, and mention is made of the source.
How does the law around threats compare between designs and patents?
It’s the same [it was harmonised by the Intellectual Property (Unjustified Threats) Act 2017].
