Insurance · 5 November 2018

How to fight a registered design dispute and protect your intellectual property

If you have the evidence to back up your claims, the vast majority of trademark disputes are resolved without taking legal action
Has your intellectual property ever been stolen by another company? Grid Law founder David Walker helps entrepreneurs take legal action against brands and retailers lifting their trademarked ideas.

it’s always great to hear about small businesses who have successfully stood up for their rights and won a legal battle against a much bigger opponent. It shows what can be done and that others shouldnt be put off by these David versus Goliath? battles.

A recent example of this caught my eye when I read that Anthropologie, the US fashion and homewares giant, had apologised to an artist for selling imitations of her work without permission.

So, if you’re a small business owner and you find yourself in a similar situation, what should you do to defend your intellectual property rights?

For the purposes of this article, Im going to assume that you’re the designer of a product and that you’ve taken the proper precautions to protect your intellectual property rights as a registered design. (A registered design protects the aesthetics of how a product looks and I talked about this in more detail in a previous article, A guide to protecting your new ideas without spending a fortune in fees.)

Collect evidence

First, collect as much evidence as you can.

The offending item will be a key piece of evidence so you will need to obtain a sample. However, there is other evidence you will need too. For example, take photographs of your product in-store and screenshots of anywhere online that you see the retailer promoting and selling your product. This could be the retailer’s website, social media or even on other sites such as Amazon.

When you have obtained a sample, study it carefully.

The question the court will ask when considering whether or not the retailer’s product infringes your rights is:

does it produce a different impression on the informed user

This means you can still take legal action against the retailer if they are selling a similar product to your design. The retailer’s product doesnt have to be an exact copy.

If the retailer’s product is a similar design, make a list of all the similarities and differences.

An important point to note here is that when you’re making this list, you must compare the infringing product to the registered design, not a product made to your design. Often there are differences between the design and the final product and it’s the images in the registered design that the infringement will be judged against.

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Nandos

Nando’s vs. Fernando’s: The brand making claims of trademark infringement

After Nando’s launched legal action against a small restaurant it believed had lifted the chain’s branding, David Walker helps business owners protect themselves against similar claims

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Seek legal advice

Next, I strongly recommend you take legal advice so that you fully understand your rights. This is a complex area of law and you have to be careful not to make to make false allegations or groundless threats of intellectual property infringement. If you do, you could be committing an offence yourself so please don’t take to social media and name and shame? the retailer.

If we are confident that you have a strong case and we have sufficient evidence to back up our arguments, we will send a letter of claim to the retailer. We will explain that you are the owner of the intellectual property rights, that we consider their product to be an infringement of your rights and that we want compensation from them for selling the product without permission.

There are two ways of calculating the compensation. You will either claim damages representing the losses you have suffered, or an account of profits. An account of profits is the amount of money the retailer has made from selling products made to your design without your permission. (You can’t claim both. You have to choose and either claim one or the other.)

When the retailer receives the letter of claim, you can expect them to fight back and deny that they are doing anything wrong. don’t be put off by this and be confident in the evidence you have obtained.

In their defence, the retailer will usually raise three main arguments.

If the product isnt an identical copy they will try to point out as many differences as possible. They will try to convince you that their product does produce a different impression on the informed user.

They will reject your claim

Next, they will try to claim that your registered design is invalid. For example, they may try to find other products that are similar to your design. One of the requirements for obtaining a registered design is that the design must be new. If they can find examples of similar designs that pre-date yours they will say that your registered design doesnt fulfil this essential criteria and should be cancelled.

Alongside these arguments, the retailer may also try to put you off taking legal action by frightening you with the risk of having to pay their legal costs. They will say that they will spend a fortune defending the claim and when they are proved right they will try to recover their legal costs from you.

They may even take this a step further and say that they are going to make a ‘security for costs application. Basically, this is an application to the court that says they don’t think you will be able to afford to pay their costs if you lose your claim and therefore they want you to give some sort of guarantee that you can. If you can’t give the guarantee, the court won’t let you proceed with your claim.

In reality, security for costs applications are rare and if you’re running a profitable business you should be able to successfully oppose any such application they make.

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Trademark dispute

 


 
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ABOUT THE EXPERT

David Walker is the founder of Grid Law, a firm which first targeted the motorsport industry, advising on sponsorship deals, new contracts and building of personal brands. He has now expanded his remit to include entrepreneurs, aiding with contract law, dispute resolution and protecting and defending intellectual property rights.

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