We have considerable experience in design and enforcement matters having acted for design owners in a variety of industries in design enforcement and revocation litigation and can provide you with sound legal and technical advice on design enforcement matters.

Enforcing a registered design

If someone copies, imports, sells or uses a registered design for the purpose of trade, then an infringement has occurred. Even keeping the design with the intention of trading it amounts to infringement.

A registered design cannot be enforced until it has been certified. In order to certify the design, the local patent office must examine it and determine that it is new and distinctive. In many countries, legislation allows a party threatened with infringement to seek injunctive relief and damages if the threat relates to a registered but not yet certified design. However, even if a design is not registered, action might still be taken to protect the goodwill and reputation a trader has acquired by the distinctive shape and configuration of a product.

Design re-examination and revocation proceedings

Actions for design infringement are often met with counter-claims seeking to revoke the registered design alleged to have been infringed. Typically the claim is made on the grounds the design is not new and distinctive, in light of registered and unregistered designs that were publicly available before the filing date of the registered design.

A design may also be revoked if the local Patent office re-examines the design and finds that the design is not new and distinctive in light of the prior art. Anyone can ask to re-examine a registered and certified design. A party requesting re-examination will usually only do so if it has details of prior designs relevant to the newness and distinctiveness of the design.

We can assist with making requests for re-examination and responding to adverse reports as a result of re-examination.

Validity and infringement opinions

Any design enforcement strategy should be firmly based on advice about whether the design of a product infringes a registered design and whether the registered design is valid. We provide validity opinions, including designs searches to assess whether designs are new and distinctive, and infringement opinions to ensure that clients can be protected.