Industrial Design Disputes

Out of Court

In the United Kingdom, the UK Intellectual Property Office (UKIPO) has the jurisdiction to hear the following types of dispute:-

The subsistence of design right,

The term of design right,

The identity of the person in who design right first vested.

The decision of the UKIPO in relation to the above disputes is binding on the parties.

The validity of a Registered Design may generally can be challenged either before a court or out of court on the following grounds:-

It lacks novelty, i.e. it was not new at the time registration was sought

It lacks individual character, its overall impression is the same as that of an earlier design

It is a functional design

It is contrary to public policy or morality,

The registrant is not entitled to the design

It is in conflict with an earlier published design.

Unlike Trade Marks, it is not possible for third parties to challenge an application for the registration of a design.

Before a Court

The holder of a Registered Design has exclusive rights to use it throughout the relevant territory and to prevent third parties from both deliberately copying and independent development of a design with the same overall impression.

Protection of a Registered Design extends to all products, e.g. if your registration is registered in respect of toys, you can prevent the use of a design of the same overall impression on biscuits.

The rights in a European Registered Design (RCD) can be enforced in any of the designated Design Courts throughout the European Union.

The holder of an unregistered Design can only prevent the deliberate copying of the protected design and protection only lasts for three years from when the design was first made available.