How do I protect against design infringement?
Design registration provides owners of that design with a monopoly to exploit the product’s unique visual appearance for 10 years and to the exclusion of all others. This right is enforceable against others once the registration has been certified.
Given the value and investment in a design, it is important to protect your design rights from infringement through effective dispute resolution techniques or, if needed, design litigation. Disputing the unauthorised use of your design and preventing further infringement offers the following benefits:
1. protects your market share
2. protects design-dependent revenue
3. protects your market reputation from similar but inferior products
4. increases the commercial value of your design and business.
What are the different types of design infringement disputes?
A design infringement dispute can arise in two ways:
- A competitor, without your authority, uses a design on a product that is identical or substantially similar in overall impression to your registered design.
- A competitor considers that you are using a design on a product that is identical or substantially similar in overall impression to their registered design.
Conduct constituting design infringement includes making, hiring, selling or otherwise disposing of the design, or otherwise offering to do so. Getting specialist advice on how best to deal with design disputes is vital. Defending unfounded claims of design infringement often offers these same benefits. An appropriate defence strategy to protect your design is equally as important as enforcing your rights against another. Defended in the right way (to avoid litigation or protracted pre-litigation events) can minimise time and costs associated with disputes of this nature.
How do I resolve a design infringement dispute?
There are two options for resolving an infringement of your design, or a claim of infringement against you by other party.
1. Design Dispute Resolution
While an aggressive registered design litigation strategy might be the best approach in certain circumstances, often the preferable commercial outcome (particularly when defending a design infringement claim) is to use alternative dispute resolution (ADR) methods such as negotiation or mediation to facilitate communication between the parties to reach a settlement to the dispute. If you are the design rights holder, we will prepare an appropriately worded warning notice or letter of demand to be sent on your behalf. If you have on the other hand received a letter of demand, we will provide you with clear advice on where you stand and develop an appropriate response to be sent on your behalf. In both instances, these initial correspondences will then open the lines of communications between the parties (or their lawyers) which creates an opportunity to explore whether a settlement commercially favourable to you can be achieved in the early stages of the dispute. In the majority of cases, design infringement disputes will settle without the need for legal proceedings being commenced. Our intellectual property and design lawyers have a strong track record of achieving commercially relevant and favourable results for our clients.
2. Design Litigation
While we always put in place strategies to explore settlement opportunities, sometimes the adoption of an aggressive design litigation strategy is unavoidable and/or a necessary commercial strategy. At the start of any litigation we provide you with a clear roadmap showing you how a matter might unfold, with the time frames and costs associated with each of those stages. We keep you informed of progress and fixed fees for every stage of the litigation process with what we call a Fixed Fee Litigation Structure. Also with our fixed fee project based approach it means you can take the matter in stages and retain certainty, control and transparency on your legal spend.
Our intellectual property and design lawyers have litigated extensively in the Federal Court of Australia (the appropriate forum for registered design infringement proceedings) and bring a wealth of intellectual property experience to devise the strategy best tailored to your needs and those of your business. We also work with a close network of overseas design lawyers in all key jurisdictions meaning we can assist you with any international design dispute issues in an efficient way with a clear focus on achieving the right outcome.
HOW CAN ACTUATE IP ASSIST?
It is vital that you obtain accurate, specialist advice on how best to deal with registered design disputes and registered design infringement claims for your particular circumstances. Actuate IP will work with you to manage the design dispute resolution process and if necessary the litigation process. As a starting point we will invest time at the outset to understand the nature of your dispute and how it relates to your business and what your business wants to achieve from the dispute – whether you are enforcing your rights or defending claims of infringement made by another business against you. With this understanding we will provide you with a detailed and considered Fixed Fee Proposal that provides you with initial recommendations and fixed fee options on how to approach the dispute in a way that will achieve the right outcome for you. You can then decide whether our firm will be the right fit for your business.