Where someone manufactures or sells a design without the authorisation of the designer, they may be liable for design infringement.
- An important first question is to assess whether or not the design registration is in fact infringed. This can be a difficult matter to assess and it is a good idea to seek professional advice.
- It is often possible to defeat design infringement claims on the basis that your design was already known and should not have been registered. This is because design registries generally do not conduct searches to establish whether designs are new before registering them.
Design Ownership Disputes
When a work or product is created, the design usually belongs to the person who commissioned it, while the copyright belongs to the person who designed it. The law is being aligned so that both IP rights will be owned by the same person.
- Where a work is created by two or more people, complicated questions may arise as to who owns the design.
- If you are involved in an ownership dispute concerning a registered design it can save time and energy to immediately seek legal advice to find out whether there is a simple answer as to who owns the design
Lawyers will want to know about the circumstances that existed when the design work was first commissioned and whether a written contract was used. If so, the contract will be perused to determine whether it adequately answers questions of ownership of the design.
Where no written contract was used, the dispute will be more time consuming to resolve.
Design infringement proceedings
The first step to take against third parties who infringe your design rights is to send a cease and desist letter. However, it is important to take professional advice before sending such a letter.
Design disputes are normally resolved using the type of dispute resolution procedures available for other IP disputes and intellectual property infringements.
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