How is a registered design infringed?
A registered design is infringed by any person who is found to be making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied without the owner’s consent.
Which acts are excluded from infringement of a registered design?
A registered design is not infringed by non commercial private acts, acts done for experimental purpose or acts of reproduction for teaching purposes or for making citations compatible with fair trade practices. Once the product has been put on the market in the European Economic Area by the registered proprietor or with his consent, the right is exhausted as clearly the owner can not prevent someone he has sold the product to from selling it on.
It is not an infringement of a registered design for a spare part to use a spare part to repair a complex product to restore its original appearance.
What remedies are available to the registered proprietor?
Relief including damages, injunctions and account of profits are available to the owner for any infringement of a Registered Design.
In proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.
In other words you will not be able to obtain any financial remedy from an infringer without the Registered Design Number on the Design or prominently on its packaging.
Can a design be published before filing and still obtain valid registration?
A design is considered to be made available to the public if it has been published, exhibited, used in trade or otherwise disclosed unless:
(a) it could not reasonably have become known to sector specialists carrying on their normal course of business in the European Economic Area;
(b) it was made to a person other than the designer under conditions of confidentiality;
(c) it was made by the designer during the period of 12 months before the filing date and this period is known as the grace period;
(d) it was made by a person other than the designer during the period of 12 months before the filing date in consequence of information provided or other action taken by the designer; or
(e) it was made during the period of 12 months before the filing date as a consequence of an abuse in relation to the designer.
