Copyright Aid

Hi everyone,

It's my first post and I'm hoping one of you can help me!

I've been selling a product on eBay for around 2 years without issue. It's a product which is designed in China and produced in China, I ship it over here. I am also aware that there is a seller in the US who has sold this product for even longer than me produced from the same factory in China.

In the past few months a few other sellers in the UK have been selling this item through eBay, fair enough I thought, you can't have all the market forever. One seller in particular took it upon himself to completely copy my entire listing word for word, so I had his listings removed as it was a breach of eBay policy, understandably.

This week I have been contacted by a random person on eBay stating he owns the design rights to the product. I questioned this and it became apparent that he has infact registered this design (a design which is made in China which I started selling years before him) as his own design, and the IPO have indeed put this through, so ridiculously, now he owns the design.

So, I have contacted the IPO who told me I can contest this and get it cancelled with proof that I have to show that he did not design this item. Of course, I will do this and I am urging the other eBay sellers to do the same (after all, it's not fair on them either) as I have sufficient evidence to suggest that he did not infact design this item at all. What concerns me is, should I take down my listings in the meantime whilst he still technically owns the design (albeit illegitimately) or should I tell the guy whose 'design' it is that I am going to contest his registration of the product as I have proof it is not his design and then suggest to him that should he get my listings removed, I will sue him for lost earnings once the IPO cancel the design right?

Any advice would be appreciated. Many thanks.

Hi Cookiemonster,
You don't mention and indeed you may not know if the person who registered the design has any connection with the product. The fact that the product is being made in China does not of itself prove that the design was made there. The Chinese have something of a reputation for taking other people's designs and manufacturing products to the design (or for making copies which are so close that they infringe a design right). So conceivably the registrant may well be the legitimate designer or his authorised agent (more on this in a moment), and he may have legitimately taken out the registration in order to try and protect his intellectual property in the face of a Chinese rip-off.
I mentioned the role of an authorised agent. A foreign national (ie someone not living in the UK) cannot register a design here, but he may appoint a UK agent to do it on his behalf. So for instance if the designer is Chinese he may possibly have appointed the registrant to do this on his behalf, and if so the registration would be difficult to oppose. But that said if the Chinese designer had also authorised the manufacture of the products in China, then you would not be infringing the design right by importing legitimate copies.
So let's assume that none of that applies and the registrant is some sort of design troll. Opposing his registration should be relatively straightforward, especially if the design has been registered in China. Under the Paris Convention for the Protection of Industrial Property (to which both Britain and China are signatories) Britain will recognise the Chinese registration as taking priority over the UK application if it was filed earlier that the UK application. But if there was no registration in China, it may be that the registrant arrived at the design fairly and independently of the Chinese product, in which case he could have a monopoly right to exploit the design within the UK.
As for your specific question about whether you should stop trading in this product, much depends on the confidence you have in your grounds for opposing the registration. It is a defence against a claim of infringement that the registration was invalid - in this instance because the registrant was not the owner of the right within the meaning of section 2 of the Registered Designs Act 1949.
Unfortunately even if you are successful in defeating a claim of infringement due to the invalidity of the registration, you cannot claim damages for groundless threats under Section 26 because s 26(2A) specifically exempts a threat made in connection with the importation of allegedly infringing goods.
That would not stop you bringing a general claim for lost earnings etc due to his allegation but you should seek specific legal advice on this aspect as I don't have all the relevant details.
For general advice on how to proceed, it might be worthwhile contacting Anti Copying in Design (ACID). Although they are mainly there to assist designers with protecting their designs, if there is clear evidence that this was a false registration they may well be able to assist.