Hi honeychop,
Welcome to the forum. You mention that you've read up on registered design rights, but you don't say if you have in fact registered your design. I will assume you haven't, in which case it is unregistered design right (UDR) which is likely to be of most help. The main details on UDR can be found within
Part III of the Copyright Designs and Patents Act 1988, while the law on registered designs (RDR) is contained in the
Registered Designs Act 1949.
UDR comes into existence, like copyright, when a design is first recorded in some way, such as in a technical drawing or a model or prototype. To qualify for UDR the design must determine the shape and configuration of the whole or a part of an article and it must be original in the sense that it is not closely based on an existing design or something which is commonplace. The features of the shape or configuration must not be determined by the function of the article - in other words the features should be merely aesthetic even though the underlying part may have a purely pratical purpose. And UDR cannot apply to surface decoration.
So one of the first things you need to establish is that your design came into being before that of your rival: in other words establish that you did not in fact copy him. This can done by producing any original drawings or sketches which have a date on them. If you use CAD or similar software then electronic date stamps on the files may be sufficient. If you can't provide a date for the drawings (don't be tempted to add a date now as forsenic examination may reveal this and your case would instantly fail), then the next best thing would be any early correspondence relating to the making of protoypes etc, or failing that, relating to full production. You then need to try and establish when the other company first started producing their product. Bear in mind that unlike RDR, UDR is not a monopoly right, it only prevents the
commercial exploitation of your design by someone else.
Then the next step is look at all the other products on the market with a similar form to yours (ie tall and slim) and see if any of these which pre-date the introduction of your design could be said to be similar enough to undermine any originality in your design. It is best to be as objective as possible in this exercise because if you don't do it, your rival certainly will and if they can convince a court that your design is unoriginal your case will fail.
The devil is most definitely in the detail. The further away from a practical purpose any of your design features fall the greater the chances of your design (or parts of it) being original, and if these same features have been substantially copied by your rival, this strengthens your case. but remember that surface decoration alone does not attract protection, so the fact that your rival may have produced some thing using the same colours for the same parts will probably be discounted when taking into account the overall similarities. (RDR does not have this exclusion so it provides much stronger protection).
I assume that the rival is selling their products within the EU. If so then you can bring a claim, irrespective of where the other product was designed or manufactured. It may be that you can only bring a claim for secondary infringement (see
section 227) against someone who is importing the other product into the UK, if the actual manufacturer does not have a presence in the EU.
This factor (secondary infringement) also has a knock-on effect on any remedy available to you if the importer pleads that he did not know and had no reason to believe that the article concerned was an infringing article. In such circumstances only damages equating to a reasonable royalty can be obtained, and no injunction to prevent further importation or selling of the articles.
However if the infringement is not secondary - ie the firm manufacturing the articles has a presence in the EU - then the remedies are somewhat stronger: an injunction, damages or an account of profits, and an order for delivery up of any stock of infringing articles.
I've mentioned the EU a couple of times, and it is worth mentioning the parallel right known as Unregistered Community Design Right (UCDR) which would be especially useful if the other company is based in elsewhere in the EU rather than the UK. The second advantage of UCDR is that it does not exclude the surface decoration as an aspect of design. You can pursue a UCDR claim through the British courts. There is a useful summary of the differences between UK and comunity design rights on the
IPO website.
Which brings me to my final point. You really don't want to take this matter to court if you can avoid it. It will be expensive, drawn-out and there is no guarantee of success, or indeed of getting any damages paid even if you win. Small, fly-by-night companies who see they are going to lose a case will often file for bankruptcy or winding-up so that there are no assets available to pay you. Meanwhile another company will have bought all their stock and begin trading so starting the whole process up again.
Rather than going straight to a solicitor, having done the tests I mentioned earlier and satisfying yourself that you have a case, go to your local trading standards and in parallel talk to
ACID. Only after those two avenues have been exhausted would I suggest you pay out good money to a solictitor for advice on what to do next.
)))))))