Design rights............

[KeepMoving]

Recently after purchasing one of our products a company contacted us to say the item we were selling infringed on their design rights.

The item was an aftermarket unbranded car part that we have been selling on ebay for 12+ months, there are various sellers of the same product.

We were asked to cease manufacturing and selling the product immediatly to prevent legal proceedings. The item we import from overseas and don't manufacture. Its unbranded and in plain packaging. After looking at the companies website at their part, it does look very similar, nearly exact, both visually, and operation, although their item is engraved with their name and they also have a branded box. They state they manufacture all of their products in the uk.

We asked for proof of their claim and any drawings to back up their claim to be refused and that they will be available in court or could be supplied to our legal representative.

We have not had this companies product to check comparisons, simply just seen pictures from ther website.

We would never knowingly sell an item that breaks any laws, and to be honest never heard of design rights. We have removed these said items from sale immediatly and are going to contact manufacturer for their views. I have noted many other sellers have also ceased selling this product.

Anyone any advice or point me in the direction of who is experienced in this field and how to proceed?

 

[Gecko001]

Yes they might have rights preventing you from selling the product even if the product is not patented. See the following link:

https://www.gov.uk/design-right

If the product has a unique shape, that in itself could make it protected from being copied. Note the above link mentions Registered Designs. However even if the product is not a Registered Design it could still have protection, under the law

 

[F_B]

Design law is tricky and there are two types:

Unregistered design right - this protects the shape and configuration of a product whether external or internal. This lasts for 10 years from the end of the calendar year of first marketing or 15 years from the end of the calendar year the design was first recorded. Unregistered designs are infringed if you copy (or import a copy of) the design, although the burden of proof is on the accusers to prove that you copied it.

Registered design right- protects the shape configuration, surface ornamentation of items which are visible during normal use (i.e. to the driver of the car, not the mechanic). Therefore, if your part is for example, a manifold that is underneath the bonnet it is likely to be excluded from registered design protection. Registered designs last for up to 25 years (renewable every 5) and are infringed if another design, given the design field (e.g. known and old manifolds), does not give a different overall impression on an informed user.

Neither right protects things which are dictated by technical function (e.g. it must be shaped that way) or must fit/cooperate with other items - such as the rest of the car.

Any patent attorney will be able to give you an appraisal of your situation, you're welcome to pm me if you'd like an assessment.