While it is important to act quickly whenever you believe that a third party has copied your design, it is critical that you first establish your legal position. If you threaten a third party with court proceedings in respect of their infringement of your registered trade mark, design rights or patents without first ensuring that you are legally entitled to do so then you could be faced with a claim that the threat was unjustified. It could also be embarrassing for you.
The types of issues which you will need to explore to enable you to establish your legal position before writing to such a third party are:
1. What aspect of your article do you claim has been copied?
For example, this could be any or all of:
• the design of the construction of the garment, accessory or shoe;
• the surface decoration;
• the combination of materials used;
• the ‘get-up’ of the article or its packaging; or
• your brand name.
2. What are the similarities and differences between your design and the copy?
You should carry out a comparison of the two designs and make a list of the similarities and the differences, no matter how minor those differences appear to be.
3. Who created the design?
If the design was created by an employee, then you are likely to own any copyright or unregistered design rights in the design. However, if you commissioned the design from a third party then you may not necessarily own the rights in the design and you will need to ensure that they are properly assigned to you before you take any action. The creator of the design may also have ‘moral rights’ in the design which can be asserted against the third party. These can only be waived, not assigned. If you are not the owner of the design, but a licensee, you will need to consider the terms of any licence agreement to see whether you have any rights to take action against a third party infringer.
4. When did you first make your design available to the trade?
Certain unregistered rights, such as Community Unregistered Design Right, only last for a short period of time. Establishing when the design was first made available to the trade (whether as a picture, sample or the finished product) will determine whether such rights still exist.
5. Is your design new and original and is it clearly different from other designs on the market?
If you wish to rely on any unregistered design rights, then you must be able to argue convincingly that the design is new and original and is clearly different from other designs on the market. In this respect, you will need to consider all designs for the particular type of article. For example, if you are concerned with a jacket, you will need to look at all types of jacket available on the market, even if those jackets are not competitive with your jackets (for example, protective jackets worn in the construction industry or jackets worn for extreme sporting).
6. Do you have any registered rights in the design?
If you have any registered rights in the design, for example, a registered design, then you will not need to prove copying.
7. How much have you spent on marketing the design and what level of sales have you achieved?
This information will help you to establish that you have ‘goodwill’ in the design if you intend to bring a claim in passing off. You should also keep copies of all adverts, advertorials and editorials which mention the design in question.
8. When and how did you become aware of the copy being made available for sale?
If you first became aware of the ‘copy’ because a consumer or person in the trade thought that the ‘copy’ originated from your business, then you should keep copies of any relevant correspondence with that person and keep a record of any relevant telephone conversations. If you are able, you should purchase one of the ‘copies’ and keep the receipt. You should also keep all of the clothing tags. If the ‘copy’ garment, accessory or shoe has been advertised in the press, you should also keep a copy of that advertisement. Similarly, if the article is for sale online or through a catalogue, you should retain evidence of this.
If you are able to consider the above points and collect together evidence before consulting a lawyer, your advisers will be able to form an opinion more quickly of whether you are able to take any action against the third party and this, in turn, will help to keep your legal costs to a minimum.