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Inventors: Don’t Delay in Registering Your Design Rights!

In a cautionary tale of which all product inventors should take note, a design student who came up with the idea for an innovative ride-on children’s suitcase that achieved phenomenal, worldwide, success very nearly lost out to a competitor due to a delay in registering his design rights.

The designer worked tirelessly to perfect and promote his product and appeared on the Dragon’s Den television show before succeeding beyond his wildest dreams to the point where, by 2011, 20 per cent of British three to six year-olds owned one of the pull-along cases which can bear any number of animal or insect motifs.

Whilst still at university in 1998, a concept for an early prototype of his design won a prestigious industry award and he was handed a £200 cheque at a public ceremony. That event came back to haunt him in court after a Hong Kong-based company (the defendant) began selling a rival piece of children’s luggage on the European market.

Through his company, the designer argued that the defendant’s product infringed a community registered design (CRD) protecting his product. However, the defendant submitted that the public disclosure of the design concept at the award ceremony preceded registration of the design in 2003 and that the CRD was therefore invalid by reason of the prior publicity.

In rejecting that argument and upholding the designer’s claim, the High Court found that that the prior exposure was ‘obscure’ and that the concept disclosed in 1998 would not have made it possible even for those who were present at the ceremony to find out about the existence of the prototype and certainly not its actual design.

The Court noted that it was not disputed that the product protected by the CRD was an innovative design and that it had ‘inspired’ the defendant’s rival product. The overall impression created by the defendant’s product was similar to the protected design and the Court was not prepared to accept that there had been no relevant copying.

Although there was a stylistic resemblance between the packaging of the rival products, the Court noted that there were obvious differences and rejected the designer’s claim that copyright in the relevant artwork had been infringed. The defendant, however, conceded that the safety notice attached to its product was in breach of copyright.

The Court’s decision opened the way for the designer to seek an injunction, blocking the sale of the rival product in Europe, as well as delivery up and destruction of any offending items in the defendant’s possession. The designer was also given the option to either seek substantial damages for infringement of the CRD or an account of profits that the defendant had made through the sale of its product in Europe.