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Defences to Infringement of Unregistered Design Rights

Written by Aneela Akbar on 20 June 2011

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If a person believes that someone has infringed their Unregistered Design Rights they may sue the defendant in the Civil Courts and seek damages.

The defendant may rely on 4 main defences:

Validity

- A person may challenge the validity of the Unregistered Design Rights.

- According to s 246(1) Copyright, Designs and Patent Act 1988 (CPDA); 'any party to a dispute as to the subsistence, can refer the matter to the Comptroller-General of Patents, Designs and Trade Marks, whose decision is binding on both the parties.' The comptroller has certain rules that they must adhere to, which are set out in the Design Right (Proceedings before Comptroller) Rules 1989.

Innocent Infringement

According to s 233 CPDA it is a partial defence for the defendant to show that 'he did not know (and had no reason to believe) that:

a) In the case of primary infringement UDR subsisted in the relevant design, in which case the defendant is not liable in damages, or

b) In the case of secondary infringement the articles concerned was an infringing article, in which case the only remedy against the defendant is an award of damages not exceeding reasonable royalty in respect of the infringing acts.'

Compulsory License

During the last 5 years of the Unregistered Design Right, any person is entitled as of right a license of the Unregistered Design Right (s237(1) CPDA).

Use by the Crown

According to s 240 - 244 CPDA 'a government department may use a design for supplying articles for defence and health -service purposes if it pays compensation to the owner in an agreed amount.'

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