Jim Pearson of of UK and European patent attorneys, Abel & Imray, explains on behalf of the Chartered Institute of Patent Attorneys (CIPA) how the enforcement and/or infringement of IP rights can be handled by a business in the fourth of this series of six articles looking at IP
Intellectual Property rights provide monopolies. The owner of an IP right can exclude other parties from doing something if it falls within the scope of the IP right.
Successful companies act to minimise the risk of infringing the IP rights of others when launching a new product or offering a new service, as well as protecting and enforcing their own IP rights.
Roper Rhodes, one of the UK’s leading independent suppliers of bathroom furniture and products, has experienced both sides of the issues of infringement and enforcement, as is illustrated in the two case studies below.
CASE STUDY 1
Being the enforcer when no rights have been registered
Roper Rhodes became aware that a competitor was offering for sale a bathroom cabinet that looked suspiciously similar to one they had designed – Roper Rhodes’ Ascension Cabinet.
Roper Rhodes’ Ascension Cabinet (above) is a sleek-looking mirrored double-door Aluminium cabinet with vertically-extending fluorescent strip lights on either side of the cabinet.
The competitor’s product (below) looked so similar that the only logical explanation was that there must have been copying – the Chinese manufacturer being suspected as the source of copying.
Two factors stood out:
• the exact correspondence between the external and other dimensions of Roper Rhodes’ product and the competitors, and
• the reproduction of a wholly redundant aspect of the early version of the cabinet (which Roper Rhodes’ designer had wanted to remove, and which appeared to have been slavishly copied).
Roper Rhodes had not sought to register this particular design of cabinet so, on this occasion, had to rely on their Unregistered Design Rights. The case for proving copying was strong however, and Roper Rhodes succeeded in getting complete capitulation on the part of the accused:
• product withdrawn
• remaining stock returned to China
• £6k contribution to costs
• list of customers supplied with the product to date – not that many as it happened.
This was all achieved without the case getting anywhere near a court, which after all is how many IP disputes are handled. IP attorneys and solicitors handling disputes will weigh up the strength of a case, look for solutions or workarounds and will in the vast majority of cases resolve a dispute long before the threat of court proceedings needs to arise.
Roper Rhodes’s Ascension cabinet competitor’s product
Had the shape and appearance of Roper Rhodes’ Ascension cabinet been registered as a design beforehand, the above case might have been settled even sooner. With so many different products being designed it can be difficult to decide in advance which products make it worth investing in registered protection.
Roper Rhodes has however registered the important design features of other cabinets as Registered Designs in the EU. By choosing which parts of the shape of a cabinet are important, it is possible to tailor the protection afforded by the design registration.
For example, some of Roper Rhodes’ EU designs for cabinets have been filed such that the depth of the cabinet is not a feature that limits the scope of protection, nor is the type or location of the hinges of the cabinet. Another advantage of registered design protection is that subsequent independent creation is no defence to infringement of a registered design – there is no need to prove copying to succeed in enforcing a prior-registered design.
CASE STUDY 2
Being accused of infringement
Roper Rhodes have also experienced the enforcement of IP rights from the other side – as the alleged infringer. They had been selling a toilet seat with a quick-release soft-close hinge mechanism.
Unbeknown to Roper Rhodes the particular features used in their hinge to provide its functionality were protected by a European patent owned by a German company. The European patent was granted and in force in the UK as well as other European countries.
A study of the validity of the patent was conducted and an opinion provided on the likelihood of being held by a court to infringe the patent. Negotiations then followed.
The case settled by means of Roper Rhodes paying some modest compensation for past sales, switching suppliers and agreeing to use a different non-infringing design for future products.
There were a few products in Roper Rhodes’s range where it was not so easy to design around, but as a result of taking a conciliatory and amicable approach, the deal reached gave concessions to Roper Rhodes in relation to those products.
Again, a decent settlement was reached without the need for court proceedings. Roper Rhodes had innocently fallen foul of a patent, but once alerted to this news was able – by taking positive action soon enough – to find a solution that was satisfactory for all concerned.
Lessons to learn
• Enforcement of IP rights can be swift, successful and doesn’t need to involve court proceedings.
• Registering IP rights at the right stage can assist in later enforcement against copy-cat infringers.
• Investing in getting strong protection for your company’s IP rights will pay-off later if and when there is undesirable/unfair competition at a later date.
• Unintentionally infringing the IP rights of others happens. But there is often no need to panic or for the matter to escalate out of control.
Your patent attorney or trade mark attorney will be able to advise you on matters regarding the enforcement and/or infringement of IP rights.
For further information on any of the points raised, or if there is a query on any intellectual property matter, Jim would be happy to assist. Email him at firstname.lastname@example.org.
A local patent attorney can be found via CIPA’s website – www.cipa.org.uk/find-a-patent-attorney/