Enforcement of design right
Most disputes relating to infringement of design right
are settled out of court, with the infringer agreeing to stop infringing,
with the owner and infringer agreeing a licence, or with the owner
realising that there is no infringement .
In a case which cannot be settled, the proprietor can
take court action. On the one hand, if the proprietor is successful the
remedies include an injunction to restrain continued infringement,
forfeiture or destruction of any infringing articles, actual damages or an
account of profits, additional damages, and legal costs. On the other
hand, if the design right is unsuccessful, they may need to pay the
infringer’s costs, together with damages if the owner obtained a temporary
injunction while the court action was pending.
In an infringement action, the court will need to be
satisfied that design right does indeed subsist and is owned by the
In the development
of a new product in which design right may subsist, it is therefore
important to maintain good records of what is designed and marketed by
whom and when, and to keep the original design documents or prototypes.