Registered Design Infringement
Discussion
Long story short, I used to import a folding trolley from China many years ago, sold it to some of the big 4 but then dropped it once everyone jumped on the band wagon and it got trashed and the components became more plastic and less metal etc.
Anyway we decided to give it a go again a couple of years back, so one of my customers who is an eBay trader has had the listing taken down because it infringes on the design right of some woman down south.
I just dont understand how she can have the design right of a product (she only registered it in 2017) that we were importing about 15 years ago.
What's more she can go on eBay and start telling eBay that people are infringing her design right, surely she'd come to me (and other large importers with a name on the product) since I have a warehouse full of them?!
Anyway we decided to give it a go again a couple of years back, so one of my customers who is an eBay trader has had the listing taken down because it infringes on the design right of some woman down south.
I just dont understand how she can have the design right of a product (she only registered it in 2017) that we were importing about 15 years ago.
What's more she can go on eBay and start telling eBay that people are infringing her design right, surely she'd come to me (and other large importers with a name on the product) since I have a warehouse full of them?!
I am working with clients (I'm a patent and design attorney) who are in your customer's exact position.
Like in your customer's situation, the claimants were asserting registered designs that are clearly invalid. The claimants were direct competitors and clearly knowingly filed invalid designs (the UKIPO doesn't examine designs for validity). My clients could not ignore the complaint and put their products back up due to 'strikes' rules. eBay does not decide on the merits and requires proof of invalidation or proof of non-infringement.
All in all, a very unfair situation. This seems to be an increasingly common bullying tactic.
It also explains why they contacted your customer rather than you. Your customer is more vulnerable because he/she uses eBay.
What can be done to stop it?
Find the best evidence of invalidity under the appropriate section of the appropriate statute, put the claimant on notice of invalidation proceedings and their associated cost consequences, and then apply for invalidation at the relevant patent office. Obviously, the hope is that the letter will be enough that invalidation proceedings wouldn't be required, although I wouldn't have high hopes.
Attorney costs for preparing and filing the invalidation proceedings depend on the strength of the evidence of invalidity. For UK designs, part of your costs could be claimed back (if the other side was put on notice first), although UKIPO doesn't have as much power to enforce cost orders so it may require debt recovery efforts.
If the design is invalidated, eBay may be persuadable not just to dismiss the complaint, but also to put a 'black mark' against future Vero access to the complainant.
Some may advise to register an invalid design and counter-strike the other side, to force a settlement. Your customer should NOT do this - they could come off worse than the claimant. I am currently unpicking a situation where a client and his competitor were doing this to each other until my client no longer had a shop left, and that's far from the worst scenario.
Like in your customer's situation, the claimants were asserting registered designs that are clearly invalid. The claimants were direct competitors and clearly knowingly filed invalid designs (the UKIPO doesn't examine designs for validity). My clients could not ignore the complaint and put their products back up due to 'strikes' rules. eBay does not decide on the merits and requires proof of invalidation or proof of non-infringement.
All in all, a very unfair situation. This seems to be an increasingly common bullying tactic.
It also explains why they contacted your customer rather than you. Your customer is more vulnerable because he/she uses eBay.
What can be done to stop it?
Find the best evidence of invalidity under the appropriate section of the appropriate statute, put the claimant on notice of invalidation proceedings and their associated cost consequences, and then apply for invalidation at the relevant patent office. Obviously, the hope is that the letter will be enough that invalidation proceedings wouldn't be required, although I wouldn't have high hopes.
Attorney costs for preparing and filing the invalidation proceedings depend on the strength of the evidence of invalidity. For UK designs, part of your costs could be claimed back (if the other side was put on notice first), although UKIPO doesn't have as much power to enforce cost orders so it may require debt recovery efforts.
If the design is invalidated, eBay may be persuadable not just to dismiss the complaint, but also to put a 'black mark' against future Vero access to the complainant.
Some may advise to register an invalid design and counter-strike the other side, to force a settlement. Your customer should NOT do this - they could come off worse than the claimant. I am currently unpicking a situation where a client and his competitor were doing this to each other until my client no longer had a shop left, and that's far from the worst scenario.
Edited by Grrbang on Tuesday 12th October 23:40
Grrbang said:
I am working with clients (I'm a patent and design attorney) who are in your customer's exact position.
Like in your customer's situation, the claimants were asserting registered designs that are clearly invalid. The claimants were direct competitors and clearly knowingly filed invalid designs (the UKIPO doesn't examine designs for validity). My clients could not ignore the complaint and put their products back up due to 'strikes' rules. eBay does not decide on the merits and requires proof of invalidation or proof of non-infringement.
All in all, a very unfair situation. This seems to be an increasingly common bullying tactic.
It also explains why they contacted your customer rather than you. Your customer is more vulnerable because he/she uses eBay.
What can be done to stop it?
Find the best evidence of invalidity under the appropriate section of the appropriate statute, put the claimant on notice of invalidation proceedings and their associated cost consequences, and then apply for invalidation at the relevant patent office. Obviously, the hope is that the letter will be enough that invalidation proceedings wouldn't be required, although I wouldn't have high hopes.
Attorney costs for preparing and filing the invalidation proceedings depend on the strength of the evidence of invalidity. For UK designs, part of your costs could be claimed back (if the other side was put on notice first), although UKIPO doesn't have as much power to enforce cost orders so it may require debt recovery efforts.
If the design is invalidated, eBay may be persuadable not just to dismiss the complaint, but also to put a 'black mark' against future Vero access to the complainant.
Some may advise to register an invalid design and counter-strike the other side, to force a settlement. Your customer should NOT do this - they could come off worse than the claimant. I am currently unpicking a situation where a client and his competitor were doing this to each other until my client no longer had a shop left, and that's far from the worst scenario.
Thank you for your reply. Very helpful. Like in your customer's situation, the claimants were asserting registered designs that are clearly invalid. The claimants were direct competitors and clearly knowingly filed invalid designs (the UKIPO doesn't examine designs for validity). My clients could not ignore the complaint and put their products back up due to 'strikes' rules. eBay does not decide on the merits and requires proof of invalidation or proof of non-infringement.
All in all, a very unfair situation. This seems to be an increasingly common bullying tactic.
It also explains why they contacted your customer rather than you. Your customer is more vulnerable because he/she uses eBay.
What can be done to stop it?
Find the best evidence of invalidity under the appropriate section of the appropriate statute, put the claimant on notice of invalidation proceedings and their associated cost consequences, and then apply for invalidation at the relevant patent office. Obviously, the hope is that the letter will be enough that invalidation proceedings wouldn't be required, although I wouldn't have high hopes.
Attorney costs for preparing and filing the invalidation proceedings depend on the strength of the evidence of invalidity. For UK designs, part of your costs could be claimed back (if the other side was put on notice first), although UKIPO doesn't have as much power to enforce cost orders so it may require debt recovery efforts.
If the design is invalidated, eBay may be persuadable not just to dismiss the complaint, but also to put a 'black mark' against future Vero access to the complainant.
Some may advise to register an invalid design and counter-strike the other side, to force a settlement. Your customer should NOT do this - they could come off worse than the claimant. I am currently unpicking a situation where a client and his competitor were doing this to each other until my client no longer had a shop left, and that's far from the worst scenario.
Edited by Grrbang on Tuesday 12th October 23:40
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