Letter before claim: unregistered design right


In IP Dispute Resolution in England and Wales: why sending a US style “Cease and Desist Letter” or old style “Letter before Action” may not be a good idea JDSupra, 13 Jan 2012 I discussed the requirements of the Practice Direction – Pre-Action Conduct (“the Practice Direction”) and the Code of Practice for pre-action conduct in intellectual property disputes (“the Code”).

The key provision of both instruments is that the parties exchange information and documents before the start of proceedings. Such exchange enables the parties in many cases to resolve the dispute without recourse to litigation. It also reduces the cost and delay of litigation in those cases where the exchange of information and documents does not resolve the dispute. The exchange of information and documents is started by a letter before claim.

Compliance with the Practice Direction is to be recommended in most circumstances because the court has power to penalize non-compliance with a range of sanctions including disallowance of costs or orders for the payment of extra costs. Compliance is particularly advisable In intellectual property cases in the Patents County Court because CPR 63.20 (2) requires the claimant to state whether he or she has followed the Practice Direction in the particulars of claim. In addition to all the other sanctions claimants who do not comply with the Practice Direction automatically extend the time for defendants to serve their defences in the Patents County Court.

This is a letter before claim in a design right case. Design right is a peculiarly British intellectual property right that protects subsists in original design. Design for this purpose means “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”; and a design is original if it is the product of independent skill of labour. A design need not be novel to be original but no design can be original if it was commonplace in the design field in question at the time of its creation. Design right can subsist only if a very narrow nationality or residence qualification is satisfied. Thus, the designs that were created in most of the world are generally unprotected. The terms of design right is very short: 15 years from the year of creation or 10 when articles made to that design are marketed and in the last 5 years of the design right term anyone in the world including an infringer can apply for a licence to make articles to the design as of right.

A hazard of which parties and their advisers should be aware is that threats to sue for infringement of design right is actionable unless the threat is in relation to a complaint of making things to a design or importing things that have been made to a design.

This letter is drafted for a solicitor or patent or trade mark attorney litigator but it can easily be adapted by a litigants person. I shall add shortly letters before claim for other

causes of action and draft acknowledgements and responses.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jane Lambert, NIPC | Attorney Advertising

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