What defences are available?

A registered proprietor will almost never institute legal proceedings for the infringement of his intellectual property without having an attorney send a formal letter of demand. Typically, this letter will explain the proprietor’s claimed rights, describe the conduct complained of, state why the conduct infringes the proprietor’s rights, and finally demand that the conduct cease (and usually various other things). The person is given a reasonable period within which to comply with the demands — or face legal proceedings.

If you receive such a letter, consult your attorney immediately.

Assuming you have received such a letter, there are a few options. Of course, just because a lawyer has sent a letter of demand does not mean that you are obliged to do anything. You can ignore it completely, if you want to, but that would be a bit reckless.

If you are threatened with an infringement claim, consider how committed you are to the design. If you definitely want to keep using it, you will need to devise a defence strategy. We look at the possibilities below.

On the other hand, if you are not absolutely committed to using the design, it may be cheaper (and more convenient) to change. In most cases, the proprietor will agree to a phase-out period, and the circumstances and conditions can be negotiated.

It generally takes several months to get a court interdict. The design proprietor will know that it is better to agree to a reasonable phase-out period, which gives it a certain outcome. If the proprietor refuses, it will have to take you to court — which can take several months, and the outcome is never certain with litigation.

Four categories of defensive measures are available.

Declaration of non-infringement

You can get a judgment from a Court which declares that your article does not infringe a particular design. This is not really a defence to a threat of infringement, though. You can apply to Court for the declaration order even if you have not received a demand.

You must show that:

you have written to the registered proprietor, giving full details of your product and asked for an acknowledgement that your product does not infringe the design; and
the proprietor has failed to give the acknowledgement.

Read section 36 of the Designs Act.

It is not necessary to get such a declaration. However, if you are uncertain it will give you peace of mind.

Groundless threats of infringement

If you are threatened with infringement proceedings, you can apply to Court for an order declaring that the threat is unjustified and for an interdict forbidding a repeat of the threat.

A letter, advertisement or other communication that is merely a notification of the existence of a design registration is not a threat of infringement.

Read section 37 of the Designs Act.

Contest on substantial similarity

Keep in mind that the onus to establish the requisites for infringement is on the claimant (see the summary in Determining infringement). The question of substantial differences is probably the most important and often the most challenging aspect of design infringement cases.

Invalid registration

If the design registration is invalid, it follows that the rights cannot be enforced. There are several grounds for contesting the validity of a registration. They can be raised as a defence to an infringement claim, or to support a counter-application to have the registration cancelled (revoked).

Put differently, if you are sued for design infringement, you can raise invalidity as a defence without having to revoke the registration (but you can do both).

The possible grounds of invalidity are the following:

The initial application for registration was filed by someone who was not entitled to claim to be the proprietor.
The registration is in fraud of (i.e. conflicts with) the rights of the person raising the defence.
The design was not new and original (if an artistic design).
The design was not new and/or is commonplace (if a functional design).
The initial application for registration contained, to the proprietor’s knowledge, a materially false statement or representation.
The initial application was not made in the manner required by the Designs Regulations.

Read section 31 of the Designs Act.

As to be expected, you should get expert advice about these grounds. By far the most common attack is that based on novelty; in other words, that the design was not new. We look at this in more detail in the next section.

Acquiescence

As I noted in the section on trade marks, technically, this is not a defence against infringement but it has a bearing on whether the Court will exercise a discretion not to grant an interdict. If the registered design owner has known about your use of the design for a long time and has let you continue without complaining the Court may refuse to grant an interdict, because it would be clearly unfair. Worse still, the proprietor might have advised you that they do not object to your use of the design — they are then said to have ‘abandoned’ their rights to bring a claim against you.