A registered design gives you a number of options that you do not have if you only have an unregistered design.

The first step in stopping an infringer is typically to identify the infringer and obtain a sample of the product. This makes it much easier for you and your attorney to check to make sure that the competitor use of the product or design is actually infringing use.

You and your attorney can then check to see if the alleged infringement falls within the scope of your rights.

Once this has been checked, the next action is typically sending a formal warning letter. Although not strictly a legal requirement, it is the normal practice to identify your rights, outline the infringing conduct, explain why the conduct is an infringement of your rights, and request that the infringer stop infringing, agree not to infringe again, and/or provide compensation for in the infringement.

Sometimes this brings about the result that you want, sometimes it does not. If not, then there are further actions that can be taken to enforce your rights.

Starting proceedings against an infringer is not a decision to be taken lightly. You have to decide whether it is worth the cost. You should weigh up issues such as:

• The value of the design to your business;
• The costs that will likely be involved;
• The other, non-financial impacts that enforcement will have on the business;
• The extent to which the infringer can defend the action and/or pay any damages or costs.

Just because you have a registered design and someone makes a product that is visually similar, does not mean that you have to take action. However, it makes sense to take action to protect your design rights if they are valuable and integral to your business.

Wilson Gunn can advise on all aspects of intellectual property protection. Please get in touch to speak to a member of our team about design protection.