‘A registered Community design confers on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having consent from using it in the course of trade.’
Article 19 of the Community design Regulation
Make sure no one tries to protect an identical or similar design. Search design registers for designs that are identical or similar to yours.
Monitor the marketplace by checking the press, trade publications and the web for companies using your design without authorization. It may be that illegal copies of your products are on sale or that competitors are using designs that are similar, but not identical, to your RCD. In both cases you are entitled to enforce your rights.
Illegal use of your design can be both on physical goods and in advertising media, including websites used to promote sales.
Consider making an application for customs monitoring with your national customs authority. Customs officers, when confronted with potentially infringing products, can consult databases in which all applications are centralised, allowing them to highlight potential infringements and seize counterfeit goods.
Once an infringement has been detected, consider sending a ‘cease and desist’ letter, informing your competitor about the conflict. This makes your competitor officially aware of your rights and lets them know that if they continue to disregard your rights they might face further action.
In some cases you may be able to negotiate a settlement through mediation and arbitration. These services are suited to disputes between legitimate businesses where both sides are looking for cost-effective and practical solutions.
If your attempts to warn or negotiate with the alleged infringer fail, there are other legal measures available to combat infringements such as preliminary injunctions and precautionary seizures to prevent illegal use of your design. In all cases, enforcement action under civil law must be brought at national level in the relevant EU jurisdictions. However, one advantage of the RCD is that one court is competent to order such a measure in all Member States.
Measures under criminal law apply when counterfeiting and piracy activities are involved. You will need to contact national enforcement and prosecution authorities in the relevant EU jurisdiction.
Please note that criminal law enforcement rules for intellectual property have not been harmonised in the EU. Enforcement actions under criminal law are brought at national level using the relevant national law. As a result, the options available at European level for criminal law enforcement vary considerably and it is not always possible to apply criminal law enforcement measures in the same way in every country.
Source: OHIM
