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Buachaill
Buachaill, Barrister
Category: Law
Satisfied Customers: 10185
Experience:  Barrister 17 years experience
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I am after a bit of advice. I have designed a product and

Customer Question

Hello there,
I am after a bit of advice.
I have designed a product and started to market it on social media. I have received a message from a company claiming that it is similar in design to a product they sell.
They have told me they hold the Unregistered design right to it.
The products are only similar on a part of the item. To be more precise they are a series of grooves on an aluminum fishing stick. The grooves are set out in a group of 7grooves that appear 4 times along the mid section of the stick.
Mine have 6 grooves that appear 4 times. They have referred to their design as a feature to stop the fishing line slipping down the stick. I am marketing the feature of my is to aid grip when the user pushes them into the ground.
They have said "if I start selling my product with this feature on them they will pursue any and all legal avenues to protect our Intellectual property".
It was my understanding that design right only covers shape and configuration. It therefore does not cover, in this case the fact that the grooves stop the line slipping down the stick.
With that in mind my question is twofold.
Firstly if I ask the company what exactly is the scope of the unregistered design right (So basically what does it cover) are they obliged under law to have to lay out how I am infringing on their design right?
Secondly if I was to change my design and have for example 1 groove spaced at regular interval say 15 times so it looked completely different to theirs would they be able to stop me?
I have done some research over the last couple of days and I found some information that states if a small or trivial part of an object is copied or similar basically a 'part of a part' then it cannot be defended.
I am only a one man band and they are a very large tackle company with deep pockets. I do not know whether they are trying to scare me off with the threat of legal action or they have a case even if I have any grooves on my stick at all.
The message also had 'Without Prejudice'
Sorry for what must seem an unusual enquiry
Rowan Charnick
Submitted: 13 days ago.
Category: Law
Expert:  Buachaill replied 13 days ago.

1. Dear Rowan, the answer to your first question is that the larger producer of aluminium fishing rods is not obliged to set out what are the aspects of their fishing rod which are being infringed, nor are they obliged to set out the scope of their unregistered design right and what is being infringed. It is only if legal proceedings commence that you can ask the other side what is the scope and nature of their unregistered design right which is being infringed. However, as the law stands, this large tackle company is not obliged to today set out what the scope of their design right is. I appreciate that this leaves the matter open to abuse because legal proceedings can be issued without the design rights in issue being defined. However, this is how the law stands and it certainly favours the stronger party financially. However, you should certainly get a solicitor to formally write to the large tackle company and request that they set out what part of their unregistered design right is being infringed.

Expert:  Buachaill replied 13 days ago.

2. Secondly, if you were to change your design so that your aluminium fishing rod looked completely different to theirs, then they would not be able to stop you. So long as your product is sufficiently different, the law will not impose an injunction upon you preventing you from trading using your different design. For example, if you have no grooves on your stick, there certainly wouldn't be an issue with the unregistered design right. Similarly, if your grooves on your stick were spaced far apart and not in this group of four, then again you would not infringe their design right.

Expert:  Buachaill replied 13 days ago.

3. Finally, communications marked "without prejudice" means that this large tackle company is amendable to negotiation. Marking letters "without prejudice" means that the communications are forwarded with a view towards settlement and don't have to be opened in court if the case is contested. So, you should similarly mark any letters you are replying to "without prejudice" so you won't have to open them if the case is contested. However, I would caution you that you should seek to avoid legal proceedings if this would put you out of business. There is no point in playing hard and fast if you don't have the wherewithal to fight a battle.

Expert:  Buachaill replied 13 days ago.

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