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Kasare
Kasare, Solicitor
Category: Law
Satisfied Customers: 1339
Experience:  Solicitor, 10 yrs plus experience in civil litigation, employment and family law
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I have an enquiry related to a ip design and a product we

Customer Question

Hi I have an enquiry related to a ip design and a product we stock
JA: Where are you? It matters because laws vary by location.
Customer: Liverpool
JA: What steps have you taken so far?
Customer: i have spoken to the ip gov design dept and they said seek legal advice they can answer individual questions *cant
JA: Anything else you want the Lawyer to know before I connect you?
Customer: no I just need to know where I stand on this design matter I’m only a small business and I have a pretty angry threatening email from a company telling me I’m infringing their design when I’ve only bought something and not had it manufactured
Submitted: 11 days ago.
Category: Law
Customer: replied 11 days ago.
Morning. I am a small business. We have a part of our business that sells candle and wax melt supplies
Customer: replied 11 days ago.
I have one particular rubber wax melt mould that we have popped on our website for sale. I initially bought them in the UK from another company and have since found a manufacturer in China that makes them
Customer: replied 11 days ago.
I put the mould on our website to gauge the interest in the mould. I have some unused ones I bought from the U.K. company and thought I may as well sell them and see if they are a good product for sale and I can then stock them
Expert:  Kasare replied 11 days ago.

Good morning, my name is ***** ***** I am a solicitor of more than 15 years experience.

Can you give me a little more information about the letter and the product? Is the letter from the individual or a law firm? Have you been provided with a copy of their product? Have they provided you with evidence that this product was "their" design?

Customer: replied 11 days ago.
Last night very late I got a very hostile email from a company saying they own the IP design for the product and they have reported the matter to the police and I must send them all mould for destruction? I was totally shocked. I’ve run a business for years. I’ve never had someone be so horrible
Customer: replied 11 days ago.
Shall I copy the email
Expert:  Kasare replied 11 days ago.

Please do - also did they send you any evidence of this design?

Customer: replied 11 days ago.
Ok I’ve sent a photo of the email they sent me. Yes they sent links of the registered design
Customer: replied 11 days ago.
File attached (664Z1TM)
Customer: replied 11 days ago.
All I have in stock at present are the moulds I bought in the uk from another wax melt business
Customer: replied 11 days ago.
I had some on order from China but I don’t know what to do as they’re clearly threatening me and really hostile over it when I hadn’t realised I’d done anything wrong
Customer: replied 11 days ago.
If my order did arrive what can I do with it? Can I alter the mould by for example cutting it to a different shape? Or can I give it away free with another product? Therefore I wouldn’t be making money from the mould they have an issue with etc.
Customer: replied 11 days ago.
Do they legally have a right to take my potential stock if it arrived from China?
Customer: replied 11 days ago.
Here is my website link
Customer: replied 11 days ago.
https://www.northwestcandlesupplies.com/product-page/snap-bar-mould-chocolate-bar-style
Expert:  Kasare replied 11 days ago.

Hi thanks for the information, sorry for the short delay coming back to you, I was looking at the design right page, your page and their web pages.

It is a little strange that the alleged registered design owner is a company in Scotland and yet the mould company is in Norfolk. However, their method of contact is very aggressive and rather unprofessional. This is a civil dispute and therefore the police should not get involved.

I would write back to them and advise them that you considered their notice of a claim against you is as invalid as their claim of a registered design. Inform them that if they wish to proceed with any matter they should write to you in a formal and professional manner and at that point in time you will consider the matter further, however, from the information in your possession, you would be defending any claim of infringement on the basis that you consider that their "registered design" is invalid and defective.

One of the requirements for obtaining a registered design is that the design must be new. If you can find examples of similar designs that pre-date their registration you can inform them that their registered design does not fulfil this essential criteria and should be cancelled.

Having looked at their design, is not unique at all. Indeed, it clearly copied from a bar of chocolate design, also as you have several options of where to purchase this it has obviously been produced. You could ask where you purchased this product how long they have been selling the product and also where they came up with the design. I should also add, that I cannot even see this product for sale on their website!

I would wait for them to send you a formal letter of claim - if they do.

Do not send your product to them. However, you could consider removing them from your site until the matter is resolved and whilst you investigate this.

Alternatively, as another idea, if you do not wish to get caught up in a legal dispute you could offer to sell all your stock to them!

I hope this assists, any further questions please do let me know.

Customer: replied 11 days ago.
Ok I will speak to my husband and fill him in. Thank you for the detailed response. I really just don’t want to get into a legal dispute it’s costly and upsetting. If I had known these “designs” were registered I’d never have bothered with them but as I Have stock on its way I’m stressed now. The design is only valid if it’s in that exact entact format am I correct? So for example if the design was supplied in smaller parts for example if the mould was cut in half so there were only three bars per mould they would have no design rights to it? I’m just trying to think outside of the box to save myself any hassle
Customer: replied 11 days ago.
I understand their design is registered but it’s also very generic. It’s like claiming the wheel as being their design. There are many variations to the wheel but In this case to to claim that particular chocolate bar design is theirs is a total monopoly on something that is widely used. I feel that it’s a competitor that is trying to bully us. I have a good idea who it is etc. I had a similar situation over a diffuser bottle two years ago that we were going to stock. . Some company wanted us to remove our bottles from sale as they claimed to have designed cut glass but historically it is a German design and mastered by Waterford glass so I told them it was absurd plus they had nothing registered in the uk in terms of design or IP
Expert:  Kasare replied 11 days ago.

Yes, you are correct in regards ***** ***** the designs are different, even slightly.

I can understand that this is likely to be very stressful, especially at such a difficult time, for small business owners. But the design is very generic and there is nothing unique about this design to warrant the registration.

Customer: replied 11 days ago.
Ok. So if I alter it as in cut it in half it’s null and void and I can sell regardless?
Customer: replied 11 days ago.
I’m pretty sure their “bar design” is a copy of the American brand Hershey’s chocolate bars. My mam grew up in the US and I’m pretty familiar with the design so as it definitely predates their design I could argue that point with them I guess
Customer: replied 11 days ago.
Finally who do I basically complain to in relation to the registration of the generic design they have registered? Can I object to it being registered as it’s so generic and unremarkable?
Customer: replied 11 days ago.
if I wish to message you again is it possible as you clearly have just answered all queries so concisely.
Expert:  Kasare replied 11 days ago.

I would not back down immediately. As I have said, it is not unique. You can alter them if they will still work in the altered form.

Have a look here - https://www.gov.uk/guidance/objecting-to-other-peoples-designs and here is the form you would need to complete for each registered design - https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/919112/DF19A.pdf

If you need anything else, you mark your question for KASARE - I am off and online throughout the day/week, but I will always try to come back to you as quickly as possible.

Is it possibly the Liverpool connection that means you understand me so clearly (me too - although I dont live there any more)!

Best of luck!

Customer: replied 11 days ago.
last thing I’ve just Seen this message. She sent this email to my main limited company oakes Candles Limited email address. With an address to send the moulds back to! It’s all very spurious
Customer: replied 11 days ago.
File attached (52232QG)
Customer: replied 11 days ago.
File attached (VTM6SMP)
Expert:  Kasare replied 11 days ago.

"fraudulent copies and most likely hazardous to health"! Really? Ridiculous!

I would challenge the design.

Write back to her and advise her that your products are items that you have purchased from a wholesale supplier business for your business. Inform her that you will raise the issue of her purported design rights with the wholesaler. Inform her that the designs are not unique and that you will be defend any claim made against you/your business. Further advise her that you will be filing an objection to her registered design as a result.

Customer: replied 11 days ago.
Thank you. Oh wow your from liverpool too. I’m originally from Dublin but my husband is from liverpool and have lived here since 2014. You’ve been a great help. I won’t back down on this. Their throwing their weight around and I only put the moulds up yesterday so it’s clearly a competitor who’s got an issue and been keeping an eye on what I’ve been doing.. They think they can bully me into handing them over. I’ve another 12 designs that I’ve ordered in and there is no objection over them. One of them is gummi bear design. I’m waiting to see if haribo contact me to demand I send them all the moulds ��
Expert:  Kasare replied 11 days ago.

Perhaps they have had a falling out with their product maker. You could tell them that they may think they "own" the design, even though you dispute this, but not the physical product, as such if they want you to provide your products to them then you are willing to sell the products to them!

Customer: replied 11 days ago.
Hi again, ok I have contacted the police in three regions in the U.K. the police ref is fake. No one has a reference for it. Also they have complained to my website provider and somehow have had my website removed I’m really getting very upset over this. Do they have any authority to do this?
Expert:  Kasare replied 10 days ago.

Hi, sorry for the delay coming back to you. I would contact your website host provider and demand your site be reinstated with immediate effect. They should tell you why this was taken down - coincidence or complaint. If it is as a result of the article you are advertising then simply remove that item.

Customer: replied 10 days ago.
HI Kasare, they have said i have infringed a copyright and are refusing to reinstate my website and are telling me as a website provider I will be liable for legal fees if i am in the wrong? I asked them to provide me proof of a court order demanding the website to be taken down. They keep treating me like i am some sort of criminal. I did express under GDPR they provide me with all information on our business which should also include the complaint lodged against me. I spoke with the police yesterday. To check the crime number , its completely made up. They did however say that having my website removed is a cyber crime and how they managed to give such weight to an argument to get it removed without a legal process is baffling. Im extremely upset at the moment over all of this and feel like i am trapped an di cant get anyone to resolve it. I removed the item from sale but I dont understand how they have all of this power to cause me this much trouble or what to do next.
Thanks, Liz
Expert:  Kasare replied 10 days ago.

Hi Liz, I am just off to court right now, but I will come back to you when I get back, ok

Expert:  Kasare replied 10 days ago.

Hi Liz, apologies for the delay. It looks like this dispute is going to get a little nasty.

Firstly, you need to file a challenge to the designs as I have previously stated.

Then I would strongly suggest you get a lawyer to write to the other company a strongly worded letter before action, informing the other party that you will be seeking damages for loss of business and costs. Also inform the lawyer about the emails containing an apparent false crime number. This is fraudulent misrepresentation and this business has also likely used those false police crime reference numbers to persuade your webhost to remove the site.

I would also advise your website host, that unless your site is reinstated immediately, you will take action against them for breach of contract and losses incurred.

Clearly this person is acting quite maliciously to prevent competition, but you do need to take action and whilst I know incurring legal costs as a small business is difficult, it will need to be done.

If you dont wish to go down this route in the first instance, you could open the lines of communication with the provider of the email. Tell them that you are not willing to take their heavy handed actions lightly and that you can either try and reach a sensible and amicable resolution to the matter or you will take matters further - filing challenges against the "registered designs" and also seeking damages and costs for the interruption to your business.

Customer: replied 4 days ago.
Hi there,
Just wanted to thank you for the help last week. I’m mid doing the application form to invalidate the design. I looked up vintage Chocolate moulds and found very similar items. I believe I’ll resolve it that way. In the meantime the woman in question had my eBay listings removed and I had to refund 28 orders. All she has done is highlighted the market there is for the product. She’s only hostile as she’s on thin ice with it all. I’ve not responded to her. I’ll let her think she’s winning in her bully tactics and wait for her to get the letter explaining she doesn’t hold all the cards with her mould anymore. I’ll then respond to her. I think letting her think she’s winning is maybe slightly better at present. She also reported me on facebook and instaGram. I’m just filing all her actions away to use against her at a later date once I’ve the design matter resolved. I did get the police to speak with her over the use of a fake crime number which she likely used to get the website removed. If there anything else you think we can do let me know. Finally do you know if any up solicitors in Liverpool so we can speak with them. I’m just trying to get an idea of what the parameters are for making my own mould and bringing to market. I just need to know how alike does it have to be to involve the copy that’s registered.
Thanks again appreciate all the help to day.
Best wishes,
Liz
Expert:  Kasare replied 4 days ago.

Hi Liz, I feel for you with this lady. Some people really don't have anything better to do. I would make sure you keep details of the negative actions and what her conduct has cost you and your business to ensure that is included in a claim against her.

In Liverpool, there are so many lawyers, but it really depends on your budget etc -you should look for Intellectual Property law firm - there are quite a few. Have a look at the Law Society find a solicitor - https://solicitors.lawsociety.org.uk/or Google Liverpool Intellectual Property Lawyers. It has been a whilst since I worked in Liverpool but I recall Brabners being quite good (although more corporate so expensive).

Customer: replied 4 days ago.
Thank you so much. Really appreciate it. I’ll Have a look tomorrow. I’m trying to keep costs a minimum as we have some new ranges we want to add and I’m not having some woman eat up money that I need else where. Fingers cross the design invalidation comes through and solved a huge chunk of the issue. Thanks again for everything.
Expert:  Kasare replied 4 days ago.

Perhaps see if the Liverpool Chamber of commerce can recommend anyone - or if the university law students offer pro bono work. It is an interesting matter for anyone studying IP law.

Customer: replied 4 days ago.
That’s an amazing idea. I will defo check that out tomorrow.