A European company in the dental instruments sector was selling their product in China through a Chinese distributor. They discovered a competitor in China was offering a similar product, but built to lower-specification

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · December 2020
A European company in the dental instruments sector was selling their product in China through a Chinese distributor. They discovered a competitor in China was offering a similar product, but built to lower-specifications that used an identical exterior design, colour scheme and control interface. The technical manual, diagrams and parts of their sales brochure appeared to be directly copied from the European dental instruments company. Overall, the competitor's product gave the appearance of being similar in function to that of the European company, although its performance level and price were much lower. The European company's representatives had previously approached the company at a trade fair to complain about the infringement of the company's IP but had not received a positive response. The European company then proceeded to seek legal advice on what could be done. The company did not have a design patent to protect the overall appearance of their product, nor were there any patents covering the product's function, so trying to claim the Chinese company committed patent infringement was legally possible but extremely difficult to do. The only legal recourse the company had was to argue copyright infringement of the technical manual. Instead of taking the legal route, the company decided to send a warning letter through their local lawyers that alleged infringement of the product's shape—even though they were not on strong legal ground—and copyright. The letter implied that the company would take the matter to court. The law firm, and representatives from the European company, followed up the letter and met with the Chinese company. The European company argued that a lawsuit would be waste of time for both parties and that even if they were not successful in court, the Chinese competitor's imitation of the European product would harm their corporate image in the long run. As a result, the infringing company decided to change a number of exterior features of the product and produce new manuals and brochures which greatly reduced the similarities to the European product. If the company decided to send a warning letter through their local lawyers that alleged infringement of the product's shape will they able to prevent the Chinese company.

Answer & Explanation:

Registration of a Design helps in protecting the products which can be distinguished by their mere novel shape or pattern. However, the requirement for registration is that such design itself must be new and thus the element of novelty is of the essence for design registration. Design is registrable both nationally as well as under the EU-wide single registration. Such a right can also be protected through the copyright. Unlike many other Intellectual Property Rights, Copyright is not necessarily registrable and it arises automatically upon creation of the work itself. Further, Copyright can be enforced through the court of law. Today, industrial design has become an integral part of consumer culture where rival articles compete for consumer's attention. It has become important, therefore, to grant adequate protection to an original industrial design. It is not always easy to separate aesthetics of a finished article from its function. Law, however, requires that it is only the aesthetics or the design element which can be registered and protected. For example, while designing furniture whether for export or otherwise, when one copies designs from a catalogue, one has to ascertain that somebody else does not have a design right in that particular design. In the given case, the company did not have a design patent to protect the overall appearance of their product, nor were there any patents covering the product's function, so trying to claim the Chinese company committed patent infringement was legally possible but extremely difficult to do. The only legal recourse the company had was to argue copyright infringement of the technical manual. Though company decided to send a warning letter through their local lawyers that alleged infringement of the product's shape but they were not on strong legal ground and copyright. The letter implied that the company would take the matter to court.

Topics: Design Infringement

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