It is a truth, universally acknowledged, that sometimes “inspiration” can veer too far into outright copying. In many instances this copying can be prevented by using a combination of intellectual property rights such as copyright and unregistered designs. If you have registered rights such as registered designs or trade marks which have been copied, that will generally put you in a stronger position but all is not lost if you don’t have relevant the registrations in place.
If you discover that someone has copied your design, once the initial outrage has died down, there are various things you should do to put yourself in the best possible position and secure a swift resolution to the problem.
Identify what has been copied. This may be more than one thing. For example, your brand name, the underlying CAD, your pattern, the shape of your design, or the combination of colours and/or materials you chose.
Identify the similarities and differences between your design and the copy. This requires a mixture of design and legal knowledge so it is often helpful to get legal input at this stage. It is much easier to stop some types of copying (e.g. use of a trade mark or a photograph on the front of a T-shirt) than it is others (e.g. the cut of a fairly standard dress).
More haste, less speed. While it is important to act quickly whenever you believe that a third party has copied your design, it is critical that you first establish your legal position. If you threaten that third party or their suppliers with court proceedings without first ensuring that you are legally entitled to do so then you could be faced with a claim that the threat was unjustified. It could also be embarrassing for you.
Who created the design? If the design was created by an employee, then you are likely to own any copyright or unregistered design rights in the design. However, if you commissioned the design from a third party then you may not necessarily own the rights in the design and you will need to ensure that they are properly assigned to you before you take any action. The creator of the design may also have 'moral rights' in the design which can be asserted against the third party. These can only be waived, not assigned. If you are not the owner of the design, but a licensee, you will need to consider the terms of any licence agreement to see whether you have any rights to take action against a third party infringer.
When was your design first put on show? Certain unregistered rights, such as EU unregistered design right, only last for a short period of time. Establishing when the design was first made available to the public (e.g. at a trade show or on social media) will determine whether such rights still exist.
Is your design clearly different from other designs on the market? If you wish to rely on any unregistered design rights, then you must be able to argue convincingly that the design is “original” and is not “commonplace” i.e. clearly different from other designs on the market. This requires consideration of all designs for the particular type of article. For example, if you are concerned with a jacket, you will need to look at all types of jacket available on the market, even if those jackets do not compete with your jackets (e.g. protective jackets worn in the construction industry or jackets worn for extreme sports).
Do you have any registered rights? If you have any registered rights in the design, for example, a registered design or a shape trade mark, then you will not need to prove copying.
How much have you spent on marketing the design and what level of sales have you achieved? This information will help you to establish that you have 'goodwill' in the design in order to found a claim in passing off. You should also keep copies of all adverts, advertorials and editorials which mention the design in question.
When and how did you become aware of the copy being made available for sale? If you first became aware of the 'copy' because a consumer or person in the trade thought that the 'copy' originated from your business, then you should keep copies of any relevant correspondence with that person and keep a record of any relevant telephone conversations. If you are able, you should purchase one of the 'copies' and keep the receipt. You should also keep all of the clothing tags. If the 'copy' garment, accessory or shoe has been advertised in the press, you should also keep a copy of that advertisement. Similarly, if the article is for sale online or through a catalogue, you should retain evidence of this.
If you consider the above points and collect together evidence before consulting a lawyer, your advisers can quickly identify what options are available to you. This will also help to keep your legal costs to a minimum.