Infringement advice

Have you discovered that somebody is infringing your design rights and do you want to take action to stop it? Together we can develop a strategy to combat trademark infringement. First of all, we will send the infringing party a cease-and-desist letter and then conduct negotiations with them if necessary. If this does not lead to a satisfactory outcome, we can commence legal action against the design infringement on your behalf.

 

When is a design infringing?

The criteria for determining whether or not a design is eligible for registration are in principle the same criteria used to determine whether or not another design can be deemed to be infringing.

 

  • Criteria for design infringement: is it new?
    A design has to be "novel", in other words new. A design is only considered to be new in the EU if an application for registration has been filed within a maximum of one year after the date on which it was published or disclosed to third parties. For the assessment of novelty, both in the Benelux and in the European Union, the design must have been disclosed to specialists in the relevant sector in the European Economic Area (European Union, Norway, Iceland and Liechtenstein).      
         
  • Criteria for design infringement: does it have an individual character?
    A design must have individual character. This means that the new design must be visibly distinguishable from existing designs. An important consideration here is the freedom of the designer in the preparation of the design. When making the design, the designer has to take into account the functional requirements of the work and can therefore be limited in his creation. The amount of individual freedom required differs from one commercial  sector to the other.

 

Scope of protection

The scope of the design protection will also depend on the following:

 

  • How unique is the design? In other words: to what extent is the design different from existing designs?
  • Is the design subject to technical requirements? Any element of a design that is subject to technical preconditions is excluded from protection. An exception to this rule are the technical elements of a modular system.

 

Prompt intervention against design infringement

To make sure you act on time against design infringement, we strongly recommend that:

 

  • You follow the market carefully yourself and then ask us to take action on your behalf as early as possible or
  • Take out a design monitoring subscription with NLO Shieldmark. This means we will warn you immediately if similar Community designs are filed for registration. This subscription service is available for as little as €150 per year.

 

Contact

Would you like tailor-made advice about design infringement? If so, contact one of the design attorneys of NLO Shieldmark.

 

Contact us

Fake invoices

Fake invoices are unfortunately a well known problem among trademark owners. A fake invoice is a misleading invoice (or letter) which reffers to a trademark, design, patent or patent application. A payment is requested for a publication in a register or to extend the validity of a registration.They use names like Worldwide database or Trademarks and Patents, Euro IP Register, International Patent & Trademark Database.

 

More information and examples of fake invoices

 

Our advice: don't pay. Please contact us is you have any doubts.

NLO Shieldmark wins Award ‘Benelux - Firm of the Year for Trade Mark Prosecution’

NLO Shieldmark is proud to have been voted ‘Benelux - Firm of the Year for Trade Mark Prosecution’ by the highly respected Managing IP magazine. The award was presented on Thursday 10 March 2016 in London.

 

We wish to thank our clients and fellow professionals for their positive feedback and for believing in our quality and service.