Journal of Intellectual Property Law & Practice Advance Access originally published online on February 26, 2008
Journal of Intellectual Property Law & Practice 2008 3(4):236-245; doi:10.1093/jiplp/jpn017
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© The Author (2008). Published by Oxford University Press. All rights reserved
‘Innocent infringement’ and the Community unregistered design right: the position in the UK and Ireland
Legal context and Key Points: This article systematically examines ‘innocent infringement’—highlights its non-uniform nature and summarizes defence it offers as to liability and/or remedies across a range of national UK and Irish IP rights—particularly copyright and design.
It considers ‘innocent infringement’ in context of community unregistered design right (directly applicable in all EC member states under EC Reg 6/2002) and assesses if it affords defence to liability or financial remedies—suggests answer depends on meaning and effect of Article 19 (2), Article 89 (Reg 6/2002) and consideration of; the harmonizing effect of the Enforcement Directive (2004/48/EC); the ensuing respective UK and Irish IP Enforcement Regulations 2006; the UK's Community Design Regulations.2005.
It concludes: limited scope of Reg 6/2002 indicates ‘innocent infringement’ affords neither defence to liability nor a limited defence to damages, but contrasts the role of discretionary remedy of account of profits, and nevertheless predicts UK and Irish Design Courts may seek to justify ‘innocent infringement’ offers limited defence to damages.
Practical significance: Given that the community unregistered design right, applicable EC wide, is useful and of interest in many commercial fields (eg fashion, furnishings, etc.), which require short-term protection against copying by over enthusiastic competitors, understanding the status and effect of ‘innocent infringement’ on liability and financial remedies is important.
Key Words: The value of any IP right to its owner lies not merely in its existence but in the extent to which it can be enforced, even against innocent in-fringers. This is particularly so for design rights, which are of relatively short duration and have a narrow scope of protection. • The introduction of pan-European registered and unregistered design rights and the implementation of a directive on the harmonization of design laws at national level, as well as the passage of a directive on the enforcement of IP rights, might have been expected to establish a level playing field for design rights enforcement, but this has manifestly not happened. • This article, taking as its theme the extent to which innocent infringers may be spared liability for infringement, or protected against some forms of relief, reflects levels of uncertainty and inconsistency that could scarcely have been imagined, let alone intended, by European legislators.
* The author is a barrister and Head of Chambers at 7 New Square Lincoln's Inn, London, which specializes in IP and legal issues involving technical matters.