NOVEMBER INDUSTRIAL DESIGNS AND PATENT TROLLS
Constant supervision over registrations of industrial designs (or Community designs in the case of designs registered with EUIPO) is one of the daily elements of our work. One of the dishonest ways to use the industrial property law system and “legally” market counterfeits is to register them as industrial designs. That’s what patent trolls do.
Thanks to such action, dishonest entrepreneurs can sell their counterfeit products on auction platforms such as allegro, etsy or olx. They rely on the right from the registration of an industrial (Community) design. Such dishonest entrepreneurs are commonly referred to as patent trolls.
Customers who have certain key and strategic products in their offer want to quickly and effectively counteract all counterfeits on the market and dishonest competitors “legalizing” their activities. In such a case, they commission us to constantly supervise new design registrations of a specific category and remove them from the legal system.
HOW DO PATENT TROLLS WORK?
Patent trolls are entities that take advantage of system loopholes and make use of intellectual property rights (e.g. trademarks, industrial designs) in such a way that, without making much effort on their own, they gain at the expense of an entrepreneur who enjoys recognition or introduces innovative, unique kind of products.
Trolls usually first register rights to someone else’s marks, other people’s industrial designs and then either run a business themselves, impersonating another entity, or send requests to this entity to pay huge amounts of royalties for the use of rights or for the transfer of rights to a trademark or industrial design.
In the case of industrial (Community) designs, however, trolls most often first register industrial designs for specific products of another entrepreneur, and then sell these counterfeit products on the Internet. It is then very difficult to prove to the appropriate administrator of the online shopping platform that in fact the rights to the appearance of a specific product belong to our client, and not to a patent troll. Officially, the patent troll will present a certificate of registration and demonstrate the formal right to use the design. Then the dispute should be transferred to the courts and administration, and during this time the patent troll, unfortunately, continues to introduce counterfeit products to the market for some time and earn profits on this account.
HOW TO DEFEND AGAINST A PATENT TROLL?
There are two basic methods on trolls that ideally should be used in conjunction.
The first one is registering your own products as industrial (Community) designs. The second is the constant supervision of registrations in intellectual property offices and invalidating them.
If you register your own product as an industrial (Community) design before a patent troll does, it is very possible that the troll will not be interested in counterfeiting your products and registering them as their own designs. However, if he did, you will have the right to the design with the earlier priority and it will be easier for you to eliminate such a troll and remove his counterfeits from the Internet.
However, even if you do not decide to register a design, and you have unique, popular and profitable products in your offer, you should check online portals for products that are deceptively similar to them. The same applies to the registration of these products by other entrepreneurs in the registers.
WHY DO PATENT TROLLS USE INDUSTRIAL DESIGN EXACTLY?
The system of industrial designs has its great advantages for honest entrepreneurs – it is cheap and fast. In EUIPO, rights in registration of Community designs are granted even on the same day as the filing date, almost automatically. Registering an industrial design costs only EUR 350 plus possible renewal fees every 5 years (maximum 25 years).
The system for obtaining these rights is very convenient for trolls. Upon receipt of the application, the Office does not examine who the design actually belongs to, whether it is new on the market, or whether it has an individual character. These grounds are examined only after the design has been registered, when a competitor applies for a declaration of invalidity.
WHAT DESIGNS WERE REGISTERED IN NOVEMBER?
In November, 4,599 Community designs were registered at the European Union Intellectual Property Office (EUIPO). As usual, among them we will find many products that attract special attention due to their design.
Among the latest designs, you can find in particular a designer dog brush, a computer game user interface, chocolate packaging, a modern coffee table or gloves with Velcro fastened fingers.
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