A client approached us with a case involving a set of four roofing tools that they were importing. Another company challenged our client’s right to market these tools that, in their opinion, violated their registered design.
The tools in question were, in our client’s view, traditional tools used in the UK lead roofing industry for decades. So, how could a registered design cover such tools?
We examined the evidence presented against our client’s application and weren’t impressed. The company claiming design infringement based their case on minor variations in shape and form – some features were symmetric, whereas traditional tools were asymmetric, and all infringed the plaintiff’s registered design by using finger grips on the handles.
By examining the tools in detail and comparing them with the imported tools, and with tools widely available before the claimed patent was filed, it was obvious that the claimed features were commonplace. We pointed this out to the claimant’s solicitors. Surprisingly, they dismissed our findings and maintained their position that our client must cease to import and market the tools in question.
We held our ground and applied to the Intellectual Property Office to revoke the designs so that they could not be used in the prosecution of a claim. That action succeeded in bringing the claimant to the negotiating table and a commercially acceptable agreement was hammered out. We’re pleased to say our thoroughness and determination was once again rewarded for the benefit of a very happy client.