Enforcement

Grounds for a claim

What are the key causes of action?

If a third party implements a registered design or similar design without obtaining the consent of the owner of the design right, such an act constitutes infringement.

Procedures

What enforcement procedures are available?

Procedures are carried out in accordance with the Code of Civil Procedure. The general order of proceedings is to file a complaint, examine the complaint, attend an oral hearing, discuss a settlement and obtain a decision.

Remedies

What remedies are available?

Design owners can:

  • seek an injunctive order against infringement;
  • demand damages;
  • demand restitution for unjust enrichment; or
  • demand measures for the recovery of reputation.

Further, if an infringement case turns criminal, the alleged infringer may be found to be punishable by criminal court procedures.

Customs seizure

It is possible to request customs seizure based on a design right. Once customs recordation is accepted, a customs officer will search for design-infringing cargo. In order for officers to find infringing products, it is necessary to submit a detection guide on how to distinguish counterfeit products at the time of recordation. The validity of customs recordation lasts for four years and is renewable. The number of customs seizures based on design rights has been increasing in recent years.

Takedown notice

Depending on the online platform, the procedure and effectiveness of a takedown notice will vary. Some platforms are active in deleting information which contain design-infringing products.

Enforcement time frame

What are the time frames for the resolution of enforcement actions for registered and unregistered rights?

Most proceedings for design infringement are decided in about one year.

Recent cases

What key cases from the past 18 months should rights holders be aware of?

We are not aware of any significant ruling that has been issued concerning design infringement within the past 18 months.

A few years ago, a major weight-scale manufacturer fought for the design of a body composition analyser. Design infringement was recognised and damages of approximately $1.2 million were ordered in a first trial. The case was settled during a second trial.