Can I anonymously invalidate a bad-faith registered design, that has been used to take down my online marketplace listings?

Sellers on online marketplaces such as Amazon™, eBay™, and Etsy™ are increasingly receiving takedown notices citing UK registered design infringement, only to look at the illustrations of the registered design and see a product which had been on sale for years before the filing date of the registered design.

Options for getting your product relisted are discussed in this earlier article. 

The most popular of those options is via UKIPO invalidation of the registered design. 

The UKIPO invalidation process is summarised in our other earlier article. 

Concerns about retaliation

Some of our clients have been concerned about the registered design holder retaliating against the invalidation action, by filing more fraudulent registered designs and taking down even more of our clients’ listings on platforms such as Amazon™, eBay™, and Etsy™. Alternatively, they may try to re-register the design that has just been invalidated.

Is retaliation common?

In our experience, retaliation does not tend to happen, but it is possible and may occur in some rare cases.

If the design holder does retaliate and we need to file another invalidation action, we can request the UKIPO to demand a security for costs from the design holder. This could be a significant deterrent. 

Can we act anonymously, to protect against retaliation?

Fortunately, we can anonymise our clients. We can file design invalidation applications in our own company name, without naming who our client is. 

This is possible when challenging invalidity using prior designs which were published before the registered design. 

In other situations, such as ownership disputes, or citing prior unpublished designs, we may need to name our client. 

What if it is obvious who we are acting for?

If the design holder only filed one takedown against one seller, then they are more likely to infer that you are responsible for the invalidation action, even if we apply for invalidation without naming you.

If you are located close to one of our offices, we can supply the address of one of our other offices located as far as possible away from your location. 

We may even be able to use the address of another agent in a far-flung corner of the UK, to create a further layer of obfuscation. 

Final remarks

We are highly experienced at invalidating registered designs on behalf of online marketplace sellers, whether our clients are anonymous or not.

The current article is written in the context of law, policy, and practice as they currently stand. These may change, and this article may become obsolete in due course. Furthermore, new case law may emerge.

If you have any questions with regards to this article or how Swindell & Pearson can help you and your business with intellectual property, please don’t hesitate to get in touch with the author Tim Gilbert or call +44 1332 367 051.