I just got a cease and desist notice from a private seller

[01359parts]

I just received this message;

New message from: camchaintensioner.co.uk

These are copies of our tensioners, you are infringing our design rights on the following items: 126110773628 166680904212 126432875366 126395519062 166716108222 Please cease selling or legal action will be taken It's utter nonsense as the tensioners in question are made in China and freely available for wholesale purchase, but what I don't get is how they are a private seller with no registered address. Can that be right?

[cobwebcottage]

Doesn't look or sound right to me. Their website is suspicious too and only created this year. Ask them to send you proof of the design rights and their legal address for your solicitor. That may smoke them out.

Also contact CS and ensure that you make it clear that they are registered as a private seller and you are a business seller.  They can check their registered name and address which may give an indictation if they are legit or not.

[ojewellery]

Most of the time these things are people posturing.  Design right is also a tricky/ expensive area to prove in the UK.  They'd need signed and dated documents - potentially held by an intellectual property attorney, showing first publication of design and for this to be prior to other designs i.e. the ones you're buying being made public.

Patents would be something else all together.

There are two parts of your post that hold no weight what so ever, so be careful not to go barking up the wrong tree.

Having a private seller account doesn't mean they don't have design rights.  Many companies are part of VERO and don't trade on eBay - the private/ business seller account is something talked about a lot on the boards but wouldn't effect your or their rights.

Buying something from someone else - regardless of whether they're a big factory, doesn't obsolve you of your legal obligations to ensure that the purchased items can be legitimately sold in your location.  Think Lego/ Lepin.  

[dch2112011 · Accepted solution]

A serious cease and desist letter will usually come from a solicitor and will be very specific as to how you have infinged their rights, with examples, proof of intellectual rights  copyright etc let alone both parties names and addresses - this appears to be  a bluff - The reason for this is that the letter basically sets out the case against you should it proceed to legal action and is used as evidence  - the idea is to come to an agreement to avoid action  often intellectual rights are unintentionally abused but it is highly complex. 

Acknowledge receipt - ask that their solicitors confirm the specific breaches of intellectual property rights with examples and dates along with copies of any documentary proof of UK registered copyright, designs, advertisements including registration and publication dates.

Advise that once  they have provided specific detail and justification that you will investigate any legitimate claim of infringement and react accordingly.

You could remind them 

Please be aware that if the cease and desist notice is properly served and  is found to be incorrect that it could have serious financial and credibility  implications for the sender.

I therefore strongly urge you to take proper legal advice prior to issuing a formal cease and desist letter 

[*knight-rider*]

I'm not a solicitor or legal expert by any stretch, but i would be requesting written proof from someone and certainly wouldn't take a message like that as gospel, because it could just be a competitor your under-cutting trying to frighten you off. So firstly, i'd want more info from them or someone else from a legal standpoint and secondly, i'd give c.i.b a ring or a solicitor if you have one and get advice to cover yourself, i certainly wouldn't let a short and rude message like that make me curl up and panic!

[aj_swift]

I don't know anything about this case but looking at your listings you do have another potential problem coming. Your titles need to say that the parts are for Yamaha or for Honda etc. The for is very important. Without it they can argue you are selling them as Yamaha or Honda items. At the moment if either of them complained to eBay your listings could all be removed. It's a real pain if it happens as there is no relist or sell similar available, you have to start from scratch.

[01359parts]

Thank you for that. It's what I've done. Luckily I have a family member who could look into the legal issues for me. It turns out that the law on design rights specifically excludes items such as aftermarket camchain tensioners under these paragraphs:

the design must not contain aspects of shape or configuration of an article which: 

enables the article to fit with another article so that either article can perform its intended function, or 

is dependent upon the appearance of another article of which it is intended by the designer to form an integral part. 

It also can't be patented since the fundamental design has been about for decades.

So I'm guessing it's a 'trying to scare me off' attempt

Digging into pictures with reverse searches it looks like the seller is probably based in China, selling tensioners which are available on Alibaba. They may be the manufacturers or re-sellers - I can't say.

I also can't say whether they are set up as a private seller in this country to avoid the extra costs associated with being a business seller, but I do know ebay don't really worry about that..

[01359parts]

Thank you. That's a very good point. It does say 'for' in the description, but not in the title. It's the way I've always listed and common practice but I see what you mean. I'll be grinding through the listings changing that over the next couple of days.

[4_bathrooms]

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@01359parts wrote:

Luckily I have a family member who could look into the legal issues for me. It turns out that the law on design rights specifically excludes items such as aftermarket camchain tensioners under these paragraphs:

the design must not contain aspects of shape or configuration of an article which: 

enables the article to fit with another article so that either article can perform its intended function, or 

is dependent upon the appearance of another article of which it is intended by the designer to form an integral part. 

---

I can't find any of those paragraphs in the Registered Designs Act.

As I understand it pretty much any design can be registered provided the designer hasn't previously made the design public, the design isn't "morally offensive" and it doesn't incorporate things the designer doesn't have permission to use such as someone else's intellectual property, a national flag or official emblem. In fact; if you're the only person manufacturing or importing a "widget" that is orange in colour you can register that as a design. It doesn't stop anyone else importing, manufacturing or selling black, blue, green white or whatever other colour "widgets" in the UK but only you would be able to sell and produce orange coloured ones. Well, unless you offered someone else a license or some other permission to use your design.

A design right is much easier, quicker and cheaper to register than a patent and I remember at least one case on these boards where a design right was registered abusively in a successful attempt to steal a seller's market. However, I don't think you need to worry. A quick WHOIS check shows the other party registered their domain name in 2018 and they have had an active website since September 2022 (found via The Wayback Machine). Their website does not provide a company/business address anywhere; just a trading name.

In your shoes I would take timestamped screenshots of their website showing the products advertised for sale. That way, if they ever did register a design for them you could challenge their registration on the basis they had already released the design to the public. I'm not sure where that would leave you with eBay if they filed a VeRO request whilst the design was registered but they would only be able to file a VeRO for a design right infringement by providing a valid design number.

[01359parts]

Thank you for all that hard work. I never cease to be amazed that there are people out there, like you, who put so much effort into helping someone they don't know from Adam out. I'm very grateful.

My friend (actually her husband) pointed to a piece of legislation which said:

In addition to the above, there are certain things that a product cannot do, or it cannot be protected by Design Rights;

• The design of a product must not be a method or principle of construction;
  • The point here is that Design Rights only protect an aspect of a product itself, but not how it was created or constructed.
• The design must not contain aspects of shape or configuration of an article which
  • enables the article to fit with another article so that either article can perform its intended function, or
  • are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part;

• The design must not be a design for surface decoration. This means that for example, the colour of a product will not be protected by a Design Right

Googling a bit, I can find those words, but not where they are from.

I'll do what you've advised, it seems like a sensible way to go.

Thank you again for all your help.

[pillarboxred]

EBay does not allow Threats. There is a way to report them.  Looking on Google for "how to report threats on eBay" might be an easier way to find the page.
This person is not going about protecting their claimed rights in the correct way, the VERO scheme so, until they do, eBay will not entertain them "putting the frighteners on you". 

[4_bathrooms]

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@pillarboxred wrote:

EBay does not allow Threats. There is a way to report them.  

---

Yes, at the bottom of the message there is a an "Action" menu with a "Report message" option. One of the reasons you can select for reporting the message is "Threatening".

However, in the OP's shoes I wouldn't bother. eBay might misinterpret the other parties' threat as a legitimate claim they have a registered design right and pull the OP's listings even without a VeRO NOCI being filed. I've seen worse claimed examples of eBay misinterpreting reports on here.