Intellectual Property Infringement
- Himanshu Dasare
- Updated: Thu, 9th Feb 2017
We are specialist solicitors for resolving intellectual property infringement cases. Our clients are drawn from all types of trade with a focus on tech, media, design and retail in London. We deliver analysis on the chances of success and guidance on how to achieve the end goal. We offer a free initial assessment of the merits of any case which includes a brief review of the papers.
Our intellectual property infringement services include:
The swing in all English courts is towards legal costs being proportionate. As a boutique and specialist firm we are a sound choice. Our overheads and hence costs are much lower than our large firm competitors but our expertise as strong. We act for businesses either facing an allegation of intellectual property infringement or wanting to stop an infringement. We often act where there is an insurance policy for IP infringement claims in place.
Intellectual property infringement – how strong is the case?
Our initial analysis delves into:
- Nature of the infringement and likely damages if any;
- Evidence that exists and is missing;
- Most appropriate solution;
Intellectual property infringement strategy
We always have a strategy in mind. This will focus on matters such as:
- Identifying legal key areas;
- Reducing complexity;
- Choice of court – for many cases IPEC is the best choice but that isn’t always the case;
- What is likely to be achieved; and
- Do you need an injunction?
Intellectual property infringement – management of legal costs
The UK legal system is heavily tilted towards settlement of disputes outside of court. Initiation of settlement discussions is a sign of commercial awareness rather than a sign of weakness. It is usually cheaper and more effective to settle rather than litigate. Often with IP, the IP is out of date and useless by the time of a court hearing making intellectual property litigation fruitless.
Vast majority of infringement cases settle out of court
The majority of disputes end in settlement. We frequently achieve settlement for our clients. The general rule is the earlier settlement is achieved the better. Settlement can be struck at any time and there is no legal restraint.
Effectiveness of an out of court settlement
A settlement agreement is no less binding than if you had asked the court to determine the dispute. So, if you do not have a well designed settlement agreement the terms may not be appropriate, enforceable or the best you could achieve. We use our industry experience to guide you on the best terms achievable.
Benefits of settlement of any intellectual property dispute
There are many positive reasons why reaching a settlement is in your interest:
- The agreed settlement is more likely to be acceptable to both sides, whereas in court there is usually only one winner;
- There is more scope to be flexible with the terms and remedies in a settlement agreement than in court;
- If you need to continue to maintain a relationship with the other side, reaching a settlement is more likely to enable this;
- A settlement can be reached quickly. IP litigation could take months or even years to be heard in court. This uncertainty can have a detrimental effect on your business as can the continued use of management time preparing for court;
- The settlement agreement is private and confidential. This avoids adverse publicity and damage to reputation;
- Reaching a settlement is much cheaper than litigation. Even if you win and are awarded costs, you will rarely get all of your costs paid by the losing side; and
- The settlement gives you certainty and closure.
Recent cases show that courts do not look beyond the terms. This means the terms do need to be spot on – an area where we assist.
Mediation to resolve intellectual property infringement disputes
Mediation is a voluntary method of alternative dispute resolution that leads to a negotiated settlement agreement. The process is orchestrated by a neutral third party, usually an individual mediator, experienced in the relevant sector. The parties retain control of the decision on whether or not to settle and on what terms.
- Facilitates contact and discussion between the parties;
- Provides a forum in which the parties can gain a better understanding of each other’s positions and work together to explore options for resolution;
- Narrows the issues in dispute;
- Explores and discusses settlement terms.
Mediation helps if one party won’t concede trivial issues. These days the IPEC regards mediation as a pre-requisite to initiating proceedings. If you refuse to mediate, you risk adverse cost judgements at trial.
Use of injunctions
There are a variety of injunctive reliefs available which may act as the solution. The threat of an injunction can bring the parties to the negotiation table. For example:
Interim injunctions immediately stop someone doing something. The injunction lasts until the final result at trial. You can “urgently apply” for this injunction, which is useful for cases that take months to come to trial.
A final injunction is applied for to stop infringement once the trial has concluded. An infringer who breaches a final injunction is in contempt of court.
Other types of injunctions
There are other forms of injunctions available to protect intellectual property. We will take you through the choices applicable for your situation.
Intellectual property infringement recently resolved cases
Our clients come from all industries including: media, fashion, technology, hospitality and telecoms. They range from private companies to PLCs, trading in the UK and internationally. Examples include:
- Confidentiality infringement – Obtaining an injunction preventing a global company launching a new product. Our client, an electromagnetic device manufacturer had pitched the idea to the global company, with an intended obligation of confidence. In the Intellectual Property Enterprise Court (IPEC), we showed the pitch contained the necessary elements of confidential information.
- Copyright infringement – Protecting a UK publishing company’s copyright works. We prevented public disclosure by obtaining a search order against a third party infringer, and had the infringing works seized and destroyed.
- Win at IPEC – Winning a music composers’ claim in the IPEC, for work that was stolen from them. We obtained a prohibitory order preventing public disclosure.
- Third party infringement – Protecting a TV production company from a potential third party infringement. We documented and stored their images and scripts. Thus we ensured our client’s rights were recorded. Our pre-action correspondence prevented infringement and subsequent court action.
- Design rights infringement – Bringing a claim in the IPEC, for design right infringement for a client who manufactured luxury menswear accessories. We worked closely with our client’s design team, as the designs incorporated particularly distinct characteristics.
- Property rights’ portfolio – Protecting a boutique London design house’s intellectual property rights’ portfolio. Our protection included design right infringements, parallel imports, and counterfeit goods.
- Domain name infringement – Registering a domain name as an intellectual property right for a technology platform. Our client’s domain name had amassed significant goodwill, which we now manage and monitor.
- Franchise dispute – Obtaining the remedy of specific performance against a hot food takeaway franchisor. The franchisor refused to release trade secrets to our client, the franchisee. The trade secrets were within the scope of the franchise agreement.
- Mediation – Preparing and attending mediation for a telecommunications provider accused of database rights infringement. Consequently, the claimant dropped the action, and our client ceased contact, for a short period, with the claimant’s competitors. We checked the relevant competition laws. Following the mediation, we recorded the settlement terms.
- Trademark infringement – Negotiating the settlement on behalf of an innovative software company, for an unregistered trademark ownership dispute. We ensured that our client obtained favourable terms, including a premium for damage to goodwill.
- Unregistered trademark – Protecting a UK restaurant chain’s unregistered trademark, against a third party application for trademark registration. We gathered documentary evidence; establishing goodwill and proving that an earlier right existed. The trademark registration application was withdrawn.
- Patent misuse – Providing technical advice to establish quantum – the amount of money legally payable in damages. We used recent judgments permitting quantum based on hypothetical royalties.
Our specialist intellectual property infringement team can assist you to bring or defend your claim. We are able to assess the facts of your case and tell you the prospects of success. It will usually be in your best interests on account of delays in any litigation process and high costs, to seek ways for early settlement of the intellectual property infringement dispute. Our team will seek out cost effective solutions for you, negotiate and close the deal.
Resolution of intellectual property disputes is a complex area requiring quick actions to prevent loss. We can assess the evidence and guide you on what you can do to mitigate loss.