Intellectual Property Infringement
- Himanshu Dasare
- Updated: Wed, 5th Apr 2017
Intellectual property infringement can be stopped. You have a variety of steps open to you. As intellectual property infringement specialist solicitors we help you decide what to do.
We offer a free initial assessment of the merits of your potential case.
Intellectual property infringement services include:
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.
We do work with intellectual property agents who may have registered the trade mark or design right initially. Intellectual property agents use us because they know we have the intellectual property infringement legal expertise needed.
Intellectual property infringement – how strong is the case?
We are familiar with all forms of intellectual property infringement. We have previously solved problems relating to trade marks, design rights, copyright and patents.
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 to stop the unauthorised use of your intellectual property?
Intellectual property infringement – claims
If you are going to court we do prepare the case for you. However, 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.
Send the right message
Sometimes, it is necessary to initiate litigation as part of an overall strategy to settle. But, there is always the risk a case does not settle. Therefore, preparation for litigation has to be taken seriously. You should avoid looking “half hearted” which may send signals of weakness. That is not to say that legal spend should be disproportionate – something we will message clearly for you to the other side.
Letters before action
As part of the push to keep cases out of court, protocol requires that you send warning about the threat of court action are issued. The warnings are typically referred to as “cease and desist” letters or “letters before action”. The idea is the person who is claiming that their intellectual property has been infringed sets out the basis of the intellectual property claim and warns of court action if the infringement is not stopped.
You will be required to disclose letters before action or cease and desist letters to any intellectual property court. Also, the correspondence is often the first signal that you are not going to sit back and let your intellectual property be infringed. Therefore, it pays to follow the protocol properly. We help you with the drafting.
Intellectual property infringement – settlement
A settlement agreement is no less binding than if you had asked the court to determine the dispute. An agreement can be reached at any time by you as there are no time limits.
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.
Mediation helps if one party won’t concede. 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. Mediation is a voluntary method of alternative dispute resolution that often leads to a settlement agreement. However, you 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.
Intellectual property infringement – recent 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.