Use of injunctions for intellectual property
- Himanshu Dasare
- Updated: Mon, 3rd Apr 2017
Injunctions to protect intellectual property can be effective. But, you can expect fierce resistance. Therefore you need to explore low-cost solutions before litigation. We look to find solutions being prepared to litigate if necessary.
Injunction to protect intellectual property services include:
You may need us to help you stop intellectual property infringement. Equally you may require help in defending allegations of misuse. We can help you in either case. We do work with businesses involved in the registration and maintenance of trade marks and patents providing them with legal expertise in this specialist area.
Using injunctions to protect intellectual property – first steps
If you are involved in a matter relating to the use of injunctions to protect intellectual property your first step is to decide on the strategy. You can consider:
- Immediately filing an injunction application to protect your intellectual property; or
- Asking the infringer to stop and warning of court action if the infringement continues. This is known as a letter before action.
Your decision depends on the facts, and the value of your intellectual property. However, we are cost proportionate. We first explore alternative lower cost solutions, before litigation.
When immediate action is advisable
Sometimes immediately filing an injunction application is appropriate. We might make an injunction application without notice, i.e. without first writing to the infringer. For instance:
- An infringer is exploiting your valuable patent, and
- In turn, this affects your relationship with your patent licensees.
- The infringer is using your IP assets that you have not yet marketed, e.g.
- The infringer is using confidential information, which belongs to you, to develop a competing product.
When a letter before action first is advisable
In many cases a letter before action, also known as a cease and desist letter, is the best initial approach. Most disputes involving trade marks, design rights and other registrations start off with a letter before action. This is because:
- The courts will expect a letter before action to have been sent before initiating litigation in most cases. You can find you are asked to pay the other sides legal costs in failing to send a letter before action.
- Quite often the letter before action opens dialogue which can move into finding ways of settlement.
Our cease and desist letters usually secure an infringers’ agreement, i.e. the infringer undertakes to cease using your intellectual property. You need to cover all the infringers’ potential actions. Otherwise, infringers find ways to continue infringing.
Assess the injunction’s prospects of success
Firstly, we ensure you have adequately protected your intellectual property rights. Then your injunction case is much stronger. Nevertheless we have used injunctions to protect unregistered rights. However, success requires comprehensive and consistent evidence.
The intellectual property injunction papers
We use our experience and legal knowledge to draft injunctions that cover all intellectual property rights breached by the infringer. For instance, an infringer exploits your trademark, but could also have access to, e.g.
- Confidential information;
What the IP holder must show
Facts are crucial. IP holders must show:
- A good arguable case: i.e evidence the infringer is using the holder’s intellectual property without consent.
- Greater loss on a balance of convenience: i.e. the IP holder will suffer greater loss if the injunction is not granted than
- The infringer’s loss if the injunction is granted.
The judge may ask the IP holder to provide an undertaking. If the claim fails at a future trial, them the IP holder is liable for damages suffered by the infringer due to the injunction.
Consequently, we ensure IP holders retain sufficient evidence to justify their case. This limits the future risk of an adverse cost award.
This depends on the case. For a injunctions preventing use of a registered trademark, the holder should show the infringer using it trademark. However for an unregistered trademark, the first issue is the similarity of the infringer’s trademark to that of the holders.
Once granted, it is best to personally serve the injunction. Then, the infringer cannot argue they were unaware of the injunction and its terms.
When serving the injunction, we prefer to leave the injunction with a director of the infringing company at the company’s registered office. Alternatively, we use a “process server”, who personally hands the injunction to the infringer at their work place.
The penal notice
Injunctions that protect intellectual property include a penal notice. The infringer could be imprisoned if they breach the injunctions’ terms, i.e. continue to utilise your intellectual property. Company directors risk imprisonment.
Undertakings as an alternative
Undertaking are an alternative to an injuction. Undertaking often include a penal notice. Infringers may offer undertakings prior to our injunction application, or prior to the injunction application hearing.
Our intellectual property injunction track record
Recent instructions include:
- Secured injunction for a pharmaceuticals company, to stop a competitor using their new product.
- Our client developed this product, using funds from a public body.
- Injunction for renowned provider of bridging loans, to prevent a competing bank using our client’s logo.
- The infringing bank placed our client’s logo on its site, and caused our client’s customers to do business with the bank.
- Infringer received our cease and desist letter and agreed not to use our clients unregistered design in its product.
- Worldwide injunction prevented toy manufacturer utilising our client’s product design.
- The toy manufacturers’ product resembled our client’s product in texture, colour and shape.
If a company is infringing your IP an injunction could deliver rapid resolution. Why not call or email me now to arrange an informal discussion.....