Use of injunctions to protect intellectual property
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
Injunctions effectively protect your intellectual property. However, we first explore low-cost solutions before litigation. Your prospects of success depend on how effectively you protected your IP rights. In addition, courts require evidence, and injunctions carry risks.
Our intellectual property injunction service includes:
Letters before action
Our first decision is whether to:
- Immediately file an injunction application; or
- First write to the infringer.
Our 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 writing first is advisable
In some circumstances, courts unfavourably regard an applicant who does not first write to the infringer, e.g. in cases concerning unauthorised use of a registered trade mark.
Our cease and desist letters usually secure an infringers’ agreement, i.e. the infringer undertakes to cease using your intellectual property. We take care 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. Another option is to instruct an expert to consider the prospects of success. The expert will have sufficient expertise in the sector and will provide an opinion on merits. Specific questions can be put to the expert.
When we draft licence agreements, we take care to ensure the licensee cannot use your intellectual property assets without consent.
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.....