We combine the importance of preserving your business identity with our market experience to achieve commercially realistic outcomes for protecting or defending the use of IP.
We are always happy to discuss concerns, provide a scope of how to deal with the problem and a fee estimate. Please do call us.
Solicitors for IP rights infringement
- We deal with all forms of IP protection and infringement relating to assets such as trade marks, branding, logos, design rights, copyright and goodwill.
- We act for a range of technology, manufacturing, retail and creative businesses with diverse commercial needs. We see IP as a financial asset and use our expertise to help you decide what is best for your business.
- We are specialists with low overheads which means a cost-efficient, excellent service.
How to deal with IP infringement
Based on the types of questions we are asked we have set out below some ideas on how to approach protecting or defending the use of IP rights. The approach does depend upon the type of IP asset infringed and whether it is registered with the Intellectual Property Office (ICO) and/or European Union Intellectual Property Office (EUIPO). The most common IP infringement disputes relate to copyright, software, trade marks, design rights branding and logos. Breach of licencing agreements is a particularly common area.
We set out below:
Strength of your case
From the outset we will look at key areas of your case to work out the best plan of action to achieve your desired outcomes. We address the following:
- A realistic assessment of your chances of success;
- The pressure points within the dispute;
- The necessary immediate steps and longer term plan to achieve outcomes; and
- Minimisation of costs.
Trade Marks – stopping or removing registrations
If someone is attempting to register a sign that is similar to yours you can apply to the Intellectual Property Office (IPO) to stop it being registered as a trade mark. If they have already registered a trade mark you can apply to have it removed from the trade mark register.
If your application to stop or remove a registration is unsuccessful you can appeal to the Intellectual Property Enterprise Court (IPEC), which deals with trade mark disputes valued up to £500,000. Above this, claims proceed to the High Court.
Trade mark infringement
Use of an identical/similar sign for identical/similar goods or services in the course of trade will be an infringement of a registered trade mark. So if another business is using a name, logo, brand, symbol or style that is similar to your registered trade mark, this is potentially an infringement for which you can make a claim.
Test for establishing a passing off claim
- Is there goodwill or business reputation in the mind of prospective customers? This must be in the same area or field of activity.
- Has there been a misrepresentation directly or indirectly to customers as to the source of origin of the goods/services? It does not matter if the misrepresentation was unintentional.
- Can you show damage or likelihood of damage? This may include loss of profits, damage to reputation or loss of an opportunity to expand
If you discover that your brand or reputation is being infringed there are immediate steps to take. Delay may risk your ability to demonstrate a passing off claim.
Special consideration for sole directors
A sole director of a company can be held jointly liable with the company for trade mark infringement and passing off. This is because a court can view a director as having full responsibility for acts done by the company.
A sole director will need to show the court that he did not knowingly participate in, or control, the activities amounting to infringement. If the director is unable to demonstrate this, they may be held personally liable for the trade mark infringement.
Copyright infringement claims
Software is protected by copyright as a literary work. Protection will also extend to sections of software coding and the materials relevant to software development. As copyright is unregistered it can be difficult to know when an infringement occurs:
Any of the following acts in the UK, without consent of the copyright owner, is a copyright infringement:
- Copying a copyright work – this includes reproducing a section of coding;
- Lending the work or issuing copies of the work to the public;
- Performing, showing or playing a copyright work in public;
- Communicating the work to the public; or
- Adapting the copyright work.
It is also an infringement to authorise or facilitate another to do any of the above restricted acts. This is known as secondary infringement. For example, if you import merchandise which includes messages illegally copied and sell it to the public, you will commit secondary infringement. You will be at risk of a claim for infringement – this is despite the fact that you did not physically make the copies yourself.
Breach of licence agreements
Breach of a licence is similar to breach of contract. If the licensee does not stick to the terms of the licence agreement there will be a breach of commercial contract for which there may be remedies available. Common examples of breaching a licence include:
- Using the software for a purpose other than those specified in the agreement;
- Using the product after the licence has expired;
- Non-payment of the licence fees.
Practical solutions for IP infringement
The majority of cases are settled out of court. This applies to cases being dealt with by the IPO, EUIPO or IPEC.
Intellectual property rights and brand protection are fragile things. We see business arrangements from all perspectives so we understand that sometimes the best approach is the soft one. Negotiating with a competitor or licencee often produces beneficial results, without affecting business relationships. This mediation approach to infringement often resolves the issue without conflict.
Settlement outside of court
In practice, we find that for a great many cases that resolution to infringement claims are often outside of court. Settlement discussions often run parallel to court action – this is encouraged by the court as these solutions save time and money for everyone.
We also find that before settlement is achieved there may be a need for a letter before action, often for IP claims called a cease and desist letter setting out the law relating to IP infringement. The intention is to warn the opponent of what lies ahead if the case is not settled.
We often achieve settlement agreements whereby the infringer agrees not to repeat. A well-drafted settlement agreement means that if there is a repeat, an injunction against the infringer is more likely to be obtained from court without delay.
Injunctions for Intellectual Property infringement
If you need to take decisive action, we have the experience to guide you through the process of making an application to court for an injunction.
An injunction ordered by the court means that the infringer must stop their infringement or face further court action.
Which will be the best approach will depend on your circumstances. Our solicitors goal is always to achieve the best commercial outcome for your business and this objective guides our strategy both at the early stages of negotiation all the way through to court proceedings.