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.
Working with us
- 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.
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.
A licensing agreement is a good way to increase business profit, without losing ownership of your intellectual property rights. Through careful licensing of the whole, or part, of the business’ IP portfolio you can grant others the right to use and exploit your work or brand on agreed terms, in return for a fee.
Brand protection often takes on a wider meaning under commercial licensing agreements because it is so easy to damage the brand. In practice, the agreement needs to be drafted with consideration towards how you will police the maintenance of the brand’s good name, as this is where the commercial value in the intellectual property lies. Negotiating terms such as this are important to make the license worthwhile for your business.
Registration of IP licences
If you enter into an agreement to licence IP rights it is important that you register the agreement. This is particularly important for trade marks, which must be registered with the IPO. Each application costs £50 and any later amendments to the agreement must also be registered.
Special position of computer programs
When a program is run in a computer, the computer has to make at least a transient copy o fit in order to run it. This transient copying will infringe the copyright without the copyright owner’s permission. Simple downloading will also be unauthorised copying. It is therefore not possible to use a computer program without a licence. If you are a licensee you will also be entitled to make one back-up copy of the software.
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 mediatory 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 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.
However, if you need to take more 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. If the infringer ignores the injunction issued by the court, the worst case scenario for the infringer is that they could be made bankrupt.
Which will be the best approach will depend on your circumstances. Our 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.