Intellectual Property Rights (passing off; trademark infringement; copyright infringement; patent infringement)

Intellectual property rights cover a number of areas including trademarks, patents and copyright. These rights can be vitally important to the owners and can attract high values to the person or business with the benefit of them.

Infringement

Using intellectual property rights without the consent of the legal owner can cause damage and loss to the owner, giving rise to a claim for damages. In addition, such a claim often includes a claim for legal costs to be recovered on top of any damages awarded. The court can also order the offending party to pay over any profits made by using the intellectual property without the owners consent, as well as an order to hand over any infringing items which exist incorporating the offending intellectual property and an undertaking (promise) not to infringe the rights again in the future. As a result, breaching intellectual property rights can have expensive consequences, which could ultimately force a person/business into bankruptcy/liquidation.

Injunctions

Injunctions are often sought and obtained to protect intellectual property rights, involving costly court proceedings. The sooner advice is obtained and action is taken, the sooner negotiation can take place to achieve agreed undertakings or withdrawal of an unwarranted threat of action, settling matters without the need for time and cost intensive proceedings. Claims for intellectual property disputes can be started in different places, the Intellectual Property Office, the Intellectual Property Enterprise Court (small claims track) and the Chancery Division of the High Court. The venue chosen can affect the speed and cost of a case and therefore this should be considered carefully before action is commenced.

Unwarranted threats

It is also extremely important to be aware of the consequences of someone making a groundless threat, which can expose the intellectual property owner to possible claim, in which they could be ordered to pay damages and costs to the person they alleged had infringed their rights!

Before litigation is commenced, the last stage in the process is often to send a formal warning letter, known as a ‘cease and desist’ letter or ‘letter of claim’, to the alleged infringing party. The letter is a formal notice requesting the alleged infringer to stop an action, for example to stop manufacturing and selling items which carry a trademarked logo without consent. Such letters need to be drafted carefully so they do not give rise to an action for groundless threats of infringement in some cases, as set out above. If a groundless threat is made, then the alleged infringer may end up commencing court action against the intellectual property owner before they do, causing the owner to bring any action they wish to pursue for infringement as a counterclaim, meaning they have less control of the litigation timetable.

Passing off

Another claim which can be brought in relation to intellectual property is a claim of passing off, which is used to protect unregistered trade mark rights in the UK. To be able to bring this type of claim three different elements need to be proven:

• the trademark owner’s goods/services are known by some distinguishing feature which have acquired goodwill;
• there has been an intentional or unintentional misrepresentation by the offending party which leads, or is likely to lead, consumers into thinking that goods/services offered by the offending party are those of the trademark owner; and
• damage has resulted, or is likely to result, to the trademark owner due to the misrepresentation.

If a claim is successful, the owner has a number of remedies available to them:

• an inquiry to establish the extent of their loss
• damages or payment over of the infringer’s profits as a result of the passing off
• an order for the delivery up or destruction of the relevant infringing goods
• injunctive relief
• recovery of legal costs

If passing off has been alleged, it is not unusual for a claim to be brought for passing off alongside a case for trade mark or design right infringement.

How we can help

Breach of intellectual property rights can involve costly court proceedings if matters are not settled in the pre-litigation stages.

We can assist you to fully understand the advantages and disadvantages of commencing and defending proceedings, or simply standing back and doing nothing. Early advice can often be the most valuable to you in making the all important decision of how to deal with the situation you are confronted with.

Arm yourself with knowledge and shield yourself against being unprepared, by contacting our team today!