Intellectual Property Disputes and Infringements
Protecting your intellectual property and commercial interests
It is likely that you have put in a lot of time and effort to create the pieces of work or products that are commercially valuable. It is not fair or right that someone should profit from your hard work by stealing parts of it.
When infringements happen, or it is alleged that you have infringed someone else’s intellectual property rights, it is important that swift and effective action follows to limit the damage or to get yourself in the best position to defend an allegation. We have expertise in advising on intellectual property infringements, including copyright, trademarks, and design rights.
As soon as instructed, we will establish the nature of the infringement and work with you to create a bespoke strategy with remedies to rectify the situation and protect your commercial interests. We will agree with you your priorities and objectives and will agree a budget with you. This could include obtaining an interim injunction to prevent further infringements, a search order or a freezing order if necessary. Final remedies include a permanent injunction and a claim for damages.
What is intellectual property (IP)?
Intellectual Property (IP) is an umbrella term that refers to intellectual creations or creations of the mind. They are intangible assets that are not physical in nature, including literary and artistic works, designs, symbols, names and images.
IP is protected by law to ensure the people who have invented or created a product, or a piece of work can benefit commercially from their work.
There are different types of IP, including patents, copyright, trademarks, and designs.
Intellectual property can have more than one owner, it can belong to a group of people or a business and can be sold or transferred.
What is an intellectual property infringement?
An intellectual property infringement is any breach of an intellectual property right. IP rights are infringed when a work protected by intellectual property law is used, copied or exploited for commercial benefit without permission.
Infringement may be unintentional, for example, when a business uses copyrighted or trademarked material without due thought such as its brand or logo being too similar to that of an existing organisation.
Deliberate infringement of IP on a commercial scale may be a criminal offence. For example, “counterfeiting” or “piracy” or the selling of counterfeit goods.
Trademarks
Trademarks can be words, slogans, logos, shapes, colours or sounds that distinguish the goods or services of one business from another.
Trademarks can be registered or unregistered. This note focuses on registered trademarks.
You can oppose the registration of a trademark or apply for it to be invalidated or cancelled.
Once a trademark is registered, you cannot use a mark that is:
- identical or similar in relation to the same or similar goods where there is a likelihood of confusion; or
- identical or similar in relation to any goods where the mark has a reputation and use takes unfair advantage of or is detrimental to the distinctive character of the mark.
Example of how you can infringe a trademark include:
- Applying a mark to goods or packaging
- Offering goods or services for sale under the mark
- Importing goods under the mark
- Using the mark on business papers or in advertising
There are defences to trademark infringement, such as:
- An own name defence.
- Where the first mark does not have sufficient reputation when defendant applied for the later mark
- Acquiescence in the use for a period of 5 years
- The trademark has not been used for 5 years.
- The trademark was not registered at the time of the infringement complained of.
Unregistered design rights
Design right relates to the appearance of a product. For example, its shape, pattern or configuration. There are exceptions to this such as surface pattern and where the product is made to “fit” or “match” with another product (known as the “spare part” exception). The design must be original and must be documented or a product made to the design. The designer is the first owner unless the design has been produced by an employee in the course of their employment.
Design right lasts for:
- 15 years from the end of the calendar year when the design was first recorded in a design document or from when the first product was made to the design.
- 10 years from the end of the calendar year when products made to the design were first offered for sale or hire.
The design right owner has the right to manufacture the products to the design or document a design to which products can be manufactured.
A person or business infringes design right where their actions are inconsistent with the rights of the owner without a licence for commercial purposes. Where a product is purely functional a right to a licence arises in the last 5 years of protection.
There are defences to infringement including copying:
- that is not for commercial purposes.
- for experimental purposes.
- for teaching purposes providing certain conditions are met.
Care must be taken not to make groundless threats of infringement.
Copyright
Copyright is an automatic right whenever an individual or company creates a piece of original work, as long as it has required a degree of labour, skill or judgement. Contrary to popular belief, there is no requirement for the copyright holder to label the work as copyrighted.
Types of work protected by copyright include literary, dramatic, musical, artistic, typographical arrangement, sound recordings and film.
Copyright covers the work that expresses an idea rather than the idea itself. For example, the ideafor a book is not covered, but once it has been written or put into print, it is.
Usually, copyright is owned by the person who first created the work, the author, or the employer if the work has been created as part of an individual's employment.
Copyright lasts for different durations depending on the medium, for example 70 years after the death of the author for literary work, or 70 years from the release date for sound recordings.
Passing off
Passing off is a form of misrepresentation. Where goods and services have a reputation, and they are offered to the public in such a way as to mislead the public to believe that the products or services are their own. There must be damage to the Claimant caused by the Defendant’s misrepresentation.
Anyone who can prove the elements of reputation, misrepresentation and loss can bring a claim for passing off.
We can help you seek an interim production to protect your position up to and including trial as well as bring a claim for damages and where appropriate delivery up and destruction.
In addition, we can help you make an application to require a company to change its registered name where a company name has been registered with a view to obtaining money from you or to prevent you using the company name where you have established a reputation in the name.
Possible remedies for an infringement
There are a number of possible remedies for an intellectual property infringement, including:
- Cease and desist letter - a letter from an IP lawyer demanding the infringer stop using your assets without permission is the usually the first step. It is often enough to stop the offence in its tracks, minimising the negative effect.
- Reaching an agreement - rather than incurring the expense and stress of going to court, it might be possible to come to an amicable agreement with the infringer or the business alleging infringement against you. This could include agreeing an appropriate fee for use or a licence for continued use.
- Alternative Dispute Resolution – For example, use of mediation can help resolve disputes relating to trademarks, copyright and designs.
- Litigation – if settlement pre-action is not desired or possible, the Intellectual Property Office or the courts will resolve the dispute. Our lawyers will be able to assist in bringing or defending claims.
Why choose our IP dispute lawyers
Whether bringing or defending an IP infringement claim, we specialise in tailored and bespoke advice.
We will establish your objectives at the outset. Where desired we will always look to resolve the issue quickly and economically. We will advise on the merits. risks and costs of any course of action.
We are a multi-disciplinary law firm. We are able call upon the expertise of other members of the firm where this will assist clients.
We are honest and pragmatic in our approach, delivering a service that is jargon-free and with transparency around costs.
Meet the intellectual property disputes team
Julia Lowe
Partner - Head of Dispute Resolution
Matt Dudley
Partner - Commercial Litigation
Carole Maddock
Legal Director - Commercial Litigation
