What can we do if someone blatantly disregards our IP rights?
If you are successful in an infringement action, the court may make an order requiring the infringer to stop infringing your intellectual property rights in the UK and may award damages based on any loss you have suffered as a result of the infringement,or (as an alternative to damages) may order the infringer to account to you for any profit he has made by using your intellectual property.
In the interim, you might also obtain an injunction from the court requiring the alleged infringer to stop using the infringing material until the court comes to a final decision on the issues.
But very few disputes over infringement of intellectual property rights actually go to court. Not even large commercial enterprises want to go to court, and for smaller enterprises going to court is to be avoided if possible.
In most cases somebody infringing your IP rights will stop doing so if they are convinced that: you own rights in the material they are using or copying; you are fully aware of what they are doing; and if they do not stop infringing or obtain a licence from you, you will take them to court.
The more you can convince an infringer that the risk of being sued is greater than the commercial benefit of infringing your intellectual property, the more likely they are to stop infringing.
Litigation in the English Courts is governed by the general pre-action protocol requirements of the Civil Procedure Rules. They encourage an exchange of information and the resolution of disputes without court proceedings being instigated.
There are no specific intellectual property dispute protocols, although draft protocols proposed a couple of years ago are widely followed by practitioners. These require anyone accused of infringement to be given 14 days to respond to a letter of claim before any proceedings are issued, unless there is an urgent need to obtain an injunction because of serious damage being caused to the claimant's business. The letter of claim must give complete details of the infringement and the rights that have been infringed.
Intellectual property rights are rights created by statute and are, by their nature, complex pieces of law. You need to convince an infringer that you have a detailed knowledge of the law and the rights that you have to stop them infringing your IP. As a result, a well researched and written letter of claim can be invaluable in terms of convincing an infringer that you take your rights seriously and are likely to enforce them.
Certain information must be included in a letter of claim and a failure to do so could damage your claim if you had to issue court proceedings. For instance, for a trade mark, you should give the number, class, date of registration and the specific part of the specification you are relying on. For copyright infringement of software or a literary work, you need to identify the work in which the copyright subsists and how and by whom it was created. You also need to identify accurately the parts of the material in which you have rights that have been used or copied.
If you get the letter of claim wrong because you failed to investigate your rights or the infringement properly it could create problems for you. If you fail to set out the details of your rights it can affect the damages to which you may be entitled. For instance, it is a defence to a claim for damages for patent infringement if the infringer was unaware of the patent.
Make sure you have investigated as thoroughly as you can the activities of the person you believe is infringing your intellectual property rights. Threatening somebody with proceedings for infringement of a registered right such as a patent or trade mark when, in fact, no infringement has taken place, could result in a claim against you for an unjustified threat of infringement proceedings. Anyone who receives an unjustified threat may sue the person who threatened him for any damage done to their business as a result.
If someone accepts that they have infringed your rights, you need make sure that you can stop further infringing activity. A letter of claim will usually demand undertakings from the infringer including undertakings not to infringe and to deliver up or destroy infringing material. The claimant will often also ask for disclosure of information relating to the infringement, such as where infringing material was obtained from.
The undertakings are given in consideration for not issuing proceedings and, once given, provide you with a straight forward contractual right that is easier to enforce in the courts than bringing an action for the infringement of intellectual property. Few people will breach this sort of undertaking.
If the infringer ignores the letter of claim and fails to give undertakings, you will have to make a commercial decision as to whether the infringement justifies incurring the cost of court proceedings.
One point to bear in mind is that if you want to get an interim order from the court to stop the infringing activity until trial you must act relatively quickly. To convince the court to grant that sort of order you have to show that there is an urgent need to prevent further damage. If you have delayed for some months when you knew about the infringement, it will be more difficult to convince the court that there is any urgent need.
If you would like further advice about any of the issues considered above please contact Paul Northwood on 01869 331753 or email him at firstname.lastname@example.org
This article is not intended to be, and should not be taken as being, legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.