Intellectual Property infringement - England and Wales

(copyright, patent, trademark, passing off)

 

If you discover that another company is infring your intellectual property the you should seek immediate recourse. Such infringements include:

• they have used your copyrighted work without your permision
• they are using technology that you have patented for their products
• they are passing off as you or using branding that you have trademarked

 

 

Your first step is to approach the company and complain about the infringement. You can do this personally or use a lawyer. Quite often the offending party will simply cease the infringing activity and you can leave the matter there if you wish. However it is often the case that the other party simpy chooses to ignore your complaint or contests it. If that happens then you must decide on which course of action is the most appropriate, and this will depend on how much time, effort and money you are willing to invest into pursuing the infringement. Your options are: negotiate, mediate, take court action. You may also consider filing your dispute on the Business Disputes Register instead of or in conjunction with one of these options. Here is a summary table of the suggested actions

 

	File on the Disputes Register	Negotiation	Mediation	Court Action
Cost	£15	Free if DIY	£150 per two hours per party	Min £60 to 5% of claim
Time	5 minutes to file. Often yields results within days	often weeks	often weeks	months
Benefits	Quick and cost effective	non-aggressive	suitable when case is not clear cut	get closure

 

File on the Business Disputes Register

This the simplest and most cost effective action step you can take and it has a high likelyhood of yielding results.. Simply fill in a dispute form with the relevant category heading (e.g. "Copyright Infringement") and fill in details of your dispute . Your dispute is then automatically published on the internet for the general public to discover as a matter of public record. The other party will receive an email notification about the IP infringement dispute being filed on the Business Disputes Register and is urged to contact you to resolve the infringement dispute. If the dispute subsequently reaches a satisfactory resolution then you have the option to remove it from the register - this is very important because it is what compels the other party to resolve your dispute. Not removing the dispute from the register could be very costly to the other party in terms of lost business. 

The dispute will appear on google searches of the of the other party's company name, often on the first page. This is very likely to have a detrimental impact on the other party's business reputation and credit rating which is why they will be inventivised to respond and resolve the dispute promptly.

 

Negotiation

If your initial approach failed to convince the other party to back down completely, you might consider a negotiation approach whereby you see a compromise solution. This can be conducted through a series of emails, calls, and meetings and should be cost effective even if you chose to use a professional to represent you.

 

Mediation

Mediation is a method of alternative dispute resolution which seeks to resolve intellectual property disputes without the need to go to court. The mediator’s role is not to make a decision on the dispute, but to help both parties reach an amicable solution. There are a number of impartial professional mediators you can employ to help both parties resolve the dispute. You can also use the goverment's Intellectual Property Office's own mediation service.

 

Mediation fees:

 

Duration	Fee
2 hours (over the phone)	£130
4 hours	£300
6 hours	£450
8 hours	£600

Room hire is free if mediation is at least 4 hours and held at IPO's London or Newport office

 

Benefits of mediation

There are many benefits to mediation such as:

• quicker and cheaper than litigation - allowing you time to focus on your business and not be distracted by lengthy and costly litigation proceedings

• high success rate - the large majority of mediations reach an agreement on the day and other disputes reach resolution as a direct result of the mediation process

• confidential - whatever the outcome, it will remain private (preserving business reputations) unlike a court hearing which is open to the public

• opportunities - mediation offers the opportunity to maintain existing commercial relationships, as well as the chance to forge new ones

 

 

Court Action

If you have an intellectual property dispute with a company in England or Wales such as copyright, patent or trademark, you can seek a judgement at the Intellectual Property Enterprise Court. 

The court can order the other side to pay you compensation if you win your case. It can award up to £500,000 in damages or lost profits.

For cases involving more money, you should apply to the Patents Court.

Hearings normally take place in the Rolls Building in London but can be held in other courts around England and Wales.

 

If you wish, you can represent yourself in court but it is advsiable to use a lawyer if you claim is not a ‘small claim’ i.e. over £10,000. It is not normally possible to claim back legal costs for a small claim,  howveer for larger claims you can ask for costs up to £50,000. Depending on the type of dispute you should seek help from:

• copyright dispute intellectual property lawyer
• patent dispute: patent attorney
• trademark dispute: trade mark attorney

 

To start court action, fill in a claim form and email it to ipec@justice.gov.uk

 

Serve the form

You will nees to have the court stamp a copy of your claim form, and then you send the copy to the infringin company ("the defendant"). You must also give them a response pack and the "particulars of your claim". Finally send the court a "certificate of service" to confirm you’ve sent the documents.

The defendant has 14 days to reply, but can request an extension of 5 to 8 weeks. If they fail to respond respond or defend the claim you can then apply to the court to make a judgment in your favour. If the defendant does respond then there will be a court hearing unless a decision can be reached on the paperwork alone. You may have to attend a "case management conference" with the judge and the defendant. 

 

Court fees

The fee is based how much you want to claim from the other side. You may have to pay another fee for a court hearing later on.

 

Claim ammount (up to)	Court fee	Hearing fee
£300	£35	£25
£500	£50	£55
£1,000	£70	£80
£1,500	£80	£115
£3,000	£115	£170
£5,000	£205	£335 capped
£10,000	£455
£200,000	5% of claim
£500,000	£10,000 cap

 

The hearing

The court hearing is usually takes place at Thomas More Building , Royal Courts of Justice , The Strand , London WC2A 2LL; and will be attended by a judge, the defendant and his team, plus any expert witnesses, in addition to your self and your lawyers (if you have chosen to be represented). The hearing usually takes several hours and can take up to days for more complex cases. The hearing will be recorded and the courtroom will usually be open to the public.

In most cases you won’t discover the judge’s decision until after the hearing and you will be set a a copy of the draft judgment. A formal judgment is issued shortly afterwards.

You can appeal if you disagree with the decision.

You may need to ask the court to use bailiffs or take other steps if you’re awarded money and the other side won’t pay.