Intellectual property rights (IPRs) help companies maintain their competitive edge in the marketplace. To prevent this edge from being eroded, it sometimes becomes necessary to enforce these rights against infringers.
In this article we will look at how to optimise and utilise various registered IPRs (specifically: registered trade marks, design rights, and patents) to enable effective and rapid enforcement.
To summarise the nature of these rights:
- Registered trade marks protect the brands (eg names and logos) which help customers identify and distinguish your products, services and company from others in the marketplace.
- Design rights protect the visual appearance (the ‘design’) of your products.
- Patents protect the new ideas that form a part of your products or services.
Most of these registered rights are legally defined in a way to provide a broad scope of protection. In this way, a third party may infringe your rights even when their brand, design, or idea is merely similar to yours.
Strengthening IPRs
Before any infringement occurs, we should ensure your IP position is strong. Successful enforcement is dependent on strong planning.
Identification
We should identify the most commercially important brands, designs and ideas to protect.
Protection
A trade mark should be applied for before marketing investment in the brand exceeds protection costs. In this way, costs do not have to be incurred again to rebuild reputation following an enforced rebrand.
A design right must be applied for within 12 months of the design being made publicly available.
Generally, patents must be applied for before the idea is non-confidentially disclosed.
Protection for all the above can be sought in the UK or Europe and then extended into other countries within six months for design rights and trade marks, and 12 months for patents.
Maintenance
Periodic review of your IP position should take place to ensure new brands, designs and ideas are protected and IPRs covering old brands, designs and ideas are discarded.
Registered IPRs must also be periodically renewed through the payment of ten-year renewal fees for registered trade marks, five-year renewal fees for design rights, and annual renewal fees for patents.
Ownership of IPRs should be consolidated and any ownership changes promptly recorded at the official IP bodies. Delays in doing so can limit recovery of costs and can create complexities in enforcement.
A company-wide strategy should be put into place to ensure existing IPRs are not undermined. For example, rules regarding brand usage should be applied to ensure those brands do not become generic terms in the industry because trade marks covering generic terms cannot be enforced.
Pre-action steps
Analyse infringement
The infringing product or service should be analysed and compared against your IPRs to determine the extent to which the product or service infringes your rights. This may require a test purchase of the product or service.
Sometimes it may not be possible to determine definitely that infringement is occurring. However, details about the product or service can be obtained during litigation.
Optimise rights
As a result of the analysis, it may be prudent to modify pending patent applications to focus on the infringement and accelerate these to registration, and to secure new registered trade mark and design right protection.
Emergency enforcement
Action should be taken when the value of your company is being eroded by third-party acts that are infringing your IPRs.
Urgent action may be necessary when damages or an account of profits would not be an adequate remedy. This is typically where reputational damage is occurring (eg poor quality products being sold by another under your brand).
The following steps should be considered:
1) Extrajudicial action
Many online marketplaces of physical goods, such as Amazon and eBay, and virtual goods, such as the Apple AppStore and Google Play, and social media providers, such as Twitter and Facebook, operate strict IP guidelines to prevent sellers or users of those platforms from infringing the IP rights of others. We often use take-down processes provided by these companies to provide an extrajudicial method of enforcing IP rights which can result in infringing products being removed immediately.
2) Cease and desist letter
A clear and robust statement of rights can indicate to an infringer the risks of proceeding and is often helpful in forcing negotiation.
However, in certain circumstances, a lighter touch may be more appropriate, particularly where collaboration between the parties is still possible.
3) Negotiation
Even for the strongest cases, litigation is best avoided due to cost, delay and uncertainty. In our experience, a nuanced negotiation strategy often brings an early end to an IP dispute.
4) Mediation
Mediation services are offered by many bodies, including via the UK Intellectual Property Office. We have found that mediation can help provide perspective to both parties when a dispute gets heated or personal.
5) Filing a claim
When bringing an infringement claim in the UK, we have three choices of venue:
- Intellectual Property Enterprise Court (IPEC) – small claims track. This track has jurisdiction to hear limited types of IP claims (including registered trade marks) up to £10,000; interim remedies are not available; and costs awards are not typically granted.
- IPEC fast-track/multi-track. The multi-track has jurisdiction to hear claims up to £500,000 and covers the full range of IP claims (including patents and registered designs); interim remedies are available; and costs are capped at £50,000.
- High Court –The High Court is suited to complex and high-value claims.
6) Interim remedies
In the multi-track of IPEC and the High Court, interim remedies such as interim injunctions, search (Anton Piller orders) and freezing orders (formerly a Mareva injunction) can be sought. Interim injunctions, although difficult to obtain, can be vital in IP infringement cases where, for example, poor quality goods on sale are damaging your company’s reputation, the infringing party is a producer or seller of counterfeit goods who may destroy evidence, or the infringing party is an asset flight risk.
7) Remedies
In all venues, remedies such as damages, account of profits and final injunctions are available.
8) Aftermath
Following success at either step above, we recommend that ongoing monitoring to ensure compliance with any negotiated agreement or court order takes place. It is not unusual for original infringers to attempt to relaunch a previously offending product with a brand name variation, differing design, modified to ‘design-around’ a patent, or under a related company.
With a robust protection and enforcement strategy in place, IP can become a valued asset for all businesses.