IP INFRINGEMENTS: The abuse or misuse of someone’s creative work is a violation of intellectual property right.
Typical examples of IP infringement include instances when someone:
- Imports, sells, or uses a patented process or product.
- Uses some, or all, of someone else’s creative work that is under copyright (without their permission).
- Makes, offers, or sells a registered design for commercial gain.
- Uses, or reproduces, a trade mark that is either similar or identical to one that is already registered.
Note: It would be wise to get expert help from an IP professional. You can also contact the Intellectual Property Office (IPO) for help and advice (further details below).
Whether you choose to hire legal representation or take action yourself, the process usually involves three steps:
- Coming to an agreement with the other party or getting them to stop using the IP (e.g. licensing your IP).
- Using some type of dispute resolution, such as mediation.
- Taking legal action if there are no other means to resolve the dispute of IP infringement.
Reporting Intellectual Property Crime
As a general rule, copying or using copyright material is a criminal offence. The same applies to the misuse of a design or registered trade mark (unless you have permission for it).
You can contact Citizens Advice to report suspected IP crime. They would pass on the information you provide to Trading Standards.
Note: There may be a reason why you prefer to report a violation of intellectual property ‘anonymously’. If so, you should contact Action Fraud or the independent charity ‘Crimestoppers’.
Where to Get Legal Advice
There are several ways intellectual property (IP) professionals would be able to help. They can offer legal advice on infringement disputes or they can act on behalf of the client.
Organisations that offer help defending intellectual properties in United Kingdom include:
- The Chartered Institute of Patent Attorneys
- The Chartered Institute of Trade Mark Attorneys
- The Law Society (England and Wales)
- The Law Society of Scotland
- The Law Society of Northern Ireland
Contacting the Intellectual Property Office
The IPO can offer help and advice for certain types of infringement abuse. For example, besides giving general advice on IP, the other services they offer include:
- Offering a non-binding opinion on resolving patent disputes.
- Giving advice about Supplementary Protection Certificates and whether someone is infringing yours (the fee is around £200).
- Helping you to file legal proceedings over certain types of IP dispute (details below).
Reaching to an Agreement
The owner of intellectual property has the right to contact anyone who uses their IP without permission. As a rule, the first step in defending your intellectual property is to ask the other party to stop misusing it.
But, making unjustified threats to innocent parties means they would have the right to sue you. It may be best to seek legal advice before making contact with any offenders.
Making a Deal
In most cases, making a deal with the other party will be the cheapest solution. It is also a much quicker process than taking the matter to court.
The Intellectual Property Office (IPO) produces further advice and guidance on how to:
- License, sell, or market your copyright material
- License, mortgage, sell, change ownership, and market your design
- License intellectual property
- License, mortgage, transfer, merge, and market your trade mark
It would be uncommon for someone else to have a similar trade mark to yours. In this case, you can try to reach a coexistence agreement with the other party.
Note: A coexistence agreement is a type of legal agreement where two (or more) parties agree to trade in the same or in a similar market using an identical or similar trade mark.
It can be difficult to make an agreement over an intellectual property (IP) dispute. In cases such as these, it may be helpful to use a mediator.
Mediation provides an alternative method of resolving disputes without having to go to court. It is less expensive and quicker than seeking legal action. As a rule, the outcome would be a beneficial one for all parties involved.
The mediators would not be able to make a decision on any particular case. But, they can help find an acceptable solution by providing an independent view on any given dispute.
Any discussions you have with a mediator will be confidential. But, if you cannot resolve the dispute, you would not be able to used the information later in court.
Note: You can use mediation in almost all IP disputes of infringement, licensing, and patent entitlement.
The IPO Mediation Service
The Intellectual Property Office (IPO) also offers a mediation service to parties involved in an IP-related dispute.
The cost of using the IPO mediation service would depend on an approximate value of the claim and time needed for the case.
Note: Read further guidance on the IPO intellectual property mediation service including how they structure the fees.
Some of the other mediators you can use include the:
- Civil Mediation Council (England and Wales)
- Scottish Mediation Network
- Northern Ireland Mediation
How to Take Legal Action
You may need to file legal proceedings to get a resolution. If so, filing can take place through the courts or the Intellectual Property Office (IPO). But, you can only file certain types of proceedings via one or the other.
As a rule, a case filed in court should have already tried to find a solution to the dispute (e.g. mediation). You can also hire the services of an Intellectual Property Professional before you start legal proceedings.
Filing through the IPO
Use the contact details for the IPO (written above) if you choose to file through them instead of the courts.
Filing through Courts in England and Wales
The complexity, nature, and value of a claim will determine which particular court to use in England or in Wales.
IP Claims below £10,000
There is no need to use a lawyer if you are using the IPEC small claims track. The Intellectual Property Enterprise Court (IPEC) is for a claim less than £10,000 and for an infringement of:
IP Claims up to £500,000
You would be able to take a case for any IP right to the Intellectual Property Enterprise Court (IPEC) if:
- You are not claiming more than £50,000 in legal costs.
- You are not claiming more than £500,000 for damages
Claiming more than £500,000 in Damages
A claim of over £500,000 in damages would need to go to the Chancery Division of the High Court of England and Wales. There would be no upper limits to the amount you can claim for damages or legal costs.
Filing through Courts in Scotland
In Scotland, you should use the Court of Session for complex or valuable claims. There would be no upper limits to the amount you can claim for damages or legal costs.
Filing through Courts in Northern Ireland
You should use the Chancery Division of the High Court of Northern Ireland for complex or valuable claims. There would be no upper limits to the amount you can claim for damages or legal costs.