IP Crime, Enforcement, and the Penalties

The term ‘IP infringement’ relates to the use of someone’s design, patent, copyright, or trade mark without their permission.

In fact, the enforcement of intellectual property, or IP crime, can result in a fine, prison, or in severe cases – both.

Here’s how it works:

Exploiting somebody else’s IP rights, protected by intellectual property laws, would be infringing the creation, invention, or the product.

So, IP rights would be infringed if they are copied or used in some other way without the consent or permission of the person who owns those rights. The same rules would also apply to any representative of the rights.

Examples include:

• Copying a film and then making it available online.
• Selling counterfeit goods (e.g. clothing, DVDs, makeup).
• Selling counterfeit medicines or software.
• Using or reproducing technology protected by a patent.

Note: Such acts of IP infringement constitute a civil infringement. But, the illegal act may also constitute a criminal offence in the case of trade marks, designs and copyright if conducted in the course of a business.

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To Use an Existing Trade Mark

There are ways to use an existing trade mark without breaching IP laws. The first step would be to contact the current owner.

You can search for a trade mark through the database (e.g. by number, keyword, or an image) to find the registered owner.

Licensing Trade Marks

You can try to get licence that grants permission to use someone else’s trade mark. Because it would be a formal agreement, all parties must agree the terms of this type licence.

• Use Form TM50 to ask the IPO to record a license against a trade mark.
• Use Form TM51 to ask the IPO to remove or amend a licence against a trade mark.

The cost of each application is £50. Remember to send a standard fee sheet along with the payment and the application form to the address written on the relevant document.

Note: The owner of the trade mark would need to sign any forms you send to the Intellectual Property Office (IPO). If not, you would need to send some proof of the agreement with any application.

Buying Trade Marks

You must notify the IPO if you become the new owner of a trade mark. For example, you might buy it as an individual or it might result as such, following the merger of two companies.

It is not uncommon for an owner to sell a ‘partial assignment’. This would mean they are only selling one part of the trade mark (e.g. not the right to register derivative marks).

• Use Form TM16 to record changes to the ownership of UK trade marks for full assignment of rights.
• Use Form TM16P to record a partial assignment of goods and/or services for a single trade mark.

The cost of each application is £50. Remember to send a standard fee sheet along with the payment and the application form to the address written on the relevant document.

Coexistence Agreements

What is a coexistence agreement? It is a legal agreement where two parties, or more, agree to trade in the same market (or similar) using an identical trade mark (or similar).

Note: The Intellectual Property Office produce a coexistence agreement fact sheet. The guidance notes explain how you might use an identical trade mark as someone else (e.g. a company name or logo).

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How to Use an Existing Patent

You should contact the owner if you want to use a patent that already exists. In some cases, the owner of a patent will allow others to license it or to buy it.

There are several different ways to search for patents. You can make a search for a patent to try and find the current owner on the patent databases.

Licensing a Patented Product

You would need to make your own licence arrangement direct with the owner (including the cost). But, you can file a proceeding at the Intellectual Property Office to ask for help resolving a patent dispute if you are unable to reach an agreement.

Even though the IPO are unable to determine the exact terms of a patent licence (e.g. a price) they can make decisions on:

• What may, and what may not, be part of the licence.
• Whether the owner MUST grant a licence (termed a ‘compulsory licence under a patent’).

Patent with Licence of Right

Having ‘licence of right’ means the owners of a patent grant a licence for use – by anyone. But, you would still need to agree the terms of the licence with the owner before using the patent. The IPO can help if you are unable to reach an agreement.

Registering a Patent Licence Agreement

Use Form 21 to apply to register a change of ownership or to give notice of rights acquired in a patent or in an application for a patent. Fill in the form and send it to the address written on the document.

The cost to submit each form is £50. But, you can use the same form to record licences for several patents together.

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How to Buy an Existing Patent

If someone sells a patent to you they MUST transfer the ownership over to you. There is a specific written document used to record this type of patent ownership transfer.

The person selling the patent MUST sign the ‘assignment’ (a record of the transfer). You can hire a solicitor to help you draw up this particular document.

Use Patents Form 21 and return it to the address written on the document after completion. Remember to include a copy of the assignment.

The cost to submit each form is £50. But, you can use the same form to record licences for several patents together.

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Get Permission to Use Copyrighted Material

You need permission to copy or to use copyright material. So for instance, you cannot buy a painting and then use copies of it as a book cover. Likewise, you cannot buy a CD and then use one of the tracks from it in a movie.

There are ways to use something or material protected by copyright. As a rule, you would need to (any):

• Agree a licence with the copyright owner to use it.
• Acquire, or buy, the copyright.
• Confirm that any intended use falls within the exceptions to copyright allowing limited use of copyright works without the permission of the owner.

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How to Buy a Copyright UK

Buying a copyright to something means the person who owns it would transfer the copyright over to you.

Owning the copyright to something means you can choose to use it for anything you like. You do not need to get express permission from the creator, providing you respect their moral rights.

But, you MUST get the copyright owner to sign a written agreement. The terms written in the agreement should state that they have transferred ownership of the copyright over to you.

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Moral Rights

In some cases, the creator would still have certain rights about how others use their work. This rule would still apply even after someone buys their copyright.

Let’s look at some examples:

The moral rights of artists, authors, composers, film directors, and playwrights means they retain the right to:

• Be recognised as the creator of the work when copies are made available to the public.
• Object to the work being altered in a way that has negative effect on their reputation.
• Not have someone else’s work falsely attributed to them.

The moral rights of actors, dancers, or performers means they would retain the right to:

• Be recognised as the performer of the piece.
• Object to the performance being altered in a way that is damaging to their reputation.

A creator or performer of a piece of work can choose whether to use (or lose) their moral rights. Even so, they should inform the new owner of the copyright whether they want to exercise their rights – or not.

Note: Unlike selling or transferring their copyright, a creator or performer cannot sell or transfer their moral rights. They will stay valid for as long as the copyright covers their piece of work.

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Performers’ Rights

Different rights apply to performers (e.g. in broadcasts or films). In some cases, they would still have ‘economic rights’ to copyright material. This rule may still apply even after selling the copyright.

Permitted Use of Copyright Works

There are certain situations when you may not need to get permission to use a copyright work. Typical reasons include:

• Criticism, review, and reporting current events.
• Helping disabled people.
• Non-commercial research and private study.
• Recording for use at a later date.
• Teaching in educational establishments.

Using a ‘less than a substantial’ part of a copyright protected work means you may not need permission. Generally, the merits of this would be decided on a case by case basis.

As a rule, it would not be less than a substantial part if it was seen as an important part of the work. So for example, the conclusions of a report or a frame from a film.

Note: This guide explains the general processes of using somebody else’s intellectual property (IP). If you are unsure or have doubts, always seek legal advice from an intellectual property professional.

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Using a Registered Design UK

You would need to contact the current owner to use a registered design. The options would then be buying the design from them or agreeing on a licence to use it. There are simple ways to find a registered design in the United Kingdom.

Having bought a UK design you would be able to do anything with it that you choose. As a rule, a licence made between the purchaser and the owner of the design should state:

• How long the licence will last.
• How much the new owner needs to pay for it (if applicable).
• What the new owner can do with the design.

Use Form DF12A to record a change of ownership or to record or cancel a licence or security. Fill it in and send it to the address written on the form. There is no fee to use this service.

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