Intellectual Property Disputes

Common IP disputes include trademarks disputes, copyright and design right disputes. Most cases which we deal with actually involve a combination of various breaches as well as what could be deemed as ‘sub areas’ such as a breach of a trade secret or an I.T. dispute.

Intellectual property disputes generally settle in the same manner as other commercial disputes, via mediation acceptance of a Part 36 Offer.

Counterfeit goods can cause brand owners serious financial and reputational loss. Counterfeit goods make up an increasing percentage of the overall market. 

There are wide ranging health and safety risks that counterfeit goods present to consumers and once in the supply chain, counterfeit goods can be difficult to root out. This can actively affect sales, resulting in a loss of revenue for you and your business. Companies of all sizes should adopt and implement an anti-counterfeiting policy and consider taking actions in the event of any infringement against them. 

We can advise on proactive measures that can be implemented to prevent counterfeiting of your goods, including best practices and the implementation of anti–counterfeiting strategies.  In the event that a dispute does arise, we are confident that we can discover the issues and take steps towards a speedy resolution. 

We also provide legal advice relating to grey goods and parallel importing, and our solicitors are experienced in advising both claimants and defendants in this area. Although technically not counterfeit, grey goods or parallel importing involves the distribution of goods from an authorised market to an unauthorised one. 

Our team can advise both on the enforcement and defence of anti–counterfeiting disputes, and liaise with the appropriate authorities, such as trading standards, Customs, right through to the civil and criminal courts to achieve the best results for our client.

Trade secrets are vital to the financial and reputational success of a business, and can give your business an edge over competitors. Famous examples of trade secrets include, the recipes of Coca Cola, IRN-BRU or the famous 13 herb and spices used in KFC’s chicken.

We understand that there are circumstances when confidential knowhow, trade secrets and commercially sensitive information must be shared with employees, stakeholders or partners. We also understand the feeling of betrayal and damage to your business that disclosure of confidential information can cause.

However, there is no distinct IP right which governs and protects trade secrets, and companies need to make sure they have adequate contractual protection in place in order to preserve confidentiality.

What is confidential information?

• Information which is confidential in nature, meaning that it must have the necessary quality of confidence (such that it is not public knowledge or property)
• Information that is disclosed, but upon which there is imposed a duty to keep information confidential

As mentioned, there is no stand-alone IP right available in law to protect trade secrets and confidential information. Methods of protecting your business’s confidential information include:

• Confidentiality or non–disclosure agreement: Essentially a contractual arrangement that will stipulate what confidential information is to be protected with an obligation to keep the information secret. However, these agreements need to be carefully drafted and will not always protect confidential information.
• Documentation of trade secrets: This is useful to actually evidence that your business has something that is a trade secret
• Contracts of employment: This is also an important step to preserve confidential information. Many employment contracts contain confidentiality clauses or restrictive covenants to prevent the dissemination of information held by employees as part of their employment.
• Confidentiality policies: A practical step, limiting access to trade secrets and confidentiality on a need to know basis, with a zero-tolerance approach to infringements.  Being seen to take swift action against infringements is also a way to reinforce such policies.

If you need help protecting your confidential and sensitive information, we have the skills and expertise to ensure that you have adequate contractual protections in place. In the event that information is disclosed and trust is breached, we are confident litigation lawyers and will seek the best result for you, in a cost-effective and efficient manner.

Copyright is the legal right that protects original ideas that have been physically expressed. It governs the rights of the owner, as well as the responsibilities of other people who want to use copyrighted work. Owners of a copyrighted work have the right to copy, change, sell, share or rent their work. There is also a right to prevent people from imitating work, restrict its distribution and stop others from using copyrighted work.

What does copyright protect?

It is important to recognise that copyright protection only covers original and tangible work. This means the work must be of the copyrighter’s skill and should not just replicate the work of someone else. It also means that work cannot merely be an idea someone has had. Examples of work protected by copyright include: music, films, computer software and databases, technical reports, books advertising and manuals.

Copyright holders have exclusive rights to copy and distribute the works they own. This means that where someone copies or distributes a copyrighted work, they may be liable for copyright infringement.

What is fair use?

There are exceptions in the UK which allow the lawful use or reproduction of material without requiring the permission of the copyright owner. Generally, this only applies in three circumstances:

• If the use is for the purposes of research or private study;
• If it is used for the purposes of criticism, review or quotation;
• Where it is utilised for the purposes of reporting current events (this does not apply to photographs)

It can be difficult to determine whether any of the fair use exceptions apply, since there is no legal definition of fair use. It will depend on the facts of the situation in each case.

Our experience and expertise have helped clients protect their copyrighted works and realise financial reward through copyright protection. Copyright can be difficult to prove, and ownership, or the right to use the work, can often be disputed. This is why you need an experienced and dedicated team to advise you on your rights, and assist you in potential disputes.

We believe we are in a perfect position to advise you on a complex case and realise the potential of your work. We will seek cost effective and efficient avenues to provide resolution as quickly as possible.

Design rights afford protection to the visual appearance of a product or item, or parts of an item such as its shape and contour. The owner of the design has the exclusive right to prevent unauthorised parties from using or producing that design.  Design rights protect 3D products, whilst 2D, such as design sheets, are usually protected by copyright.

Designs rights can be registered in the UK, or there is the option of registering them across the EU. Design rights can also be unregistered whilst still giving the owner of the design certain protections.  Of course, which option you decide will depend on your business and where you plan to market and sell your works.

Unregistered design rights

In the UK, unregistered design rights protect the shape and contours of the product. You will be given automatic unregistered design rights if:

• It’s an original design
• It’s a design not widely acknowledged within groups of comparable products

Unregistered design rights give protection for 15 years in the UK and three years in the EU. In the last five years of the unregistered design right, you must give a licence of right to anyone that asks.

Registered design rights

Registered design rights give more extensive protection and protect all the characteristics of a design, such as colours, material, textures and shape. Registered designs provide protection for up to 25 years, provided that, after the first five years, the right is renewed every five years.

In order for a design to be registered, it must be:

• New, meaning there must be no identical design in the market.
• Have individual character, meaning that it must have its own unique overall impression than that of another design which has been made available to the public before the date of the application for registration.

We can advise and assist registering your design rights if necessary, providing you with reassurance that your hard work is protected, and providing returns for you and your business.

Patents protect your inventions and can be one of the most valuable assets of your business. Patents give the exclusive rights for the patent holder, for a limited time, to prevent others from making, using or selling their invention without permission.

In contrast to copyright, which protects tangible formats of artistic works or designs, patentable rights include industrial processes or methods, machines and manufactured goods.

It is vital that your patentable invention is not shared in the public domain and is registered as soon as possible, or you may lose your right of protection in the law.

How to register a patent?

Like any other intellectual property right, patents must be registered at the Intellectual Property Office. Compared to other intellectual property rights however, the process of obtaining patents is expensive and can typically take a long time to register. In some circumstances, patents can take years to register and your application may require significant amendments before it is accepted and processed.

Is it worth it?

The benefits of protection however can be well worth the expense and time. Like any other intellectual property right, if not protected adequately, you may lose the financial benefits and suffer reputational loss if someone else copies your invention.  From the date of the patent application in the UK, protection lasts for 20 years. During this period, you have the right to bring proceedings against an infringing party.

If your patent is infringed, potential relief at court include an injunction, which is an order restraining the infringing party from further using your patented product. You may also be entitled to damages or an account of profits for loss suffered by the use of your patented product.

It is vital that early advice is sought in order to understand the process of registration, including the timing and cost of protecting and utilising your patent. This advice is imperative to ensure that a patent is the right protection for your business.

A mistake in registering your patent, or failing to meet a deadline in responding to amendments, may lead to your patent lapsing and not being registered. If your application lapses, you could lose the right to protect your invention.

We can help you in relation to contractual disputes that arise due to a dispute over the terms of a software agreement or maintenance agreement. 

We understand that IT and software applications are essential for the growth and profitability of modern businesses. It is therefore vital that you are fully protected. 

It may be that your IT or software dispute relates to an infringement of an intellectual property right, such as copyright, trade mark, patent or trade secret. Alternatively, it may be a contractual dispute. Both situations can quickly turn into protracted and expensive disputes and It is imperative that advice is sought at an early stage. 

In order to avoid disputes in the first place, it is sensible to have properly drafted licences and contractual agreements. As well as advising and assisting in contentious matters, we are also a first port of call to advise you on well drafted and secured contractual agreements. 

We will explore sensible avenues to resolve any dispute, involving alternative dispute resolution such as mediation, negotiation and settlement. 

Trade marks are essentially the badge of your business. They are how we distinguish one person’s brand, goods and services from another.  Most businesses will have a trade mark – a logo, brand, or trading name, and it is vital to your business that they are distinct and protected. 

Trade marks should not be generic, as this may result in loss of registration. It is also important that trade marks are distinctive to help customers recognise the goods or services that you provide and to keep you ahead of your competition. 

Equally, you may suffer financial or reputational loss if a business uses a trade mark identical or similar to your own mark. 

Trade marks are registered through the UK intellectual Property Office and if accepted, you will benefit from exclusive rights. This includes the right to prevent unauthorised use of the mark on products that are similar or identical to yours. We can help you with the registration of your trade mark, ensuring that you achieve the maximum protection afforded by the law, leaving you to run your business safe in the knowledge that your brand is safe.

Using another’s trade mark is often referred to as “fakes” and “counterfeiting” and can present a serious challenge both to you and your business. Even if you are confident that your brand or business model does not contravene another business’s trade mark, you can run the risk of trading so called “grey goods” often referred to as “parallel importing”. 

This happens when you trade goods that are not fakes or counterfeits, but have been imported goods from another market or through unofficial distributional channels. Often, although the trade mark holder has given consent for good to be sold in one market, permission is not given for distribution in the UK market.

Grey goods or parallel importing can attract both civil and criminal liability, meaning a custodial sentence could be imposed. Trading Standards usually deal with such issues, and have recently received more funding and powers to deal with potential infringements. 

Passing off

Passing off protection relates to the “goodwill” of a brand, or its reputation that it has built up in relation to goods or services which it uses to attract customers. Essentially, passing off protects an owner from another trader from representing that his goods or services have an association or connection with the owner’s goods. 

Passing off can be difficult to prove, meaning disputes can often be complex and expensive. Market research may have to be commissioned to prove the existence of reputation and goodwill in relation to specific products.

If you feel you have a trade mark issue, or want advise on any aspect of trade mark law, please contact our litigation department who have extensive experience advising on trade mark claims.