Peter Adediran’s specialist niche area of practice is copyright, trademark and patent disputes and protection relating to digital media including websites and mobile applications PAIL Solicitors. Read more on PAIL’s Resource Library or keep up with the firm on Facebook.
This article sets out an overview of running an intellectual property dispute in England, it considers the initial matters that should be dealt with and forming a clear strategy from the outset as how to run the litigation.
Risks/Benefits analysis of litigating?
1. The first thing to consider is whether the proposed defendant has the financial means to pay legal costs and/or damages if your proposed litigation is successful.
1.1 It is important that you understand that litigation is expensive and your only recourse to recover some of your legal fees are from the proposed defendants. You might want to consider where the proposed defendant has its assets as this might influence where to issue the claim and enforcement against these assets. Having said that for some claimant’s reputational damage is far more important to them than receiving damages and/or legal costs in which case they often wich to proceed even where receiver of litigation expenditure might be problematic.
What rights are you dealing with?
2. Second, what intellectual property right is the subject matter of the potential dispute? If the proposed claimant is experienced in IP rights then they would know this already and might even have taken steps to secure and be actively managing their rights in the intellectual property. However, where the proposed litigant is inexperienced with IP rights then the correct IP rights and how to go about enforcing those rights will need to be identified. Discussing the different sorts of Ip rights are outside the scope of this article: the main IP rights are: Trademarks; Copyright and associated rights; Design Rights; and Patents.
Who has the right to sue?
3. Third, check that the IP right is in force, subsisting and owned by the proposed litigant or that the proposed litigant has the right to sue to enforce the IP rights. Where there is a contract such as a license or assignment from which the IP rights arise make sure to check whether it has an arbitration or ADR clause.
Has there been infringement?
4. Fourth, remember that the allegations of infringement are just allegations. Consider whether there has been an actual infringement which is not permitted or for which there is no defence? If so then the next question do the English courts have jurisdiction, can the matter be dealt with by the English Courts? Is there a clause in an existing contract that gives a jurisdiction outside of England exclusivity?
Are you statute barred?
5. Fifth, has the time limit within which a claim must be initiated after the infringement occurred expired? There is a period of limitation for bringing every type of IP claim. These time limits can sometimes be extended.
Do you have the evidence?
6. Sixth, what real evidence is there to support the allegation of breach of IP rights? You need to have strong clear independent evidence, anecdotal evidence is not enough. If you need to compile survey evidence, make a trap purchase of the product, take time stamped screen shots, compile website data and/or review meta data archives this is the time to do it. Consider whether you need to make applications for pre-action disclosure to obtain documents from the proposed defendant or a third party in order to have the evidence.
7. Seventh, if you conclude that there has been an actionable infringement, what statute and/or case law supports your decision? If you cannot find any case law to support your decision that there has been an actionable tort of intellectual property infringement then you really should question whether you should proceed with the proposed claim.
Who are you suing?
8. Eighth, one of the issues with website related litigation is sometimes the identity of the defendant is not straightforward. Get all your evidence as to who is in control and/or directing the infringement ready. If the defendant is a corporation where is it incorporated, and are the directors personally liable? Also consider whether there may be any other interested parties that should be involved in the proposed claim.
9. Ninth, do you need to take immediate action to stop the alleged act of infringement, or can you take your time to deal with it? For example: are there other options to initiating a claim and applying for an injunction? Can you try and reach amicable settlement without a claim at all? Should a Part 36 offer of settlement be made pre-action. For more information on Part 36 offers, see this article. If immediate action is required proceed with caution since with litigation different facts often arise as more is discovered about the dispute.
10. Tenth, If you can take your time, ensure you comply with the Practice Direction Pre-Action Conduct and Protocols (Practice Direction) which are contained in the CPR. The protocols set out the conduct which the court expects of parties prior to commencing proceedings. There may be costs consequences if you fail to comply with the pre-action protocols and/or Practice Direction. Be aware that significant costs may be incurred at the pre-action stage. Any recovery of these costs will require an application to the court and is often unrecoverable.
11. Eleventh, consider which court is most appropriate for bringing the proposed claim in the Intellectual Property List (Chancery Division) (which has three sub-lists: Intellectual Property, Patents Court and Intellectual Property Enterprise Court (IPEC).
12. Lastly, consider the amount of damages that is likely to be awarded once the court has determined whether or not there has been an infringement of the claimant’s IP rights and whether any of the defences advanced by the defendant have merit (as well as determining any validity or revocation issues arising in the proceedings). You can determine this by looking at the damages awarded in disputes on similar facts in previous cases. Once liability is determined there is either an inquiry as to damages, or an account of profits, which is granted at the court’s discretion. The inquiry as to damages or account of profits is an entirely separate trial from the trial on liability.
By Peter Adediran
17 03 2018
This article details the initial steps to take when considering running an intellectual property claim but is by no means exhaustive. If you are seeking advice on settling an intellectual property dispute and have read this article, you must take the opportunity to go and seek professional legal advice from a solicitor or barrister. The information and any commentary on the law contained on this web site is provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL Solicitors. The information and commentary does not, and is not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.