Peter Adediran’s specialist niche area of practice is intellectual property law – both contentious and non-contentious – as it relates to digital works including trademarks; copyright; patents and database rights PAIL® Solicitors. Read more on PAIL’s ® Resource Library
PAIL® recently obtained judgment on liability plus costs for our client in the UK Intellectual Property Enterprise Court. For more information about the court see the IPEC Court Guide.
The case concerned trademark use in Google Ads. Although Google have an ad policy requiring that Google Ads don’t infringe on third-party trademarks businesses still actively infringe other business brands in their Google Ad campaigns trading on the reputation of other business brands and/or diluting the brand of other businesses through overuse.
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.
1. What is a Part 18 request for further information?
1.1 A Part 18 requests for further information (RFI) is one of the tools in a litigators armoury in which to advance its claim, defence or counterclaim. It is a procedure in civil litigation used to get a better understanding of the case being made by the party receiving the request. It is called Part 18 RFI because that is the number where you can find the rules for this procedure in the White Book Civil Procedure Rules, the bible for UK litigation practitioners. The White Book is updated every year. You can also find the Civil Procedure Rules online.
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.
Marketing a service or product is a very important part of creating brand awareness and generating sales. Brand names have meaning to people. They are associated with good reputation or in some cases not so good. Businesses spend millions on building brand names and creating brand awareness. Obviously a great way to promote your business is to use these brand names in your website business description, item descriptions, keywords, search tags to try to project the image that you are associated with them. There will be no repercussions if you use brand names, right? Well not quite.
The value of trademarks like all legal matters is only illustrated when the worst happens. Until then it is difficult for an inexperienced entrepreneur to really appreciate their value. Mr Payan Tabibian is an entrepreneur, originally Iranian but with US nationality, who had an idea for a business, much like millions of other entrepreneurs around the world every day.
Mr Tabibian had an idea for a hamburger restaurant, and one of his initial tasks was to come up with a distinctive name and logo. Like millions of entrepreneurs just starting off their businesses, Mr Tabibian could not have imagined that 10 years after he thought of the Z-burger trademark, his brand name and logo would become embroiled in a legal battle worth millions.
Copyright in logos was considered recently by the Intellectual Property Enterprise Court. Once again IPEC has contributed another very helpful decision to English law for businesses related to the Internet by way of another judgment from His Honour Judge Richard Hacon.
The case is Atelier Eighty Two Limited and Klinworx Climbing Centre CIC and 2 other defendants  EWHC 2291 (IPEC).
The dispute was about ownership of copyright in logos but it affects all creative design and development work including website design and development.
the Intellectual Property Enterprise Court has multi-track and small claims track procedures. The small claims track procedure is particular useful to eCommerce (Internet)businesses who trade multiple branded products online and are continually victims of infringement but are put off by the prospect of long, complicated and expensive litigation. Small claims are suitable for cases of a value around £10,000 and costs are severely restricted. Damages in the multi-track procedure are limited to £500,000 and there is a cap of £50,000 on costs.