What should I do if I suspect a third party is infringing my rights?
There are complex rules about what actions amount to an infringement of an IP right and the rules differ between the individual rights. In addition many rights have rules against “groundless” or “unjustified” threats of infringement, which mean that sending a reasonable looking letter or even telephoning the suspected infringer could give them a right to bring a claim against you.
The first step should therefore be to contact one of our specialist IP lawyers. This way we can advise whether or not you have a claim, what evidence you should look to obtain and how to approach the suspected infringer.
What do you look at before taking action?
The initial points to identify are what the infringement consists of and where the infringement is taking place.
Once we know what the infringement consists of, we then need to consider the IP rights concerned to be as sure as we can be that the IP rights will stand up to challenge. It is common in infringement actions for the underlying IP right to be challenged. For example, in patent infringement claims the usual counterclaim is that the patent is invalid, perhaps because the patent does not include a patentable invention or someone else made the invention first. It is also common in trade mark cases to seek to invalidate the trade mark being relied on.
Another step is to ensure that the intended claimant (the party to bring the action) actually owns the IP right in question. In our experience it is not unknown for a party to threaten claims even without owning the IP right. We have experienced this from even large multinational companies with turnovers of hundreds of millions of pounds.
If you are considering taking some form of legal action (see below), we would also undertake a credit search on the potential infringer and look at their trading position. Whilst it can be necessary to pursue a party with limited assets, you are better knowing this at the outset and considering the steps to be taken and costs to be expended against any practical issues that are likely to arise when trying to secure payment from the other side.
If the infringer is based overseas then we will consider taking action in that country. Where you are based overseas and your IP rights have been infringed in your country by an English or Welsh third party, there is the potential to bring a claim in our Courts – even if this means the Court will apply the law from your country.
What options are available?
There are many options which can be deployed individually or in combination and which option is right for you will depend upon your aims, circumstances, potential commercial value of claim and the weaknesses and vulnerabilities of the other party. We can also consider whether a claim should be brought overseas.
There are several options available which include:
- Bringing a claim in the Intellectual Property and Enterprise Court
- Using the Small Claims Track of the Intellectual Property and Enterprise Court
- Bringing a claim in the High Court
- Using the Dispute Resolution procedures of the appropriate Domain Name Registries
- Referring the matter to a Trading Standards Office
- Using the eBay VERO programme
- Using the Amazon Rights Programme
- Seeking orders from the UK or other Patent Office
- Seeking orders from the UK or other Trade Mark Registry
- Seeking orders from the UK or other Design Registry
- Resolving matters through expert determination services
There are other steps which can be appropriate such as using press releases, licensing or even selling IP rights to the infringer.
The benefit of having an experienced IP enforcement team is that they can suggest commercial solutions that work for you rather than commencing a claim which might not achieve what you want.