Intellectual property disputes
Our intellectual property dispute solicitors advise businesses and individuals on how to manage, protect and exploit the intellectual property they have developed within brands, inventions, designs, know-how and literary, artistic and musical works.
In many instances, the first step for our clients is working with us to identify the IP used and owned by their business as it can be complex and include many aspects of your business, your brand name, logo and even your reputation in the marketplace.
Some IP rights arise automatically but others (and in particular stronger, more easily enforceable forms of protection) need to be registered at the appropriate Intellectual Property Office. You can see more detail on the different types of intellectual property here.
Some litigants apply for litigation funding to pay their legal costs because without it they would not be able to afford to pursue an action at all. But this is not the only situation in which litigants seek to use litigation funding.
Businesses no longer need to invest and risk their own capital to fund a legal claim. FISCUS is the funding package that we can offer clients to help manage the financial risk of litigation and move those costs off your balance sheet.
Find out more about litigation funding options available to you.
Dealing with intellectual property infringements
“Infringement is a legal term for an act that means breaking a law”: Intellectual Property Office
Intellectual property rights will be infringed when a creation or work which is protected by law is used, copied or exploited without the consent of the creator, designer, inventor or owner. It is vital to take early advice from a specialist solicitor as soon as you become aware of a potential infringement or that you may be infringing someone else’s intellectual property rights.
If infringement occurs there are several remedies may be available from the Courts, or within settlement terms, including:
- an injunction to prevent future infringement;
- compensation for the infringing activity based either on the loss suffered by the owner or the profits made by the infringer;
- destruction or delivery up of the infringing materials or articles; and
- publication of the judgment in relevant trade press.
Subject to some exceptions, trademark infringement occurs when a third party, without the permission or consent of the registered trademark owner uses the mark in the course of trade or business.
Brands are the guardians of a company’s reputation and thus very valuable rights. Registering elements of the branding as trademarks gives the brand legal protection and will prevent others from compromising it by using any of the elements that have been registered.
What is a brand?
When we think of an organisation, it is usually the brand that springs to mind, rather than the physical products or the people who run it. Brands can take many different forms: it may be the name of the business or a particular product (for example, AUDI), or the stylised form or typographic representation of the name, a graphic device or logo (the four interlocking rings), and / or a strap line (Vorsprung durch Technik). The terminology dates back to the time when livestock were routinely branded with a mark indicating the identity of their owner. Today’s brands serve exactly the same purpose: to indicate the origin or source of the organisation whose goods or services are marked with the branding. All elements of a brand or logo must be distinctive and unique to the company (the owner) and must distinguish it from similar goods and / or services produced by the competition. There are examples of companies, all over the world, which are considered inherently trustworthy because the time and money invested in creating (and protecting) brands which are instantly recognisable and towards which customers feel enormous goodwill. Outstanding British examples include Rolls Royce, the RSC, the BBC, and John Lewis to name but a handful.
Can you protect your brand by registering a trademark?
Brands are the guardians of a company’s reputation and thus very valuable rights. Registering elements of the branding as trademarks gives the brand legal protection and will prevent others from compromising it by using any of the elements that have been registered. Once a trade mark has been registered, the owner may use the ® symbol next to the symbol/name/strapline which indicates that this is a registered trade mark. Registered trademarks can also be licensed or sold by the owner.
What cannot be registered as a trademark?
There are some restrictions but most of them are common sense. You cannot register trademarks that are: * a generic description of the goods or services offered under the branding (for instance, you cannot register the word ‘tweed’ if you are a tweed manufacturer but you could register ‘McInley’s Tweed’); * offensive * misleading * insufficiently distinctive Before registering your trade mark it is advisable to check, via the trade marks database, that it hasn’t already been registered.
What happens if you don’t register a trademark?
If you do not register your branding as a trade mark then it is open to misuse by others. If this occurs, your only remedy is to depend on the law of ‘passing off’ which can be difficult prove. To do so, you have to prove that: * You have goodwill and reputation in the unregistered trade mark; * The other party is wrongly representing to the market that they are selling your goods or are associated with your business; and * Your business has suffered loss and been damaged by the unauthorised use of the unregistered trade mark. In addition, if you do not have a registered trade mark, you cannot use the ® symbol (and it is a criminal offence to do so in the UK) although you may use the ™ symbol with an unregistered trade mark. Registering a trade mark is relatively inexpensive and straightforward and can save you a great deal of time and money in future if you find yourself having to defend your brand and the use of your logo or domain name by a competitor. We are very happy to discuss any element of registration and help you determine what should, and should not, be registered.
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Copyright infringement takes place when a third party uses any of the exclusive rights of the copyright owner without their consent. Copyright is a valuable commercial asset.
We can work with you to protect your work in the digital space and offline. We have helped businesses enforce copyright and sell and license copyright.
What does copyright protection cover?
Copyright provides automatic and long-lasting protection for a very wide range of materials, including: Writing of books, plays, poetry and other literary work; Music composition; Drawing, illustration, painting, photography and other artistic work, including works of artistic craftsmanship; Digital content including computer software code, software design, website content and databases; Sound and music recordings Film and television recordings and animations Broadcasts The typography of published editions of written, dramatic and musical works Copyright prevents others from: copying or distributing your work renting or lending copies of your work performing, showing or playing your work in public adapting your work putting it on the internet without the consent or permission of the copyright owner.
How long does copyright last?
It does depend on the type of work. The general rules are: Books, plays, poetry and other written work; music composition; drawing, illustration, painting, photographs copyright law and other artistic work: the lifetime of the author plus 70 years Sound and music recordings: 70 years from first publication Film and television recordings; and broadcasts: 70 years from the death of the director, screenplay author and composer Broadcasts: 50 years from first broadcast Typographical layout: 25 years from first publication
Who owns the copyright?
In the majority of cases, it is the originator of the work who owns the copyright, that is to say the author or creator. If the creator or author creates the work as part of his/her employment, then the copyright will, in the first instance, belong to their employer. However, in some cases where a work has been commissioned, ownership of the copyright will depend on the terms of the contract governing the relationship. If the contract governing that relationship is silent on the subject of copyright ownership, the copyright will remain in the hands of the author – and not the person who gave the commission. More than one person can own the copyright to a piece of work jointly if it can be proved that their contributions were equal.
What copyright does not protect
An idea for an artistic work cannot be protected; it has to be created in an original, tangible form before copyright is conferred. Although it seems obvious to state, work that has been copied either wholly or partially cannot attract copyright - originality is key.
What are moral rights?
Moral rights belong to the creator or author (living on or after 1 August 1989) of an original literary, dramatic, musical or artistic work and allow them to retain control over how their work is used or displayed, for example, where work has been privately commissioned. Moral rights can be given up but cannot be sold to a third party and they pass to the author’s estate on his or her death. Recognising who owns the copyright for a piece of artistic work should not be difficult to ascertain. However, policing the use of that work is not always as easy and pursuing remedies for infringement can be time consuming and expensive. We are always happy to discuss any element of copyright infringement law to help you protect your work.
Patent infringement occurs where a person that does any of the acts listed in the Patents Act 1977 including making, using or selling the invention without permission or consent of the patent owner.
We have been helping clients across a number of different sectors, from advanced engineering and manufacturing businesses to music and software publishers, to protect their patented inventions.
What is a patent?
A patent is the exclusive right to exploit or commercialise an invention for a set period of time within a particular country, granted by the state to an inventor, in return for the publication of a detailed explanation of how to make the invention work. During that period of time, the owner of the patent (or patentee) has a monopoly over the use of the invention and the making of products which include the inventive technology. Patents are initially granted for 5 years (from the date when the application is filed) and can then be renewed annually for up to a total of 20 years. Patent owners may grant a licence or permission to a third party to use the patented technology in return for a licence fee or royalty and the other conditions set out in the licence document. Equally, a patent owner may decide to transfer or assign all of its rights under the patent to a third party.
What can be patented?
In order to be patented, an innovative technology must: Be new or novel – that is to say it must not be part of what is called the ‘state of the art’ or the totality of publically available knowledge, anywhere in the world, in the relevant field of technology; Include an inventive step – this means that the invention must not be obvious to an unimaginative person who is skilled in the relevant field of technology; Be capable of industrial application – it must be possible to use the inventive technology or make the invention in any kind of industry; and Not fall within any of the exclusions.
What cannot be patented?
Patents cannot be obtained in respect of: Natural phenomena which includes discoveries, scientific theories or mathematical methods; Aesthetic creations such as literary, dramatic, musical or artistic works (because these are protected by a different intellectual property right, that is to say, copyright); or Mental acts such as schemes, rules or methods for performing a mental act, playing a game or doing business.
Can I tell others about my invention?
You must keep your invention secret or confidential before any patent application is filed. If enough information is disclosed in public so that someone else could make the inventive technology work, your invention will no longer meet the requirement of novelty because it will have become part of the ‘state of the art’. If you need to involve others, for example, employees or third parties in the commercialisation of your invention before a patent application is filed, it is vitally important to do so only under an obligation of confidentiality and which restricts the other person from using your invention beyond the agreed purposes. It is advisable to enter in a Non-Disclosure Agreement (or NDA) with any third party before you disclose any information about your invention to them. Once the patent application has been filed, it is no longer vital to maintain the confidentiality but it may still be advisable to limit the number of individuals who know how to work your invention especially before the patent application is published.
How do I obtain a patent?
You have to make a detailed application to the relevant patent or intellectual property office, depending upon where you wish to obtain monopoly rights in your invention. In the UK this will be the UK Intellectual Property Office. Patents generally work on a territorial basis, country by country, but there are procedures to make single or simplified applications for a bundle of national patents. For example, an application can be made to the European Patent Office for a bundle of national patents in some or all of 38 member states. An application may also be made under the Patent Co-operation Treaty (or PCT) to one or more of the 148 member states worldwide (including the UK) which will result in a bundle of national patents. There will also shortly be a process to apply for a unified (or single) European Patent which will be valid in 25 EU member states under a system known as the Unified Patent Court (or UPC). In each case, a patent application will include both: a description of the invention, in sufficient detail that someone skilled in the relevant field or art will be able to understand how to work the invention; and details of the claimed scope of the invention The relevant patent office will usually undertake a thorough examination of the application to ensure that it meets all of the requirements. This usually includes a search of all publically available information in the relevant technology to check that the invention is sufficiently novel and inventive. The details of the application are usually ready to be published by the patent office after about 18 months, although it may take several years before the patent is finally granted. Although an inventor may file a patent application without professional assistance, most applicants instruct a patent attorney who will be able to advise upon the patentability of your invention as well as in relation to the drafting of the application and its progress through the system (known as ‘prosecuting’ a patent application). We have very strong relationships with a number of national firms of patent attorneys and would be delighted to introduce you to one of our contacts.
Design rights and registered design infringements
Design right and registered design infringement occurs where a person, without consent, does any of the acts that are the exclusive right of the design owner.
The legal protection for product designs is all about the physical appearance of the whole or part of a product. How an inventive product works and the branding applied to a product may be protected by different intellectual property rights, namely patents and trade marks respectively.
Design right FAQs
What product designs can be protected?
The legal protection for product designs is all about the physical appearance of the whole or part of a product. How an inventive product works and the branding applied to a product may be protected by different intellectual property rights, namely patents and trade marks respectively. Design rights are territorial, with different forms of protection within the UK, the EU and other countries. In addition in the UK and EU, there are 2 levels of protection, depending upon whether or not a design has been registered with the relevant intellectual property office.
What is registered protection
The most effective form of protection for product designs can be obtained by making an application for a registered design, either for the UK alone or for all 28 member states of the EU. In each case: Any design which is new and has individual character is capable of being registered. Individual character means that the overall impression produced by the design on someone who is familiar with designs in the relevant sector (this person is known as ‘the informed user’) is different to the overall impression produced by any design available to the public before the date on which the application is filed. Applications cannot be made for designs that are dictated by their technical function or in respect of features which are required to enable the designed product to fit or match with other products. Registered design applications are relatively inexpensive and can be obtained very rapidly. Once registered, the registered right initially lasts for 5 years and can be renewed for further periods of 5 years up to a total of 25 years. The owner of a registered design has the exclusive right to use the design in question and any design which does not produce a different overall impression (on the informed user).
Automatic or unregistered protection?
Although less valuable than a registered design, these forms of protection arise automatically as soon as a new design is recorded in a design document or prototype. Aside from the automatic nature of unregistered protection, the most important difference is that the unregistered rights only restrict third parties from copying the design in question. There are 2 slightly different forms of unregistered protection in the UK and elsewhere in the EU: UK Unregistered Design Rights (or UDR): This applies to an original or new product design which has not been copied from another design. Surface ornamentation as well as designs which must fit or match other products are excluded. The UDR potentially lasts for 10 years after the first marketing of the product. In the last 5 years of the unregistered protection, third parties are entitled to ‘Licences of Right’ in respect of any act which would otherwise infringe the UDR. If the parties cannot agree the terms of a Licence of Right, such as the licence fee or royalty, the terms will be imposed by UK Intellectual Property Office. EU Unregistered Community Design (or UCD): This applies to product design which is new and has individual character (on the same basis as a registered design). The UCD lasts for only 3 years after the design was first made available to the public anywhere in the EU. The owners of unregistered designs have up to 12 months from the first marketing of the product to make an application for a registered design. After this period, the fact that the unregistered design has been made available to the public will mean that the design is not sufficiently new to be capable of being registered.
Dealing with intellectual property portfolios
Just like other forms of property, IP rights can be bought and sold, or licensed to third parties. Our solicitors can help with the drafting of assignment, licence or mortgage documentation as well as the management of your IP portfolios and registration of UK and EU trade marks.
In corporate mergers and acquisitions it is vital to ensure that the purchaser understands and is acquiring all of the IP rights which go with the target business.
Our team of intellectual property specialists have particular recent experience in these sectors:
Media, entertainment & creative
- We have advised music producers and DVD distributors on various matters including trade mark and copyright infringements, clearance of photographic works, PRS & PPL licensing and related issues.
- We acted in numerous disputes relating to photographic copyright including claims brought by professional photographers and internationally renowned businesses in the Intellectual Property Enterprise Court (formerly the Patents County Court).
- We have also advised on copyright issues in an Edwardian polar explorer’s memoirs and other books as well as celebrity image rights
- We have acted for applicants and opponents in trade mark oppositions in the Intellectual Property Office and the High Court
- We have acted in proceedings in the Intellectual Property Enterprise Court relating to an alleged trademark infringement involving Google AdWords.
- We have advised on various domain name disputes, including the published WIPO panelist decision in redspottedhankie.com.
- We have acted for a software games business in a dispute in the High Court over the ownership of intellectual property rights in a gaming application.
- We have advised various mobile application developers on issues including copyright, trademarks and branding, patentability and software licence terms.
- We have acted in High Court proceedings for an international software house in a claim involving confidential information, database right, copyright and trade mark infringement against a former employee and his new employer.
- Fibrefab Limited v. Charis Charalambous, Code Eleven D2016-2362 (WIPO Administrative Panel decision, January 2017)
- Fibrefab Limited v. Whoisguard Protected, Whoisguard, Inc. / Constantinos Shiakallis D2016-2259 (WIPO Administrative Panel decision, January 2017)
- Warwickshire Oil Storage Limited v. WWOSLTD D2016-1482 (WIPO Administrative Panel decision, September 2016)
- Infringer who originally offered £150 forced to pay £20,000 in settlement
- Atos IT Services UK Limited v Above.com Domain Privacy / Nish Patel D2013-0655 (WIPO Administrative Panel decision, July 2013)
- Sheldon v Daybrook House Promotions Limited  EWPCC 26
- Temple Island Collections Limited v New English Teas Limited  EWPCC 1
- Meridian International Services Limited v Richardson  EWCA Civ 609
- Woodhouse UK Plc v Architectural Lighting Systems  R.P.C. 1
If you'd like a no obligation discussion with our intellectual property solicitors please contact us.
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