We have an excellent track record in handling design, copyright, trade mark and other IP disputes, both before the Courts and various Intellectual Property Offices.
Intellectual property can have significant economic value to a business or an individual and protecting that value can be an ongoing challenge. Our Intellectual Property team has the expertise and experience to handle often complex intellectual property disputes. We will advise you on the best course of action to take to both safeguard your intellectual property and where possible avoid costly and time-consuming litigation.
Our guide to conducing IP Disputes
- Listen to your lawyer – they have the relevant expertise and experience. That is why you retain and pay them. If you don’t trust their judgment, find another lawyer. Just because they assess the merits of your case differently to you does not mean they are a ‘weak’ litigator. Quite the opposite. Their job is to look after your best interests. That sometimes means having to tell you things you don’t want to hear, but that you need to hear.
- Conduct a cost-benefit analysis –this should be done at the outset and reviewed regularly. Is it worth spending the time and money to pursue the other side or to defend their allegations? Decide on how much time and money you are willing to spend. Tell your lawyer at the outset and ensure you and they stick to it.
- Have clear goals and a strategy to achieve them – what do you want and what do you have to achieve? Are those goals realistic? Can you afford the cost/time of pursuing them? How are you going to achieve them? Agree tactics with your lawyer – a good one will have plenty up their sleeve. Discuss and agree everything with your lawyer at the outset.
- Prepare, prepare, prepare – don’t go into a dispute assuming that the other side will cave in. Assume that the case will go to trial and prepare accordingly from day one. It is usually worth spending time and money at the outset to:
- fully assess the strengths/weaknesses of your case and that of the other side (for example, is your registered IP right vulnerable to invalidation/revocation? What does the prior art show/teach? Is your trade mark vulnerable to cancellation due to the existence of some earlier IP right?);
- assess the financial strength of the other party (for example, can they afford to litigate? Are they financially stronger than you and can afford to spend time and money dragging the case out? Do they have any assets that you can enforce a judgment against?);
- find out whether the other side is part of a much bigger picture (for example, they are a small infringer being supplied infringing goods by a much larger and persistent infringer – would you do better to pursue the bigger fish?);
- take steps to strengthen your case (for example, applying to register an unregistered trade mark; ensuring all relevant transfers of IP have been recorded on official IP registers and all necessary copyright assignments actioned before you write to the other side); and
- get the necessary evidence together to prove your case and to calculate your loss (for example, use a private investigator to make a ‘trap’ purchase; make sure you have the necessary evidence to show you own ‘goodwill’ in your brand; can you prove ‘use’ of your trade mark? Where are the documents that prove you have suffered the financial loss you claim you have?).
- Don’t underestimate the time, stress and effort that litigation can entail – litigation can be a slog (and a slugfest). The other side may not behave as you would, or you would expect them to. Try not to become too emotionally involved or stressed - often easier said than done. Calm, rational decision making is the key. Accept the fact that the dispute could take up a lot of your time (and those of others), which you could spend on other matters (for example, growing your business).
- Stay focused – don’t run every legal point you can if the cost/benefit analysis is not in favour. Don’t allow your lawyer to get bogged down in irrelevancies and unnecessary procedural points that they feel compelled to fight and win regardless of the fact that they are not important
- Is Court the correct forum? Sometimes there may be other options – such as bringing (cheaper and quicker) proceedings before the UKIPO or the EUIPO. Or perhaps mediation would more likely result in the outcome you desire? Or an Early Neutral Evaluation by an independent 3rd party? If you decide Court is the best forum, could you litigate the matter in the Intellectual Property & Enterprise Court (‘IPEC’), rather than the High Court, in order to reduce your legal costs and cap your liability to pay the other side’s legal costs if you lose at trial?
- Don’t ignore or be afraid to make settlement offers – especially as they can put significant costs pressure on the other side to settle the case. If they don’t settle and fail to beat the offer at trial, they may be ordered to pay you a higher proportion of your incurred legal costs (for example, if the offer was made pursuant to CPR Part 36)
- Don’t be passive – it is important that at all stages you fully engage in the process and with your lawyer. They can’t do everything and will at most stages need your input and perhaps that of others you know. If you adopt the role a mere bystander, then the risk of you not achieving your goals increases. Be engaged, be proactive and don’t be afraid to ask questions of your lawyer.
- Know when to settle/walk away – you may not be able to achieve your goals. Sometimes it is better to settle for something, rather than risk everything and lose at trial. There is no single definition of ‘success’ or ‘winning’.
