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Detailed Practice Notes written by our Professional Support Lawyers, guiding you through the key issues in each topic.
IP infringement - overviewIP infringement actions
What is infringement depends on the type of IP concerned. Infringement is, broadly, taking certain actions without the consent of the IPR owner.
Actions are brought in:
the Chancery Division of the High Court (normally the Patents Court).
the Patents County Court (some patent and registered design right actions), or
a county court with a Chancery district registry.
Other fora are available for invalidity actions, such as the UK Intellectual Property Office, OHIM and the European Patent Office.
Defences to infringement include:
Consent of the owner - it is not infringement to do otherwise restricted acts with the IP owner's consent
Exhaustion of rights - once copies of a work protected by an IP right have been lawfully marketed in an EU Member State, the IPRs may not then be asserted to prevent subsequent commercialisation of the product concerned
Invalidity of right - eg where a patent, trade mark or registered design is invalid or liable to be revoked.
Intellectual property infringement remedies
Interim remedies include:
injunction - ex parte (without notice) or inter partes. The tests set out in the American Cyanamid case must be met.
delivery up of infringing goods to the claimant - where they may otherwise be disposed of prior to trial
disclosure - of the defendant's dealings in infringing goods
freezing order - restraining the defendant from disposing of assets without leave
restraining order - preventing the defendant from leaving the jurisdiction
search order - allowing the claimant to search the defendant's premises (without prior notice, but supervised by a solicitor).
Costs at an interim stage are normally in the case, ie the party who succeeds at trial will recover most of its costs.
Final remedies include:
injunction - where there is a likelihood of further infringement
delivery up or destruction of infringing goods
damages - intended to put the owner in the position he would have been in had the infringement not occurred
account of profits arising from the infringement. This remedy is instead of, and not in addition to, damages.
Damages will not be awarded for innocent infringement of copyright, design right and patents (not trade marks). Other remedies, such as injunction, remain available. Additional damages may be awarded for deliberate infringement of copyright.
Infringement of copyright will arise on the copying or reproduction of a copyrighted work without the consent of the owner. Infringement arises on copying the form of expression of the work, not simply the idea. Copying includes transient or incidental copies, such as may be copied on a computer. Secondary infringement can also occur. In addition to the usual remedies, the copyright owner may seize infringing copies and apply for forfeiture of infringing copies. There is no action for threats.
Database right infringement
Database right gives the right to prevent extraction or re-utilisation of all or part of a database and this can be assessed quantitatively or qualitatively. The existence of the right may be challenged in defence to an allegation of infringement and may be difficult to prove without substantive evidence of the creation of the database.
Design right infringement
Aspects of an action for infringement of design right will vary dependent on whether the right is a UK or Community registered or unregistered Design. In the case of UK registered designs the filing date will determine which version of the Registered Designs Act 1949 applies as to validity.
Infringement of a registered design right will arise if the design is used, or a similar design used which does not produce a different overall impression. The test for validity of a design differs from the test for infringement. There are statutory defences, including some specific to UK registered designs.
An unregistered Community design may have a defence against infringement if it can be shown that the allegedly infringing design was developed independently.
UK unregistered design right distinguishes between primary and secondary infringement. If a design attracts unregistered design right, copyright will not apply to the design as they are mutual exclusive.
In alleging infringement, both of UK and Community designs, care must be taken to avoid an action for threats.
Trade marks infringement (registered marks)
Infringement of a registered mark will arise if the mark is applied to similar goods and services and there is a risk of confusion. The mark must be used in the course of trade for goods and services. Defences may include a challenge to validity, use of own mark, comparative advertising. In alleging infringement, care must be taken to avoid an action for threats.
Passing-off (unregistered marks)
The tort of passing off has been developed by case-law as a protection for goodwill. Certain principles have been developed by judges to establish whether passing off has occurred. The classic form of passing off relates to the goodwill attaching to the claimant's own goods. Establishing a claim of passing off requires the claimant to show goodwill, misrepresentation and damage.
The grant of patent gives a monopoly to the patent owner to exploit the invention. The scope of the patent monopoly is defined by the patent claims. Infringement of a patent is a statutory tort and principles of tort are applied.
The most common defence to a patent infringement claim will be that the patent is invalid.
Patent infringement actions are expensive and there is the additional risk of an action for threats if the claim of infringement is not well founded. Alternative methods of dispute resolution are often used, such as mediation, arbitration, or an IPO opinion.
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