IP Infringement - types, remedies and risks

Sat 30 December 2023

Intellectual property (IP) refers to creations of the mind, such as inventions, literary and artistic works, designs, and trademarks. It grants creators exclusive rights to exploit their work commercially for a limited period. When someone uses someone else's IP without authorisation, it constitutes infringement.

Types of IP Infringement

Copyright - Infringing copyright involves using or copying another's original work, such as music, books, films, or software, without permission. Examples include downloading copyrighted material illegally, copying literary text, or performing music without a license.
Trademarks - trademarks are distinctive symbols or phrases that identify a company's goods or services. Infringement occurs when someone uses a confusingly similar trademark to deceive consumers or benefit from another's reputation. This can include using a logo almost identical to another company's or selling counterfeit goods bearing a protected trademark.
Patents - grant inventors exclusive rights to exploit their inventions for a limited period. Infringement occurs when someone makes, uses, imports, or sells a patented invention without a license. This can involve manufacturing and selling patented products or using patented processes without authorization.
Designs - Registered designs protect the ornamental features of an article. Infringement involves copying or reproducing a protected design without permission, leading to unfair competition and potential loss for the original designer.

Legal Remedies for Infringement

Infringement claims are typically filed in the High Court or Intellectual Property Enterprise Court (IPEC) depending on the complexity and value of the claim.

Injunctions - Courts can order the infringer to stop using the infringing IP immediately.
Damages - The infringer may be liable to pay compensation for the financial losses caused to the IP owner.
Account of profits - The court can order the infringer to disclose and hand over any profits earned through the infringement.
Delivery up - The court can order the infringer to surrender infringing materials for destruction.
Takedown notices and copyright filters - to combat online piracy.
Criminal offences – potentially can arise with counterfeiting, copying and piracy cases.

IP ownership disputes

Some types of alleged infringement can relate to who owns IP. Common ways these disputes occur include :-

Collaboration gone wrong - Joint ventures, collaborations, and partnerships can turn sour, leading to disagreements about who owns the resulting IP (e.g., jointly developed software, inventions borne from collaborative research).
Employee inventions - When employees create IP during their employment, questions can arise about who holds the rights – the employee or the employer?
Trademark conflicts - confusingly similar trademarks can lead to accusations of infringement and disputes over brand identity and consumer confusion.
Patent interference - when multiple parties file patent applications for similar inventions, a legal battle for priority ensues, determining who holds the exclusive rights.

In some cases, licensing arrangements can offer a practical solution, allowing both parties to benefit from the disputed IP while resolving ownership uncertainties.

Practical Issues and Considerations

Taking legal action for IP infringement is almost always expensive and with uncertain outcome. As with any type of legal dispute, having a strong claim offers no guarantee that you will recover losses or legal fees you incur. It is always important to consider who you may decide to sue, their likely financial means and other factors. In some instances, a decision is taken to take action to set a precedent so that any future infringers may think twice.

Strong evidence is crucial for a successful claim. This may include copies of the infringing material, records of sales, and expert witness testimony.

Legal fees can be significant, especially for complex cases. Alternative dispute resolution methods like mediation or arbitration may be cost-effective options.

International situations, where the infringement may not be in the UK are particularly complex and expensive in terms of potential legal action after infringement