Brain

The myth that Intellectual Property (IP) is a luxury only large companies can afford is one that needs dispelling. If you’re savvy and proactive, you can ensure that your brand identity and creations are protected, and that only you can make money from them. When it comes to IP, prevention is better than cure; it is advisable to take the correct legal steps to safeguard your company’s assets in the first instance, rather than fighting a potentially costly and lengthy legal battle should anyone ever infringe your IP further down the line.

Either way, an IP infringement can seriously impact the bottom line of a business, whether it’s the theft of branding identifiers such as a logo, a physical product, an artistic work of some kind, or even an idea. Here I will share 5 steps you can take to fight an IP infringement.

  1. Review your existing protection
If you think a company is infringing your IP, or even if you don’t but suspect you may not be adequately protected should an infringement take place, the first thing you need to do is conduct a review of your existing IP rights (such as trademarks, patents, designs and copyright). At this stage you need to figure out exactly what the infringer is stealing from you, and whether this breaches your existing IP rights. It is vital that you make sure your claim is legitimate before taking any combative action; making unfounded threats of patent or trademark infringement - for example - can constitute unlawful behaviour. If you decide to move forward once you’ve carried out a review, it would be advisable to consult an IP lawyer at this stage, many of whom will provide free or low-cost initial consultations for SMEs.
  1. Issue a cease and desist letter
If you’re satisfied that there is an infringement, you should send a cease and desist letter to the infringer. It is advisable, though not strictly necessary, that you include a lawyer in this process. The cease and desist letter will include a demand that the infringing party stops doing whatever it is they are doing to infringe your IP rights. It will often include other demands such as a demand for further details about their infringing activity (e.g. sales of infringing products) and compensation. It is vital that you send the letter as quickly as possible. Any significant delay could weaken your position in court, should the case ever go that far. However, the vast majority of cases are settled at this stage (i.e. before the need to issue Court proceedings arises).
  1. Consider making a settlement offer
If your cease and desist letter does not prompt a positive response from the infringer, you may be left with no alternative but to commence court proceedings. However, before you take this – rather large – step, you should attempt to resolve the dispute by discussing the matter with the infringer. Such discussions (whether they take place in writing or by phone) should always be on a “without prejudice” basis; put crudely, this allows parties to a dispute to discuss a matter freely without fear of undermining their legal positions. During such discussions, you can put forward an offer of settlement to the infringer in an attempt to avoid a court case. For example, you could repeat your demand that they stop infringing your IP in return for a promise not to pursue the infringer for compensation. The aim of such discussion is to reach a quick and amicable settlement, so naturally, it will be necessary to make some concessions to the other party if you are to make the most of the opportunity.
  1. Issue a court claim for IP infringement
Most IP infringement cases do not reach a court room and for smaller businesses it is often better to push for an early settlement to avoid the lengthy and expensive litigation process. However, if a deal cannot be reached leaving you with court action as your only option, it is strongly advised that you seek legal advice (even if you haven’t sought legal help up until this point). If you are concerned about the cost of being legally represented – and your claim is worth less than £10,000 – you could run the claim yourself, through the more relaxed environment of the Intellectual Property Enterprise Court’s “small claims track”. Essentially, though, the outcome you want from this process is a court order in your favour, which will legally require the infringing company to stop flouting your IP rights. In more extreme cases, you could seek a court injunction – an expensive process which requires the input of expert lawyers.
  1. Ensure your court order is upheld.
Once you’ve obtained a court order forbidding the infringer from repeating their unlawful activity, the matter should be concluded. However, it may be the case that the infringer repeats their actions in spite of the court order. In this case, there are a few actions you can take, but it’s best to consult a lawyer about this should it happen.

By Guto Llewelyn, IP lawyer at Cardiff and London based law firm Capital Law