trademark infringement cases uk

In addition to that, Amazon does not take action on IP infringement from other countries for which the takedown was requested. Therefore, damages should be assessed by considering what price could have been charged for permission to carry out the infringing acts in the territory. Legal professionals who specialise in IP are useful in helping you to understand, obtain and defend your IP rights. Yahoo! Trademark Infringement Claims The defendant infringes a UK or EU registered trademark by using: an identical sign for identical products an identical sign for similar products or a similar sign for identical or similar products where there is a likelihood of confusion including association The infringement of a trade mark – also written and acknowledged as trademark or trade-mark – relates to the unauthorised use of a registered trade mark by any third party on any goods or services identical with the goods or services specified on the register. It can also compromise your site security plans. The specific details of a coexistence agreement is a matter only for the parties involved to negotiate and the IPO cannot become a party to the negotiations. Criminal matters are dealt with in the criminal courts. Here are a few odd patent infringement cases, some of which are actually founded in legitimate claims: 1. We put the global corporation on notice. Obvious examples are performing plays and music, playing sound recordings and showing films or videos in public. Whilst coexistence agreements may take many forms, and may also include designs, copyright and patents, entering into a formal binding coexistence agreement will ensure that the parties avoid the likelihood of becoming involved in any future costly and lengthy legal dispute. These criminal offences are most often associated with organised crime groups who are dealing for profit in fake branded goods or pirated products. We’ll send you a link to a feedback form. However, whether or not they are protected will depend on the particular circumstances, in particular: Whether, and to what extent, the owner of the unregistered trade mark was trading under the name at the date of commencement of the use of the later mark; Key enforcement case-law The EUIPO’s eSearch Case Law database includes key national case-law in the area of IP enforcement as well as important preliminary rulings of the Court of Justice of the EU that relate to the infringement or enforcement of intellectual property rights. Section 10 of the Trademarks Act states that a UK-registered trademark will be infringed if a sign is used in the course of trade in the United Kingdom which is: 1. identical to the trademark and used in relation to goods or services which are identical to those for which the trademark was registered; 2. identical or similar to the trademark and used in relation to goods or services which are identical or similar to those for which the trademark was registered, where there exists a likelihood of confusion on the part of the r… Deliberate infringement of copyright on a commercial scale may be a criminal offence. We asserted the parties would have negotiated a licence, even if one or both of them would not in reality have signed a formal document. They also stated that it was not possible to prove there is a normal rate of profit or a normal royalty. Trading standards are primarily responsible for enforcing the criminal IP laws, with support from the police, and with investigative assistance from the IP rights owners. This was despite our client being unable to show a loss of current profits. At this point, we issued proceedings in the High Court to ascertain whether the corporation’s infringement of our client’s mark entitled our client to any damages. Some traders who think they may be infringing an earlier trade mark choose to cease trading under the offending sign, others choose to approach the earlier trade mark owner and attempt to negotiate a way forward that suits both parties, which may include a co-existence agreement. These include the infiltration of viruses and malware which can aid identity theft, threaten system security and slow down IT networks. To help us improve GOV.UK, we’d like to know more about your visit today. Organisations representing copyright owners, 15. In order to protect your business, and avoid serious legal and security risks, it is important: to understand how IP rights infringements can occur, to have a strategy for avoiding them, and, to know how to address such a problem if it arises. Get professional advice from a patent attorney or solicitor, but do not do or say anything yourself. Taxation: Commission refers UK to Court of Justice for failure to comply with EU rules on marked fuel Case No 2011/4028. Your business may face a number of risks if you do not take appropriate steps to tackle IP crime within your working environment. Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner’s permission. Clear processes and procedures will help you to embed respect for IP with managers and staff, creating the right company ethos and ensuring that you identify potential problem areas and manage them properly. This practice note sets out the law on infringement of UK and EU trade marks, including defences to infringement, criminal offences relating to trade marks, the forum for enforcement and the remedies available to a trade mark proprietor. Letting traders onto your premises to sell items to your staff could leave your business facing legal liability. For example, The Institute of Patentees and Inventors (IPI) is a non-profit making organisation that specifically helps lone inventors. “Infringement” is a legal term for an act that means breaking a law. The common thread is that doing nothing is not a sensible option given the risks it can pose for you and your business. Paris Hilton won a case against the greeting card company, Hallmark, for using her “That's hot” catchphrase, which she trademarked. There are many more potential problem areas, therefore it is vital that you and your business understand how these problems might arise, so you can take steps to avoid them. There may be a number of potential courses of action or defences open to you, but this will very much depend on the particular circumstances of your case. The needs of businesses will vary. Letting a broadcast be seen or heard in public also involves performance of music and other copyright material contained in the broadcast, broadcasting the work or other communication to the public by electronic transmission. The Court of Justice had to clarify whether the (former) proprietor of a trade mark that had been revoked for non-use could claim that the trade mark’s essential We do not handle such actions. A coexistence agreement is a legal agreement whereby two parties agree to trade in the same or similar market using an identical or similar trade mark. Inc. v. Akash Arora & Anr Perhaps the first of the landmark judgment on cyber-squatting in India. The report highlights current and emerging threats surrounding counterfeiting and piracy, including those conducted via the internet. To establish infringement, the trademark owner will have to show that the mark has a reputation within the UK and either one of the following: as a result of the similar or identical mark unfair advantage is taken of the registered mark; Archives. IP rights are unfamiliar to many and can be complicated. We had first assisted our client in raising equity finance to market a new product. Registered office at 20-21 Jockey Fields, London WC1R 4BW. As we advised, they registered the name as a community trade mark. Its main role is to adjudicate in commercial licensing disputes between collecting societies and users of copyright material in their business. Whether your business is small or large there is a range of actions you can take to make sure that IP rights infringement is not occurring within your business environment. Don’t include personal or financial information like your National Insurance number or credit card details. This form of infringement is limited to marks enjoying a reputation. Criminal action may lead to unlimited fines, or a custodial sentence (which could be up to a maximum of 10 years). You need to think about not only the way your business is conducted, but also be aware that the behaviour of your staff – and their actions at work may also incur liability for the organisation as a whole. The High Court heard the case. However, infringement actions must be taken to the High Court of England and Wales, the High Court of Northern Ireland or the Court of Session in Scotland. Failure to address the problem could leave you and your business liable and at risk to criminal and/or civil action. One potential option open to you is to write to the infringer. A music CD will have copyright in the music, so-called “mechanical” rights in the recording, design rights in the cover, and well-known brands often register their names as trade marks. Search decisions from UK trade mark hearings. If you are concerned that you may be infringing, you may wish to obtain professional advice from a patent attorney, trade mark attorney or a solicitor. The agreement is drawn up between parties and sets the parameters for each to use their trade mark without the fear of infringement or legal action from the other(s). Nevertheless, we successfully argued our client’s damages award should be based on granting the corporation a hypothetical licence to use the mark within the European Union. IP rights infringement and in particular IP crime threaten legitimate businesses, their staff, and undermines consumer confidence. For example, if a trademark or copyright is registered in UK and you ask Amazon to act up on an Amazon patent infringement here in the US, then Amazon will most likely reject or not entertain your complaint. The loser usually has to pay both sides’ costs, so think hard before starting legal action. The loser usually has to pay the legal costs of both sides, so think hard before starting legal action. The analysis involves comparing the plaintiff’s trademark to the infringing trademark and looking for similarities. He has an established reputation in the technology, art and media industries. For example possession of an infringing copy of a work protected by copyright in the course of your business may be a criminal offence under section 107 (1)(c) of the Copyright, Designs and Patents Act 1988. People involved with IP crime are generally involved with other types of crime such as benefit fraud, drugs and people trafficking. Guidance is available on the procedures and processes you and your business can adopt to prevent infringement occurring. This preliminary ruling concerns infringement claims relating to the first five years after registration of a trade mark which was later revoked for non-use. 3. You’ve accepted all cookies. If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. Staff infringing IP rights at work can impact productivity, put your systems at risk from malware and put you and your business at risk of legal liability for their actions. One item can be protected by a number of different IP rights, which can be infringed in different ways. WHATMAN is a well-known GE Healthcare Life Sciences brand specializing in laboratory filtration products. For example, photocopying, reproducing a printed page by handwriting, typing or scanning into a computer, or making a copy of recorded music, renting or lending copies of the work to the public. In other instances it may relate to an independent action of a member of staff at work. They also would have acted reasonably to fix royalty payments, or a method for calculating royalty payments. However, the corporation argued damages should be nominal as our client’s product had neither a community presence nor reputation. TMA incorporated the Trade Marks Directive [7] (the directive) which indicated in its preamble that the functions of a trade mark are not limited to identification of origin; it also gave member states the option of extending the protection given to trade marks with a reputation in the same section. This service allows you access to trade mark decisions issued by us and the appointed person since the beginning of 1998. 20-21 Jockey's Fields, Holborn, London WC1R 4BW, Gannons is the trading name for Gannons Commercial Law Limited. To assist in identifying instances where IP rights infringement can occur, a range of activities and examples have been identified. Trademarks aren't only limited to the business world either. We argued the user principle applied. Criminal IP offences may be taking place in your workplace in a variety of ways. Help us improve GOV.UK. It took action against Heritage Audio, a Spanish reseller of audio equipment, for infringing its trademark registration by offering imitations of the equipment for sale. Copyright owners generally have the right to authorise or prohibit any of the following things in relation to their works: copying the work in any way. For example, Marvel and DC Comics have trademarked the term "superhero" and routinely look for comic book publishers who attempt to infringe on this term. Consequently, our client claimed a large sum of damages, based on hypothetical royalties. A UK Trade Mark is infringed if one of the following circumstances apply: Orange Crush. You can ask us for an opinion to check if what you want to do would infringe a particular patent. The High Court heard the case. You may be liable for damages relating to any infringement. It is important that you and your business take preventative steps to avoid infringing the IP rights of others by seeking permission - which usually means obtaining a licence for the activity. Some unregistered trade marks may be protected under Common Law and this is known as Passing off. Then our client test-marketed their product in the United Kingdom. However, infringement actions must be taken to the High Court or in Scotland, the Court of Session. If you are infringing you should be aware that the owner may be able to sue you. The courts must analyze trademark infringement cases based on the use of a confusingly similar trademark by applying a set of legal guidelines known as “the likelihood of confusion” factors to the facts of the case. However, the global corporation had launched a product in the European Union that used our client’s product name. The IPO does not handle such actions. They claimed that a global software corporation infringed their community trade mark. Authorised and regulated by the Solicitors Regulation Authority with SRA number 612616. The Delhi High Court has awarded damages of 3.85 Crores to WHATMAN International Limited, a UK based company, in a suit for trademark infringement. The latest IP Crime Report 2015/16 was published on 28 September 2016. Understands how intellectual property crime and infringement occurs and impacts business. Additionally, that the corporation’s product took unfair advantage of our client’s trademark. The Denver Broncos are the reigning Super Bowl champions and they're looking to capitalize on their recent success. Plaintiff Company’s CEO is Accused of Bias in Serving as an Expert Witness. There are two basic types of defence if someone claims you are infringing their patent: You are not infringing - what you are doing does not infringe their patent claims, or If you are infringing get professional advice quickly from a patent attorney or solicitor, because the owner can sue you. In most cases discussed here, the outcomes could have been completely avoided with more effective trademark research. A business can infringe the IP rights of others by not having the correct licence to support the activities that take place within the business. You may also be vulnerable to threats from computer viruses and malware. Our client was a large computer software company. It does not deal with copyright infringement cases or with criminal “piracy” of copyright works. However, our client did not use their trademark throughout the European Union, but only in the United Kingdom. If you know the British library (BL) number of a decision, you can use the BL number search to view the summary and or full decision. Infringement of trade marks and copyrights can be criminal offences, as well as being actionable in civil law. You therefore need to be prepared, even if you are not currently aware of any such problems in your business. The corporation accepted our client’s entitlement to damages. They firstly ruled that our client was entitled to substantial damages. They would not negotiate overly-aggressively, given the product’s UK value, and would have negotiated on the basis of a willing licensor and a willing licensee. On 13 June 2018, the UK Supreme Court handed down its long-awaited judgment in the Richemont litigation, holding that where rights holders obtain an order for internet service providers (ISPs) to implement a website-blocking order, the rights holders should indemnify the ISPs in respect of the ISPs’ reasonable costs of compliance (Cartier International AG and others (Respondents) v British Telecommunications Plc and another UKSC … Criminal IP offences are also known as “IP crime” or “counterfeiting” and “piracy”. All content is available under the Open Government Licence v3.0, except where otherwise stated, IP crime and enforcement for businesses and consumers, 1. Coffee Culture could have avoided the issue by avoiding infringement on a closely-guarded trademark, with an annual value of approximately $1.5 billion. It can range from using technology protected by a patent to selling counterfeit medicines/software or copying a film and making it available online. Our creative approach, our commercial and financial knowledge, won our client substantial damages. They claimed that a global software corporation infringed their community trade mark. Further Details. Volvo’s Polestar BANNED from France for Citroen trademark ‘infringement’ October 30, 2020 By Cars UK. Gannons resolved a case of trademark infringement, winning significant damages for our client. Examples of trademark infringement cases include instances in which one company sues because it contends that another company is profiting from its trademark without approval. Trademark Infringement Expert Witness Case Studies. There are many collecting societies who operate for various types of copyright material: The Copyright Tribunal is an independent tribunal established by the Copyright, Designs and Patents Act 1988. Copyright infringement can be dealt with in the civil courts such as the High Court (Chancery Division), the Intellectual Property Enterprise Court and certain county courts where there is also a Chancery District Registry. Advice on what to do if you identify any criminal IP offences relating to IP rights infringement taking place in your business is also covered. Information includes: HR policies, license management and processes for site visits. If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. Call us on 020 7438 1060 or complete the form and one of our team will be in touch. This agreement also prevents any future need for similar litigation. Get legal advice as the most suitable course of action will depend on the particular circumstances of your case. The UK Trademark Office ruled in favor of Thirsty Beasts, but Monster Energy appealed the decision. However, the corporation countered by stating that our client had suffered no loss as a result of their actions. In many cases a collecting society will offer a blanket licence for all the works by owners it represents, for example for music to be played in a shop or restaurant. In the worst case scenario, you may have to change your trade mark and re-brand your products or services. Our client was a large computer software company. Advice and guidance on dealing with IP rights infringement is available. Staff in corporate functions, such as Human Resources (HR), Information Technology (IT), finance and procurement have a particularly important role to play in spreading information and good practice. GOV UK Links : Results of past trade mark decisions. In UK, again dilution occurs through blurring or tarnishment of the reputation of a well known or famous trademark. Where parties are unable to reach agreement in commercial licensing disputes they might also wish to consider, as an alternative to the Copyright Tribunal, mediation services. Further information is available on what is the law and the guide to offences. There are many trademark infringement cases that have occurred that can teach business owners valuable lessons on protecting and using certain logos and phrases. Our client provides computer software. Related: What is considered fair dealing in UK copyright law? Infringement cases by country . However, the global corporation’s product had a slightly different use. According to Pumfrey J. This principle is widely recognised in patent infringement claims, not in trademark infringements. Many groups of copyright owners are represented by a collecting society. In the case of trade marks and copyright the act may also constitute a criminal IP offence. In some cases these activities may relate to something done directly by the business. If it would infringe, you may be able to agree terms with the owner, or even buy the patent from them. Registered in England and Wales with company number 08914222. According to the Civil Procedure Law, no time limit is set for hearing foreign-related civil cases. \"Jersey Shore\" star Nicole Polizzi tried to obtain a trademark for her nickname “Snooki,\" but failed. Resource implications, such as staff neglecting work tasks to carry out illegal activities, and IT system failure due to malware problems, can have a detrimental affect. All of these acts will constitute a civil infringement but some copyright and trade mark infringements may also be a criminal offence such as the sale of counterfeits including clothing. The product gained a good reputation in the United Kingdom so our client considered licensing the product in other territories. You should then consider whether to negotiate or to take legal action for compensation. This includes putting copyright material on the internet or using it in an on demand service where members of the public choose the time that the work is sent to them, making an adaptation of the work, such as by translating a literary or dramatic work, transcribing a musical work and converting a computer program into a different computer language or code. Practical tools have been developed to help you educate staff and management about the importance of IP and how to comply with the relevant law. They also held that the user principle was a legitimate basis on which to assess damages, even though the case was about trademark infringement, not patent infringement. You may be able to negotiate a settlement which suits both parties, which may involve a co-existence agreement. Resolving trade mark infringement disputes. Don’t worry we won’t send you spam or share your email address with anyone. Copyright is essentially a private right so decisions about how to enforce your right, that is what to do when your copyright work is used without your permission, are generally for you to take. Both lawsuits are now being examined by the ECG, which will rule on the two possible trademark infringement cases in the upcoming days. You can change your cookie settings at any time. 1. Therefore, it is imperative that you report any instance of IP crime that you are aware of, to the enforcement authorities. If you decide that you are not infringing, or you have a good defence, you may decide to stand your ground or even to sue the trade mark holder for making unjustified threats. 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