If you are thinking of making an Intellectual Property infringement claim or have received a cease and desist letter yourself, it’s important to know how to handle it correctly by law.
If you own Intellectual Property (IP) rights, for example trademarks, unregistered and registered designs and patents, and you have become aware of a third party infringing those rights, then the likelihood is you will want to attempt to enforce your rights and stop the infringement.
Intellectual Property infringement claims
The first step normally taken to deal with IP infringement claims is to send a cease and desist letter to the infringer. This is where the law comes in as The Intellectual Property (Unjustified Threats) Act (“the Act”) needs to be adhered to when dealing with these types of matters.
The Act puts in place a clear framework as to how businesses and their professional advisors (including lawyers like us) can operate to resolve IP disputes, including attempting to negotiate settlement of IP disputes before turning to litigation i.e. issuing a claim at Court.
The overall aim of the Act is to prevent the misuse of threats made by businesses and individuals to gain an unfair advantage in circumstances where no infringement of an IP right has actually occurred. So, baseless claims cannot be made.
Unjustified Intellectual Property infringement threats
It is crucial that the Act is adhered to. Otherwise, you could find yourself on the end of a claim being made against you for making unjustified threats. This could mean that a claim is then issued against you, which would need to be dealt with.
A breach of the Act allows for an aggrieved party to take action and seek certain remedies, such as seeking a recovery of damages in respect of the losses sustained due to unjustified threats being made and/or an injunction from the Court to prevent further threats being made.
The consequences of getting it wrong and not complying with the Act are therefore serious and potentially costly.
Takedown notifications
It is important to note that case law has shown that the framework of the Act can also apply to allegations / notifications made by businesses and individuals through online platforms, such as Amazon and eBay, in respect of takedown notifications.
These types of takedowns are normally made by businesses and individuals without taking legal advice, as they offer a quick way of notifying online selling platforms of possible IP infringements. However, it is recommended that legal advice is sought before taking this kind of action as you will want to ensure that your notification / takedown falls on the right side of the law.
How we can help
At Stephens Scown, we have lots of experience of dealing with these types of matters from both sides. One side being where a business or individual believes their IP rights have been infringed and the other where a business or individual has been sent a cease and desist letter in respect of an alleged IP infringement. We aim to resolve all IP infringement disputes as quickly and as cost effectively as possible for those involved.
Our dedicated Intellectual Property team can also work in conjunction with our Dispute Resolution team if matters do escalate and proceedings are (or need to be) issued at Court.
If you think your IP rights have been infringed, or if you have been sent a cease and desist letter, then we recommend you seek legal advice to make sure that any cease and desist letter or response to a cease and desist letter, complies with the law. This way you can avoid the ramifications of getting it wrong and not complying with the Act.
For advice on intellectual property infringement claims please get in touch.