The importance for a trademark owner or other IP rights owner to take swift action asserting his rights cannot be over emphasised. It is important not only to protect the brand from association with other, possibly inferior products or services, but also to protect a trade mark from challenges for invalidity on the basis of non use or loss of distinctiveness.

It should also be borne in mind that if no action is taken against one infringing party then it may be more difficult to sue any subsequent infringing party which may well argue that the IP right owner has waived his rights or acquiesced by virtue of previous inaction. However, beware of making spurious claims or threatening action which has no real prospect of succeeding - doing so could backfire and lead to claims against you for making groundless threats.

Interim injunctions

With each moment that passes during which an IP right is infringed, the owner of that right may well be suffering irreparable damage to its brand which may not necessarily be adequately compensated by an award of damages. What is needed instead, or in addition, is the immediate cessation of the infringing acts. Consequently, applying to the court for immediate injunctive relief (an interim injunction) in the form of an Order of the court (backed up with the possibility of imprisonment in the event of its breach) requiring the infringer to immediately cease infringing and deliver up or destroy all infringing materials is an option which should always be considered.

The need to act promptly on discovering the infringement is however key as the court will be reluctant to grant the injunction if the IP owner has not himself demonstrated the urgency of the matter by acting quickly. Where an IP right owner becomes aware that his rights are about to be infringed, injunctive and emergency applications to the court will need to be seriously considered as a necessary preventative step. However, the IP owner must have the necessary evidence of the imminent infringement to present to the court.

Search and Seize orders

Similarly, if the facts are such that there is a real possibility the infringer will destroy evidence, the option of applying to the court for an order permitting the carrying out of a search and seize order so as to take the infringer by surprise before he has an opportunity to destroy or hide it, should be considered.

Where emergency applications to the court are made, underlying proceedings for infringement (and other associated causes of action) will need to be brought in the Chancery Division of the High Court at the same time - (if the English courts have jurisdiction to deal with the case and if it is in the interests of the claimant to commence proceedings there – these are other considerations which should be addressed).

Final Injunctions

If an interim injunction has been granted, the court will be called upon to decide whether to make that injunction final at the ultimate trial of the case, i.e. for the injunction to continue until a specified date or in perpetuity.

Damages

The aim of an award of damages is to compensate the owner of the IP right for the harm caused by the acts of the infringing party. They are usually calculated by reference to what the infringer would have paid the IP right owner for a licence to use the rights.

Aggravated damages are sometimes awarded to reflect damage to reputation or feelings and exemplary damages can be awarded against a party which the court finds has acted deliberately to make a profit in circumstances where such profit exceeds the compensation he would otherwise have been ordered to pay.

Account of Profits

The court may, at the election of the wronged party, award an account of profits instead of damages. This will involve an analysis of the infringing party’s’ profits and the court will attempt to identify the amount of money the infringing party received which was attributable to the infringement of the IP owners rights. This remedy is not however available where the infringement was innocent.

As an alternative to court proceedings, a claimant should always consider mediation as a way of resolving a dispute, where the parties attempt to settle the case by negotiation through an impartial third party. Arbitration may be another option, a more formal process where an expert hears the parties’ arguments and reaches a final decision which is binding on them.

For further advice contact our team direct or talk to your usual contact in the firm