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Enforcement & Infringement

Our lawyers are ready to assist when contentious intellectual property matters arise.

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The combination of specialisms within the team, including technical IP expertise, commercial aptitude and contentious experience, helps clients to minimise their exposure to litigation and future legal costs.

We take into consideration the commercial realities, cost implications and the desired outcomes of our clients, to seek early resolution and pragmatic solutions to intellectual property disputes, while supporting clients through every stage of a dispute.

Enforcing and defending intellectual property infringements

We advise claimants and defendants for all types of intellectual property infringement claims. We conduct analysis of the ownership, validity and infringement of intellectual property rights, whether patent, trade mark, design, copyright, database, passing-off or know-how/trade secrets. We also advise on anti-counterfeiting and opportunistic company name and bad faith domain name complaints.

6 Brabners 3 Z7 A6600 2000

Letters of claim and pre-action correspondence — cease and desist

Litigation, while a last resort, is sometimes the only viable option. Generally (except in exceptional and urgent cases), in advance of filing court proceedings we will deal with letters of claim and making (or responding to) cease and desist requests. It is important to set out any claim (or defence) clearly and to undertake appropriate due diligence and prior art searches where relevant. We also advise defendants on whether there is value in bringing a claim for declaration of non-infringement. 

Most cases settle before trial, and therefore significant costs can be saved by seeking to reach a compromise in pre-action correspondence. We are experienced in alternative dispute resolution and can advise on options such as mediation and arbitration as a means to achieve settlement.  We also have extensive experience in preparing and negotiating co-existence and consent agreements, which are particularly useful in contentious trade mark matters.

As matters progress it is important to engage experts, particularly in patent and design cases, to support your arguments. We can help identify appropriate experts and manage this process.

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Court proceedings

Court proceedings may be the only viable option where parties are not able to agree an amicable pre-action resolution.  We are conscious that proceedings can be costly, particularly the disclosure, witness, expert and trial stages, and where Part 20 claims are required to involve connected third parties in proceedings. However, ensuring at the outset that detailed papers are produced may help to limit the issues in dispute and thereby help to control costs.

The appropriate choice of forum will also have a significant impact on the speed and cost of proceedings. Our team have experience of dealing with complex cases with significant damages (over £500,000) in the High Court, with patent and registered design infringements in the Patents Court and with streamlined lower value cases at the Intellectual Property Enterprise Court.

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Trade Mark Oppositions, Invalidation and Cancellation Actions before the Intellectual Property Offices

As well as court proceedings, we advise and assist on contentious matters such as oppositions, invalidation, cancellation, and ownership disputes, as well as opinions on validity and infringement of patents, at Intellectual Property Offices (IPOs).

Such actions are cheaper than full court proceedings although do not give rise to binding decisions on infringement. They are particularly useful for challenging the validity and ownership third party rights. We can file submissions and represent clients at the UK IPO for such proceedings and through our network of trusted agents we can deal with such contentious actions in foreign territories, meaning we are able to provide a truly international service offering.

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Take down requests

Our intellectual property team has experience in dealing with online infringements and seeking the swift and efficient take-down of infringing content.  We utilise formal take down procedures of major platforms to seek the removal of the immediate damage (such as eBay’s VeRO program) and we send take-down notices to website operators and hosts, such as notices under the US Digital Millennium Copyright Act (DMCA).

While getting the content removed from the online platforms can be an initial easy win, further litigation or anti-counterfeiting actions may be required to address the root problem and tackle the primary infringer and our team is able to follow up on these further actions to offer a holistic service.

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