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Intellectual property

Intellectual property litigation

Intellectual property (IP) rights, especially those that are registered such as trade marks, registered design and patents, can act as useful deterrents to third parties seeking to take advantage of your intellectual and trading efforts. However, ultimately, any intellectual property right is only as good as your ability to enforce it.

It is important to manage your IP rights in order to ensure that you are in the optimum position should you need bring or defend an infringement action. Any delay in obtaining the appropriate IP protection may result in the IP registration you seek no longer being available. Similarly, not taking action when you become aware of an infringement of your intellectual property rights may restrict your ability to enforce those rights in future.

Intellectual property litigation is complex, often with a choice of courts and sometimes a choice of jurisdictions in which to bring it. It is important that the nuances of intellectual property law and the various rights are understood, and that any litigation is actively managed in order to ensure the best outcome for you.

Intellectual property infringement action

It is essential to be well-prepared prior to bringing or threatening intellectual property infringement action. This includes:

  • Identifying the appropriate defendant(s); this may often include working through complex corporate structures and teasing out incriminating evidence from online clues.
  • Checking that all registered rights are registered in the name of the potential claimant.
  • Identifying any pitfalls, particularly, in the case of registered rights, such as vulnerability to a counterclaim for invalidity.

Threats of infringement proceedings can arise without warning. Careful preparation is key to an effective response, which may include:

  • Ascertaining the value of the matter at stake and tailoring an appropriate response, taking into account cost/benefit considerations.
  • Considering the validity of the rights alleged to have been infringed.
  • Gathering background information and documentation, including prior art.

What is the difference between trade mark infringement and passing off?

Passing off is similar to trade mark infringement, but applies to protect unregistered rights associated with a particular business, its goods or services. Passing off actions can be brought in a wide range of situations, including to protect business names and features of “get-up” or “trade dress”.

Passing off and trade mark infringement can be poles apart. The key difference is that trade mark infringement deals with registered rights, and passing off with unregistered rights.

Passing off protects traders’ goodwill in relation to their goods and services. “Goodwill” is the brand reputation which is built-up in relation to specific goods or services and which attracts customers. It can be held by an individual trader or in some cases shared, such as between all the producers of a specific product in a specific areas.

Our intellectual property infringement services

We offer a full contentious and non-contentious intellectual property service, including bringing and defending infringement actions

Our team of IP specialists will work with you to ensure that everything is in the best shape it can be, before you launch proceedings or before you shape your defence. We think around the whole problem to provide tailored solutions and can work with you to reduce the cost of your IP litigation.

Contact an intellectual property rights lawyer

If you think you have an intellectual property infringement case contact Richard Moore.

Clarke Willmott has offices in BirminghamBristolCardiffLondonManchesterSouthampton and Taunton and we provide IP advice both to clients located within the UK and around the world.

Your key contacts

Sarah Coe


Bristol and London
Sarah is a Partner in the Corporate Commercial team, specialising in commercial, intellectual property, and technology law. Her work covers the full range of contractual and e-commerce issues relevant to businesses seeking to enter new markets or exploit new technology.
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