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IPEC

Intellectual Property Enterprise Court Guide

IPEC: Helping Protect Your Intellectual Property

Intellectual Property (IP) arises across a broad range of sectors and involves a myriad different types of asset. Whether you are a business seeking to protect your brand or the use of your logo, or an entrepreneur seeking to protect your latest invention – you have IP rights that we can help protect.

The Intellectual Property Enterprise Court (IPEC) is a specialist court dealing solely with IP disputes of this type. IPEC is particularly suitable for small businesses and entrepreneurs in enforcing and protecting your IP assets and prevent further infringement of your rights – whether related to Patents, Designs, Trademarks, Copyright, or Database rights.

You can use the mainstream courts where you believe your IP is being infringed, but there are clear benefits of using IPEC, not least because there is a cap on damages awarded which encourages the parties to try to settle the dispute.

Why IPEC?

Using IPEC is faster and less formal than using the ‘normal’ courts and means you can enforce your rights more easily. IPEC trials are usually conducted over a maximum of two days and saves the parties both time and potentially significant legal costs. A number of lower-value IP claims worth up to £10,000 can be heard through the IPEC small claims track, otherwise they will be heard through the multi-track procedure. (NB if the value of the claim exceeds £50,000, the claim is likely to go the High Court).

The trial will be held in private and the outcome can be kept private and confidential.

In some cases, the principle of protecting your IP rights (brand protection, for instance) is more important than the recovery of damages. This is one reason why IPEC is so beneficial – it allows both individuals and organisations to bring a claim that will be heard quickly and cost-effectively.

As with all disputes, it is best to try to settle your dispute with the other side. In fact, the court will give a ‘preliminary opinion’ - a non-binding recommendation as to the merits of the claim, specifically to encourage the parties to settle. If you do successfully negotiate a settlement, it is easy to then withdraw your claim from IPEC.

What are IPEC’s powers?

IPEC can award damages/lost profits of up to £500,000. The fact that damages are capped means the parties must be proportionate, and will be more likely to try to settle the claim with the other side. Legal costs are also capped (at £50,000).

IPEC can also impose undertakings so that one party promises to take specific steps agreed; and it can impose injunctions, requiring the other party to refrain from certain actions which infringe your IP rights.

If you want to make or defend a claim for IP infringement, our specialist Intellectual Property solicitors can give you expert advice on the best way forward – whether than involves negotiating a settlement on your behalf, or proceeding to IPEC.

Cases dealing with intellectual property (IP) rights are brought in the Intellectual Property Enterprise Court (IPEC), whose judges have the specialised knowledge needed to hear cases that are often very complex and which sometimes require considerable specialist knowledge.

The sorts of IP that lead to cases in the IPEC are:

Trademarks

Trademarks can be words, symbols or both and are best protected by registration at the Intellectual Property Office (IPO). Registration in the UK is valid for the UK only and lasts for 10 years.

A trademark is registered according to a 'class of use', so, for example, the same trademark could be registered by two different organisations for two different use classes. As long as no confusion arose between the two, this would not cause any problems.

Generally, it is best to register your trademark(s) in all the use classes in which you intend to use them and in the national markets in which you intend to use them. A search should be carried out before deciding to use a particular trademark as an application to register a trademark may be opposed by another business with a similar mark if it thinks your registration might harm it if granted.

Contesting trademark actions is notoriously complex.

Design Rights

Design rights apply to specific designs of products. A design registration lasts for 25 years and must be renewed every 5 years. Most designs can be registered, but those of 'bolt-on' products which fit onto other products would not normally be allowed to be registered if, for example, the practical effect were to allow the design owner a monopoly on the supply of spare parts for a machine.

Patents

A patent is legal protection applied to an invention which has a unique feature and is more than an obvious application of knowledge in the public domain.

In practice, patents are difficult to obtain and enforcing them can be very expensive. Also, a filed patent application is public knowledge, so once the application is made, your competitors may become aware of it.

For a patent to be granted, the subject matter of the patent cannot be in the public domain, which could include talking about it in advance of the patent being filed.

Before considering applying for a patent, both technical and commercial legal advice should be taken. Sometimes, better protection can be achieved for less by using design right protection and/or confidentiality agreements.

Copyright (which includes software code)

The right to copyright protection is automatic in the UK, but not necessarily elsewhere (signatories to the Berne Convention provide copyright protection in their countries). It applies to most original work and protection lasts for 50 years (25 years for photographs) in most cases.

Special Cases

Software

Note that the functionality of software (what it does as far as the user is concerned) is not capable of being copyrighted. If someone sees a software package you create and writes a new and better system to perform the same function, there is nothing you can do about it unless they have copied your computer code or your design.

Domain Name etc. Disputes

Disputes over domain names and 'passing off' (which is the legal term for when one business presents itself as if it were another to effectively trade off the other business's goodwill) are quite common. Fortunately, Nominet, the world registry of domain names, has a dispute resolution procedure and can transfer a domain name from an infringer to the proper owner when this can be justified.

As well as the specific things you can do (see below), there are general remedies available to obtain compensation if your IP rights are infringed.

Resources

Intellectual Property Office

IPEC Guide

How Selachii Can Help

Selachii is a dynamic litigation and dispute resolution law firm based in Kensington, London. We put the best interests of our clients at the heart of everything we do. We work with both businesses and private individuals, giving them legal advice and support which is unique to them and their situation.

We are experienced in dealing with IP disputes of all kinds and take the highly commercial approach to their conduct needed to achieve optimum results.

We don’t believe in simply handing out one-size-fits-all solutions to problems. We will focus on your specific circumstances before working out the best and most cost-effective way of helping you achieve your aims.

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