what is an infringement of intellectual property rights?
in general, an intellectual property right infringement is the breach of any intellectual property right (ipr).
iprs are infringed upon when a work protected by intellectual property laws is used, copied or other exploited without consent from the owner of those rights.
examples of ipr infringements include counterfeiting (ie imitating genuine goods, often at a lower quality) and piracy (ie the unauthorised copying, use, reproduction and/or distribution of materials protected by intellectual property, for example, the pirating of a film).
how are ipr infringements remedied?
cease and desist letter
if someone uses your intellectual property without permission, you can send them an intellectual property cease and desist letter. this letter informs the person using your intellectual property that they are using your ipr without permission and asks them to refrain from using it in future.
sending a cease and desist letter is the first step in dealing with the illegal use of your ipr. using such a cease and desist letter may help avoid unnecessary costs and delays associated with bringing formal proceedings for ip infringement.
read cease and desist letters for further information.
coming to an agreement
rather than going to court over an ipr infringement, consider coming to an agreement with the infringing party. you can, for example, consider licensing your intellectual property to them (ie allowing the infringing party to benefit from some of your rights in return for a fee). a licence agreement enables an ipr owner to authorise another party to exercise some of the owner's rights in the intellectual property while retaining ownership and control of the intellectual property. for more information, read intellectual property licensing.
you may also consider mortgaging, selling or marketing your intellectual property, or entering into a co-existence agreement (ie both parties agree to trade in the same or similar market using an identical or similar trade mark). see reaching an agreement - intellectual property infringement for more information.
mediation
if you cannot come to an agreement with the infringing party, you can consider using mediation.
mediation is a form of alternative dispute resolution which involves an independent trained mediator who facilitates communication between the two parties having the dispute, with the aim of achieving a settlement or resolution. for more information, read mediation.
mediation can be used for most intellectual property disputes, including infringements on trade marks, patents, copyright and designs.
the intellectual property office (ipo) has its own mediation service which you can consider using.
bringing a claim
if you wish to bring a claim for intellectual property infringement, you can do so through the courts of the intellectual property office (ipo). please note that some proceedings can only be brought through the ipo, while others can only be brought through the courts - copyright infringements, for example, can only be brought through the courts.
also, note that the courts will expect you to have tried to resolve the dispute (eg through mediation) before bringing a claim.
for more information on bringing a claim for intellectual property infringements, see the government’s guidance.
what remedies are available?
the courts may award a variety of different remedies where your claim for intellectual property infringement is successful. which remedies are available depend on the type of ipr that was infringed and the specifics of the situation.
injunctions
an injunction is the most common remedy for all ipr infringements. injunctions are court orders that require named individuals to refrain from doing certain specified acts (eg using the ipr owner’s intellectual property).
injunctions can take the form of ‘perpetual’ injunctions or ‘interim’ injunctions. interim injunctions are emergency measures granted prior to commencement of or during proceedings, to prevent a party from carrying out infringing acts while the case is being decided. perpetual injunctions are typically granted as a final relief by the court, prohibiting the unauthorised use of the ipr.
failure to adhere to an injunction can result in fines and even imprisonment.
damages or account of profits
where a profit has been made as a result of the ipr infringement, the ipr owner may be entitled to compensation. the courts can award such compensation in the form of damages or an account of profits. note that the ipr owner is typically given the choice between either remedy but they can only choose one.
damages usually cover the value of the damage done to the ipr owner, while an account of profits covers the profits that the infringing party has made as a result of their infringement.
where damages are awarded to the ipr owner, a calculation is carried out as to the amount of profit the ipr owner (or exclusive licensee, ie someone who was granted the exclusive licence to exploit the relevant intellectual property rights) has lost because of the infringement.
an account of profits aims to compensate the ipr owner for the loss they have suffered as a result of the infringement. where an account of profits is awarded, a calculation is carried out as to the profits made by the infringing party as a result of their infringement. the sum awarded under an account of profits aims to put the ipr owner back in the position they would have been in had the infringement not happened (insofar as practicable).
award of costs
an award of costs is a court order stating that one party has to pay to another party the costs incurred in issuing legal proceedings. an award of costs can either be for the full amount or for a proportion (eg ⅔) of the costs incurred.
delivery and/or destruction of infringing items
while there is no automatic entitlement to the delivery up or destruction of infringing items (or materials) and items used to make such infringing items, the courts may make such an order when infringement is shown. this relief is typically granted by the courts in addition to an injunction.
where an order for the delivery of such items is made, this means that the infringing party needs to deliver to the ipr owner all infringing items and, where deemed necessary, the items used to make the infringing items.
where an order for the destruction of such items is made, this means that the infringing party needs to destroy all infringing items and, where deemed necessary, the items used to make the infringing items.
these steps ensure that the infringing party cannot continue to use the infringing items.
tracing orders
the courts may also make tracing orders which order the infringing party to provide information on where they acquired the infringing items. this is generally used where the infringing party did not create the infringing items themselves.
failure to comply with a tracing order can amount to contempt of court, which can result in fines and/or up-to 2 years imprisonment.
