Intellectual property rights cover several areas, including Trademarks, Patents and Copyright, Geographical indication. These rights are essential to the owners and can attract high values to the person or business with the benefit of them.

Using intellectual property rights without the legal owner’s consent can cause damage and loss to the owner, giving rise to a claim for damages. The court can also order the offending party to pay over any profits made using the intellectual property without the owner’s consent. Such a claim often includes a claim for legal costs to be recovered on top of any damages awarded. And an order to hand over any infringing items which exist incorporating the offending intellectual property and an undertaking (promise) not to infringe the rights again in the future. As a result, breaching intellectual property rights can have expensive consequences.

Injunctions are often sought and obtained to protect intellectual property rights, involving costly court proceedings. The sooner advice is received, and action can be taken. The sooner negotiation can occur to achieve agreed undertakings or withdrawal of an unwarranted threat of an action, settling matters without the need for time and cost-intensive proceedings. Claims can be started for intellectual property disputes in different places, the Intellectual Property Office, the Intellectual Property Enterprise Court (small claims track), and the High Court’s Chancery Division. The venue chosen can affect the speed and cost of a case. Therefore this should be considered carefully before action is commenced.

Unwarranted threats
It is also vital to be aware of the consequences of someone making a groundless threat, which can expose the intellectual property owner to a possible claim. They could be ordered to pay damages and costs to the person they alleged had infringed their rights!

Before litigation is commenced, the last stage in the process is often to send a formal warning letter, known as a ‘cease and desist letter or ‘letter of claim’, to the alleged infringing party. The letter is a legal notice requesting the alleged infringer stop an action, for example, to stop manufacturing and sell items that carry a trademarked logo without consent. Such letters need to be drafted carefully, so they do not give rise to an action for groundless threats of infringement in some cases, as set out above. If a groundless threat is made, then the alleged infringer may end up commencing court action against the intellectual property owner before they do, causing the owner to bring any action they wish to pursue infringement as a counterclaim, meaning they have less control of the litigation timetable.

Passing off
Another claim brought about by intellectual property is passing off, which protects unregistered trademark rights in India. To be able to bring this type of claim, three different elements need to be proven:

The trademark owner’s goods/services are known by some distinguishing feature which has acquired goodwill;
There has been an intentional or unintentional misrepresentation by the offending party which leads, or is likely to lead, consumers into thinking that goods/services offered by the offending party are those of the trademark owner; and
damage has resulted or is expected to result to the trademark owner due to the misrepresentation. If a claim is successful, the owner has several remedies available to them:
an inquiry to establish the extent of their loss damages or payment over of the infringer’s profits as a result of the passing off
an order for the delivery up or destruction of the relevant infringing goods
injunctive relief
recovery of legal costs

If passing off has been alleged, it is not unusual for a claim to be brought for passing off alongside a trademark or design rights infringement case.

How we can help
Breach of intellectual property rights can involve costly court proceedings if matters are not settled in the pre-litigation stages.

We can assist you to fully understand the advantages and disadvantages of commencing and defending proceedings or simply standing back and doing nothing. Early advice can often be the most valuable to you in making the all-important decision of dealing with the situation you are confronted with.

Arm yourself with knowledge and shield yourself against being unprepared by contacting our team today!