Types of intellectual property disputes

The legal framework for intellectual property disputes in England is mainly governed by the Copyright, Designs and Patents Act 1988 and the Trade Marks Act 1994. IP disputes are usually heard in the High Court, Intellectual Property Enterprise Court (IPEC), or the County Court, depending on the complexity and value of the claim.

There are many different types of intellectual property disputes that may arise including:

• Trademark disputes: A trademark dispute is a legal disagreement that arises when two parties claim the right to use a particular trademark. A trademark infringement may arise when one party uses, sells or imports good with a mark which is the same as, or very similar to the registered trademark of another party.
• Patent disputes: Patent disputes arise when one party accuses another of patent infringement. A patent is a legal document granted to an inventor that gives the inventor exclusive rights to prevent others from making, using, or selling their invention for a certain period of time.
• Copyright disputes: A copyright dispute is a one that arises when there is a disagreement over the ownership or use of copyrighted material. Copyright infringers may use or reproduce copyrighted work without permission or without proper attribution.
• Design right disputes: A design right dispute arises when there is a disagreement over the ownership or use of a design. This type of IP infringement may involve a registered design or an unregistered design.
• Trade secrets disputes: A trade secret is confidential business information that is not generally known to the public, and that gives a business a competitive advantage. Trade secret infringements include misappropriation of a trade secret by disclosing, using, or acquiring confidential information without permission.

Overall, cases involving intellectual property disputes can be complex and challenging, but with the right legal advice and representation, it is possible to achieve a successful outcome.

Establishing infringement

To establish infringement in an intellectual property dispute, the party claiming infringement must show the following elements:

• Ownership: The claiming party must establish that they are the rightful owner of the IP assets. This may involve showing that they have registered the intellectual property with the Intellectual Property office or otherwise established their ownership.
• Validity: The claimant must establish that their intellectual property is valid, which means that it meets the legal requirements for protection, such as originality, non-obviousness, or distinctiveness.
• Infringement: The claimant must establish that the defendant has infringed on their intellectual property. This means that the defendant has used or copied the intellectual property in a way that violates the claimant’s exclusive rights.
• Substantial similarity: In cases involving copyright or trademark infringement, the claimant must establish that the defendant’s use of the intellectual property is substantially similar to the claimant’s intellectual property. This typically involves showing that the defendant’s use creates a likelihood of confusion or dilution with the claimant’s intellectual property.
• Evidence of loss: The claimant must show that they have suffered a loss or damage as a result of the infringement. This may include lost profits, damage to reputation, or other harm.

Establishing infringement can be a complex legal process, and it often requires the assistance of experienced intellectual property solicitors.

Resolving disputes

Intellectual property disputes can be resolved through several methods, including alternative dispute resolution methods and litigation. The best method depends on the nature of the dispute and the preferences of the parties involved. Listed below are some common methods for resolving intellectual property disputes:

• Negotiation: The parties can attempt to resolve the dispute through direct negotiation. This may involve exchanging information, making offers and counteroffers, and attempting to find a mutually acceptable resolution.
• Mediation: Parties to an intellectual property dispute can engage a neutral third party mediator to facilitate negotiations and help them reach a resolution. Mediation is a less formal and less expensive process than litigation, and it is often faster.
• Arbitration: Parties to the dispute may agree to submit the dispute to binding arbitration, where a neutral arbitrator hears the evidence and issues a decision that is typically binding on both parties. Commercial arbitration can be less expensive and less time-consuming than litigation.
• Litigation: If parties cannot come to an agreement using the above methods, the may be required to proceed to court to settle their dispute. Litigation can be a more formal and more expensive process than the other methods, but it can be necessary in some cases.

An experienced intellectual property solicitor can help guide parties through the appropriate resolution method.

Funding intellectual property disputes

The cost and complexity of pursuing an intellectual property claim should never deter you from making one. Information on third party commercial litigation funding options for intellectual property claims can be found below:

Third party funding 

One funding method that is commonly used for intellectual property disputes is third party funding. Third party funding acts as a form of non-recourse financing for litigation.

Third-party funding refers to the financing of litigation or arbitration by a third party. A third party funder may be in the form of litigation funding company. They are not a party to the dispute, but they provide financial support in exchange for a portion of the proceeds if the case is successful.

This type of funding allows individuals or companies to pursue legal action that they might otherwise be unable to afford. The third-party funder assumes the financial risk of the case in return for a share of the potential award or settlement.

Damages based agreement 

A damages based agreement (DBA), also known as a contingency fee agreement. Contingency fee agreements refer to a type of fee arrangement between a client and a solicitor. In this type of agreement, the solicitor agrees to take on a case on the condition that their fee will be a percentage of any compensation or damages recovered. This type of agreement is often used instead of an hourly rate or fixed fee.

If the case is unsuccessful, the client typically does not have to pay the lawyer anything. In some circumstances, however, fees for Counsel and other disbursements may still be payable by the client. 

This type of arrangement can make legal representation more accessible to individuals or companies who may not be able to afford traditional legal fees. However, contingency fee agreements are not permitted in all types of legal cases and are subject to certain regulations and limitations.

Conditional fee agreement

Conditional fee agreements (CFAs), also known as “no win, no fee” agreements, are a type of funding arrangement that can be used in intellectual property (IP) disputes. Under a CFA, a solicitor agrees to provide legal services in exchange for a fee that is only payable if the case is successful. If the case is unsuccessful, the solicitor does not receive a fee. These types of arrangements are usually used alongside ATE insurance to minimise costs to clients.

ATE insurance

After the event (ATE) legal expenses insurance is taken out after the event that has led to a dispute has taken place to protect you in the case of your claim being unsuccessful. ATE insurance can protect you from paying your opponent’s legal costs, should your claim not be successful.

However, ATE insurance is not free, and it is important to remember that if your case is successful, you may have to use some of your damages to pay the cost of the insurance premium. This will be included in the terms and conditions of your policy.

The use of third-party litigation funding, CFAs and ATE insurance can sound complicated, but they are simply risk management tools. When used correctly, they can make all the difference to a intellectual property dispute.

How can Annecto Legal assist?

Are you worried that taking legal advice on an intellectual property matter could be too expensive? Or that speaking to a solicitor will escalate matters?

Getting the right advice early, and without spending lots on legal fees, is the best way to save money and protect your position.

Annecto Legal helps clients realise the value of their IP disputes. We work closely with litigation funders, insurers and intellectual property solicitors that seek alternatives to the traditional hourly rate funding model.

Get in touch with an expert member of our team to find out which litigation cover is the right litigation funding option for you to reduce your commercial litigation costs.