Intellectual Property Disputes

Our specialist IP dispute lawyers understand the importance of protecting valuable intellectual property and defending allegations of infringement. When an IP dispute arises, we take a commercial and strategic approach to achieve the best outcome for our clients.
 

We identify practical solutions to avoid the need for litigation wherever possible, but are ready to take robust action when required. We are experienced in both bringing and defending IP claims, including making urgent court applications to protect our clients’ interests.

Our clients operate in a wide variety of industries including technology, consumer product, finance, media, entertainment, sports, fashion, art, and healthcare.  All are facing IP challenges and opportunities as a result of wide AI adoption and our IP lawyers work within our AI Advisory Group to provide advice and assistance.

We work closely with industry experts, intermediaries and lawyers around the world when dealing with multi-jurisdictional disputes and many of our clients operate internationally.

Specialist IP Dispute Advice
 

Our IP dispute lawyers have expertise in a wide range of contentious IP matters relating to the development, licensing and protection of all forms of intellectual property, including:

• Copyright disputes
• Trade mark infringement
• Passing off claims
• Digital rights disputes
• Design rights disputes
• Disputes relating to confidentiality, breach of confidence and trade secrets
• Database rights disputes
• Advertising, sponsorship and merchandising disputes
• Representing inventors and employers in claims under section 40 of the Patents Act 1977
• Obtaining and opposing injunctions to prevent future infringement of IP
• Making and defending applications for search orders and the delivery up of infringing materials

Examples of recent cases

• Acting for a foreign state body in a software infringement dispute in the Intellectual Property Enterprise Court (IPEC) and Court of Appeal
• Acting for a production company in relation to a dispute over the ownership of IP rights relating to a documentary film
• Acting for a claimant inventor in a compensation claim against a global corporation in the medical sector
• Acting for an entrepreneur in a complex dispute with their former business partner relating to the ownership of trade marks, and breaches of a licensing agreement
• Advising a script writer in a copyright dispute with the producers of a film
• Advising a collector in relation to the use by an artist of copyrighted images of works without permission or acknowledgement
• Acting for the rightsholder and producer of a West End theatrical work in an international dispute about the development and exploitation of the work
• Acting for a major national transport corporation regarding a complex intellectual property dispute relating to critical operational infrastructure
• Acting for a client in relation to a trade mark and copyright dispute against their former employer in the insurance sector
• Acting for a writer/director in a dispute about credit for their intellectual property contributions to a BAFTA-nominated film

 

Intellectual Property Disputes FAQs

I have created an artistic work and want to use it, but my employer has told me that they own the copyright. What can I do?

There is a presumption in the Copyright, Designs and Patents Act 1988, that intellectual property created by an employee in the course of his/her employment will be owned by the employer, unless the employee and employer have agreed otherwise.  A term to this effect is also often set out in an employee’s employment contract, although that is not a prerequisite.

The definition applies to works created “in the course of employment”.  The position is different if a third party (non employee) is commissioned to create a copyright work.  The person responsible for creating the copyright work, not the commissioner, is generally the owner of the copyright, unless there is express agreement to the contrary.

Depending on what work has been created, different rules can apply in different industries and historic works can also be subject to different rules.  Ownership of intellectual property in any given work can be complex and should be carefully documented wherever possible.

 

I have bought a copyright work; does that mean I now own the copyright?

Not necessarily, unless you are the first owner of the copyright, or the copyright has been transferred (assigned) to you. For example, if you have bought a painting, all you own is the physical painting itself.  The copyright in the underlying work of art does not belong to you unless it was transferred (assigned) to you as part of the sale.  You would not have the right to make further copies of the underlying artwork and equally the artist (or whoever owns the copyright in the original work) could make further identical or similar pieces of art.

 

I have created a copyright work, how can I go about registering it?

We can advise you how to seek to protect your copyright. Generally there is no means to register copyright in the UK save in a few industry specific exceptions. In the UK, copyright arises automatically upon creation of the work, provided that certain criteria exist.

 

We have spent a long time creating a complex database and we are concerned that a departing contractor, who assisted with creating the database, is going to take a copy and offer it to competitors. Is there anything we can do?

Databases are protected by specific intellectual property law and extracting or re-utilising all or substantial parts of a protected database can be actionable.  Database misuse can also amount to more general copyright infringement.  If the infringement is actionable you can claims damages or an account of profits from the contractor, and potentially seek an order for an injunction preventing any further infringing acts and/or requiring delivery up of any copies of the database which remain with the contractor.

 

What is a design right and how can it be enforced? 

A design right is the right of ownership in the appearance of the whole, or a part of a product. Whereas a patent generally protects the way a product is manufactured or functions, a design right protects what makes the product look unique.

The owner of the design right has the exclusive right to reproduce the design for commercial purposes.

Design rights can be registered or unregistered.

An unregistered design right lasts for 10 years after you first market an article using your design (with a limit of 15 years from the date you created the design).  A registered design right gives you up to 25 years of protection.

 

Someone is using our company’s trade mark, what can we do?

A trademark is any sign you or your business uses to market or differentiate your products or services, such as a business name, brand name, or logo. A trade mark can be a word or words, an image, a colour or shape, a sound, a smell or a three-dimensional form, or any combination of these.

Trade marks can be registered or unregistered.  You may want to use the symbol ™ for unregistered rights to show that you believe you have the right to use the mark and will protect it. The ®symbol can be used to signify a registered trade mark.

If someone is infringing your trade mark you can enforce your rights in several ways including before the Intellectual Property Enterprise Court (IPEC), the High Court and sometimes via Trading Standards.  Attempts can and should also be made to resolve the dispute via negotiation and informal agreements.  We can assist you with all aspects of brining or defending a trade mark infringement claim.

 

I invented a new technology while I was working at my company and they are making a lot of money from that invention.  Can I claim compensation even though I was an employee?

Under section 40 of the Patents Act 1977 an employee can claim compensation from an employer if the employee’s invention, for which a patent was granted, is of “outstanding benefit” to the employer and a Court considers it “just” to award compensation in all the circumstances. Successful cases are rare but awards have been made by the Courts.