A proactive IP strategy requires enforcement where a third party infringes your registered rights (whether that’s in relation to your product, a logo, an image, domain name or other). Having an aggressive reputation regarding any instance of brand theft will benefit your company in the long run. Those entering the market will be aware that they are likely to face litigation if they trespass on your brand image. Put another way, litigation acts as a deterrent to those who would otherwise divert your customers by masquerading their products and services as yours. (See also How To Turn A Dispute Into A Developed IP Strategy.)
This article will look at the practical steps required before instructing your solicitor to initiate legal proceedings. We will focus on internet-based infringement, as these are increasingly common and the easiest to detect. Similar principles apply to analogue or real-world instances of infringement.
Monitoring the market
A member of your team should conduct weekly online searches for your product and service, across multiple search engines and social media platforms. www.duckduckgo.com is an ideal search engine for this purpose as it does not return results on the basis of your earlier searches (user profiling).
Quick fixes are available where a competitor:
- Creates a similar domain name to your trade mark. For more information on handling this type of infringement, see Domain Name Disputes & Resolution: What’s The Process?
- Is infringing your registered rights via Google Ads or Bing Ads. If this happens you should contact the relevant search engine company and notify them of your rights. (See Marks and Spencer Plc v Interflora Inc  EWCA Civ 1501,  2 All ER 663.)
Where the appearance of a competing website, product or service offered is similar to yours OR where the description of the product or service is similar, this should trigger a data collection exercise.
Data collection and preservation
The following steps should be taken immediately on discovering a potentially infringing product or service:
- Note the exact place, date, and time of discovery. If there is litigation, when and where you discovered the infringing activity will become important.
- Take screen shots. These are the easiest to collect and can be done via mobile or laptop. The screenshot metadata will automatically record the date and time of the screenshot.
- Download the page. Save all relevant webpages (including examples of advertising and point of sale information) by right clicking on the page and click on “save as”. If you have time, save the page in all options offered by your browser (the most common being “Webpage, Complete”, “Webpage, HTML Only” and “Webpage, Single File”). From a forensic point of view, these files provide more data than screen shots and therefore are likely to be more convincing in a court.
- Download brochures and product/service descriptions as JPEG and text documents. These will give further evidence of deliberate efforts to confuse the target customers.
- Test purchases. Depending on the value of your product or service, you should ask a third party to engage with the infringing company and make a purchase. This will give rise to real evidence, which can be physically produced in court, especially if you are relying on the appearance of the product or service.
- E-mail or private message correspondence. If you suspect that a company is not openly marketing itself in a way that infringes your rights, contact them as a prospective customer and save all responses you get. If it is a service, ask for references and/or photographs of their work. You might be surprised to get testimonials and images taken from your own website!
- Gather from multiple jurisdictions. If you have personnel or contacts in other jurisdictions, ask them to repeat the above exercises, as this will be relevant to the scope of the infringing behaviour.
Stop and think
Once you have gathered the data proving infringement, it is important to stop and consider your options. Think about:
- Who is the infringer? Carry out research on the infringing entity. Find out if it’s a limited company, who works there, press coverage, turnover if available. If the infringing company is a large multinational, then you should expect a denial of liability and lengthy litigation. Instead of suing the infringer, a better outcome might be to approach them to see if they would like to license or even buy your brand. (This happened in 2015 when Chinese vehicle maker Ninebot bought iconic US company Segway, after Segway threatened litigation.)
- Is the infringer a mark for legal costs? On the other end of the scale, the infringements might be done by a ‘straw’ or ‘matchstick’ entity. You need to be aware before initiating litigation that you are unlikely to redeem your legal costs. Also, there is a chance that the people behind the infringing behaviour will quickly regroup under a different company name and start the process all over again. Once again, you will need to prepare your company for lengthy litigation.
- Is there a possibility of a non-adversarial resolution? If you know a senior member of the competing company, then a casual phone call might achieve a quick outcome. The infringement might be completely inadvertent, so a non-confrontational enquiry might be a more appropriate approach than a strongly worded letter.
- What is the likely public response to your action? If the infringing company is a charity or non-profit entity, then you should carefully consider the potential backlash and detriment to your company if you are perceived to be oppressing or trolling an innocent party.
If you are in doubt about any of the above, consult a trade mark specialist before taking any further steps.
Pre action-letter (‘cease and desist’)
Once you have gathered the data and decide that pursuing the matter fits into your overall IP strategy, the next step is to send a pre-action aka a ‘cease and desist’ notice.
In general, the cease and desist letter should contain:
- A complete copy of your registered trade mark certificate.
- A list of web pages where infringing material was posted, including the date and time you discovered.
- The legal basis for alleging that their product, service, or website infringes your rights.
- A request for them to delete all infringing material and issue an apology within a certain time frame. It is not appropriate for you to demand action ‘forthwith’ as they will need a reasonable period of time to take legal advice.
- A warning that failure to take the steps requested will result in the initiation of litigation and that you will be seeking costs and expenses arising after a specified date.
Maintain the original letter and email you send, along with any response.
Once you have sent the pre-action letter, keep a close eye on the relevant web pages to see if any change is made. Set up a dedicated log, noting if there has been any or even no change. If further infringing material is published on the website of if a marketing campaign continues after you have sent your warning letter, then this behaviour will be deemed to aggravate the situation and increase the damages eventually awarded.
Preparing a file for your solicitor
If you have followed the steps in this article, then you should be well-prepared to instruct a solicitor to advise on the appropriate way to proceed.
You should provide them with a USB stick containing all documents prepared, correspondence and anything else relevant to the claim. Alternatively, create a secure cloud drive for sharing documents.
Depending on the value and circumstances of your claim, your solicitor will advise you to take an action to:
- The Intellectual Property Enterprise Court (IPEC) small claims track (claims less than £10,000)
- The Intellectual Property Enterprise Court (IPEC) (claims less than £500,000)
- The Chancery Division of the High Court of England and Wales (for claims greater than £500,000)
One final tip: if you are asked to provide the name of a member of the company who carried out the search and/or to sign documents pertaining to the action, make sure this person will be around and available for the litigation – as they will be required to give oral evidence proving the documents.
Further guidance is available at: https://www.gov.uk/defend-your-intellectual-property/take-legal-action.