There are a range of options for dealing with an IP disputes in England, one or more of which can be applied to leverage a commercially successful outcome.
Negotiation between the parties, including through mediation
Litigation should not be the first port of call to resolving a dispute. If the parties can discuss the situation amicably, it is possible to negotiate a successful outcome quickly and cheaply that achieves your commercial objectives. Sometimes an outside, independent mediator can help that process by providing an arm’s length forum for the parties to explore compromises. While mediation involves a semi-formal process, it still represents a route to an inexpensive resolution of the dispute.
Alternative dispute resolution (ADR)
Alternative dispute resolution (ADR), usually required by a contract or if the parties agree, should be considered before litigation. In fact, in the English civil procedure rules require the parties to consider ADR. ADR is especially attractive for handling international disputes where the parties are looking for a global solution or because they want to keep the nature of the dispute private and out of the public realm of court. There are various forms of ADR. One is mediation, as discussed above. Another is arbitration, e.g. using a body such as the London Court of International Arbitration (LCIA) or a specialist IP institution such as the World Intellectual Property Office (WIPO). Arbitration is a private and legally binding proceeding which does not threaten the underlying IP asset, but whose decision can be enforced in most countries through national arbitration acts. Expedited versions can be faster and cheaper. Finally, binding expert determination, available through specialist bodies including WIPO, is often an excellent option for very technical disputes – e.g. in relation to entitlement to an IP asset.
Dispute resolution venues outside of the traditional court system
Domain name disputes can be brought before an ICANN accredited arbitration group such as WIPO (for disputes concerning gTLDs) or national registry managers such as Nominet.uk (for dispute concerning ccTLDs). While there are limits to the types of actions available, e.g. claims of cybersquatting and abusive registrations or challenges based on the complainant’s existing trade marks, making use of these specialist bodies with their comparatively low costs and relatively rapid dispute processing, can often prove to be a highly efficient and cost-effective strategy.
Online platforms with IP policing systems such as Etsy, Amazon, Instagram, Ebay and YouTube provide a semi-formal forum for reporting IP infringement and counterfeit goods. These can lead to the take down the sale of infringing articles and stopping the unauthorised use of brands.
Dispute resolution venues within the traditional court system
The UK Intellectual Property Office (UKIPO) provides a formal forum for applications to cancel or revoke UK patents, designs and trade marks, to challenge another party’s entitlement to such UK registered rights, and to pre-emptively oppose the grant of an UK application for such an IP right. The process of clearing away invalid rights and preventing third parties from obtaining rights which conflict with your own, can not only protect your business, but it can provide valuable leverage in commercial negotiations. Compared to a typical commercial dispute in the High Court, UKIPO procedures are generally quite flexible, responsive, fast and relatively inexpensive, with a lower cost risk.
Intellectual property infringement claims in England can be issued either in IPEC or other courts in the Intellectual Property List in the Business and Property Courts of England and Wales, commonly the Patents Court. As noted above, IPEC provides a streamlined and more cost-effective forum to hear lower value and less complex IP claims than the Patents Court. Complexity is determined not by the technical nature of the claim, but by the claim’s size and fact matrix, because an IPEC case must be heard within a one or two day trial. Critically, IPEC provides the full spectrum of infringement remedies, including legal capped cost awards and damages, and injunctions.
The Patents Court is the forum for all other English IP litigation. But even there the parties can take advantage of the Shorter Trial Scheme (STS). The STS was developed, like IPEC, for improved efficiency and cost. It introduces among other things, strict timelines, reduced pleadings and more limited evidence and disclosure. But it does not have the cost and damages caps of the IPEC.
In addition to managing costs, both IPEC and the Patents Court STS aim for trial within 12 months of issuing the claim.