IPO Review of Enforcement: Call for Evidence
|Intellectual Property Office, Newport|
Reproduced with kind permission of the Intellectual Property Office
In Protecting creativity, supporting innovation: IP enforcement 2020 which was published on 16 May 2020, the Intellectual Property Office promised to review periodically "existing methods of legal recourse for IP infringement to ensure they are effective, consistent, and proportionate." On 5 Oct 2020, it announced a call for evidence from IP rights owners to inform that review. The closing date for submissions is 11:45 on 2 Nov 2020.There are three key themes for the review;
- the cost of legal challenges,
- how accessible and effective the judicial process is, and
- improvements to the Small Claims Track of the Intellectual Property Enterprise Court.
The Introduction states that those topics have been chosen by a working group chaired by Professor Sir Robin Jacob of the Institute of Brand and Innovation Law at University College London. That group includes representatives of all the professions that provide intellectual property services and includes Professor Mostert of King's College with whom I collaborated last year on a project for the WIPO (see Another Side of the WIPO 5 Sep 2019) and an instructing solicitor. They identified the issues mentioned above plus online infringement. That last topic will be addressed through other initiatives.
- "What costs have you or your business incurred when protecting your IP right(s) from infringement? When you respond, please include the type of IP right(s) you were protecting. What was the outcome of the case?
- Have you avoided making a claim or pursuing a case when protecting your or your business’ IP? If so, please explain your reasons. For example, was it because of the costs involved?
- Which costs did you consider when deciding what action to take to protect your IP? For example, the cost of the time spent dealing with the infringement or the possibility of paying an expert?
- Were you aware of or did you consider the use of protective measures such as IP insurance? For example, BTE (before the event), ATE (after the event), legal expenses insurance, or free legal advice through services like the Citizens Advice Bureau or IP pro bono?
- Is there a reason you did not use protective measures such as IP insurance?"
- "What costs have you or your business incurred when defending an accusation of alleged infringement? When you respond, please include the type of IP right(s) you were accused of infringing. What was the outcome of the case?
- Could you provide some information on how you funded the case? For example, debt, using free legal services or insurance."
- "Have you considered or used IP pro bono or similar services to help with the costs of seeking legal advice? If so, please provide details of your case (this can be anonymised) and your overall experience.
- Did anything prevent you using these services? Please provide details.
- If you are aware of the service but have not used it please explain why not? For example, were you unable to get a referral to the IP Bar pro bono service?"
Possibly the most interesting consultation paper is on Accessibility and effectiveness of judicial processes. IP owners are asked:
- "Do you have experience of the judicial process? If you do, please provide details of your specific IP case. Please include whether you found the system easy to understand and use.
- Were you aware of the different routes available to take to pursue the alleged infringement?
- When your product or creation was being infringed, did you feel there was easy access to the court system? Was there easy access to information on which route would be the most suitable? Please explain what happened in your case."
- the Uniform Domain Name Dispute Resolution Policy for generic top-level; domain name disputes and similar schemes for country code domain names such as Nominet's Dispute Resolution Service for ".uk" domain names and the ADR and EURid for ".eu" domain names (see my article on Domain Name Disputes in NIPC Branding);
- the IPO's opinion service for patent disputes; and
- the Company Names Tribunal.
- "Have you stopped infringement of your rights without taking the infringer to court?
- Did you use an alternative dispute resolution (such as mediation or arbitration)? If so, please provide details of which service you used, your experience and the outcome.
- How did you find out what route to take to enforcement?
- What was your experience of using the chosen method?"
In the meantime, IP owners are asked:
- "Have you used the small claims track? If you have, please describe what happened in your case? Did you find the available guidance easy to understand without the need to seek legal advice?
- Have you looked into using the small claims track and decided not to use it? If so please provide details of what happened and your reason for not using the service.
- Would providing examples of cases have helped when considering whether to use the small claims track and your understanding of the process?
- If you have used the small claims track would you use it again for a future infringement case? Please explain your reasons for your decision not/to use the small claims track again?
- Have you had experience of using the CE file application service to submit an IP claim? If so, please provide details of your experience, including whether it was submitted to one of the regional courts hearing SCT cases."
- "Have you had a case that resulted in damages being awarded? If You have, please explain on what basis the damages were awarded?
- Do you think the introduction of a system such as statutory damages would help reduce barriers (if you believe there are any) for pursuing or defending legal action?
- Do you consider that this could have a negative impact on the system? For example, an increase in false claims?
- Do you think that there is a way that any negative impact of the implementation of statutory damages could be reduced? For example, the inclusion of a clause."
- "Have you previously used the small claims track to enforce an unregistered design? If so, please provide details of your experience.
- Have you been involved in a dispute over a registered design that would have been suitable to be heard in the IPEC small claims track? If so, please provide details of your experience and the approximate damages sought.
- Have the costs associated with legal action in IPEC’s multi-track prevented you from enforcing your registered designs? If so, please provide details and costs
- If registered design cases could be heard in the small claims