9 Dec
2019

Litigation procedures and strategies: United Kingdom

Finnegan Europe LLP

Legislative framework and causes of action

The law governing trademarks within the United Kingdom is the Trademarks Act 1994. The procedures in the courts are set out by the Civil Procedure Rules.

The United Kingdom’s trademark law is harmonised with EU legislation and substantially influenced by EU jurisprudence. The Trademarks Act 1994 implements EU Directive 2015/2436 to approximate the laws of the member states relating to trademarks, replacing the previous two directives. EU Regulation 2015/2424 has direct influence on the courts.

The regulation will no longer be binding on the United Kingdom following its withdrawal from the European Union. However, there are no immediate changes planned for the Trademarks Act which implements the directive.

Causes of action

Infringement of a registered trademark

According to Section 10 of the Trademarks Act, a person infringes a registered trademark if he or she uses, in the course of trade, a sign which is:

  • identical to the trademark and is used in relation to goods or services that are identical to those for which the trademark is registered; or
  • identical or similar to the trademark and:
    • is used in relation to goods or services identical or similar to those for which the trademark is registered, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark; or
    • is used in relation to any goods or services where the trademark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

The act clarifies that a person uses a sign if he or she:

  • affixes it to goods or the packaging thereof;
  • offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
  • imports or exports goods under the sign;
  • uses the sign as a trade or company name or part of a trade or company name;
  • uses the sign on business papers and in advertising; or
  • uses the sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.

The owner of a registered trademark and its exclusive licensees are entitled to sue for trademark infringement. Further, unless such a right is excluded by the licence, a licensee may call on the owner to take infringement proceedings in respect of any matter which affects its interests. If the owner fails to do so, the licensee may bring proceedings in their own name.

Currently, the term ‘prior registered trademark’ refers to a registered UK trademark, international trademark designating the United Kingdom and the EU trademark. Following the United Kingdom’s withdrawal from the European Union, owners will be unable to enforce their EU trademarks in the United Kingdom. However, the UKIPO has announced that comparable, fully independent UK trademarks will be created for all registered EU trademarks.

Passing off

Passing off is a common law tort allowing protection against misrepresentation of one’s goods or services as those of another. Case law defines two forms of actionable passing off:

  • classic passing off; and
  • extended passing off.

For a classic passing off claim to be successful, the claimant must meet the cumulative requirements of the three-stage test. The claimant must demonstrate that:

  • it owns goodwill in the goods or services in question;
  • the defendant has misrepresented to the public that it owns the claimant’s goods or services or has used a trademark in such a way as to likely mislead the public into believing that there is a connection between both entities’ goods; and
  • as a result of the misrepresentation, there has been, or will likely be, damage to the claimant’s goodwill.

Extended passing off protects collective goodwill, usually, in a trade name for a type of product (eg, champagne, whisky or chocolate), against manufacturers of substitute products. To be successful, a claimant must prove that the collective business owns goodwill in a type of product or service, and that the subject mark is distinctive of that type of product among a significant proportion of the public. The type of product or service at issue, as well as the class of traders which provide it, must be identifiable in a sufficiently clear manner. Any one or more of the class of relevant traders is entitled to sue. Further elements of extended passing off include misrepresentation to customers and damage to the claimant.

Criminal offences under the Trademarks Act

Criminal actions are rare and typically arise where the sale of counterfeit products is identified.

Under Section 92 of the Trademarks Act, it is an offence (punishable by up to 10 years’ imprisonment, a fine or both) to use without the consent of the owner, and with a view to gain, or with intent to cause loss to another, a registered trademark for the goods in respect of which the trademark is registered, or for any goods if the subject trademark has a reputation in the United Kingdom and the use of the sign would take unfair advantage of, or would be detrimental to, the distinctive character or repute of trademark.

For an offence to be committed, there must be infringement of the registered trademark in question.

In these circumstances, the act provides that it is a defence for a person charged with an offence to show that he or she believed (on reasonable grounds) that the use of the mark was not an infringement of the registered trademark.

Unjustified threats

UK law has provisions to provide relief to parties which have been threatened with legal action for infringement of IP rights when no infringement has taken place. These provisions are of particular benefit to smaller businesses defending or wishing to enforce their intellectual property.

Alternative dispute resolution

The stance of the UK courts is that litigation should be a last resort. The Civil Procedure Rules strongly encourage that parties consider negotiations or alternative dispute resolution (ADR) before commencing court proceedings. Even after court proceedings have begun, the parties should continue considering a settlement.

Mediation and arbitration are among the most utilised forms of ADR.

Arbitration

Where the seat of the arbitration is in England, Wales or Northern Ireland, the Arbitration Act 1996 applies. Section 1(a) of the act states that “the object of arbitration is to obtain the fair resolution of disputes by an impartial tribunal without unnecessary delay or expense”.

Engaging in arbitration requires the consent of the parties involved. Agreement to submit to arbitration in the event of a dispute may be included in a commercial contract or be a term of conducting business between parties when first engaging with one another (ie, before any conflict has arisen). Alternatively, where there is no prior agreement regarding arbitration, the parties are free to agree to enter into arbitration at any point in the course of a dispute. Arbitration agreements are interpreted broadly to include both non-contractual and contractual disputes.

Where the tribunal is to consist of a sole arbitrator, the parties jointly appoint the arbitrator. If the tribunal is to consist of three arbitrators, each party will appoint one arbitrator, and the two appointed arbitrators will designate a third arbitrator as chairperson. Arbitrators must act fairly and impartially. A duty of confidentiality is imposed on the parties and arbitrators in relation to the arbitration hearing.

The parties are free to agree on the powers exercisable by the arbitral tribunal as regards to remedies. The tribunal has the power to order:

  • a party to do or refrain from doing something;
  • the specific performance of a contract; and
  • the rectification, setting aside or cancellation of a deed or other document.

However, the arbitral tribunal is unable to revoke a trademark. In a situation where, in arbitration proceedings, a mark is found to have failed use requirements, the owner must undertake to surrender the registration.

Mediation

Mediation is considered to be the most informal, cost-effective and confidential form of dispute resolution. The parties must agree to mediate and appoint a mediator. However, in contrast to an arbitrator, a mediator cannot impose a decision on the parties, but rather acts as a facilitator of a resolution between the parties. The resolution must be reached by the parties themselves.

Litigation venue and formats

Litigation venues

An IP claim can be brought in the Chancery Division of the High Court or the Intellectual Property Enterprise Court (IPEC). Cases can be transferred between the general Chancery Division and the IPEC.

High Court

The Chancery Division is one of the three divisions of the High Court of Justice. It incorporates the Patents Court and the IPEC. The Chancery Division hears the most complex IP cases and those involving substantial sums of money. The High Court does not limit the amount of claimed damages or costs. However, the court has discretion in managing costs and issues orders requiring the parties for follow the approved cost budgets.

The Patents Court handles cases relating to patents, registered designs and plant varieties disputes.

IPEC

The IPEC is part of the High Court. It hears only cases concerning intellectual property. Litigation in the IPEC is generally faster and less costly than in the rest of the High Court. A trial in the IPEC usually lasts up to two or, at the most, three days.

Disputes which involve matters other than intellectual property will only be heard if associated with an IP claim.

The IPEC has two sets of procedure:

  • Multi-track – cases involving a point of law of some complexity or importance, or requiring extensive cross-examination, or if for other reasons the trial is liable to last more than one day, are generally assigned to multi-track. In the IPEC multi-track, financial remedies are capped at £500,000. This cap may be waived by agreement of the parties. Legal costs do not exceed £50,000. Cases involving patents, registered designs, semi-conductor topography rights or plant varieties can only be heard in the multi-track.
  • Small-claims track – this track is most suitable for straightforward cases with no significant issue of law, and that can easily be heard in under a day. The small-claims track is for claims in which the compensation sought is no more than £10,000 and for cases of a simpler nature with a claim for a lower level of damages. The procedure in the small-claims track is shorter and less formal than in the multi-track, and the court fees are lower. In practice, the losing party is not required to pay or to pay only a very small amount of the winning party’s legal costs.

Claims which have been started on one track can be re-allocated to the other track.

Damages and remedies

The remedies available in the High Court and IPEC include:

  • Preliminary injunctions – interim injunctions are granted only if a matter is urgent and where there is a serious question to be tried. The court will also consider the strength of the case, whether damages, if awarded at trial, could be a satisfactory remedy for the claimant, and the likely impact of the decision on both parties.
  • Final injunctions – where there is a probability that the infringement will be commenced, continued or repeated, injunctions are usually granted.
  • Damages or an account of profits – in general, the mere proof of an infringement entitles the claimant to damages. Where the infringement was innocent, the infringer is usually ordered to pay at least nominal damages and the costs of action. Where a UK trademark was infringed, damages can be recovered from the date of the trademark application. As an alternative to claiming damages, a claimant can seek an account of profits.
  • Delivery up – the order does not apply to third parties who have come into possession of infringing goods. Infringing goods can be delivered up for destruction or for the erasure of the marks from them.
  • Search and seizure orders, as well as asset freezing orders.
  • Orders requiring the dissemination of a judgment.
  • Costs – the costs are at the discretion of the court, which will rely on the framework provided by the Civil Procedure Rules.

The Trademarks Act also provides for a measure for infringing goods to be treated as prohibited imports.

Evidencing the case

No evidence or written submissions may be filed without permission following a case management conference (CMC). The court applies a cost-benefit test to the filing of material in the case.

Disclosure

Parties are obliged to retain all documentary evidence, including electronic documents, relating to the case once a party becomes aware of the possibility that a claim will be made. Before the CMC, the parties must list the evidence that exists and attempt to agree the scope of disclosure. The court usually orders a standard disclosure where the parties must disclose the existence of all documents which they intend to rely on, or which may adversely affect another party’s case.

Legal professional privilege protects confidential legal advice by lawyers to their clients. Without prejudice, correspondence between parties attempting to settle the dispute is generally also excluded from evidence and will not be seen by the court.

Expert witness

The parties are required to obtain the court’s permission to call expert-opinion evidence. The party asking for permission must provide an estimate of the costs of the proposed expert, and to save on the costs, where both parties request experts, the court can order the appointment of a single joint-expert. In the latter case, the parties will be jointly liable for the fees of the expert.

Experts are strictly obliged to provide independent, objective, unbiased evidence based on matters within their expertise.

Survey

Use of survey evidence in trademark cases is strongly regulated. A court’s approval is required not only to include a survey in evidence, but the court must also approve of the questions and methodology of a proposed survey before it is conducted. The request must pass the cost-benefit test and persuade the court that the survey will have a real value to the case.

Available defences

Section 11 of the Trademarks Act sets out the following defences to trademark infringement:

  • use of a registered trademark – a registered trademark is not infringed by the use of a later validly registered trademark in relation to goods and services for which the latter is registered;
  • use of name – the defence applies only to the name or address of an individual;
  • descriptive use – the use of indications which are not distinctive, or which concern the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services are not considered infringing;
  • use to indicate intended purpose – a registered trademark is not infringed by the fair use of the trademark for the purpose of identifying or referring to goods or services as those of the owner of that trademark, in particular where that use is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts); and
  • local use – a registered trademark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

Further defences include the following:

  • Use in comparative advertising which is in accordance with Business Protection from Misleading Marketing Regulations 2008.
  • A registered trademark is not infringed by the use of the trademark in relation to goods which have been put on the market in the European Economic Area under that trademark by the owner or with its consent. An exclusion to this provision is where legitimate reasons exist for the owner to oppose further dealings in the goods (eg, where the condition of the goods has been changed or impaired after they have been put on the market).

Appeals process

A decision of the IPEC in multi-track proceedings or of the High Court may be appealed to the Court of Appeal and then to the Supreme Court. In each case, permission to appeal must be obtained from the judge who made the order. If the IPEC judge refuses to give permission, the party may instead seek permission from the Court of Appeal. The appeal will be allowed only if there is a real prospect of success or there is some other compelling reason for the appeal to be heard.

Permission to further appeal to the Supreme Court appeal is granted for requests that raise an arguable point of law of general public importance which ought to be considered by the Supreme Court at that time.

Decisions in the IPEC small-claims track are appealed to an enterprise judge (a judge of the IPEC).

portfolio management and on the selection, clearance, searching, registration, maintenance, licensing, assignment and enforcement of trademarks in the United Kingdom, the European Union and abroad. She has extensive experience filing and prosecuting trademarks under the Madrid Protocol system. Ms Valuiskich also handles office actions and oppositions, as well as cancellation actions before the UKIPO and the EUIPO. Her experience extends across multiple industries, including fashion, publishing, sports equipment and apparel, entertainment, pharmaceutical, construction and packaging.

Finnegan Europe LLP

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London SE1 9BG

United Kingdom

Tel +44 20 7864 2800

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Web https://www.finnegan.com

Clare A Cornell

Partner

[email protected]

Clare A Cornell is a partner in Finnegan Europe LLP’s London office and leads the firm’s London trademark group. Ms Cornell is a chartered and European trademark and has 20 years’ experience in the IP industry. Her practice focuses on all aspects of trademark portfolio management. She specialises in trademark enforcement and seeking settlement of complex IP disputes. Skilled in coordinating national and international trademark filing strategies, Ms Cornell serves an international client base, including through the EUIPO and the WIPO Madrid International Trademark Registration System. She has particular experience working with attorneys in China on the opposition and cancellation of bad-faith trademark applications and registrations.

Elena Valuiskich

Attorney

[email protected]

Elena Valuiskich is a chartered UK and European trademark attorney in Finnegan Europe LLP’s London office. Her practice comprises all aspects of European trademark work, from prosecution to contentious matters. Ms Valuiskich assists with counselling clients with portfolio management and on the selection, clearance, searching, registration, maintenance, licensing, assignment and enforcement of trademarks in the United Kingdom, the European Union and abroad. She has extensive experience filing and prosecuting trademarks under the Madrid Protocol system. Ms Valuiskich also handles office actions and oppositions, as well as cancellation actions before the UKIPO and the EUIPO. Her experience extends across multiple industries, including fashion, publishing, sports equipment and apparel, entertainment, pharmaceutical, construction and packaging.