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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Claims for UK trademark infringement can be made to the Chancery Division of the High Court, the Intellectual Property Enterprise Court (IPEC) and county courts with Chancery district registries.

These courts are also designated EU trademark courts and are therefore also able to enforce EU trademarks which are infringed in the United Kingdom and are able to grant EU-wide relief. When sitting as EU trademark courts, the courts apply the EU Trademark Regulation, supplemented by national law where appropriate.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Civil proceedings for trademark infringement can be brought to the High Court, the IPEC and county courts with Chancery district registries.

IPEC  This is the specialist IP court. Cases are suitable for the IPEC where the issues are focused and can be dealt with at a short trial (usually up to two days). Damages are capped at £500,000 and costs recovery limited to £50,000.

High Court This route is suitable for more complex cases. There is no limit to trial duration – within reason. The loser pays a proportion of the winner’s costs. However, costs budgets must be exchanged unless damages are more than £10million

High Court – shorter trials scheme (pilot scheme) There is no cap on recoverable damages. Trials are limited to four days. Costs budgeting is not applicable.

Certain acts that constitute civil trademark infringement may also be deemed to be a criminal offence. These are primarily aimed at preventing counterfeiting and include:

  • applying an offending mark to goods, dealing in, or keeping such goods;
  • making use or keeping of packaging or documents bearing an offending mark; and
  • making or keeping articles designed for reproducing an offending mark.

Penalties for these offences include fines or prison terms.

A trademark owner may bring a private criminal prosecution instead of or as well as civil proceedings. However, where there is an issue over the validity of a trademark, any criminal proceedings would need to be stayed while the High Court or the UK Intellectual Property Office dealt with the validity action. 

Who can file a trademark infringement action?

The following entities can file a trademark infringement action:

  • the trademark owner; and
  • a licensee, but only in specific circumstances.

What is the statute of limitations for filing infringement actions?

The Limitations Act 1980 prevents any infringement action being brought before the English courts more than six years after the date of the infringement.

What is the usual timeframe for infringement actions?

Between one year and 18 months.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Injunctive relief may be either interim or final.

An interim injunction is sought where the matter is urgent to stop the defendant’s activities pending a final decision of the court. In general, when considering injunctive relief the court will consider:

  • whether there is a serious question to be tried; and
  • whether it would be appropriate, in the circumstances, to grant interim relief.

Factors that the court takes into account include:

  • whether damages would be an adequate remedy – an injunction will not be granted if the claimant can be compensated in damages;
  • the ‘balance of convenience’ – whether the hardship to the claimant in the absence of the injunction outweighs the hardship to the defendant from granting the injunction; and
  • to a lesser extent and if all considerations are finely balanced, the likelihood of success on the merits of the case.

A claimant awarded an interim injunction has an obligation to prosecute the case to full trial and must provide a cross-undertaking in damages to reimburse the other side if at the trial the interim injunction is found to have been incorrectly granted.

 A final injunction is granted at the end of a trial and is therefore directed at future infringement. In general, where a claimant’s rights have been infringed, a final injunction will be granted.

An injunction (interim or final) is an equitable remedy and is therefore granted at the discretion of the court.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following remedies are available to owners of infringed marks:

  • Injunctions – for example to cease the infringing activity.
  • Damages or an account of profits:
    • Damages are granted to restore the claimant to the position in which it would have been, had the infringement not been committed and are therefore not punitive. Damages for trademark infringement are generally calculated by reference to lost profits – the losses the claimant can prove it has suffered – or, if more appropriate, on a royalty basis (eg, the amount that would have been paid by a willing licensee for the use of the infringed trademark).
    • An account of profits is a discretionary equitable remedy, allowing a claimant to recover the profit received by the defendant as a result of its use of the claimant’s trademark.
  • Orders for erasure, removal or obliteration of offending signs from infringing goods, materials or articles.
  • Orders for delivery up and destruction of infringing goods, materials or articles.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Trademark owners can apply to Her Majesty’s Revenue and Customs by completing a National IP Rights Application for Action (AFA) to intercept goods coming into the United Kingdom, which are suspected of infringing their IP rights. The UK Border Force is entitled to seize such goods and arrange for their destruction, provided that the rights holder confirms the infringement and the holder of the goods has agreed to or not opposed the destruction.

Even when no AFA is in place, the UK Border Force may take ex officio action and seek to identify the infringed rights holder and invite them to file an AFA.

Procedures for the destruction of goods in small consignments also exist. This option enables counterfeit goods to be immediately destroyed at the rights holder’s expense without explicit consent on each occasion. 

Defence

What defences are available to infringers?

Provided the use of the trademark is in accordance with honest practices in industrial or commercial matters, a registered trademark is not infringed by the use of:

  • the defendant’s registered trademark – unless there has been acquiescence;
  • a person or a company of its own name or address – this will be restricted to personal names only following the implementation of the Trademarks Directive by July 2019;
  • indications concerning the kind, quality, geographical origin and other characteristics of goods or services;
  • the trademark where it is necessary to indicate the intended purpose of a product or services, in particular, accessories or spare parts; and
  • an earlier right in a particular locality. ‘Earlier right’ means an unregistered trademark or other sign continuously used in relation to goods or services. The earlier right most often relied on is the right to sue for passing off.

While not a defence per se, it is common for the alleged infringer to assert that the claimant’s mark should be cancelled for invalid registration or should be revoked.

Appeal

What is the appeal procedure for infringement decisions?

Decisions of the Intellectual Property Enterprise Court or the High Court may be appealed to the Court of Appeal and then to the Supreme Court. Decisions may only be appealed with permission.

Before the Court of Appeal, permission will be given only if the appeal:

  • has a real prospect of success;
  • raises an important point of principle or practice; or
  • there is some other compelling reason for the appeal to be heard.

Before the Supreme Court, permission is granted only for applications that raise an arguable point of law that is of general public importance.

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