Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark infringement proceedings can be brought in a number of ways before courts, which are distinguished mostly by their caps on the amount of the damages and costs that can be recovered, and by the degree of evidence and the streamlining of procedure. For damages claims up to £500,000, the Intellectual Property Enterprise Court (IPEC) multi-track is the appropriate forum. For claims up to £10,000, the IPEC small claims track is most appropriate. Both tracks are technically specialist lists of the High Court, which is the other forum for bringing (normally high-value) trademark infringement claims.

Section 92 of the Trade Marks Act 1994 makes it a criminal offence to use trademarks in a variety of ways without the consent of the proprietor. While it is possible to bring a private prosecution, such offences are normally pursued by government authorities.

Procedural format and timing

What is the format of the infringement proceeding?

The format for infringement proceedings depends largely on the forum in which they are brought. Generally, there is some degree of disclosure of documents and witness evidence, which is normally given in writing and subject to live oral cross-examination. Expert evidence may be permissible in appropriate circumstances and sometimes permitted for interpreting surveys that have been carried out. A single judge will decide the cases at first instance (more judges sit on appeals). It can take from 12 to 18 months for a claim to reach trial and the length of the trial can vary depending on the circumstances (eg, from less than a day to a number of weeks).

Criminal proceedings may be brought privately, but this is rare and normally such prosecutions are brought by government authorities in the appropriate (normally magistrates) courts.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Infringement is to be established on the balance of probabilities and the claimant has the burden of proving its claim.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark proprietor may bring infringement proceedings, but so may a licensee in certain circumstances, depending upon what is provided for in the licence and the status of the licensee as exclusive or non-exclusive. While brand owners have the necessary standing to bring a criminal prosecution, this is relatively rare.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

It is possible to notify customs to seize infringing goods as they enter the United Kingdom. There are time-limited procedures once customs have seized goods that relate to whether the goods will be destroyed, released or retained, pending court proceedings. Activities that occur outside of the United Kingdom are unlikely to give rise to a claim for infringement unless they in some way target or are directed at the United Kingdom.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Disclosure is an important part of legal proceedings in UK courts. However, the disclosure that may be obtained will depend upon which forum is chosen to pursue the claim and the issues in the case. Standard disclosure, which essentially requires both parties to provide relevant documents that are supportive of and damaging to its case, can be a costly exercise. As at July 2021, a pilot scheme of rules for disclosure is running that aims to tailor the disclosure ordered, so as to be proportionate in scope and cost to the case.

It is possible to obtain court-ordered disclosure in advance of any proceedings, subject to some strict rules and to the obtaining party paying the costs. It is also possible to obtain disclosure from third parties, particularly if they are in some way (innocently) involved in the infringement.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Preliminary (interim) injunctions may be heard quite quickly (eg, within weeks rather than months) as is consistent with the need for urgency in such applications. Infringement cases will often be heard within 12 to 18 months, with any appeals heard within a further 12 months.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period for trademark infringement is six years from the date of the infringement. Therefore, claims should ideally be brought within six years of that date. There is some case law on the question of what bringing a claim means, but it is generally safe to assume that issue of proceedings is sufficient. However, claim forms that are not served within a specified period (generally four months) will expire, which can have significant consequences if limitation is an issue.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs to litigate can vary widely depending upon the forum chosen, the issues in the case, the type of disclosure that is ordered and the applications that are made by the parties. The typical range of costs for a trademark infringement action before the High Court up to and including trial is between £175,000 and £425,000. Costs are ordinarily lower in the other forums. Appeal costs are likely to range between £50,000 and £100,000.

In the United Kingdom, the general rule is that the winner should recover its costs for the proceedings. However, this is subject to the rule that costs should be proportionate to the matters in issue and costs that are disproportionate will be disallowed (even if reasonably or necessarily incurred). This means that parties can expect not to recover the full amount of costs expended even if they win, although up-front costs budgeting has mitigated this risk somewhat.

Certain forums have specific costs recovery rules such that the winner may, essentially, only obtain the fixed fees of bringing the claim (eg, the court fees) on the IPEC small claims track or have their fees capped for various phases up to a maximum of £50,000 on the IPEC multi-track.

Appeals

What avenues of appeal are available?

Appeals from a first-instance decision (eg, the High Court) are ordinarily to the Court of Appeal.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

A typical defence might deny that there is infringement due to a denial of use of a sufficiently similar sign for sufficiently similar goods, etc. Otherwise, since an invalid trademark cannot be infringed, it is quite common for defendants to seek to challenge the validity of the asserted trademark on various grounds.

There is a statutory defence that the use of a registered trademark is not an infringement of another registered trademark. However, this can be more complicated to assert than it at first appears and often leads to related invalidity or revocation actions.

There is also a defence that a trademark is not infringed by the use of an earlier right in a particular locality that applies only to that locality. This is generally understood to apply to unregistered rights, such as the law of passing off.

It is also a defence if the asserted mark is liable to be revoked for non-use, but such a defence tends to lead to the mark being sought to be revoked for non-use as opposed to merely being liable to be revoked for non-use.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The usual remedies available are an injunction either on an interim or final basis, together with damages or an account of profits. The choice between damages and account of profits is the successful claimant’s responsibility, sometimes after appropriate disclosure from the unsuccessful defendant. For this reason (among others), the damages trial is separate from the liability trial. Damages are intended to represent the loss that has been suffered by the trademark proprietor as a result of the infringement, whereas accounts of profits relate to the profit that has been made by the infringer as a result of the infringement.

A final injunction is generally granted to the successful claimant. An interim injunction – pending trial – is much harder to obtain as there are a set of requirements that must be met, including that the injunction must be sought urgently (delay may defeat it) and that the loss that the claimant will suffer will not be able to be compensated for in damages. The claimant must also provide an enforceable undertaking that it will pay compensation to the defendant if the injunction is wrongly granted and the defendant suffers damage as a result.

The criminal remedies are fines or imprisonment, or both, but these are not obtainable in the civil courts.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR options, such as mediation, are available to parties but are generally not mandatory. Failure to engage with ADR options may have costs consequences and parties are encouraged to consider these options at every stage. However, the imposition of sanctions is relatively rare.