With the advent of a new small claims track in the Patents County Court, SMEs and individuals can now enforce their creative and Intellectual Property rights with less formality, cost and increased speed.
From 1 October 2012, the new small claims track came into being and is now available to any dispute relating to trademarks, passing off, copyright or unregistered designs, provided that the value of the claim does not exceed £5,000. Given the bar on the claim value, the procedure is not available to litigate patent or registered design rights. Interim injunctions are not available under the small claims track but final injunctions are.
Following the introduction of this track, SMEs and individuals are now more able to enforce their Intellectual Property Rights, having in the past, deterred from seeking legal redress because of deep concerns regarding exposure to significant costs and time. The new procedure reduces the strain placed on the aggrieved party by imparting a streamlined procedure, enabling minor complexities to be resolved with more speed, proportionate to the claim’s monetary value. In most cases, each party will pay its legal costs, whilst court fees, loss of earnings and travel expenses can be recovered by the winning party.
The recent proposals made by the government in the Jackson and Hargreaves review have been the focal point of the reforms. Parties who will benefit from the small claims track include copyright owners, photographers and artists who rely heavily on licenses as their sole means of income. In this highly technical and online age, these parties are suffering dilution of their creative rights as infringement becomes more commonplace, particularly on the Internet. Now, these parties can police and enforce their rights more proactively in order to recoup lost revenue and reputation.
As an alternative to litigation, from a trademark perspective, there are other commercial options to consider. For example –
Mediation
This is a form of Alternative Dispute Resolution (ADR), which enables parties to discuss the issues in the presence of an independent mediator, whose role it is to facilitate and explore avenues of settlement.
Coexistence
If there is sufficient practical distance between the parties, it might be possible to reach a coexistence agreement, where each party is permitted to use their trademark under particular conditions. For example, these conditions may relate to advertising mediums, distribution channels or retail outlets.
Licensing
In return for an agreed royalty, the trademark owner may grant a licence to use the particular trademark. It is important that licence agreements are drafted comprehensively and that the ramifications thereof are understood by both parties. When drafting a licence, the parties must consider, for example, royalty payments, the term of the licence, fields of use, channels of distribution, territorial scope, provisions for termination, quality control and whether the licence can be transferred.
Licences can be exclusive, i.e. to the exclusion of all others, sole, namely, to the benefit of the licensee and the licensor or non-exclusive, where the licensor can grant licences to multiple parties.
It must be remembered that a trademark registration is a powerful tool that can be exploited by you against others but in the reverse, by others against you. It is imperative to conduct comprehensive searching and due diligence, both for registered and unregistered rights, prior to commencing use of a trademark to try and mitigate against conflict in the future.