Protecting Your IP Overseas Presentation by Stewart Vandermark Wednesday 12 th July 2006

Someone’s Infringed – What Can I Do? What We Look At 1.When will the UK Courts help me? 2.What remedies can I get? 3.How urgently can I act? 4.What must I do?

It’s Been a Bad Day… Software, an emigrated ex Director, a competitor and an Australian version A Chinese website, your products, a UK agent A chance encounter, defaced labels, pharmaceutical products from Asia in a licensees warehouse Sports recovery drinks, a successful campaign, an Austrian import

A Shrinking World Overseas sales: ¼ of GDP in East Midlands Changing technologies New economic environments Know how, ideas, innovation and branding becoming ever more important –“Innovation – the successful exploitation of new ideas – is the key business process that enables UK businesses to compete effectively in the increasingly competitive global environment.” DTI Website

When Will the UK Courts Help Me? The Starting points (1)The UK first principle: service (2)The International Conventions first principle: domicile

Seven Golden Rules (to Steer You Through the Maze) (1)Is the Defendant resident in the UK (individuals) or is it incorporated under the laws of the UK/have it’s central management or control here (companies)? (2)Is the legal wrong / intellectual property infringement committed within the UK? (3)Is the overseas company linked to a Defendant domiciled in the UK?

(4) Has the Defendant already agreed in writing to submit to the jurisdiction in the event of a dispute? (Memo: check contracts!) (5) Has the Defendant become involved in UK Court proceedings? (6) Is the validity of a UK patent, trade mark or registered design been put in issue? (7) Is it a Community Design (whether registered or unregistered?)

Some Miscellaneous Rules Non Convention Countries Applicable law First Court has control

Alternative Dispute Resolution Negotiation Arbitration Mediation Independent evaluation

What Remedies Can I Get? 1.An Injunction stopping the activity complained of The most important remedy A discretionary remedy A losable remedy -“whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly or unknowingly, he has allowed or encouraged another to assume to his detriment.”

1.An order for destruction or delivery up The “take control” remedy A discretionary remedy The extent of destruction

3. Damages or an account of profits What have you lost? What did they make? You elect the best But should they be punished?

“ To require certainty of proof that pirate marketing caused loss of sales would be impossible. Once it is shown that pirate marketing took place, some loss of legitimate copies may…properly be assumed. Where reasonable commercial expectations for the film in question are established…and where…the film has done poorly and where the presence of pirate copies upon the market has been established, the copywriter owner is…entitled against the pirate and in the absence of any other explanation for the lack of success of the film in question to attribute the shortfall in sales to the activities of the pirate.” Columbia Pictures Industries v Robinson [1988]:

4. Costs The loser pays the winners costs But the Judge’s discretion Costs to be assessed

How Urgently Can I Act? The Court process Interim Remedies –Freezing Injunctions –Search and seize orders –Disclosure orders

–“If a person through no fault of their own gets mixed up in the tortious acts of others so as to facilitate their wrongdoing, he may incur no personal liability, but he comes under a duty to assist the person who has been wronged by giving him full information and disclosing the identity of the wrongdoers.” Norwich Pharmeal Co v C and E Commissioners –The balance of convenience –An undertaking as to damages

What Must I Do? 1.Don’t delay and take professional advice 2.Make a hard nosed, business decision a.What damage is really being done? b.What am I willing to spend to protect it? c.Am I acting on principle or emotion? d.What is my objective?

3. Gather your evidence together a. Of your rights b. Of the infringement c. Of the market d. Of damage caused 4. Know your enemy!

5.Apply for an urgent interim remedy? 6.A letter before action seeking Undertakings Beware of threats provisions for registered rights 7.Don’t be greedy