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Never too small to fight: effective early enforcement of intellectual property

Jul 22, 2013

This blog is particularly intended for those businesses which have been trading for a number of months or years. You wouldn’t see yourself as a start-up.  You have built some value in the brand and/or products.

You may even have registered some trade marks, and, depending on your business designs and patents. It is time to start thinking seriously about intellectual property enforcement.
 

Imitation is the highest form of flattery, right?

Well perhaps, but copycats can be damaging to your business whether in terms of branding or your products.  Three examples of how copycats hurt your brand:

Lost sales: if sales are going to copycats they are not going to you! This weakens the distinctive name of your brand, but it also has a very tangible effect on your bottom line;

Tarnishment: if cheap, poor quality, imitations of your brand are allowed to flourish (think “Louise Wuitton”) it can be harder for consumers to tell your product from the copy.  Ultimately consumers may associate your brand with a poor quality product;

Generisation: you were the first into a market. You created the market.  People talk about the class of products and they use your brand name, and sometimes they don’t even mean your products they just mean the class of goods.  That can lead to the erosion of your brand value as consumers cease to see your brand as a brand but instead it is simply a description of the goods; and

You can stop both of these through effective early enforcement of your intellectual property. In this blog we’ll be considering two questions most people have about enforcement: (i) how, and (ii) how much does it cost (not necessarily in that order).
 

What intellectual property rights do I need to enforce?

All intellectual property rights are only as valuable as you make them.  If you do not enforce your rights, whether the right is copyright, a registered trade mark, a registered design or a patent, they can decrease in value.
 

How can I enforce my intellectual property rights?

First you find the infringers; then you take action. Finding infringers can be a matter of chance or it can be the product of a co-ordinated monitoring strategy.  Monitoring for infringers gives you a better chance of finding them (and stopping them) early.

Step One: Monitoring

You can do this by:

(a)    Making enforcement part of someone’s job to look out for copies and/or employ an investigations agent;

(b)    Setting up watching services for domains and trade marks, this will give you an early indicator of anyone trying to apply for a trade mark or registering a domain name which is identical or similar to yours;

(c)    Enlisting customs to take action on your behalf and impound suspected counterfeit product at the border before it reaches the UK.

If you want more information on putting any of these things into practice, contact us.

Step Two: Action

Once you have found one or more infringers it is time to take action.  A typical enforcement program might involve:

In our experience most cases will be resolved after stage 2 as most often infringers know that they have stepped over the line.  Even if they did not act deliberately they often do not want the time, cost and hassle of defending a potential court claim. But, they need to know that you are serious about enforcing your intellectual property rights at an early stage.
 

What can I expect to get out enforcement action?

You would typically ask for (and expect to get) undertakings from the copycat, these may include:

A promise not to sell infringing products in the future (this can be the same products or others which would infringe your rights); and

A promise to deliver to you or destroy any unsold copycat products that they have in their possession.

You would also be entitled to certain other things, which depending on the circumstances, you may be prepared to trade for a quicker result, for example:

Sales and stock information so that you can ascertain the level of damages they owe you;

Payment of your legal fees;

Publication of the fact that the copycat’s products infringed your rights, i.e. telling the world that they are a copycat and you are the real thing; and

Finding out where the infringing products ultimately come from, if the copycat is just importing or distributing someone else’s products.
 

How much does a typical enforcement strategy cost?

Several factors will impact on the cost, including the number of infringers that are being targeted and the nature of the infringement.

An example of a small enforcement requirement might be: one infringer who has copied your registered trade mark.  In this case it may only take a couple of hours to draft the initial letter. If the matter is resolved after one letter, which many are, you will likely have spent less than £1000 to get a copycat off the market, strengthened your brand and your position in the industry.