What to do if you find a knock off on your competitor's stand at an exhibition

Manchester Central Convention Complex

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Jane Lambert

The European IPR Helpdesk has just published two fact sheets on intellectual property and trade fairs which I discussed this morning in Resolving IPDisputess at Trade Fairs in NIPC Law. The reason the Helpdesk published those fact sheets is that a lot of disputes occur at trade fairs. That is because new products are often unveiled at trade fairs and IP owners get an idea opportunity to examine them.

English law provides a full range of remedies for IP infringement including interim and pre-action injunctions but, as I said in Resolving IPDisputess at Trade Fairs,  they are expensive to obtain and come with onerous conditions. It would be unwise for a small business to seek such relief unless it has a sound case in law and is properly funded.  If you intend to exhibit at an international trade show here are the steps that I would advise you to take first.

Tip #1   Ensure optimum legal protection for your intellectual assets 

Make sure that you have appropriate legal protection for your brands, products and business in each of the markets in which you intend to operate including the country in which you the trade show is to take place.  This should be part of your IP strategy and integrated into your long term business plan.

Tip #2    Make sure you have the funding for any enforcement proceedings you want to take and any revocation or invalidity proceedings others may bring against you.

Except for proceedings in the Intellectual Property Enterprise Court ("IPEC") small claims track IP litigation will cost you money. There's a limit to how much you can be made to pay the other side in IPEC but no limit at all to the amount you have to pay your own solicitor and counsel. In the rest of the Chancery Division and County Court, the only limit to your potential liability is what the costs or applications judge decides. That can run into the hundreds of thousands or even millions.

For small most companies, the best solution is before-the-event insurance. I have written a lot of articles on the topic the latest of which is IP Insurance: CIPA's Paper 1 May 2016 NIPC Inventors Club. I recommend your reading the IPO's Intellectual property insurance guidance of 24 March 2017. You will find a list of specialist brokers on the Chartered Institute of Patent Attorneys' website.

Tip #3 Don't lose your temper

Even though you may have spent a shedload of money on R & D and marketing only to find the spitting image of your flagship product on your competitor's stand you must be very careful what you say to the other side. English intellectual property statutes provide an anomalous cause of action called a "threats action".  If you threaten to sue for patent, trade mark, registered design and unregistered design right infringement in the UK and you can't make good that threat any person aggrieved by those threats (who may not necessarily be the person to whom your threats were made) can sue you under s.70 of the Patents Act 1977, s.21 of the Trade Marks Act 1994, s.26 of the Registered Designs Act 1949 and s.253 of the Copyright, Designs and Patents Act 1988 for declarations, injunctions and damages. The law is about to be reformed by the Intellectual Property (Unjustified Threats) Act 2017 which I discussed in The Intellectual Property (Unjustified Threats) Bill 24 Apr 2017 NIPC Law, but it is not in force yet.

Tip #4  Collect the Evidence

Your best bet is to keep stum and pick up any brochures, data sheets and other documentation that may be around. Ask for technical and sales information on the product and whether you can take any pictures. As soon as you have got all that you can get, send all that documentation to your IP adviser and ask for an urgent appointment with him or her.

Tip #5   Take Appropriate Action

After reading your documentation, your IP adviser should set out your options which will range from a without notice application for an injunction to remove the infringing goods from display to an action in the IPEC small claims track or indeed doing nothing and the likely risks and costs. You should plan litigation very much as you plan any other business operation with clear aims, budgetary controls and milestones.

Should you wish to discuss anything in this article, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Can I apply for a Trade Mark by myself or must I instruct an Attorney?

Jane Lambert

The answer is "yes".  You can apply for a trade mark without an attorney. It has been done many times before.  You will get a certain amount of practical help (though no legal advice) from the Intellectual Property Office ("IPO").  But I would not recommend it. It's a lot of trouble to save yourself a few hundred pounds and it could land you in a lot of extra expense as there are lots of pitfalls in the process.

Why you should instruct an Attorney
It takes time to qualify as a trade mark attorney.  Trainee trade mark attorneys learn about the sort of marks that are registrable and those that are not.  Attorneys know what to look out for on a trade mark search. They know how to draft your specification in a way that is wide enough to cover every business activity you are likely to undertake but not so broad that it leads to an objection. If, for any reason, there is an objection to your application an experienced attorney stands a very good chance of resolving it quickly and inexpensively.

Where to find an Attorney
If you do not already instruct a trade mark attorney here are some possible ways of finding one.  You can consult the Chartered Institute of Trade Mark Attorneys' website. There is a link to a searchable database of all the attorneys in the country.  If you want a personal recommendation, I can introduce you to attorneys with whom I have worked successfully in the past.  You could also attend one of the IP clinics that the Chartered Institute of Patent Attorneys runs in conjunction with Business and IP Centres and PatLib libraries around the country.

What to do if you decide not to take my Recommendation
If, despite my recommendation, you decide not to instruct a trade mark attorney:

Tip #1 Read the IPO guidance very carefully.
The IPO has published the following useful guides:

• Apply to register a trade mark
• What you can and can't register
• Apply
• After you apply.

Make sure you understand everything in those documents before you do anything,

Tip #2: Carry out a thorough trade mark search

You can search the IPO, EUIPO  and WIPO databases yourself or you can ask a patent librarian to make a search for you for a small fee.

Tip #3: Make sure that your application covers all relevant goods and services 

You register a mark in respect of specified goods or services. Make sure that the goods and services in respect of which you register your mark cover not just simply the goods and services that you are supplying now but all those that you plan to supply at any time over the next 5 years.

Tip #4: If there is an objection to your application, take professional advice at once

If the examiner says that your mark is unregistrable because it falls within one or more of the absolute grounds for refusal provided by sections 3 and 4 of the Trade Marks Act 1994 or if a third party objects on the grounds that your proposed registration is too close to his or her mark then your application is in trouble. Sometimes such objections can be resolved by negotiation. If not, they may go to a hearing before an official known as a "hearing officer". Should that happen, the costs will escalate sharply.

Tip #5: Consider IP insurance

IP litigation can be ruinously expensive, especially for small and medium enterprises.  You can insure against those costs by taking out specialist IP insurance before a dispute actually arises.

Tip #6:  Engage a Watch Service

A watch service looks out for applications that are similar to yours so that you can object to a third party's application and try to hammer out an agreement at an early stage. Leeds Business and IP Library offers a very cost-effective one. Several trade mark attorneys and other commercial organizations also offer watch services.

If you are still considering whether or not to register a trade mark or if you have applied to register a trade mark and hit any of those problems, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.