Going to Court to Protect Intellectual Property Rights

Resolving the dispute without going to court

Pre-trial settlement can be an effective tool for stopping an infringement of IP rights. Sending a formal pre-trial claim to the infringer is a key step. In addition to describing the infringement, the claim should specify the financial consequences of the infringement, as well as the potential recovery of court fees and legal costs if the matter is taken to court. A clear indication of the financial consequences can often encourage the infringer to resolve the dispute quickly and amicably.

At the same time, a pre-trial claim should not replace proper preparation for potential court proceedings. Even before the claim is sent, it is important to properly document the infringement and preserve the relevant evidence. The main methods of documenting such infringements are discussed below.

Effective protection of IP rights requires a focus on several key elements: a detailed description of the unlawful actions, accurate identification of the infringed IP asset, evidence confirming the infringement, and a clear calculation of the losses incurred as a result.

The pre-trial claim should also establish a clear deadline for its consideration and compliance with the stated demands, for example, a specific number of calendar days from the date of receipt. This helps establish the rights holder’s position, provide the infringer with a clear timeframe for voluntarily remedying the infringement and, if court proceedings follow, demonstrate that reasonable steps were taken to resolve the dispute before going to court.

Although pre-trial settlement is not mandatory before bringing a claim to court, it can demonstrate that the rights holder has taken steps to resolve the dispute amicably.

What evidence is required and how can it be obtained?

If the dispute cannot be resolved through negotiations or pre-trial settlement, court proceedings may remain the only effective way to protect the infringed rights. In addition to preparing the claim, it is essential to properly collect and document evidence of the infringement.

Possible methods of documenting IP infringements include:

• Documenting an infringement online through specialists. An infringement on the Internet may be documented by specialists from competence centres, court-appointed experts and similar institutions. Such a specialist can record the relevant webpage, including the date and time of the recording, the website address and its content. This type of documentation may constitute important evidence in court proceedings.
• Screenshots and video recordings. Screenshots and video recordings of online content can also serve as electronic evidence. However, depending on the circumstances, a court may attach less evidentiary weight to such materials than to evidence professionally documented by a specialist.
• Purchasing infringing goods. In this case, receipts, invoices and other transaction documents, together with the purchased goods, can help establish the infringement. It is particularly important that the documents contain information identifying the seller or supplier.
• Media publications. If the infringement has been published as an advertisement or article in a newspaper, magazine or other media outlet, a copy of the relevant publication may be submitted to the court as evidence.
• Information from customs authorities. This type of evidence may be relevant where the infringing goods have crossed a national border and the relevant information can be obtained from customs authorities.

This list is not exhaustive. The appropriate protection strategy may differ depending on the type of IP asset and the specific circumstances of the infringement, requiring an individual approach to evidence collection and documentation.

At the same time, IP disputes are resolved on the basis of the adversarial principle. Each party must substantiate its claims and objections with relevant, admissible, reliable and sufficient evidence. Therefore, when developing a protection strategy, it is important to identify from the outset which circumstances need to be established, what evidence can confirm them and how that evidence should be properly documented and preserved.

What should you ask the court to order?

When preparing a statement of claim, it is important to clearly define the remedies sought. In other words, the rights holder must determine what actions the court should require the infringer to take in order to stop the infringement of IP rights.

The primary remedy is usually an order to cease the actions that infringe IP rights, including stopping the infringer from using the relevant IP asset. Depending on the circumstances, additional remedies may include removing goods from circulation, blocking access to websites or deleting infringing information.

In certain cases, it may also be appropriate to ask the court to invalidate an agreement concluded in violation of IP rights or to invalidate a patent or trademark registration obtained in violation of the rights of another person.

Depending on the nature of the infringement, the claims may include:

• an order to stop using a trademark in advertising, on a website, on social media or on product packaging;
• an order to remove from circulation and destroy counterfeit goods, packaging, labels or other materials bearing an unlawfully used IP asset;
• an order to stop using a copyrighted work, including by removing unlawfully published photographs, texts, videos or other works from a website or other information resources.

In addition to seeking an injunction or other measures to stop the infringement, it may be appropriate to seek financial remedies. Compensation for actual losses incurred by the rights holder, as well as recovery of lost profits that could have been earned had the rights not been infringed, may provide an appropriate means of compensating the rights holder and restoring its position. Proper preparation of financial documentation and calculations is an important factor in substantiating such claims before the court.

It is also important to seek reimbursement of legal expenses and the court fee paid in connection with the proceedings.

Additional measures

Where necessary, additional procedural measures may include interim measures and the involvement of an expert in the proceedings. Properly substantiated interim measures can significantly strengthen the rights holder’s position and help ensure that the infringement is stopped promptly.

The purpose of interim measures may be to preserve evidence, prevent the continuation of the infringement or secure a financial claim by preventing the disposal of assets that could otherwise be used to satisfy a damages award.

Depending on the type of IP asset involved, such as a trademark, patent or copyrighted work, and the nature of the infringement, the court may apply various interim measures, including:

• seizure of goods or equipment used to manufacture the infringing goods;
• temporary removal of goods from points of sale;
• prohibiting the use of a disputed trademark, patent, musical work or literary work;
• ordering a party to refrain from certain actions, such as conducting advertising or marketing campaigns;
• freezing the infringer’s funds to secure potential compensation for losses incurred by the IP rights holder.

An expert opinion obtained in the course of the proceedings may constitute relevant and admissible evidence and can strengthen the case. Accordingly, involving an expert may be an important step in IP litigation.

Formulating the right questions for the expert is a critical part of the preparation process and may ultimately determine whether the expert opinion provides legally meaningful conclusions that support or refute the alleged infringement of IP rights.

Involving a lawyer in pre-trial and court proceedings

IP disputes have specific features that distinguish them from other types of litigation. These include not only proving the fact of infringement, but also correctly identifying which rights have been infringed, determining the appropriate remedies and establishing the amount of compensation that may be recovered. For this reason, involving a lawyer in the dispute can be justified as a means of ensuring the effective exercise of the parties’ procedural rights.

Preparation for pre-trial negotiations and court proceedings requires the correct choice of legal remedies, careful formulation of claims, substantiation of claims for damages or compensation, and compliance with procedural deadlines and evidentiary requirements. Failure to comply with formal requirements or errors in the legal qualification of an infringement may affect the court’s assessment of the case. In such circumstances, a lawyer provides professional representation and helps ensure the correct application of the law and compliance with procedural requirements throughout the proceedings.

Particular attention should be paid to evidence. Determining whether evidence is relevant and admissible, initiating an expert examination, preparing procedural motions and substantiating the need for interim measures are all important elements of an effective litigation strategy. A lawyer can help develop a clear and consistent legal position throughout the proceedings.

Therefore, involving a lawyer in an IP dispute can contribute to an objective assessment of the circumstances, the proper application of the law and, where possible, the pre-trial resolution of the dispute.

Conclusions

The key elements of effective protection of IP rights include choosing the right protection strategy, properly documenting and collecting evidence, pursuing pre-trial settlement where appropriate, and preparing high-quality documents for court proceedings.

Given the complexity of these processes, involving qualified IP lawyers is essential for properly formulating claims and ensuring the effectiveness of the litigation strategy.

Protecting IP rights is not only about restoring fairness for the rights holder as a creator or inventor. It can also help restore the rights holder’s reputation and financial position following an infringement.