Enforcement

Disputes involving Intellectual Property Rights take many forms.

When  possible and appropriate TIERNEY IP actively encourages all its clients to consider Alternative Dispute Resolution in disputes involving their Intellectual Property Rights.

Níall Tierney is a signatory to the World Intellectual Property Organization ‘Mediation Pledge’ and can therefore help in resolving disputes with other parties on an amicable basis.

Below are some examples of how and where disputes involving Soft IP (Trade Marks, Copyright and Industrial Designs) rights may arise and be resolved.

Trade Mark Disputes – Out of Court

Opposition

A contentious process where an application for the registration of a Trade Mark application can be opposed by a third party, e.g. the holder of an earlier conflicting right.

In some cases, an opposition may lead to an oral hearing. This is particularly common in Ireland and the United Kingdom.

Revocation

Revocation is a process where a Trade Mark registration can be revoked (removed from the relevant register) upon application from a third party.

The typical grounds for revocation are:-

The Trade Mark has not been genuinely used for a continuous period of five years.

The Trade Mark has not been put to genuine use within five years of registration.

The Trade Mark has become generic through the action or lack of action from the Trade Mark owner.

The use of the Trade Mark has rendered it misleading and deceptive.

If a Trade Mark is challenged on the grounds of non use, the burden is on the proprietor to prove that the Trade Mark has been genuinely used.

To avoid revocation on the grounds of non use, a Trade Mark should be used in the form in which it was registered.

Invalidity

Invalidity is a process where the validity of a Trade Mark registration is called into question upon application from a third party.

The typical grounds for revocation are:

The Trade Mark was registered in breach of the conditions of registration, e.g. not distinctive, descriptive, and deceptive.

The Trade Mark conflicts with an earlier right.

The Trade Mark was registered in bad faith.

In the United Kingdom and Ireland an application for invalidity can either be determined before a court or out of court. If the Trade Mark is the subject of proceedings before court, only a court can hear and determine the application for invalidity. Whether the process is court or out of court will vary in other countries depending on the countries’ laws and regulations.

Trade Mark Disputes – Court

Infringement

A Trade Mark registration gives its holder the exclusive right to use the Trade Mark in relation to the goods and/or services for which it is registered in the territory where the Trade Mark is registered.

It is not possible for the owner of an unregistered Trade Mark to bring infringement proceedings.

A Trade Mark registration allows its holder to prevent the unauthorised use of:-

An identical sign in relation to identical goods.

An identical sign in relation to similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).

A similar sign in relation to identical and/or similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).

An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Trade Mark.

The above grounds of infringement are similar to those that form the basis of an opposition to the registration of a Trade Mark

A European Union Trade Mark registration is enforceable throughout the European Union. In some cases, it may be possible for a court in one Member State to grant an order prohibiting use of the offending sign in other Member States.

Passing off

In Ireland and the United Kingdom, the holders of both registered and unregistered signs can seek protection under the Common law tort of Passing off. Passing off can be relied on if:

A misrepresentation has been made in course of trade by another person to customers or prospective customers of the aggrieved party.

The misrepresentation is calculated to injure the goodwill/reputation that has been built up under the aggrieved party’s name in respect of the goods/services supplied by him.

The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation that the aggrieved party enjoys under his name.

Design Disputes – Out of Court

In the United Kingdom, the UK Intellectual Property Office (UKIPO) has the jurisdiction to hear the following types of dispute:-

The subsistence of design right,

The term of design right,

The identity of the person in who design right first vested.

The decision of the UKIPO in relation to the above disputes is binding on the parties

Registered Designs

The validity of a Registered Design may generally can be challenged either before a court or out of court on the following grounds:-

It lacks novelty, i.e. it was not new at the time registration was sought

It lacks individual character, its overall impression is the same as that of an earlier design

It is a functional design

It is contrary to public policy or morality,

The registrant is not entitled to the design

It is in conflict with an earlier published design.

Unlike Trade Marks, it is not possible for third parties to challenge an application for the registration of a design.

Design Disputes – Court

The holder of a Registered Design has exclusive rights to use it throughout the relevant territory and to prevent third parties from both deliberately copying and independent development of a design with the same overall impression.

Protection of a Registered Design extends to all products, e.g. if your registration is registered in respect of toys, you can prevent the use of a design of the same overall impression on biscuits.

The rights in a European Registered Design (RCD) can be enforced in any of the designated Design Courts throughout the European Union.

The holder of an unregistered Design can only prevent the deliberate copying of the protected design and protection only lasts for three years from when the design was first made available.

Copyright disputes – Court

A copyright owner of a work has the exclusive right to:

Copy the work

Publish the work

Make an adaptation of the work

To broadcast the work.

If any of the above acts are carried out by a third party without authorisation, the copyright owner has the right to pursue a claim for Copyright Infringement.

Infringement can take place where both the whole of the work is copied or a substantial part.

Infringement can also be Direct and Indirect. For example if a photograph is taken of a painting, the copyright in the painting will be indirectly infringed.

Primary Infringement – this takes place where a person commits an infringing act or authorises others to do so.

Secondary Infringement – this takes place when persons commercially deal with infringing copies or articles or premises used to commit the infringement.

Copyright disputes – Out of Court

In the United Kingdom, certain types of disputes between parties relating to copyright may be heard before the Copyright Tribunal which is a division of the United Kingdom Intellectual Property Office.

The Copyright Tribunal has the authority to:

Hear cases from parties that have been unreasonably refused a licence by a collecting society.

Rule whether the terms that have been offered by a collecting society are unreasonable.

Settle disputes regarding royalties payable by TV listing companies to broadcasters.

In Ireland, disputes in relation to copyright licensing schemes are heard before the Controller of Patents, Designs and Trade Marks. A Register of Copyright licensing bodies is maintained by the Controller.

Domain Name disputes

Disputes involving the top-level domains (TLD) are managed under the Uniform Domain-Name Dispute Resolution Policy (UDRP). This is a process that was established by the Internet Corporation for Assigned Names and Numbers (ICANN).

ICANN (Internet Corporation for Assigned Names and Numbers) is a body that is responsible for overseeing a number of Internet related tasks, e.g. overseeing Internet Protocol (IP) address allocation and management of the top-level domain name system.

A complainant who wishes to use the UDRP process must establish

The domain name is identical or confusingly similar to the complainant’s Trade Mark or Service Mark.

The person applying for the domain name (registrant) does not have any legitimate rights to the name.

The registrant is using the domain name in bad faith.

Factors that may lead to a finding of bad faith would be

The registrant registered the domain name primarily for the purpose of selling, renting or transferring the domain name to the complainant.

The registrant registered the domain name to prevent the complainant from using their trade mark in a corresponding domain name.

The registrant registered the domain name to disrupt the complainant’s business.

By using the offending domain name, the registrant has attempted to attract Internet users to its site.

In Europe, the management and responsibility of the .eu domain is carried out by European Registry for Internet Domains (EURid).

Disputes involving the .eu domain name can be challenged in a court of any EU Member State, but most disputes are settled using the Alternative Dispute Resolution process. Disputes are heard by the Czech Arbitration Court. Rulings are legally binding.

The Internet registry for United Kingdom Domain Names is Nominet.

The Internet registry for Irish domain names is IEDR.