27 May 2010
There are three sets of enforcement mechanisms. First, all intellectual property rights are essentially rights of action which may be enforced by rights holders through proceedings in the civil courts. Secondly, bootlegging, counterfeiting and piracy (infringing rights in performances, trade marks or copyright on a commercial scale) are criminal offences which are enforced by trading standards officers. Thirdly, customs officers have power under European Union and national legislation to detain items that infringe intellectual property rights at ports and airports.
Claims to enforce these rights have to be brought in the Chancery Division of the High Court of Justice or the Birmingham, Bristol, Caernarfon, Cardiff, Central London, Leeds, Liverpool, Manchester, Mold, Newcastle or Preston County Courts. Claims under the Patents Act 1977 or the Registered Designs Act 1949 or which relate to registered Community designs, semiconductor topographies or plant varieties have to be brought in the Patents Court (a specialist court of the Chancery Division) or the Patents County Court (Central London County Court).
Intellectual property proceedings are governed by Part 63 of the Civil Procedure Rules and the Part 63 Practice Direction. These are amplified by the Patents Court Guide. Guidance is also available in the Chancery Guide and the Admiralty and Commercial Courts Guide.
A number of proceedings under the Patents Act 1977 such as applications for the revocation or amendment of a patent or even, theoretically, for declarations and damages for the infringement of a patent if all parties agree can be brought before the Comptroller or Chief Executive of the Intellectual Property Office. Such proceedings are usually heard by hearing officers appointed by the Comptroller. Similarly, hearing officers appointed by the Chief Executive in his or her capacity as Registrar of Trade Marks or Designs hear oppositions or applications for the revocation or invalidity of trade marks or applications for the invalidity of registered designs.
There is nothing to prevent parties to a dispute from referring the dispute to arbitration. They would have to enter an arbitration agreement within the meaning of s.6 (1) of the Arbitration Act 1996. Such an agreement may well exist if they are already party to a licence, joint venture or other contract. Alternatively, they may enter an ad hoc agreement. Two arbitration forums should be noted in particular:
- the WIPO Arbitration and Mediation Centre in Geneva which specializes in international intellectual property disputes: and
- ICSID (International Centre for Settlement of Investment Disputes) which hears claims by investors against governments under bilateral investment treaties nearly all of which require governments to protect investors’ intellectual property.
Mediation can best be described as chaired negotiation. It works because a mediator receives knowledge of each party’s interests that the parties would be unlikely to disclose to each other from which he or she can often identify scope for compromise. Both the WIPO Arbitration and Mediation Centre and the IPO retain panels of mediators with specialist knowledge and experience of intellectual property disputes (see Jane Lambert “Practice: Mediation in the IPO” 2 Oct 2009 and “Mediating Disputes in the Trade Marks Registry” 1 Sep 2005).
This is a procedure by which the parties agree to refer their dispute to an expert for a non-binding evaluation. Two schemes deserve particular mention:
- Domain Name Dispute Resolution: a scheme introduced by ICANN (Internet Corporation for Assigned Names and Numbers) for the resolution of generic top level domain names (e.g. domain names ending in “.com”, “.org”, “.info” and certain other non-geographical suffixes) known as the UDRP (Uniform Domain Name Dispute-Resolution Policy) has resolved many thousands of disputes since its introduction in 1999; and
- IPO Examiners’ Opinions: a scheme by which IPO examiners can give non-binding opinions on whether a UK or European patent (UK) is valid or whether it has been infringed pursuant to s.74A and s.74B of the Patents Act 1977.
Several national and regional domain name registries have introduced similar domain name dispute resolution procedures for disputes within their domain name space including Nominet for the UK and EURid for the “.eu” space.
For an introduction to the enforcement of intellectual property rights written with small and medium enterprises in mind, see Jane Lambert “Enforcing Intellectual Property Rights”, Gower, 2009. The book may be previewed here.