ITMA: DIGITAL RIGHTS
“THE INTRODUCTION OF COMPETITION INTO THE UK MARKET FOR LEGAL SERVICES IN THE AREA OF IP LITIGATION MAY ALSO BEGIN TO HAVE A BROADER EFFECT IN 2015 AND BEYOND.”
case ends then income drops substantially. Trademark practitioners tend to have a more consistent income level. Law fi rms have sought to hedge their risk by opening fi ling practices (with varying levels of success due to the investment required), holding the additional hope that this might lead to litigation being referred across. T e expansion of the market for litigation services to include trademark and patent attorneys, the courts’ approach of limiting the evidence that can be fi led and the lower risk of costs may lead to some of these practices becoming serious competitors to the major law fi rms for instructions on IP litigation. We already have some practices that incorporate solicitors into litigation departments, and this may become more common.
A key recommendation is that companies should invest in their registered IP portfolios. While the courts off er one method of resolution, many clients will fi nd a cost-eff ective solution in the terms and conditions of websites and their take-down procedures. T e terms and conditions oſt en require registered rights; clients should consider carefully whether their portfolio of registered rights off ers suffi cient coverage to obtain take-downs where they would want them.
Either way, technology is proving to be both a disrupter and an enabler, and we are seeing the profession of registered trademark attorneys adapt to and absorb the many challenges of a brave new world.
the alleged infringer has added material to its allegedly infringing article. T e decision has been appealed against and a decision from the UK Supreme Court may have a substantial infl uence on which design cases are brought and the protection strategies of companies in the future.
Finally, in 2014 there were a number of cases pertaining to blocking injunctions against internet service providers. T ese orders are intended to give IP right owners a cost-eff ective response to repeated infringements.
Getting creative
If a prediction could be made about the future, it would be that blocking injunctions and other creative remedies will become more common as brand owners try to fi nd further ways of targeting the intermediaries further up the chain, rather than the many small infringers. T e existence of smaller and more numerous infringers requires the use of lower-cost solutions, and it may be that this will be a gap fi lled by the strategic use of the UK’s specialist Intellectual Property Enterprise Court (IPEC),
www.worldipreview.com
as well as the small claims track of this court. T e damages cap of the multi-track path of this court is £500,000 ($745,000), which is likely to be more than enough for the needs of many brand owners. T e small claims track—which has a very limited costs recovery regime—has a damages cap of £10,000, enough to capture the smaller infringer. Careful planning and use of these two tracks should provide a strong message to the market. T e introduction of competition into the UK market for legal services in the area of IP litigation may also begin to have a broader eff ect in 2015 and beyond. Registered trademark and patent attorneys have had full rights of conduct and audience before the IPEC (and some beyond, to all UK courts in relation to IP matters) for a few years, and we may see a larger number of attorneys follow those who already actively use those rights.
Litigation departments within law fi rms are
oſt en ‘feast and famine’; when they have a large piece of litigation then the income brought to the department is strong, but when the big
Chris McLeod is president of ITMA and director of trademarks at law fi rm Squire Patton Boggs. He advises on all aspects of
trademarks, from pre-fi ling searches
and clearance to fi ling and prosecution, post-registration matters, and third- party confl icts. He can be contacted at:
chris.mcleod@
squirepb.com
World Intellectual Property Review Annual 2015
41
BLACKDOGVFX /
SHUTTERSTOCK.COM
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