Guidance

IP crime and enforcement for businesses

Updated 28 March 2023

1. IP rights infringement overview

IP crime and infringement.

IP rights are infringed when a product, creation or invention protected by IP laws are exploited, copied or otherwise used without the permission or consent of the person who owns those rights or their representative.

It can range from using technology protected by a patent to selling counterfeit medicines/software, copying a film and making it available online to selling counterfeit goods including clothing, makeup, and DVDs. All these acts will constitute a civil infringement. However, in the case of trade marks, designs and copyright the act may also constitute a criminal offence if it’s conducted in the course of a business.

A detailed list of IP offences including the respective penalties are available.

1.1. Copyright infringement

Copyright is usually infringed when someone carries out any of the acts restricted by copyright without the rights holder permission, whether in respect of the whole or a substantial part of the work.

The author of a copyright work has the exclusive right to authorise or prohibit the following acts also known as economic rights: reproduction, distribution, rental and lending, public performance, communication to the public by electronic transmission including broadcasting, adaptation.

Authors also have moral rights which protect non-economic interests. This includes the right to attribution, the right to object to derogatory treatment of a work, the right to object to false attribution and the right to privacy of certain photographs and films.

1.2. Patent infringement

Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner’s permission. The owner of a patent can take legal action against you and claim damages if you infringe their patent.

1.3. Design infringement

By registering a design the proprietor obtains the exclusive right for 25 years (provided renewal fees are paid every 5 years) to make, offer, put on the market, import or export the design, or stock the product for the above purposes.

These rights are infringed by a third party who does any of the above with the design, for commercial gain.

1.4. Trade mark infringement

If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark, you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.

Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.

There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. However, some unregistered trade marks may be protected under Common Law and this is known as passing off.

2. What to do if accused of infringing someone’s IP Rights

If you are accused of infringing IP rights, the rights holder may wish to take action against you through the civil courts. Other methods can be used to resolve disputes, including mediation, the use of ‘cease and desist’ letters or by seeking an arrangement to use rights owned by others. You should be aware that you may be liable for damages relating to any proven infringement.

2.1. Allegation of copyright infringement

Copyright is usually infringed when someone carries out any of the acts restricted by copyright without the right holder permission, whether in respect of the whole or a substantial part of the work.

If you receive a notification of copyright infringement via letter, email, phone call or similar, you should take time to understand the allegation and try to determine the validity of the claim. Do not ignore it.

2.2. Allegation of patent infringement

Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner’s permission. The owner of a patent can take legal action against you and claim damages if you infringe their patent.

If you receive a notification of patent infringement, seek professional advice from a patent attorney or solicitor as soon as possible.

2.3. Allegation of design infringement

Designs rights are infringed by third parties that make, offer, put on the market, import or export a design, or stock the product for the aforementioned purposes for commercial gain.

If you receive a notification of design infringement, seek professional advice from an IP attorney or solicitor as soon as possible.

2.4. Allegation of trade mark infringement

Registered trade mark: If you use an identical or similar trade mark for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.

Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.

Unregistered trade mark: There is no available remedy for trade mark infringement if the earlier trade mark is unregistered. Some unregistered trade marks may be protected under Common Law and this is known as passing off.

If you receive a notification of trade mark infringement, seek professional advice from a trade mark attorney or solicitor as soon as possible.

3. Addressing IP infringement: affordable access to justice

3.1. IP Mediation

Mediation is a cheaper and quicker way of resolving disputes without going to court and the outcome is usually beneficial to all parties. A court will expect you to have tried to resolve your dispute - possibly using mediation - before starting legal proceedings.

The IPO Mediation service

The IPO has five accredited mediators covering the range of intellectual property rights. Further information about mediation services including the IPO and other mediation providers, costs and benefits are available.

3.2. IP Pro Bono

The IP Pro Bono initiative provides IP advice and legal support for claimants and defendants in intellectual property disputes who cannot fund action themselves and meet the selection criteria. This service is provided by IP organisations including the Chartered Institute of Patent Attorneys (CIPA), Chartered Institute of Trade Mark Attorneys (CITMA), the IP Lawyers’ Association (IPLA), IP Bar and the Law Society.

3.3. The Intellectual Property Enterprise Court (IPEC)

The IPEC is designed to help SMEs and individuals to get access to justice in a more affordable way. It deals with IP disputes including registered trade marks, registered designs, patents and copyright.

There are two alternative procedures for making a claim in the IPEC:

• IPEC (Small Claims Track)

For claims less than £10,000. No need for parties to be legally represented.

• IPEC (Multi Track)

Fixed scale of recoverable costs capped at £50,000. Value of damages claim capped at a maximum of £500,000.

For claims over £500,000 in damages or lost profits, claimants should apply to the High Court.

Detailed information including IPEC Court guide and guide to small claims is available.

A table (PDF, 498 KB) has been provided by the IPEC (Small Claims Track) and shows the damages awarded at final hearings over a period of time. It provides an indication of the types of infringement claim that come before the court and the range of damages awarded. The table does not include those cases which are settled by agreement or where the claim is unsuccessful

3.4. The Copyright Tribunal

The Copyright Tribunal is an independent tribunal established by the Copyright, Designs and Patents Act 1988. Its main role is to adjudicate in commercial licensing disputes between collecting societies and users of copyright material in their business. It does not deal with copyright infringement cases or with criminal ‘piracy’ of copyright works.

3.5. IP investigations and prosecutions

IP investigations and prosecutions are usually conducted by the local Trading Standards Authorities. Information about Trading Standards current priorities is also available.

Individuals or organisations can also conduct they own private investigations and prosecutions. The Crown Prosecution Service provide guidance.

It’s a common misconception that only the Crown or Statutory Prosecuting Authorities can use the criminal system to prosecute people or companies. Section 6(1) of the Prosecution of Offences Act (POA) 1985 provides the right for individuals and companies to bring a private prosecution in the criminal courts.

A private prosecutor is subject to the same obligations as the public prosecuting authorities and has a duty to act fairly and independently.

Compensation/Restitution

Where loss has been suffered, compensation may be a primary motive of a private prosecutor. Given the cost and delays likely to be suffered in pursuing civil proceedings, a private prosecution can be an attractive alternative solution. Following conviction, the criminal courts have the power to make a compensation order, dependent on the means of the offender. A private prosecutor is also entitled to pursue confiscation proceedings against a convicted defendant under the Proceeds of Crime Act 2002(POCA).

4. Risks for businesses

IP rights infringement and in particular IP crime threaten legitimate businesses, their staff, and undermines consumer confidence. Your business may face a number of risks if you do not take appropriate steps to tackle IP crime within your working environment.

Failure to address the problem could leave you and your business liable and at risk to civil and/or criminal action. Under civil law, you may be subject to court action and have to pay damages. Criminal action may lead to unlimited fines, or a custodial sentence (which could be up to a maximum of 10 years). You may also be vulnerable to threats from computer viruses and malware.

You need to think about not only the way your business is conducted, but also be aware that the behaviour of your staff and their actions at work may also incur liability for the organisation as a whole.

4.1. Tools to help your business

The IP for Business pages provides basic IP information for businesses including how to avoid infringing IP in work

The Supply Chain Toolkit produced by the IP Crime Group helps individuals and businesses to be aware of the growing risk from counterfeit goods getting into business supply chains. It also provides guidance on how to protect your IP assets and what to do if things go wrong.

The Trading Standards Business Companion site provides information for businesses and individuals that need to know about trading standards and consumer protection legislation.

5. How to report IP crime

Citizens Advice or call 0800 144 8848.

For a Welsh-speaking advisor call 0800 702 2020.

If you wish to remain anonymous, contact Crimestoppers or call 0800 555 111.

Your local Trading Standards authority is the leading agency enforcing criminal IP legislation. If you have concerns or are aware of any person or business that may be involved in IP crime, you can contact one of the organisations above.

Please note that if you have a complaint about goods or services, please contact Citizens Advice for information and advice. Trading Standards cannot help members of the public with specific complaints or advice about goods or services.