Our Commercial Litigation team recently secured a successful outcome for a client in a High Court intellectual property dispute involving passing off and trademark infringement.
The claim was heard before the Intellectual Property Enterprise Court (IPEC) at the Birmingham High Court and resulted in judgment being entered in favour of our client, together with an injunction, the Court also ordered the Defendant to hand over the infringing products and pay 85% of the Claimant’s legal costs.
Background to the Intellectual Property Dispute
The dispute concerned the branding and supply of the Claimant’s (the party bringing the legal claim) product, which had been supplied to the Defendant (the party defending the legal claim) over several years before being distributed to end users.
Over time, the Defendant’s orders began to reduce before eventually stopping altogether. Shortly before ceasing orders entirely, the Defendant placed a final order that differed significantly from previous transactions.
Following this final order, the Claimant began receiving complaints relating to the pricing of products being sold by the Defendant. Customers were under the mistaken belief that the products continued to originate from the Claimant.
Investigations revealed that the Defendant had been marketing and selling its own products using the Claimant’s branding across social media platforms and its website, despite the products no longer being manufactured by the Claimant.
The Claimant alleged that the Defendant had shipped the final order to a factory in China, where the products were replicated and subsequently misrepresented as the Claimant’s own goods.
The Defendant denied the allegations, failed to provide satisfactory undertakings and continued to contest the claim through the Court proceedings.
The Trial at the Intellectual Property Enterprise Court (IPEC)
The liability trial was heard over three days at the Intellectual Property Enterprise Court (IPEC) in the Birmingham High Court.
Our Commercial Litigation team instructed Counsel, Jason Perrin of No5 Barristers’ Chambers, and successfully obtained judgment for passing off and copyright infringement against both the Defendant company and its Director, who was also found personally liable for the wrongdoing.
The Outcome
The Court granted:
- An injunction preventing further infringement;
- Delivery up of the infringing products; and
- A costs award in favour of the Claimant amounting to 85% of its costs.
This case was both demanding and rewarding for our team. This intellectual property dispute highlights the importance of protecting intellectual property rights and taking swift action where branding, reputation and commercial goodwill are being misused.
Why Intellectual Property Protection Matters
Businesses invest significant time and resources into building their brand reputation, products and customer trust. Where another party seeks to benefit from that goodwill through passing off, trademark infringement or misuse of branding, the financial and reputational impact can be substantial.
Seeking early legal advice in an intellectual property dispute can help businesses protect their intellectual property rights, preserve their commercial position and prevent ongoing damage.
Speak to Our Commercial Litigation Team
If you require advice or support in relation to passing off, trademark infringement, copyright disputes or wider intellectual property matters, our Commercial Litigation team can assist.
Nasar Sarwar, Senior Associate & Solicitor in our Commercial Litigation team, is available to advise on intellectual property disputes and commercial litigation matters.
Get in touch with our team today to arrange a meeting. Call us on 0800 118 1500 or complete the form below.
Disclaimer
The contents of this blog or any other published by Talbots Law cannot be considered as legal advice. You should take no action without prior consultation with a qualified solicitor or legal professional. The contents of this blog refers to the process in England and Wales.
This blog was written by Molly Clarke, Paralegal in our Dispute Resolution team.