Call for evidence outcome

Government response to call for views on Enforcement framework

Updated 1 July 2021

Background

The Intellectual Property Office (IPO) is the government agency responsible for ensuring that the IP framework enables businesses and individuals to protect and enforce their IP rights. The IPO develops policies to ensure that the IP enforcement legal framework is up-to-date and fit for purpose. The framework can be used to seek appropriate redress when IP rights are used without the owner’s consent in a manner that constitutes infringement of those rights.

The government believes having a framework for the effective, proportionate, and accessible enforcement of IP rights is important. It helps to reduce IP crime and infringement, whilst promoting innovation and creativity.

This is why in our IP Enforcement 2020 Strategy, we committed to review existing methods of legal recourse for IP infringement. We want to ensure rights holders have access to proportionate and effective methods to tackle IP infringement and resolve IP disputes. The call for evidence formed part of this review.

The aim of the call for evidence was to gain evidence regarding the issues rights holders may face enforcing their IP rights. We also wanted to understand which parts of the framework work well. The evidence collected would be used to decide on any improvements that could be made to the existing framework.

The IPO set up a working group to help with this project. The group worked with us to identify some of the main issues they believed rights holders faced using the current framework.

The main issues we decided to focus on in the call for evidence were:

• cost of legal challenges, and
• accessibility and effectiveness of judicial processes

The government opened a call for evidence on the enforcement framework review on 5 October 2020.  

Working group

The government advertised for volunteers to join our enforcement framework review working group.

The criteria for selecting members were first-hand experience and/or a sound working knowledge of using the IP enforcement framework to protect intellectual property. When selecting members, we ensured there was representation across the five main IP rights. These are Registered and Unregistered Designs, Copyright, Trade Marks and Patents.

With the help of the working group we began to look at some of the issues they identified.

The group helped to narrow down the areas to focus on in this call for evidence.

The focus was on small businesses and individual creators. Working group members felt that the IP legal framework generally worked quite well for larger businesses.

Remit

A number of issues were identified at the first working group meeting. It was decided that they should be considered outside of the remit of the planned call for evidence. These areas included:

• online infringement - we recognise this is a challenging issue, but this is being dealt with through various other initiatives including the roundtable process stemming from the Industrial Strategy and the Creative Industries Sector Deal
• debt recovery - this is being dealt with by the Ministry of Justice who have consulted on this issue Review of enforcement agent (bailiff) reforms: call for evidence
• loss of Unregistered Community Design rights after Brexit
• implementation of the Copyright Directive

These issues are being addressed separately and to avoid duplication of work it was agreed it was best to focus on two main issues.

Alongside the call for evidence the IPO and the working group identified steps that could be taken to improve access to the IP framework.

Website blocking practice directions

Working group members agreed that site blocking orders were a useful tool to halt infringement. A member of the working group suggested that it would be useful to draft a practice direction to make the system easier to navigate for parties seeking this type of order. Discussions are ongoing as to how best to progress this piece of work.

Intellectual Property Enterprise Court (IPEC) Small Claims Track (SCT) published case information

It was highlighted by several working group members that there was little available information on the results of cases that were heard in the Intellectual Property Enterprise Court (IPEC) Small Claims Track (SCT). The IPO notified the working group that the amount of damages awarded in cases were published annually. The link to this information was shared with working members who agreed to share it through their networks. This data is available see Record of damages awarded in the SCT.

Online case filing system

The working group noted that they had received complaints from rights holders about claims having to be submitted in paper form to the SCT while e-filing can be used for the IPEC multi-track and other High Court claims. Through discussions with HM Courts and Tribunal Service (HMCTS) and the Ministry of Justice (MOJ) we found out that there was an ongoing project to reform some of the court submission systems. This should include the SCT.

Pro bono services

The working group highlighted two pro bono services that were available to advise those that may not be able to afford to take legal action on their own. These were IP Pro Bono who provide advice and legal support and ‘Advocate’, the Bar pro bono unit, where individuals can be referred. The referral can be made through organisations such as the Citizens Advice Bureau or the claimant’s local MP.

It was agreed that those that may benefit from the service may not know of its existence and this was one of the issues explored through the call for evidence.

Damages

The idea of an additional option for damages awards in the form of statutory damages was suggested by the working group. The idea being that pre-determined statutory damages may help users make an informed choice by assisting understanding of the likely level of potential damages that could be awarded before they initiate court proceedings. This option was explored in the call for evidence.

Summary of responses

We received a total of 88 responses to the call for evidence. There were a high number of respondents who did not specify the IP right they were referring to in their response. Around half of these were photographers and voice artists so we can assume that there was a higher number of responses from copyright holders. Some held more than one type of IP right. A number of respondents ticked more than one box to identify themselves, for example individual and micro business.

Right	Number of responses by right	Type of respondent	Number of responses
Copyright	35	Individual	48
Trade Mark	5	Micro Business	12
Registered Design	3	Small Medium Enterprise	2
Unregistered Design	2	Large business	3
Patent	3	Legal profession	3
Not specified	43	Representative group	18
Other	3	Other	3
No IP right	1	Not specified	1

Cost of legal challenges

The majority of responses to these questions came from individual rights holders with the largest group responding being photographers. The common theme amongst all responses was that time costs were the biggest barrier when considering legal proceedings. Time spent gathering the information and the application process could lead to a loss of earnings. A number of responses stated the time taken was between 40 - 60 hours. Another common theme was the small amount of damages received if successful. Some also considered the cost of enforcement after any judgment was made before making a claim. Consulting a specialist IP lawyer and paying an expert was also considered.

The following quote was echoed by many,

I cannot enforce my Intellectual Property (IP) rights because the time to do so in the IPEC outweighs the amount I would receive in damages.

In relation to time, a common theme was the time cases take to go through IPEC. We received a very low number of responses to the questions around the cost of defending legal action, but time and expense were raised by those that did respond.

Protective measures

The common themes in relation to IP insurance were a lack of knowledge about its existence. Those that were aware highlighted the expense of the service and high premium as prohibitive. Other views raised by individuals were that insurance was unsuitable for the type of IP they were trying to protect. The types of IP specified were copyright of photographs and voice recordings.

To quote one response:

Realistically it wouldn’t apply to my claims. Infringement of photographs are so widespread no one would issue insurance.

Responses on behalf of representative groups and larger companies didn’t answer these questions on the whole. It was difficult to ascertain whether IP insurance is used by larger businesses or if this isn’t something that is used often at all. It is suspected that the concept of IP insurance is not well understood by small businesses.

Pro bono publico

In relation to seeking free legal advice through the Citizens Advice Bureau (CAB) a worrying amount of responses said that they had tried and were told the CAB do not deal with IP cases. A few respondents had tried to use the CAB situated in the Thomas Moore Building at the Royal Courts of Justice and were informed that they were not aware that the SCT was situated in the same building and were unable to assist with IP matters. Rights holders were put off by negative experiences they had and thought the advice was unsuitable for such a specialised area.

In relation to specialist pro bono services the majority had not heard of IP Pro Bono and were not aware of it as an option. Some had used the service and reported that it was too slow, and others didn’t think it was appropriate if legal action needed to be taken. Those that had heard of the Bar pro bono service, Advocate, thought that it was too difficult to get a referral.

Some representative groups said they provide advice to their members so they would not need this service.

Accessibility and effectiveness of judicial processes

Experience of the judicial system

The common themes for individuals that had used the judicial system were that it was slow and complicated. Some avoided making a claim because they had heard negative reviews from colleagues who had used the system. A common theme was having to chase for updates on cases and poor administration. A few responses noted that the Civil Procedure Rules (CPR) could be more user friendly for those representing themselves and not familiar with the SCT.

Some responses commented on the use of difficult to understand language and terms in the directions issued to claimants by the Court/Judges. An example of this was references to the CPR or being asked to prepare skeleton arguments without guidance on how.

Access and route to enforcement

There was a mixed response in relation to awareness of the different routes available. Some were not aware of the different routes available at all. Those that were aware mentioned the Copyright Tribunal and the small claims track. A small number were aware of the multi-track and mediation too.

The majority of respondents found it difficult to ascertain helpful information. The guidance available was seen as difficult to understand and was not in plain English. It was also noted that there was not sufficient information available about lodging claims online or via the regional courts outside of London.

In terms of finding out what route to take there was a heavy reliance on networks for the photographers who responded. The majority of individuals who responded said they searched online and used the internet. Others saw specialist IP lawyers as the only real option.

A number of respondents called for the SCT guidance to be written in plain English for those without legal knowledge to understand.

Out of court solutions

There was a 50/50 spit between those that had stopped infringement without taking the infringer to court and those that had not. Cease and desist letters were sent by many that had managed to stop infringement. Although some said that it took a lot of going back and forth for the infringement to stop, and some infringers didn’t believe they would be taken to court and did not want to engage. Notice and take down procedures were used to remove infringing content from websites.

Alternative Dispute Resolution

There weren’t a large number of responses to this section. Of those that did respond many had tried mediation with mixed results. A few would not use mediation because of its secretive nature. There were a number of comments asking why the result of mediation had to be kept secret even if both parties agreed it could be shared. Some said they found the concept of mediation pointless when there had been a blatant infringement.

Suggested remedies

Use of the Small Claims Track (SCT)

Of those that responded to this section a large amount had not used the small claims track. Those that had successfully used the small claims track were disappointed with the level of damages received, court administration and time taken. Some of the cases had settled at mediation. Although the majority that had used the SCT had been successful they were reluctant to use it again due to the lack of damages awarded and their experience. A few respondents said they have used it on several occasions and would use it again in the future.

CE- file online claim submissions

There weren’t many responses for this section. The majority that did respond had not used the CE-file to submit a claim online. Respondents that had used the system for the regional IP SCT had received conflicting responses from court clerks. Some clerks said it would be rejected because you cannot submit online. Some said they received a message saying it had been rejected but it had not and had subsequently been issued a claim number. A number of respondents felt court staff lacked knowledge about the regional IPEC SCT submission processes. Those that had used e-filing for other High Court proceedings found it simple to use and easy to register. A few respondents suggested that the Money Claim Online (MCOL) system which they had used and found straight forward would be a preferable system for the SCT.

Providing example cases

There were a large number of positive responses stating that having examples of SCT cases would have helped them when making a claim. Some suggested an example of a filled in court form with explanations would help. Other suggestions included a how to guide.

The publication of completed cases was raised by many respondents asking why other court cases were published but not the SCT. Interestingly some representative groups said they had their own record of cases.

Statutory damages

The majority of responses on this section came from legal professionals and representative groups. Some felt that the questions were too ambiguous and needed further explanation to gain an appropriate response. The majority of responses from legal professionals and representative groups felt it would be beneficial to have further research and a separate review should be conducted. Of the individual rights holders that responded the majority felt that statutory damages were a good idea. They felt the positive of statutory damages would far outweigh any negative effects of its introduction. Some concerns were raised about the effect an increase in case filings could have on an already slow and busy court system.

Some quoted section 97(2) of the Copyright, Designs and Patents Act 1988 where additional damages may be awarded if the infringer’s conduct is “flagrant”. However, it was noted that this was at the discretion of the court and placed an extra burden on the complainant to prove the flagrancy.

The consensus was that the provision of statutory damages should be explored in more detail and is something that could possibly be included as another option for claimants. It was also seen by some as possibly being a useful deterrent.

Registered design cases in the SCT

A relatively small number of responses to this section were received. Of the 24 responses received over half were positive about the inclusion of registered design cases in the SCT. Some concerns were raised about the complexity of registered design cases and whether there would be the expertise to deal with the cases in the SCT.

Additional comments/issues

There were some additional comments and issues raised outside of the topics we explored. A snapshot of these issues is listed below:

• finding a solution to reduce costs for storage of evidence in counterfeit cases
• enforcement against parasitic copying and lowering the evidentiary bar in parasitic copying cases to an achievable level
• increasing the level of damages available in the SCT. This was a common theme amongst respondents
• streamlining the enforcement regime, notably where brand owners are not seeking damages, just the removal of the infringing element
• greater transparency of online services to identify those behind illicit websites and websites selling infringing products
• standards Essential Patents (SEPs) were considered a priority issue relating to IP enforcement. One respondent said, “In my view any enforcement policy needs to take account of the special nature of SEPs”

Feedback will be passed to the relevant policy areas. The enforcement issues raised are being explored as part of the planned IP enforcement strategy currently being drafted by the IPO.

Government response

The government is committed to ensuring that businesses and rights holders continue to have the necessary means to protect their IP. We believe having a framework for the effective, proportionate, and accessible enforcement of IP rights is important.

The main themes that are evident from the responses are:

• the transparency of court proceedings both with regard to the information available to the public about judgments, and the quality and provision of guidance
• the level of damages available
• the application process when making a claim

The government is currently developing a new IP enforcement strategy for publication in 2021 and the main themes outlined will be considered further as part of that work.

In the meantime, there are straightforward improvements the government can make to improve rights holders’ experiences when using the IP framework. This work will be taken forwards in parallel with the new strategy development.

The following steps will be taken:

1. Work with MOJ and HMCTS to consider the feedback received and identify where service improvements to the IP courts can be made. Where appropriate this may also include discussions regarding the publication of judgments.

2. Develop a project to streamline the available guidance for IP court users which is currently on several different government websites. Improvements in this area should make it easier for users to find information on available services and what to do if they believe their IP is being infringed. This should include work with HMCTS and The IP Court Users Committee to update the guidance for users of the SCT and could include provision of a selection of anonymised case studies of SCT cases.

3. Work with the Citizens Advice Bureau to make sure suitable IP guidance is available at all sites when enquiries are made.

4. Develop a project to raise awareness of the full range of options available to rights holders when they have an infringement issue including alternative dispute resolution such as mediation. It should also provide clear guidance on the mediation process, including which parts can be made public.

5. Research on statutory damages, which may include a comparative study of current regimes in similar common law countries. It should consider the impact the regime has had on the enforcement of IP rights and what statutory damages might look like for the UK.

6. Carry out further work to assess whether registered designs should be included in the small claims track of IPEC.

The government thanks the working group for their help and thanks all those who responded to the call for evidence.