Call for evidence outcome

The cost of legal challenges

Updated 1 July 2021

1. The cost of legal challenges

1.1 Cost considerations for court action

It has been suggested that costs may be a barrier when taking cases through the court system. We are aware that costs can be significant for people trying to protect their IP. The same can be said for people who are defending accusations of IP infringement. This is because costs may arise to cover an appeal and any damages that may be awarded.

Some individuals and SMEs may not have the resources to take a case to court for infringement. If they need to defend an allegation of infringement, they may not have the resources to be able to properly defend an allegation of infringement.

A furniture maker left their designs with a major UK furniture retailer. They were told they would be paid a commission and a royalty if they were used. The major retailer used them without paying commission or royalty, so the designer challenged them with a Letter Before Action. The retailer came back with what was considered to be an unsatisfactory amount. The furniture maker chose to raise awareness of their treatment on social media. Eventually, the major retailer came back and publicly apologised and paid them an undisclosed sum.

Please answer the below questions when you respond to the Call for Evidence, if you have accrued costs from taking legal action.

1. What costs have you or your business incurred when protecting your IP right(s) from infringement? When you respond, please include the type of IP right(s) you were protecting. What was the outcome of the case?

2. Have you avoided making a claim or pursuing a case when protecting your or your business’ IP? If so, please explain your reasons. For example, was it because of the costs involved?

3. Which costs did you consider when deciding what action to take to protect your IP? For example, the cost of the time spent dealing with the infringement or the possibility of paying an expert?

4. Were you aware of or did you consider the use of protective measures such as IP insurance? For example, BTE (before the event), ATE (after the event), legal expenses insurance, or free legal advice through services like the Citizens Advice Bureau or IP pro bono?

5. Is there a reason you did not use protective measures such as IP insurance?

Please answer the below questions when you respond to the Call for Evidence, if you have experienced costs from defending against action.

1. What costs have you or your business incurred when defending an accusation of alleged infringement? When you respond, please include the type of IP right(s) you were accused of infringing. What was the outcome of the case?

2. Could you provide some information on how you funded the case? For example, debt, using free legal services or insurance.

1.2 Pro bono publico

Pro bono publico, usually shortened to pro bono, is the term used to describe professional services that are free of charge or available at a reduced cost. In this case, we are referring to legal services. There are schemes available to help those who can’t afford to take legal action on their own. Some examples are:

• IP Pro Bono. They provide advice and legal support for people who are unable to pay for it

• Advocate the Bar pro bono unit. People must be referred to their services by organisations such as the Citizens Advice Bureau or the claimant’s local MP.

A sole trader had been given negligent advice about a trade mark issue. This resulted in them losing their trade mark and settling an infringement case on bad terms. They were referred to the then Bar Pro Bono Unit (now Advocate). The Unit drafted and sent letters to the solicitors which resulted in payment of a reasonable sum without recourse to litigation.

Please answer the below questions when you respond to the Call for Evidence, if you have used a pro bono service or are aware of them.

1. Have you considered or used IP pro bono or similar services to help with the costs of seeking legal advice? If so, please provide details of your case (this can be anonymised) and your overall experience.

2. Did anything prevent you using these services? Please provide details.

3. If you are aware of the service but have not used it please explain why not? For example, were you unable to get a referral to the IP Bar pro bono service?

Respond to the Call for Evidence by filling in the response template on the landing page. Email the template to enforcement@ipo.gov.uk.