Infringements of IP Rights

What happens when court proceedings start?

Understanding what is required in formal court proceedings will help you make an informed decision about whether or not to litigate.

In this section we briefly outline the possible course a trial will take and the tools both parties can use to best represent their sides of the case.

When litigation starts, irrespective of whether an injunction has been sought or granted, it is usual for the court to set a timetable for the completion of steps required to prepare the case for trial.

These four main steps are:

1. Statement of Claim

This is the document which officially starts proceedings. It is drafted and filed by the owner of the IP rights (usually by their lawyer) and sets out the facts supporting the infringement allegation and the remedies sought.

The party serving the statement of claim must clearly articulate the complaint. For example, in a copyright claim, it should clearly set out all the facts upon which a claim to ownership is made (such as, when, where and by whom the work was created and how the owner of the rights came to be the owner if they did not create the work) and the actions of the defendant that are alleged to constitute the infringement.

This ensures that the defendants are fully aware of the precise nature and extent of the claim made against them so they can properly defend themselves.

2. Defence

The party who allegedly did the infringement files the defence document with the court. This document replies to each of the allegations made in the Statement of Claim by admitting the allegation is correct, not admitting it is correct, or denying it. The difference between 'not admitting' and 'denying' is a subtle one. By not admitting a fact, the defendant is simply requiring the plaintiff to prove that fact, but the defendant will probably not seek to introduce evidence to actively disprove the fact. With a denial, on the other hand, a defendant will typically seek to lead evidence to show that the alleged fact is untrue.

This establishes the 'facts in dispute', in other words, the allegations about which the parties disagree, and which will be determined by the Court.

3. Discovery

Both parties must inform each other of the relevant documents they have in their possession and those to which they can get access. The documents must be disclosed even if they assist the other party in succeeding in its claim against you.

Each party is obliged by law to inform the other party about these documents to ensure they are not taken by surprise at the hearing of the claim. For this reason it is essential that all documents in the possession, custody or power of the parties be retained until the hearing is over.

4. Affidavits

These are written statements of evidence sworn on oath and signed by the person who makes them. They detail everything that person knows about the complaint. They are usually drafted by, or in consultation with, a lawyer to ensure all relevant evidence is obtained and all issues addressed. Preparing affidavits may involve tracking down former employees or business partners.