Infringements of IP Rights

Remedies

A number of remedies may be sought in IP litigation. Generally, legislation provides that either damages or an account of profits may be sought where an IP infringement action is successful.

The most common remedies, which are explained below, are damages, account of profits, delivery up and final injunction.

Damages

Damages compensate the owner for the loss suffered as a result of the infringement. Of course, if the owner is not successful, no damages will be awarded and, in all likelihood, the owner will have to pay the defendant's party/party costs of the litigation.

Under certain IP legislation, such as the Copyright Act 1968 and the Circuit Layouts Act 1989, damages are not available where the infringing party had no grounds for suspecting, or was unaware that its conduct constituted an infringement. In this situation, the owner is limited to obtaining an account of profits (discussed below).

Under the Designs Act 2003 if the party in breach had no knowledge it was committing a breach of that legislation the court may refuse to award damages.

There are no strict rules as to how the courts assess damages in IP litigation, but there are general guidelines on which damages can be calculated. These are:

• Prejudice to owner's interests;
• Loss of profit by the owner;
• Account of profits made by infringer;
• Presumed licence fee; and
• Conversion damages are awarded when the court deems the infringing articles to have been the owner's property, which the infringer has, in effect, stolen. The amount of damages is usually referable to the amount that the infringer realised on the sale of the articles.

Account of profits

Where the infringers have sold or benefited financially from the infringing goods, the Court may order that they pay the IP owner a sum equivalent to the profits they made from using the IP.

Delivery up

In cases of copyright infringement, the copyright owner is deemed to be the owner of the infringing goods. In delivery up, the owner is entitled to have those goods rather than have them destroyed.

Final injunction

Once infringement is proved, a permanent injunction preventing the infringer from undertaking any further infringing conduct follows as a matter of course. The infringer will not be able to continue their conduct without a licence to do so from the IP owner.