Case Study – Building a profitable relationship, even with IP Infringement opponents

We act for a large European kitchenware designer. It could be said that they’re quite litigious but really they just see their IP as their most important asset and they take an aggressive but consistent approach with parties who infringe those rights. One such party was a national retailer in the UK, a household name that is well prepared to defend IP infringement claims and bat off all but the most determined of opponents. They were selling a product which we and our client believed was infringing. Our opponent naturally went into damage limitation mode, refusing to offer any form of financial compensation but, eventually, offering to stop selling the product after a fixed sale through period.

Sometimes it can be tempting in IP infringement disputes to stop there, the product will disappear soon so the primary objective of ending the infringement has been achieved. Well, yes, but this can often feel like a hollow victory, particularly as it can only usually be brought about following some sort of legal spend.

So we didn’t stop there. Instead, we pushed for the reimbursement of our legal fees and got them. We then talked to our client about its primary business aims. Our client is in the business of supplying its beautifully designed products to retailers. We were dealing with a large retailer and so it made sense to explore a commercial opportunity. Admittedly the lawyers acting for our opponent were initially surprised when we suggested that their client should stock our client’s products. This hadn’t been suggested to them before and they were focused on the legal battle. But they soon realised that this is actually something that their client would be keen to do, particularly if it meant that they could avoid court proceedings. So in the end the parties settled the dispute, our client’s costs were covered and its opponent signed a settlement agreement committing them to substantial product orders, orders that assured a future long-term relationship between the parties which has proven to be highly profitable for them both.

How we added value

This kind of result doesn’t happen straight away. Instead, work needs to be done in direct lawyer-to-lawyer negotiations, both in correspondence and with “without prejudice” calls. We needed to tread a careful line by convincing our opponent’s legal advisors that our client was ready, willing and able to see the case through to trial and that the legal merits would ultimately be decided in our favour. Coupled with this we had to build a relationship, rather than bulldozing our opponent and burning any future bridges, we had to be firm, but reasonable. In so doing we created an environment in which the two opponents could work together and find a mutually beneficial outcome.

Why you need Briffa for IP infringement

We know the buttons to push in order to achieve the desired outcome. We’re a respected firm in a specialist industry and this allows us to speak with authority and confidence when representing you. At Briffa we can deal with the big picture aspects of the dispute (what are your aims and objectives) as well as the detail (what is the precise wording needed in the settlement agreement). This means that we can tackle issues quickly, efficiently, and hopefully with a high measure of success.