IP – Intellectual Property Crime

Intellectual property (“IP”) is a category of property that includes intangible creations from the human mind – such rights can exist in a song, design, brand or invention (among other things). The most well-known IP rights include copyrights, patents and trademarks. Under the criminal law, use of these rights without the owner’s permission can amount to a criminal offence.

IP crime may not leave a person battered or a home raided, but it penetrates all areas of society and has staggering implications for businesses. Indeed, trade in counterfeit products costs the UK economy billions of pounds each year in forgone company sales and tax revenues. Edmonds Marshall McMahon is a unique firm of former government prosecutors and investigators, and we are experts in prosecuting IP offences.

Trade mark offences

As you may know, a trade mark is any sign which can distinguish the goods and services of one trader from those of another – it is closely associated with business image, goodwill and reputation. Trade mark offences (otherwise known as counterfeiting) have staggering implications for UK businesses. In 2019, the Organisation for Economic Co-operation and Development (“OECD”) published a report entitled Trade in Counterfeit Products and the UK Economy. The OECD report estimates that in 2016 counterfeit and pirated goods imported to the UK were worth £13.6 billion, equivalent to 3% of genuine imports. The most common imported fakes include mobile phones, clothes, footwear, handbags and games. This fake trade led to forgone sales by UK businesses of over £9 billion in 2016, amounting to 2.7% of total sales in the retail sector.

Private prosecutions are an effective tool – against large or small targets – to combat the ever-increasing counterfeiting of goods and resulting financial loss to companies. Edmonds Marshall McMahon has a wealth of experience prosecuting offences under the Trade Marks Act 1994 (the “Act”) – indeed, we regularly bring proceedings under section 92 of the Act, which covers the unauthorised use of trade marks in relation to goods. As part of these prosecutions, we consider confiscation proceedings against convicted defendants, as well as the forfeiture of goods or materials connected with “relevant” offences.

Counterfeiting has serious implications for UK businesses and the Exchequer – it causes reputational damage, is credited with funding organised crime and has health and safety implications. It is a problem that all companies with a brand must consider seriously. Edmonds Marshall McMahon has extensive experience in the protection of IP rights and we consider private prosecutions to be an invaluable tool in the fight against counterfeiting, which has grown hugely in the last decade.

Registered design infringement

The Intellectual Property Act 2014 criminalises the infringement of registered designs and allows intellectual property owners to defend their property. Designers are increasingly turning to private prosecutions to protect their rights as this kind of crime tends to be overlooked by traditional law enforcement agencies.

This trend is clearly evidenced by some Freedom of Information Requests that were made in 2018 to the Intellectual Property Office, the Crown Prosecution Service and the City of London Police (who pioneered the specialist Police Intellectual Property Crime Unit). Importantly, these requests revealed that none of the aforementioned organisations had commenced a criminal investigation into a design right infringement.

At Edmonds Marshall McMahon, we work with some of the most experienced intellectual property crime investigators in the country to ensure an effective, compliant and successful investigation. Alongside our lawyers, we have a dedicated investigations team comprising former investigators from the Serious Fraud Office and detectives from the Metropolitan Police. We work closely with our firm’s investigators to gather the best evidence to take cases forward. We also assist our clients to present “prosecution ready” cases to state agencies (such as the Police Intellectual Property Crime Unit) for prosecution.

Tobacco and Regulated Products Regulations 2016

Edmonds Marshall McMahon has conducted a number of prosecutions under the Tobacco and Related Products Regulations 2016 (the “Regulations”), which came into force in May 2016. The Regulations deal with the manufacture, presentation and sale of tobacco related products, including herbal products for smoking, e-cigarettes and novel tobacco products. The Regulations include minimum sized health warnings on tobacco packaging, standardised packaging and restrictions on tobacco content in e-cigarettes.

Examples of recent prosecutions include:

  1. Acting for tobacco companies investigating and prosecuting large scale national conspiracies to distribute illicit products;
  • Acting for tobacco companies where there have been infringements of their IP together with breaches of the strict liability health warning; and
  • Acting for e-cigarette companies investigating and prosecuting offences under the Regulations for excess nicotine content in products purporting to be manufactured by them.

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