On 10 November 2015, the Intellectual Property Enterprise Court (IPEC) within the High Court awarded the maximum costs permitted under the IPEC cap, namely damages of £500,000, against a company and its sole director for trade mark infringement and passing off. The claim was jointly brought by the UK Intellectual Property Office (IPO) and The Secretary of State for Business, Innovation and Skills (BIS) against the unscrupulous defendants for scamming innocent and unsuspecting IP rights holders out of alarming sums of money for the renewal of their patent and trade mark rights. The defendants issued invoices for renewal reminders which were deliberately presented in such a way as to indicate to the public that they originated from an official governmental organisation, namely the IPO. In the mistaken belief that the defendants were the IPO, or otherwise connected to the IPO, rights holders therefore paid the defendants for the renewal of their IP rights. The IPO and BIS brought proceedings against the defendants for passing off and trade mark infringement. Evidence of confusion was presented by way of correspondence from a number of parties wherein they clearly indicated their belief that the defendants, trading as the 'Intellectual Property Agency', had been taken as being the 'Intellectual Property Office'. As a result, the claimants successfully established all the elements of passing off and infringement of BIS’s UK registered trade mark (No. 2501843A). The case also serves as a reminder that a director can be found liable as a joint tortfeasor in proceedings. This means that an individual cannot hide behind a limited company to avoid financial penalty in respect of his/her own personal gain resulting from a company’s infringing activities. Put simply, where any director has co-operated to bring about the infringing acts committed by the company, and intended those acts, then he/she can also face joint liability. Whilst we thoroughly welcome this decision, unfortunately, there are still many other companies engaging in similar deceptive activities concerning the renewal of IP rights. Stobbs will continue to warn our clients and the general public to pay close attention to the source of any invoices or reminders that they receive. Case citation: [2015] EWHC 3256 (IPEC)
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