Protecting intellectual property through private prosecutions
Produced in partnership with Fieldfisher LLP and QEB Hollis Whiteman
Protecting intellectual property through private prosecutions

The following IP guidance note Produced in partnership with Fieldfisher LLP and QEB Hollis Whiteman provides comprehensive and up to date legal information covering:

  • Protecting intellectual property through private prosecutions
  • Why prosecute?
  • Why a private prosecution?
  • Offences
  • What are the main risks and differences from civil litigation?
  • Bringing a private prosecution for IP infringement
  • The decision to prosecute
  • Commencing proceedings
  • First appearance
  • Disclosure
  • more

This Practice Note summarises the main legal and practical issues that rights holders and their lawyers need to bear in mind when considering whether to bring a private prosecution for counterfeiting or piracy. The Note looks at the benefits of criminal prosecutions, the types of offences and potential risks, and provides a summary of the main stages of a prosecution and the relevant legal and procedural matters that may arise.

Why prosecute?

Repeat offenders and organised criminals frequently copy, counterfeit and pirate protected goods. They may do so at a low level (eg at market stalls, car boot sales, pubs), but also as part of more sophisticated operations, such as through illicit websites and sham or phoenix companies and via social media. In such cases, the criminality is often clear. While prosecutions should not be used as a means of settling civil disputes over arguably legitimate activities, they offer a highly effective mechanism for dealing with clearly criminal activities that may not be dealt with adequately in the civil courts and offer costs protection, even where the defendant is acquitted.

Perhaps the biggest benefit of prosecution is deterrence. Serious infringements can result in custodial sentences and confiscation of assets, putting infringers out of business and deterring others. Prosecution is also an effective means of targeting individuals and directors who might otherwise