Summary of key stages of trade mark litigation
Produced in partnership with Latham & Watkins
Summary of key stages of trade mark litigation

The following IP practice note produced in partnership with Latham & Watkins provides comprehensive and up to date legal information covering:

  • Summary of key stages of trade mark litigation
  • Nature of infringement
  • Who can bring proceedings in a trade mark infringement action?
  • Pre-action considerations
  • Interim injunctions
  • Letter before claim
  • Pre-action correspondence
  • Commencing an action
  • Service of documents
  • Allocation and case management
  • More...

This Practice Note provides an overview of the key stages of a trade mark infringement action. Trade mark infringement proceedings are brought in the Intellectual Property List (ChD) of the High Court, which is part of the Business and Property Courts. The Intellectual Property List has three sub-lists: the Intellectual Property sub-list, the Patents Court sub-list and the Intellectual Property Enterprise Court (IPEC) sub-list. Trade mark disputes are generally heard in the Intellectual Property sub-list or the IPEC sub-list. The UK Intellectual Property Office (UKIPO) has no jurisdiction in relation to trade mark infringement claims. It is possible to bring criminal proceedings in a magistrates' court or the Crown Court depending on the seriousness of the offence.

The majority of trade mark cases are heard by specialist IP judges. This Practice Note outlines the process of bringing a typical UK trade mark infringement action in the Intellectual Property sub-list. It does not specifically cover the IPEC which follows a similar procedure, though there are some key differences (see Practice Note: Trade mark litigation—starting proceedings and statements of case).

References:

  1. the Trade Marks Act 1994 (TMA 1994)

  2. Civil Procedure Rules 1998, SI 1998/3132 (CPR)

  3. The Chancery Guide

For more information about proceedings in the IPEC, see Practice Notes: Intellectual Property Enterprise Court—practical points on case management and Intellectual Property Enterprise Court—costs capping in practice.

Nature of infringement

The principal grounds for infringement occur

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