IP Dispute Resolution in England and Wales: why sending a US style “Cease and Desist Letter” or old style “Letter before Action” may not be a good idea.

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Intellectual property litigation in the UK presents two hazards that are not to be found in other countries or indeed other areas of litigation in England and Wales.

First, threats actions: threatening or even hinting at the possibility of launching patent, trade mark or registered design infringement proceedings can be actionable in the United Kingdom and a number of other common law countries.

Secondly, the Civil Procedure Rules require parties to any kind of dispute to exchange information and documents and to consider mediation, arbitration or other forms of dispute resolution before issuing proceedings.

Consequently, considerable care has to be taken in pre-action correspondence.

Intellectual property practitioners in England and Wales are assisted by:

- the Practice Direction: Pre-Action Conduct; and

- the Code of Practice for Pre-Action Conduct in Intellectual Property Disputes which was drafted by a team of distinguished IP practitioners that included the late Sir Hugh Laddie.

Though the Code has no official status and has not been updated it complements the Practice Direction. For that reason it is still used and referred to frequently by practitioners.

This article outlines the Practice Direction and Code. It discusses the duty of claimants to send letters before claim to defendants and of the duty of defendants to respond in full within a reasonable time. It considers the contents of a letter before claim in a breach of confidence, copyright or related rights, passing off, patents or registered design, trade mark or threats action and also the contents of a letter of response.

Finally, the article mentions some of the alternatives to litigation such as mediation and arbitration including the arbitration and mediation services offered by NIPC Ltd.

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