As part of an organisation’s intellectual property management, it is necessary from time to time to deal with matters of dispute resolution.

Given the nature and value of many of these claims, early strategic planning and evaluation is paramount. Our strength is that we are able to assist clients in assessing and minimising risk exposure at an early stage, providing them with a strengths and weaknesses review and an assessment of indicative quantum. Such involvement is important, as often it is possible for early settlement to be reached at a point where costs are minimised. In practice, sometimes this aspect gets overlooked and a quantum expert is only considered after the liability trial.

Some of the services we offer are:

• Strengths and weaknesses review
• Assistance on deciding whether to accept a settlement offer
• Calculations to assess the level at which to make an offer or counter-offer
• Advice regarding discovery requests and responses
• Advice to assist in the election of the monetary remedy, i.e. either an account of profits or damages enquiry
• Assessment of quantum
• Support at settlement meetings and mediation
• Attendance and giving evidence at court

Our advice can take a variety of different formats, from file notes to disclosable expert reports. We recognise that costs in IPEC matters can be restricted and are therefore flexible in the approach adopted and work product prepared. Where we prepare a report, this will be clear and concise, providing the court with all the necessary evidence, analyses and explanations.

If you would like to find out more about how we are able to assist you, please get in touch.

Case Studies

   Hollister

Matthew Geale acted for the Claimants, preparing an expert report and giving oral testimony in the reported case of Hollister Incorporated and Dansac A/S -v- Medik Ostomy Supplies Limited [2010] EW PCC 40. This matter concerned the infringement of trademarks arising from the repackaging of medical products that had been imported from other EEA countries. Following an election by the Claimant, quantum was assessed by an account of profits. Subsequent to the trial, the matter proceeded to the Court of Appeal, [2012] EWCA Civ 1419, where the Claimants’ appeal was upheld. From an accountancy perspective, the key issues related to the method of calculation and the deductibility of various business expenses.

   Jack Wills

Matthew acted for the Claimant, preparing an expert report and giving oral testimony in the reported case of Jack Wills Limited –v- House of Fraser (Stores) Limited [2016] EWHC 626 (Ch). The case involved Matthew and Liesel Annible calculating the level of profits derived from infringing the Claimant’s trademark and considered issues such as which overheads should be brought into the account and the most appropriate basis upon which to apportion them.

   Champagne Louise Roederer

We acted for the Claimant and prepared an expert report in the reported case of Champagne Louis Roederer (CLR) -v- J Garcia Carrion S.A. & Others [2017] EWHC 289 (Ch). This case involved a claim for infringement of the Claimant’s UK and CTMs for the word “Cristal”. The Defendant had previously been found liable for trade mark infringement in relation to its cava marketed and sold under the name “Cristalino”. Despite an Order, the Defendant chose not to give Island Records -v- Tring disclosure and took no further part in proceedings. The Claimant elected for an account of profits and it was necessary for us to piece together incomplete evidence from a number of different sources covering several years to estimate the Defendant’s likely profits. Our evidence was accepted by the Court and resulted in a significant award in the region of €1.3m.