Tim Richards
Posted on 2 Nov 2017

Is it time for a new approach to IP enforcement in Scotland?

This is a guest publication from Scottish commercial law firm, Burness Paull

Is the landscape of intellectual property enforcement in Scotland shifting? There have been no seismic changes to legislation, and no landmark cases in the Scottish courts which might justify that question being asked. However, there is a growing trend of alleged IP infringers fighting back through both mainstream media and social media. Their angle? That the “big bad” IP rights holder is, by threatening court action, trying to “bully” the small business owner into giving up a business name or product. 

Certainly, large brand holders do have legitimate rights which they can look to enforce. But, the prospect of being seen in a bad light must give them, and their lawyers, pause for thought when considering what action to take against potential IP infringers.

There have been a number of instances in Scotland recently where major brands have been on the wrong end of press attention for taking an “overly aggressive” approach to enforcing their IP rights. One example is the Scottish craft beer company, Brewdog, who were criticised when they swiftly and strongly challenged a small pub’s plan to be named “Lone Wolf” (Brewdog had launched a spirit bearing the same name). Another case involved the National Trust for Scotland being said to be overly harsh when they threatened legal action against a small business in relation to use of the word “Glencoe” which is, of course, a geographical location. Most recently, headlines revealed a proposed court action by cosmetic giant L’Oreal against a small Scottish soap company.    

This is certainly not solely a Scottish problem. Consider the story in England where Sainsburys took issue with a local businessman naming his convenience store Singhsbury’s. However, there does seem to be a growing trend of these cases being highlighted in Scottish media. This is causing some rights holders (and their advisors) to reconsider the action that they take against potential infringers. PR is playing an increasing part in IP enforcement, and the possible negative reputational impact should not be underestimated.   

Mindful of the adverse connotations associated with what could be perceived as aggressive tactics, Netflix recently took an unorthodox approach to enforcing their IP rights. Netflix, broadcasters of the drama series “Stranger Things”, sent a “Stranger Things themed” letter to alleged infringers in an attempt to avoid appearing heavy-handed. Their humorous approach went viral, and they were applauded for addressing a difficult issue in a light-hearted way. Netflix managed to maintain a “good guy” status even when taking action. It remains to be seen whether Netflix will continue with this approach.  Their stance could change if they are not able to get agreement on their proposed settlement terms. And, in relation to future claims, it might reasonably be anticipated that their tactics would be adjusted in relation to the size and credentials of the potential infringer. 

The fact that alleged infringers appear so willing to tell their side of the story to the media does put a new spin on the advice given by Scottish lawyers to rights holders. That is not least because the traditional approach of issuing a standard “cease and desist” letter could well cause reputational harm.  However, it will not always be right to do nothing. Indeed, not taking any action at all could cause issues for the rights holder if they try to assert IP rights further down the line. Moreover, many large companies invest significant time and money in developing their brand and others should not be allowed to ride on their coat-tails without risk.

To find a balance, rights holders will now perhaps look to get their counter-story across in the media, possibly highlighting the significance of their particular brand to the local economy, and also emphasising the importance of protecting IP rights.   

One thing is for sure, a trend has been set for circulation in the media of both the aggressive and, in Netflix’s case, the quirky, approach to enforcement of IP rights. Check your news feed for the next instalment…

This article is for information purposes. It is not a substitute for legal advice, and should not be relied upon as such. 

For more information contact Neeraj Thomas, Senior Associate at Burness Paull at Neeraj.Thomas@burnesspaull.com