Intellectual Property (IP) Disputes

Patents, trademarks, copyright, designs and plant breeders’ rights are all forms of IP that may be protected in various ways.

Intellectual property disputes commonly arise because of ownership, infringement, commercialisation or licensing issues.

Here are some examples of IP disputes:

  • Patent ownership disputes between applicants.
    A dispute filed by one or more persons stating they are the owners of the patent application or an opposition by a person who does not own the invention, stating that the applicant also does not own it and that a patent cannot be granted to that person.
  • The Kellogg v National Biscuit Company’s (NBC) trademark dispute over a pillow shaped cereal that Kellogg started manufacturing that the NBC claimed was its trademark name, ‘shredded whole wheat’ and patented pillow shape. The court ruled that the term ‘shredded wheat’ was not trademarkable, and that the pillow shape was functional and could be copied after the NBC patent had expired.
  • The famous Barbie v Bratz dolls dispute where it was alleged a Barbie designer had breached the terms of her employment when she moved over to design Bratz dolls as her designs were the IP of the Barbie manufacturer.  Barbie won and the similar looking Bratz dolls were taken off the shelves but the dispute is ongoing.
  • When a street artist was thought to have created the now famous Hope poster of US President Barack Obama and it was subsequently revealed that it was in fact an Associated Press freelancer who had shot the original photo, the copyright infringement suit that ensued was privately settled and included a split in the profits for the works.
  • Adidas and Payless got into a scuffle over logo and trademark infringements regarding the Adidas 3 stripe. A jury trial lasted 7 years and Adidas was awarded USD305 million, USD 100 million for each stripe but query the legal costs of a 7 year jury trial!

Parties may seek to resolve disputes involving lengthy and expensive litigation or seek Alternative Dispute Resolution (ADR) processes such as negotiation, conciliation, mediation or arbitration.

In an increasing number of cases, courts may order parties to mediate prior to litigation, in an attempt to resolve the matter in a less expensive and faster manner and to lessen the load on court time and manpower.

Often commercialisation and licensing agreements have ADR clauses within them, whereby parties to the agreement agree to use ADR processes first, in the event that a dispute arises.

One important issue to bear in mind is that although IP is often jurisdictional in nature, IP disputes may well involve parties internationally as valuable IP assets are often protected in several if not many jurisdictions and hence involve parties from several countries or multinational corporations operating in those jurisdictions.

In IP disputes, it is not uncommon to find a combination of mediation and arbitration being used to attempt resolution of a dispute.

How CDMC can help you

CDMC has expertise in both IP and ADR and is well placed to assist parties with their disputes using knowledgeable, cost effective and speedy processes which can ultimately produce far better outcomes for the parties in dispute.