IP Private Prosecutions

Prosecuting those who have infringed your IP rights has several benefits. First, should the defendant be found guilty, they can face an unlimited fine along with a potential custodial sentence. It is also possible for the defendant’s assets to be confiscated under the Proceeds of Crime Act 2002. As IP crimes are considered ‘lifestyle’ offences, there is a presumption that all of the defendant’s income for the last six years is the result of criminal activity and is therefore able to be confiscated unless the defendant can show otherwise. Securing successful convictions for IP-related offences therefore also has a deterrent effect, particularly where it is known that a particular brand is active in enforcing its rights.

While IP prosecutions can be brought by the authorities, law enforcement agencies can often lack the resources or expertise to prosecute IP offences, even where there is strong evidence to support a conviction. Bringing a private prosecution therefore enables you to take action against offenders where law enforcement may not do so.

A private prosecutor has to act as a minister of justice in the same way as a public prosecutor would do. As such, a private prosecutor must act fairly and independently and follow the test laid out in the CPS Code, which considers evidential sufficiency and the public interest, when deciding whether or not to prosecute. These must be kept under constant review and consideration throughout the case.

A private prosecutor also has to pursue all reasonable lines of enquiry and is subject to wide-ranging disclosure requirements, effectively requiring the prosecution to make inquiries and disclosures which may undermine the case against the defendant.

These requirements also affect the nature of the solicitor-client relationship – for example, communications which fall under legal privilege may nevertheless need to be disclosed.

This will heavily depend on whether the defendant pleads guilty or not guilty and whether, if they plead guilty, the case is heard in the Magistrates’ Court or the Crown Court. There are also court backlogs which can extend the timeframes involved.

Where the prosecution case is strong, it is common for the defendant to plead guilty. In such cases, it is possible for the proceedings to be concluded in a matter of months. However, running a prosecution to the conclusion of a trial can take up to two years, or potentially even longer in a minority of cases.

Costs for private prosecutions can be paid for by the brand owners in the same way as a civil case or recouped from central funds after proceedings have concluded.

Recouping costs from central funds requires the prosecutor to submit a detailed costs application. Costs can be summarily assessed by the Judge at the end of a trial or, in the alternative, can be sent for a detailed costs assessment.

It is possible for the award to be lowered if it is considered that the costs being claimed are not just and reasonable. Provided that the costs incurred are deemed to be justified and reasonable, prosecution costs can generally be recovered from central funds.