Your intellectual property – which can take many forms including trade marks, copyright, patents, registered designs and confidential information among others – is valuable. Unfortunately, it is not uncommon for third parties to try and exploit that by using your intellectual property without your permission. This article will set out some of the initial steps you should take when you identify someone potentially infringing your intellectual property rights.

Step 1 – Gather information and seek advice

Legal disputes, particularly those relating to intellectual property, can be complex. Before taking any further action it is always a good idea to seek specialist legal advice. As part of this initial stage, it is important to gather information and understand the key facts in dispute, including:

  • when the alleged infringement began;
  • where the alleged infringement took place (such as a domain address if you identified it online);
  • examples of the alleged infringement (such as sample products or screenshots of online use of your intellectual property); and
  • the identity of the party who is responsible for the alleged infringement.

It is better to gather evidence of these facts before sending a letter of demand to the alleged infringer (see Stage 2 below). Once you put the alleged infringer on notice of your complaint, they may try to hide or obscure their allegedly infringing conduct. An intellectual property lawyer can assist with this evidence gathering process.

Step 2 – Send a letter of demand

If there is a reasonable basis for alleging that your intellectual property rights have been infringed, generally the next step is to prepare and send the alleged infringer a letter of a demand (sometimes also called a ‘cease and desist letter’). A letter of demand places the alleged infringer on notice of the dispute and your allegations. It will also set out your demands in order to resolve the dispute (which might include the payment of monetary compensation in some cases), and a deadline for the alleged infringer to comply with those demands. A well drafted letter of demand may enable you to resolve the dispute without the need for more drastic and costly enforcement action like court proceedings.

NOTE: You should seek legal advice before taking any action, including sending a letter of demand, in relation to the alleged infringement. The Trade Marks Act 1995 (Cth), Designs Act 2003 (Cth), Copyright Act 1968 (Cth), and Patents Act 1990 (Cth) all prohibit the making of ‘unjustified threats’ of infringement. As a result, you may be at risk if you do not have a reasonable basis for threatening an alleged infringer with legal action.

Step 3 – Possible further discussions and negotiations

What follows after sending your letter of demand will depend on how the alleged infringer responds to that (assuming they do respond). Often an alleged infringer will engage their own lawyers to respond on their behalf. In many cases, parties may be able to engage in productive settlement discussions and reach a mutually acceptable resolution to the matter. In other cases, more drastic action may be required. An intellectual property lawyer can assist with developing the most appropriate strategy for engaging with the other parties.

NOTE: According to the Civil Dispute Resolution Act 2011 (Cth), there is an overarching obligation to take ‘genuine steps to resolve a dispute’ before initiating court proceedings. You should ensure that you have complied with this overarching obligation before initiating court proceedings, which may include giving the alleged infringer a reasonable opportunity to respond and / or considering whether a commercial resolution is possible.

Step 4 – Commence legal proceedings

If the parties are unable to resolve the situation (or if the alleged infringer does not respond at all), then a further step may be to commence legal proceedings. This step should be considered a last resort, as legal proceedings are inherently risky and expensive.

Legal proceedings for intellectual property disputes are generally filed in the Federal Court of Australia or the Federal Circuit and Family Court of Australia. Over the course of the legal proceedings, which may run over several years, you will be required to file various documents (such as your application, statement of claim, supporting affidavits, and procedural documents), attend hearings, and exchange evidence with the alleged infringer.

To learn more about how legal proceedings are generally conducted in intellectual property infringement disputes, see our other article The 5 step guide to taking your competitor to court for infringing your IP.

Key takeaways

Your intellectual property is an important and valuable asset which is worth protecting. If you notice that someone is infringing your intellectual property rights, your first step should be to gather information and seek advice. You should then look to resolve the dispute early, first by placing the alleged infringer on notice by sending a letter of demand (assuming there is a reasonable basis for doing so) and, if appropriate, by entering into negotiations with them. If you are unable to resolve the dispute at these early stages, you may want to consider more drastic action, including the commencement of legal proceedings.

Actuate IP has a team of intellectual property experts who can assist with IP Dispute Resolution and Litigation. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.

FAQs

How do you respond to intellectual property infringement?

If someone is infringing your intellectual property rights, you should identify and record the key facts of the dispute. You should then look to resolve the dispute by (1) sending a letter of demand and, if necessary, (2) negotiating with the alleged infringer. If you are unable to resolve the dispute, you could then consider initiating legal proceedings.

Do I need legal advice to deal with intellectual property infringement?

It is strongly recommended that you seek legal advice before taking any action to deal with alleged infringement of your intellectual property rights. Intellectual property is a complex area of law and various pieces of legislation prohibit you from making unjustified threats of infringement. Legal advice can help you better understand your rights and ensure that you have reasonable basis for threatening legal action.