Your options if your intellectual property rights are infringed

What is an infringement of intellectual property?

An infringement occurs when your intellectual property is used without your permission by:

• a competitor
• an employee or former employee
• a contractor or consultant that you have engaged, or previously engaged
• anyone else.

When should I enforce my intellectual property rights?

You might consider enforcing your intellectual property rights to:

1. Protect the value of your intellectual property
   • If anyone can use your trademark, patent, PBR, or other intellectual property rights without compensating you for that use, your intellectual property rights do not maintain value.
   • Your intellectual property rights maintain value only for as long as the use of your intellectual property is not free.
2. Stop an infringer
   • If you know that your intellectual property rights are being infringed, you can seek a court order to stop the infringer using your intellectual property rights.
   • This type of court order is called an injunction.
3. Seek compensation
   • If your intellectual property has been infringed, you can seek a court order to be financially compensated by the infringer.
   • This type of court order refers to paying damages.
4. Protect your reputation
   • If your trademark has a reputation in the marketplace, the misuse of the trademark may impact negatively upon that reputation. You may want to stop that misuse by seeking an injunction.
5. Prevent infringing products entering Australia
   • If you know of products entering Australia that infringe your trademark or copyright, you can ask Australian Customs to seize the infringing products and stop them entering Australia.
6. Deter misuse
   • If you have a reputation for enforcing your intellectual property rights, it may deter infringers.
   • Conversely, if you have a reputation for not enforcing your intellectual property rights, it may encourage infringers.

If I have to enforce my intellectual property rights, why should I bother having them to begin with?

Not every holder of intellectual property rights incurs legal fees in enforcing their intellectual property rights.

In fact, relatively few people ever need to seek legal help. Having intellectual property rights in the first place deters infringers.

Most people will not intentionally infringe your intellectual property rights because they know that you are able to seek an injunction to stop them, and obtain damages against them for their misuse of your intellectual property rights.

This explains the high number of trademarks, patents, plant breeder's rights, etc. that are granted, and the relatively small number of infringement actions that are brought.

Should I just threaten someone I think is infringing my rights?

You need to think carefully before making threats against someone you suspect may be infringing your intellectual property.

Making threatening demands without evidence is unlawful. If you assert that your intellectual property has been infringed, you need to have evidence that that is the case.

You should therefore always obtain legal advice about the adequacy of your evidence, before making threatening demands of someone you suspect may be infringing your intellectual property rights.

What is the range of court orders I can seek?

There are a number of different types of court orders that might be available depending on your specific circumstances:

1. Injunction
   • There are 2 types of injunctions: interim and permanent.
   • An interim injunction is an urgent but temporary order that requires an infringer to stop infringing.
   • This is called an interim injunction because a court must be persuaded that there is urgency, and that there is sufficient evidence of infringement. A court will defer ordering a permanent injunction until all the evidence has been presented.
   • Once all the evidence has been presented, if the court continues to be satisfied that infringement has occurred, a permanent injunction can be ordered.
2. Damages
   • Damages is an order that financial compensation be paid by the infringer to the intellectual property rights holder for the loss that the intellectual property rights holder has suffered as a result of the infringer.
3. Account of profit
   • This is also a financial compensation order, but instead of the infringer paying damages, the infringer must hand over the profits they made from their infringing conduct.
   • This amount could be much larger than the damages that might have been ordered.

Is court action the only way that I can enforce my intellectual property rights?

You may need to go to court to seek an order to protect your intellectual property rights, but not everyone who enforces their intellectual property rights has to go to court.

All of the following approaches are possible:

1. Issuing a letter of demand
   • You can demand by letter that an infringer stop infringing your rights. The infringer may not have known that they were infringing until receiving your letter. Even if they were aware that they were infringing, they may decide not to test your resolve to protect your intellectual property rights. In both cases, a letter may stop their infringement.
2. Granting a licence
   • An infringer may respond to a letter of demand by asking that you grant them a licence, and offering to pay you a royalty.
   • Depending on whether their use of your intellectual property was in competition with your own business, you might consider that request, and earn an additional source of profit from your intellectual property.
3. Alternative dispute resolution
   • Before going to court, you may want to consider alternative dispute resolution (i.e. to avoid the expense of litigation).