It is important for the intellectual property owner who wishes to retain the value in the intellectual property portfolio it has established to take steps both to assert the Intellectual Property Rights (IPRs) and to take action against any counterfeiters or competitors who infringe them.
Asserting the Rights
Goods which are subject to IPRs should be marked as such using symbols such as TM, ©, Patent No. 123 and ®.
These markings serve as a warning that the goods are protected and will reduce the likelihood of an infringing party being able to escape liability by claiming they had no knowledge of the rights.
Any licenses of intellectual property issued should be subject to a license agreement setting out the terms of usage, quantity and the reporting of infringement.
Reasons for Enforcement
When deciding what action to take against an infringing party an intellectual property owner should bear in mind the following issues:
- If no action is taken against one infringing party then it may be more difficult to sue any subsequent infringing party.
- If counterfeit goods or other infringing products are allowed to remain in the market this can cause serious damage to the reputation of the goods or owner and could lead to arguments that the owner had waived its rights.
- Failing to take action can cause a trade mark to lose its distinctiveness and as a result the trade mark registration may be lost.
- If an intellectual property owner does not act promptly on discovering that there has been an infringement, this may prevent the intellectual property owner being able to get an injunction from the court against the infringing party. The availability of such an order may also be affected if the intellectual property owner has not taken action in the past.
Before making an IPR Claim
Before starting any action, an IPR owner should ask the following questions:
- Does the owner have the necessary title to sue?
- The legal owner of the intellectual property rights can sue and in some cases so can a licensee. It may be more difficult to establish title for unregistered rights, e.g. for a passing off claim.
- If the intellectual property right in question is a registered right (e.g. a trade mark or patent), the owner should check that the registration is up-to-date.
- The owner should consider any potential challenges to the validity of your intellectual property right, since as a defence to an intellectual property infringement action, the infringing party will often challenge the validity of the intellectual property rights and may seek a declaration that they are not valid.
- The owner should consider what other defences may be available to the infringing party, for example fair dealing for research or news reporting.
- The owner should consider questions of jurisdiction; intellectual property rights are generally territorial and the protection may differ from one county to another.
- The intellectual property owner will need some evidence of the infringement; one way to achieve this is obviously to purchase some of the infringing articles.
Once an intellectual property owner has decided that legal action needs to be taken against an infringing party he or she will need to consider whether commencing the action in the courts is the best option or whether mediation or arbitration may be more appropriate.
It is usual before bringing a claim to send the other party a "letter before action" to give them an opportunity to admit liability, give undertakings and compensate for it of their own volition.
The intellectual property owner should also take care that he or she does not make groundless threats to sue as this can give the other party a right of action against the intellectual property owner.
The intellectual property owner should (in more technical cases) consider obtaining the opinion of an expert to help determine how likely the claim is to succeed.
When contemplating or commencing any legal action against an infringing party, the intellectual property owner should be aware of the obligation that it will have to comply with to provide the other party with all relevant documents which are not legally privileged. The intellectual property owner therefore should not destroy any records and should also be careful not to create documents, such as internal memos, which deal with the weaknesses in the case.
