Enforcing your IP overseas
If you wish to enforce your IP rights in other countries you are likely to need the help of IP professionals.
Enforcement of IP rights in other countries is often complicated and careful consideration needs to be given to taking action through administrative, criminal or civil channels.
If you decide to enforce your IP rights in another country, whether patent, design, trade mark, copyright or any other IP rights, you will need to rely on the legal expertise of IP professionals in that country. Australian IP professionals with relevant international experience would be able to identify and instruct a suitable overseas firm to advise and provide representation.
The general options available to you to enforce your IP rights in another country depend on:
- the nature of the IP rights - whether patent, design, trade mark or other IP rights
- the commercial status of the infringer
- whether the infringer can be identified and summonsed
- the amount of damages sought.
Careful consideration also needs to be given when developing strategies for investigating, procuring seizures and following up with government authorities in the penalty phase.
Enforcing your rights in China
The administration and enforcement of IP laws in China is quite different from those in Australia. Your best option is to seek specialist legal advice.
A number of different government agencies are involved at state and provincial levels. If you have a problem about the protection of your IP rights it can be difficult to know which agency to go to with your complaint.
The Chinese Government has taken steps to make it easier to address enforcement issues by establishing more than 50 IP rights service centres around the country.
Enforcing your rights in Japan
The issue of preventing and policing IP infringement and counterfeiting in Japan is a matter of national policy. Significant infrastructure has been put in place to allow government agencies, companies and the public to work together to manage enforcement.
Warning letters, negotiations, opposition to IP rights under the jurisdiction of the Japan Patent Office (JPO) or alternative dispute resolution are preferred. However, court action may ultimately be the most effective option, and you will need support from IP professionals with relevant expertise.
The Japanese IP High Court has been in operation since 2005, as a specialist branch of the Tokyo High Court. In Japan infringements of business interests by 'unfair competition' are treated as IP for the purpose of the IP High Court's jurisdiction. This means the IP jurisdiction of this court is available, whether or not a registered IP right is involved.
Customs seizure and border enforcement
Japanese Customs tariff law allows for seizure of imported or exported goods that infringe intellectual property rights such as patents, trade marks, design or copyright, and goods that may create unfair competition by:
- causing confusion by using well-known indications (such as copying a registered design)
- misappropriating famous indications (such as a trade mark)
- imitating the shape of another person's goods.
Last Updated: 11/12/2012
