What does your IP entitle you to
As the owner of IP rights, you have a range of legal and enforceable rights that allow you to take action against people or companies that infringe those rights.
Being able to establish your ownership of IP rights allows you to defend yourself against action by people who may challenge those rights.
There are a number of actions you can take:
- issue a letter of demand or warning from your attorney
- propose negotiations to settle out of court
- ask Customs to seize infringing imported goods or products for 10 days while you seek a court order
- initiate court action
Can you prove an infringement has occurred?
This is a critically important issue that should be considered before any infringement action is taken, whether it involves legal proceedings or not.
Failing to determine realistic prospects of proving infringement can have serious consequences. You should seek advice from an IP professional before taking action.
For example, if a threat of infringement is made that cannot be proved it may be deemed a 'groundless threat' of IP infringement.
Under each of the Copyright Act 1968, Patents Act 1990, Trade Marks Act 1995, Designs Act 2003 and Circuit Layouts Act 1989, groundless threats are prohibited and can result in liability for damages to any person affected by the groundless threat.
Act quickly
Whatever action you do take, pursue it vigorously and make sure any infringer knows you are serious about protecting your IP. Delay could also jeopardise your legal rights to obtain an injunction.
Surprise may be the best tactic
Sometimes surprise is the best tactic.
In some cases, giving the infringer notice of a claim gives them time to hide or destroy evidence and prejudice your case against them. In these circumstances it might be appropriate to go to court without giving notice to the infringer.
The court has the power to order an interim injunction. This may be an order that the alleged infringers stop their infringing action pending the outcome of a trial (which can take many months).
The following are examples of applications made on an urgent basis.
Anton Piller order
This is a civil equivalent of a search warrant.
It allows the owner to make a search of an infringer's premises and seize specifically identified items. It is granted when the court is persuaded that there is a serious risk that papers or evidence will be destroyed or removed.
Anton Piller orders are not easily obtained from a court. To obtain one you must demonstrate:
- a prima facie case of infringement
- potentially serious or actual damage
- clear, strong evidence that the alleged infringer is likely to possess relevant documents or evidence
- clear, strong evidence that relevant documents or evidence are likely to be destroyed or concealed if the infringer has prior notice of the proceedings
Anton Piller orders are often used in actions against former employees who have joined competitors or set up business in competition. They allow the aggrieved party to obtain evidence of the suspected infringing conduct.
However, this is only the first part of the proceedings. You will still need to fulfil all the formal pre- and post-trial procedures, and all other aspects of the alleged infringement still need to be proven in court.
Application for preliminary discovery
You may not know the identity of an infringer until you gain access to relevant information and documents not in your possession.
An order for preliminary discovery requires a person to give information about possible infringers to a plaintiff. The person concerned may not end up being a defendant, but merely someone who has relevant information or documents.
Application for interim injunction
This is an application to the court to immediately stop certain behaviour or to require a person to do certain things.
A court will issue an injunction when it believes there is a serious issue to be tried and monetary damages would not be an adequate remedy.
If an injunction is issued, the infringing conduct, although yet unproven, must be stopped immediately.
Interim injunctions are usually ordered for short periods of time, often one or two days, after which the parties are required to attend court to determine whether or not the injunction should be continued.
If an interim injunction is granted and it is later found that it should not have been ordered, you will have to pay compensation to any person adversely affected.
This is known as an undertaking as to damages, and is a condition imposed by the court prior to granting all injunctions, including Anton Piller orders.
Last Updated: 11/12/2012
