What is infringement?
IP infringement is the violation or unauthorised use of an IP right. If someone is using your IP without your permission, this is infringement. It can seriously damage your business and brand.
It's important to enforce your IP rights to maintain the value of your business and deter potential infringers.
How can I protect my overseas IP?
We recommend tackling infringement proactively, before you have any problems. Here are ways to prepare for, prevent and detect infringement overseas.
Create an infringement strategy
Make a plan of how you will prevent, detect and enforce IP infringement early in the process of expanding overseas. We suggest working with an IP attorney to develop an infringement strategy as part of your overall global strategy.
Register your IP in local markets
You might already have the IP right in Australia but it's crucial to also register your IP in the target country as soon as possible. It can be hard to get protection if someone local registers it before you. In some countries once you have disclosed your IP anywhere in the world, such as by securing IP rights in Australia, you can't secure rights in that market.
Use anti-counterfeit measures
The increasing incidence of counterfeit goods has prompted many businesses to build in some kind of anti-counterfeit measures that help to identify genuine products.
You can consider:
- Verification and traceability solutions such as QR codes, RFID and smart finger prints
- Overt features such as holograms, security threads and fibres, watermarks, taggants and microprinting
- Covert features such as fluorescent print and other secret markings.
Set up your manufacturing arrangements carefully
If you're having products made overseas, it's especially important to be proactive about protecting your IP. It's not unusual for manufacturers and business partners in other countries to take advantage of Australian IP through their local knowledge.
Common forms of IP misuse include:
- Someone else registering your trade mark or design under their name
- Using your product to compete with you
- Retaining moulds and plates to continue manufacturing your product after the termination of your partnership.
You should carry out due diligence before making agreements and set up well-structured contracts that will afford you some protection in the event of infringement.
Before you make an agreement with overseas businesses, such as manufacturers, we recommend carrying out a comprehensive due diligence process to reduce the risk of IP misuse.
Before you enter an agreement with an overseas business, consider:
- Will they be able to meet your manufacturing specifications, including quality, cost and timeliness?
- Will they be a reliable and honest partner?
- Are you satisfied with their business licence, credit record and corporate structure?
- Do they have a good commercial reputation?
- Do they have a history of IP infringement, administrative penalties or involvement in litigation?
- Are you satisfied with their legal representative?
You might need a local representative to help you find out what you need to know.
A well-drafted and properly executed manufacturing agreement will help protect your IP. It can provide you with options for recourse if the manufacturer breaches the agreement.
Be sure to include all relevant details that will protect you in a contract including:
- IP ownership
- Non-competition and non-circumvention
- Mould and tooling ownership
- Acceptable product quality
- Acceptable timeframes
- Scheduled inspection of goods
- Grounds for termination
- Mechanisms for dispute resolution. WIPO suggests use of their Arbitration and Mediation Center (see below) for disputes and provides model clauses for you to use in your contracts or you can use their clause generator.
You might need a local representative to develop and properly execute a contract that will be enforceable in the country of interest.
Monitor the market
Market monitoring is a key part of managing your IP. Counterfeit goods — imitations of your products, often sold at a lower price — are a threat to your business. If you have overseas rights, you need to keep an eye on each country and also watch what's being sold online.
Given the complexity of keeping on top of what's happening in multiple markets, consider engaging someone to help you.
- Work with local distributors to detect and pursue infringements
- Engage a professional, such as an online brand protection service.
How do I deal with overseas infringement?
If you detect infringement of your IP rights overseas, you should engage a local representative such as an attorney to take enforcement action, which might include letters of demand and court action.
A local attorney can provide advice about:
- Pursuing high value targets
- Carrying out investigations
- Taking enforcement actions such as court action, seizure of goods or administrative and criminal enforcement through local authorities.
Together you should consider managing online infringement, intercepting goods and dispute resolution through WIPO, as described below.
Managing online infringement
If you detect infringement on an online site, you can approach the owners of the site or their e-commerce platform, such as Amazon, Shopify or Alibaba, to request that they take down infringing goods.
- Make a complaint directly to them
- Arrange for someone, such as your lawyer or brand protection service, to act on your behalf.
Most e-commerce platforms have a take-down mechanism for responding to IP complaints, including counterfeit and replica goods or other unauthorised items.
Report infringing goods you find on any of the Alibaba group platforms to Alibaba Intellectual Property Protection Platform (IPP). Instructions are available in English.
Some key platforms include:
File an IP rights complaint (in English) about goods sold on JD.com. Once you've uploaded your evidence and identification documents, which have been verified, you can submit your complaint.
Vip.com offers a no-registration online IP rights complaints system. You can report multiple infringing brands and listings in one complaint along with a statement of your claim. You'll receive the result of your complaint via email. Send your IP complaints to IP@vipshop.com.
China’s most popular instant messaging tool also serves as a social media, payment and trading platform. WeChat is widely used and has an increasing amount of IP-infringing products. To protect IP rights, WeChat has launched an app-based online complaint system for IP owners to report infringing activities.
WeChat has also launched the Brand Protection Platform (BPP) to work with brand owners to identify and remove counterfeits.
Pinduoduo is another app-based social e-commerce platform in China. It generally sells low-cost products, which sometimes include fake goods.
Report IP-infringing goods through its online IP protection system. You'll need to provide evidence of IP rights and identification, which need to be verified before you can make a complaint.
A large cross-border B2B e-commerce retailer, DHgate is another major platform where IP-infringing goods are sold from China to the rest of the world. DHgate has an Intellectual Property Protection System that allows registered and verified users to report infringing listings.
Red points brand protection have produced a step-by-step guide that outlines the filing process.
List your IP with e-commerce platforms before there is a problem
You should be proactive by listing your IP rights with platforms before anyone tries to sell counterfeit goods. Some platforms invite you to add your trade marks and other kinds of IP rights to a brand registry. This is used in automated checks to detect infringing goods before they are even listed for sale.
Intercepting infringing goods
Sometimes the best way to deal with infringement is to intercept infringing goods when they cross the border. In some countries you can report infringement to customs authorities, who can seize infringing goods upon entry. This can be a faster and easier way to deal with infringement than taking legal action.
You should seek professional advice on appropriate enforcement actions in the country where you have IP rights.
Arbitration and mediation through WIPO
If you need to resolve a dispute overseas, you can refer it to the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center.
The centre provides a range of alternative dispute resolution (ADR) services to resolve international IP disputes. Their aim is to facilitate direct settlement between parties or to refer their dispute to WIPO mediation or arbitration as an alternative to court action.
They can conduct ADR proceedings for IP disputes involving Australian nationals. They can also supply Australian arbitrators, mediators and experts with specialised knowledge in IP rights.