To establish legal action against an alleged infringer you must clearly prove that your intellectual property (IP) rights exist in law.
You must prove that:
- the precise property in respect of your right is still in force
- you own the rights or are entitled to act on behalf of the owner (for example, you may be the exclusive licensee of the rights)
- the infringer's product is a copy of the whole or a substantial part of your product
- the infringer made their product without a licence or your authority.
In relation to trade mark infringement you must establish that:
- the infringing trade mark is being used on identical or similar goods and/or services for which your trade mark is registered
- the infringer's sign or trade mark is sufficiently similar to your trade mark and may cause confusion about the product’s origin.
IP rights do not continue indefinitely. Renewal fees are required for all rights. Patents, designs and plant breeder’s rights (PBR) all have an expiry date. The exception is trade marks, which can continue to be renewed and will remain in force as long as the owner uses their trade mark and keeps the registration current. People are generally free to use the IP rights once they have expired.
A first step in any proposed litigation is to be satisfied that IP rights actually exist for the relevant product or goods. This is straightforward when the rights are subject to registration as is the case with patents, designs, PBR and trade marks.
Proving the existence of copyright is not as simple as other IP rights, because there is no registration procedure and no certificate to prove its existence.
To prove copyright exists it is usually necessary to prove the:
- identity of the author or maker of the copyright material
- nationality or residence of the author or maker
- location in which it was made
- date or calendar year in which it was made.
Only the owner of an IP right or someone entitled to act on their behalf can bring infringement proceedings.
Establishing ownership can be straightforward when the right is subject to registration.
In the case of copyright the author or maker is generally regarded under the Copyright Act 1968 as the owner of that material. However, if the material was produced by an employee as part of their job then the employing company would hold the copyright.
If the author or maker is not the person bringing the proceedings it is necessary to prove that there were written assignment/s of that IP interest from the author or maker to the person claiming ownership.
Each step in the process of a transfer of title must be established by documents.
To establish infringement, it is necessary to show that the infringer has copied the whole or a substantial part of your product or material. In some cases this is self-evident.
A clear example is a person who copies a film. A quick visual comparison between the owner's film and the infringer's film will establish whether or not one is a copy of the other.
In other cases the answer may not be so clear. This is particularly so with complex and technical patent specifications.
It may be necessary to obtain expert assistance to analyse the various elements of the infringer's product and compare those with the specific scope of protection afforded by the patent.
Another example would be where only elements of a film or script are copied and the infringing film does not bear any visual similarity to the original.
You are also required to prove that an infringer did not have permission or consent to exercise the infringed rights. The only time you will not be required to prove this is if the infringer does not contest this issue.
This is not always easy for you to prove, but is easier if you have someone responsible for implementing a documented system for granting licences and approvals to third parties.
Remember, it is your responsibility to monitor the marketplace and defend your rights. While we grant rights we do not enforce them.
Enforcing your rights overseas
Enforcement of intellectual property (IP) rights in other countries is often complicated. 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, you will usually need 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 your IP rights in that country
- 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.
Before you take any action you should consider getting legal advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. The Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.
Proving infringement is an important issue that should be considered before taking legal action. Making an unfounded claim of IP infringement is legally prohibited and can result in liability for damages.