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.
Enforcing your rights in China
The administration and enforcement of IP laws in China is quite different from those in Australia.
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 handles your complaint.
Your best option is to seek specialist legal advice.
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
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.
Preferred options include warning letters, negotiations, opposition proceedings through the Japan Patent Office (JPO) or alternative dispute resolution. In some cases 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 IP rights such as patents, trade marks, design or copyright.