There are a number of actions you can take to resolve a dispute over infringement of your intellectual property (IP) rights outside of court:
- issue a letter of demand
- propose negotiations to settle out of court (known as Alternative Dispute Resolution [ADR])
- request that Customs seize infringing imported goods or products for 10 days while you seek a court order.
However, before taking any of these steps, you should first consider getting advice that is appropriate to your circumstances. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. The remedy that you select should be appropriate to your business needs. For example, it may be more profitable to negotiate a licence than undertake action for infringement.
Sending a letter of demand is often the first step taken by an owner of IP rights when they suspect a person or business is infringing.
An effective letter of demand will:
- identify your ownership of the rights and entitlement to make the demands
- set out all of the infringing conduct, with written examples if available
- specify the legislation that has been infringed (such as the Copyright Act 1968 or the Trade Marks Act 1995)
- allow a specified period of time for the infringer to stop infringing, return all infringing property to you and provide information that will enable you to calculate a claim for compensation
- state that if the demands are not met you will initiate legal proceedings without further notice.
Often an infringer will stop infringing once they receive a letter of demand, avoiding the need for further legal proceedings.
In most cases it isn’t a strict legal requirement to send a letter of demand. However, sometimes it may be needed to fulfil contractual obligations.
In some cases a letter of demand might not be the right option. It may give the infringer time to hide or destroy evidence and prejudice your case against them. In these circumstances you might consider going to court without giving notice.
Court action can often be expensive, so finding a solution using ADR may be quicker and cheaper.
ADR usually takes place before a matter goes to court. However, in some cases ADR may be court-directed.
For more information on the ADR process you can visit the Attorney-General's Department Access to Justice page.
The first step is to understand the benefits for both parties. An ADR professional can help explain how the process will apply to your situation.
These professionals, known as dispute resolvers, can act as a mediator between the parties involved.
Contacting a resolver
Resolvers can be contacted by either party.
Dispute resolution services are available throughout Australia. These services can be found through the Australian Small Business Commissioner or the Association of Dispute Resolvers in Australia known as LEADR.
The World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) also provides a range of services designed to resolve domestic and international disputes for IP and technology including:
- reduced-cost arbitration
- expert determination
- case administration
- assistance with selecting resolvers
- domain name disputes.
For more information on how to access the WIPO Center services visit the WIPO website.
State law societies and bar associations may also help you locate a resolver.
A trade mark or copyright owner can request Customs to prevent infringing goods from being imported into Australia.
To obtain Customs' help you must lodge a notice of objection that sets out the nature of the IP rights being infringed and the goods in question.
This is a temporary provision designed to stop the unauthorised importation and distribution of goods. This measure allows you time to seek a court order to permanently prevent importation of these goods.
A Customs’ notification should only be exercised when you are reasonably confident that there has been an infringement. You should also be prepared to cover the costs of proceeding to court action.
Seizure of infringing goods
Once a notification has been lodged, Customs’ officers will seize any goods infringing either the copyright or the trade marks in question.
After the goods have been seized you have 10 working days to take action against the importer. Customs will detain the products during this time.
At the end of 10 working days the goods will be released to the importer unless you have initiated legal proceedings and have obtained an appropriate court order.
Customs is not obliged to take further action after this time. If you do not commence legal action within 10 working days you may find it difficult to enlist Customs’ assistance in the future.
Whatever action you do take, it is a good idea to pursue it vigorously to make sure the infringer knows you are serious about protecting your IP. Delays could also jeopardise your legal rights to obtain an injunction.