Have you infringed on someone's IP?Sometimes simple mistakes can lead to serious infringement issues. Consider the following questions to work out if you've accidently used someone else's IP without their knowledge or permission.
Have you completed a search?
By doing a search first, you can avoid developing something that accidently infringes on others' IP rights. You can use our search systems to look for similar products to yours.
Can you identify your IP?
Knowing what IP your business owns is vital when dealing with alleged infringement. For example, it may be claimed that you're infringing on someone else, when in fact you can prove your ownership of that right. In addition to any registered rights, your IP includes any business-critical information such as customer lists and specialist knowledge. Make sure your details are kept up to date and any renewals are paid on time.
Did you get permission for source material?
Did you obtain specific permission ('clearance') to use material sourced from another person? You should always ask about the source of any material provided to you and any clearance involved.
Can you provide ownership records?
You should maintain documents that record your ownership of IP rights or your entitlement to use them. These records can help to prove that any infringement was innocent rather than deliberate. This could substantially reduce any liability if you have infringed.
For example, under the Patents Act 1990, although knowledge of an infringement isn't necessary to prove infringement of a patent, there's an available defence of innocent infringement. If a court finds that an infringer didn't know and had no reason to believe that a patent for the invention existed, the court may refuse to require the infringer to pay damages or make an award of profits. This doesn't affect the court’s power to grant injunctions or award damages against future infringement.
Get legal advice
It's important that you get legal assistance from an IP professional who can advise you on your specific situation.
Your IP attorney or lawyer can help you understand:
- Whether or not you are infringing on another IP right
- What actions you can take
- The cost and likelihood of success of each action.
The action you select should be appropriate to your business needs.
Stop the infringing conduct
If possible, you should immediately stop any conduct that's alleged to be infringing, as it:
- Isn't an admission of guilt
- Gives you the opportunity to obtain legal advice to confirm whether or not you have a right to continue
- Reduces the incentive for the owner of the IP right to start legal action
- Makes it more difficult for the owner of the IP right to obtain an interim injunction
- Prevents you from creating further infringements that could be the subject of a claim for damages.
Responding to an empty threat
In some cases threats of infringement may be false. This could be because the IP rights don't exist or infringement can't be proved. This type of threat won't lead to a successful infringement action.
Even if an allegation is false, it can cause disruption to your business.
For example, you may have to stop production of specific items while you investigate the claims against you. This could lead to a loss of business or profit. In this case you could respond to the person issuing the threat and ask them not to repeat the threat and to pay you compensation for any loss you've suffered as a result of their claim.
Unjustified claims of IP infringement are illegal. The person issuing the threat may be liable to compensate you for the consequences of making the threat.
Colette had been selling her signature personalised designer t-shirts for two years.
Mahish wrote to Collette threatening infringement proceedings, stating that he was the original owner of the designs and that she had been copying his work.
Colette checked the register of designs and noticed that Mahish had a registered design, but it hadn't been examined.
In order to respond to Mahish's threat, Collette had to take time away from work as a sole trader. This greatly impacted on her profits for the quarter and was damaging to her business reputation.
She responded to Mahish's threats by writing to him, letting him know that while he had a design, it's currently unenforceable.
She asked him to pay compensation for her loss of income and damage to her brand.
Mahish's threat was unfounded and he agreed to pay the compensation.