Before taking legal action

If you believe your IP is being infringed, there are some low cost steps that you can take before considering legal action.

Step 1: Prove your IP rights exist

Before taking legal action, you'll need to prove that there's been an infringement. Making an unfounded claim of IP infringement can result in liability for damages.

If you have a trade mark, a patent, a design or a plant breeder's right, here's what you'll need to do:

Prove ownership

Only the owner of an IP right or someone entitled to act on their behalf can start infringement proceedings. If you're not taking legal action, you'll need to prove you've assigned the IP to the person claiming ownership and be able to establish transfer of title through documentation.

Prove your right's still in force

To take legal action, you'll need to prove you have current IP rights for the relevant product.

Prove your work's been copied

To establish infringement, you'll need to show that the infringer has copied all or a substantial part of your product, method or process. You may need to engage an expert to analyse elements of the infringer's product and compare them with your IP right's protection.

Prove who has permission to use your work

You'll need to prove that the infringer didn't have permission to use your work. This will be easier if you document any granted licences and approvals to third parties.

For trade marks, you'll also need to prove that:

  • The infringing trade mark is being used on the same or similar products that are registered to your trade mark
  • The infringing trade mark is sufficiently similar to yours to cause confusion about the product's origin.

Step 2: Send a letter of demand

You're not legally required to send a letter of demand, but it can be an effective way of stopping infringing behaviour and avoiding the need for legal action. An effective letter will:

  • Identify your ownership of the IP right and entitlement to make demands
  • Document the infringing conduct, with written examples if possible
  • Specify the legislation that’s been infringed
  • Give a specific timeframe for the infringer to stop infringing, return all infringing property to you and provide information that will allow you to calculate a claim for compensation
  • State that if the demands are not met, you'll initiate legal proceedings without further notice.

In some cases, a letter of demand might give the infringer time to hide or destroy evidence and prejudice your case against them. In this instance, going to court without giving them notice might be your preferred option.

Escalate to court

Step 3: Seek alternative dispute resolution

Court action can be lengthy and expensive. Depending on your case, finding a solution via Alternative Dispute Resolution (ADR) may be a good alternative.

ADR includes mediation, arbitration and expert determination. These processes allow parties to resolve their disputes without the need for litigation.

Here are some ADR sources that can help you resolve the issue:

  • The Resolution Institute's Dispute Resolver Directory lists Australian dispute resolution professionals by state, accreditation and skills
  • The Australian Small Business and Family Enterprise Ombudsman provides small business and family enterprises with information about dispute resolution options, access to mediation and alternative dispute resolution processes
  • The World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center offers mediation, arbitration and expert determination to enable private parties to settle their international commercial disputes.

Seek legal advice

Before you take any action, consider getting legal advice specific to your situation.

It's important to know what rights you have, what remedies are open to you, the cost and likelihood of success.

Get professional assistance