What to consider before taking legal action

If you think your intellectual property (IP) is being infringed, there's some things you can do before taking legal action. This includes speaking to an IP lawyer, sending a letter of demand or mediation.

What to think about

It can be stressful to see your IP being used without your permission, but it's important to make sure your IP right is being infringed. Here's some things to check.

Is my IP right currently protected?

If you have a trade mark, a patent, a design right or a plant breeder's right (PBR), you'll need to prove two things:

  1. That you're the rightful owner or that you're entitled to act on their behalf — you'll need to provide relevant documentation, including a transfer of title if ownership has been transferred to you.
  2. That your right is still in force — you'll need to prove you have current IP rights for the IP you claim is being infringed.

Tip: You can use the IP right search systems to look for existing IP rights and their owners.

Who owns intellectual property?

If you find that someone else has applied for or registered the IP, you can challenge their ownership. 

How to challenge someone else's IP

Has my IP been infringed?

You'll need to assess whether infringement has occurred. Infringement looks different for each IP right. Generally, you'll need to show that the infringer has copied all or a substantial part of your product, method or process. 

For trade marks, you'll need to prove that the infringing trade mark is:

  • Being used on the same or similar goods or services that are registered to your trade mark
  • Sufficiently similar to yours to cause confusion about the product's origin.

Only the owner of an IP right or someone entitled to act on their behalf can start infringement proceedings.

You may need to seek legal advice to help you look at the infringer's product and compare it with yours.  If you make a false claim, you could be liable for damages.

Someone is using my IP

Am I certain the infringer doesn't have permission to use my IP?

You'll need to prove that the infringer doesn't have permission to use your IP.

If you've documented any granted licences and approvals to third parties to use your IP, you can use this as evidence. It helps prove that you've only given permission to certain entities, and not to the infringer.

If you own a PBR, you control the commercial use of your variety. However, you can't prevent a legitimate customer, such as a farmer, from using saved seed on their farms to grow their next crop.

How farm saved seed works

Check if the IP has been registered by them

Consider searching the relevant IP rights register to check that the alleged infringer doesn't have registered IP rights. If your search reveals that they've registered or applied for IP, you may wish to challenge their IP right.

How to challenge someone else's IP

Before you take any action, you may wish to 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.

Engage an IP attorney

A letter of demand 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 being 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 aren't 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.

Engage an IP attorney

Alternative Dispute Resolution (ADR) includes mediation, arbitration and expert determination. These processes enable parties to resolve their disputes without the need for litigation.

The following ADR resources can assist you:

  • 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.

What if the infringement occurred overseas?

If the infringement occurred overseas, there are several actions you could consider, including:

  • Having the infringing goods intercepted at the border
  • Asking the owners of a website to take down the infringing goods
  • Engaging a local representative to take enforcement action on your behalf
  • Referring your dispute to the World Intellectual Property Organization's Arbitration and Mediation Center.

Prevent international infringement