Attack­ing IP infringers — look before you leap

Intel­lec­tu­al prop­er­ty may be the most valu­able asset your busi­ness pos­sess­es. It is there­fore wise to be on guard against infringers who seek to dilute or steal that intel­lec­tu­al prop­er­ty. How­ev­er, before fir­ing a shot at infringers, it is impor­tant to put your own ducks pre­cise­ly in a row.

Iden­ti­fy­ing ownership

Before issu­ing a let­ter of demand on infringers, you need to ensure that you have the nec­es­sary stand­ing in terms of own­er­ship or exclu­sive licence of the rel­e­vant IP. Where the IP is reg­is­tered, it is usu­al­ly clear who the own­er is. How­ev­er, for unreg­is­tered IP, such as copy­right, it is not always obvi­ous who owns the copy­right. For exam­ple, if you com­mis­sion a con­sul­tant to pro­vide you with soft­ware, pho­tographs or web­sites, the copy­right in those works gen­er­al­ly vests in the con­sul­tant. It would there­fore be nec­es­sary to have that copy­right assigned to you in writ­ing before you can accuse oth­ers of infring­ing the copy­right. Even if you or your employ­ees cre­at­ed the rel­e­vant works in which copy­right sub­sists, it is impor­tant to ensure that you have evi­den­tiary records of that cre­ation.

Per­fect­ing registration

For reg­is­tra­ble IP such as trade marks, designs, patents and plant breed­er’s rights, it is impor­tant to ensure that this IP is ful­ly reg­is­tered for all rel­e­vant and avail­able IP rights. Trade marks should be reg­is­tered in all rel­e­vant class­es of goods and ser­vices. Designs and patents should be reg­is­tered for all rel­e­vant IP ele­ments. Reg­is­tra­ble IP should be duly reg­is­tered in all rel­e­vant coun­tries. If your IP is not ful­ly reg­is­tered this may leave a ​“gap” in your reg­is­tra­ble IP rights which could con­ceiv­ably be filled by infringers at a lat­er date.

Antic­i­pat­ing retaliation

You can expect that infringers may retal­i­ate in the face of your infringe­ment claim. First of all, it is essen­tial to ensure that reg­is­tra­ble IP is actu­al­ly reg­is­tered, not just filed. If your IP is not ful­ly reg­is­tered, it can be pos­si­ble for infringers to for­mal­ly oppose the reg­is­tra­tion of your trade marks, designs or patents. Trade marks are unique­ly sus­cep­ti­ble to non-use removal appli­ca­tions by infringers. If you are unable to show that you have been using your trade mark for all the goods and ser­vices for which it is reg­is­tered, the trade mark can be ful­ly or par­tial­ly removed from the Reg­is­ter. It is also impor­tant to remem­ber that there are statu­to­ry pro­vi­sions pro­hibit­ing unjus­ti­fied or ground­less threats against infringers. It is there­fore impor­tant for your lawyers to appro­pri­ate­ly draft let­ters of demand so as to min­imise the like­li­hood of attract­ing such a counter-claim by infringers.

Con­clu­sion

Many IP own­ers may wish to avoid the cost of court action against infringers. In that case, for­mal let­ters of demand, suit­ably draft­ed by lawyers can be very effec­tive in dis­cour­ag­ing infringe­ment with­out recourse to lit­i­ga­tion. It may there­by be pos­si­ble for IP own­ers to stop the infring­ing action and even to obtain a set­tle­ment sum for past infring­ing activ­i­ties. In order to achieve a sat­is­fac­to­ry out­come, IP own­ers need to ensure that their own house is in order before attack­ing infringers. To do oth­er­wise can place your own IP in peril.