If you believe that someone is using your intellectual property rights, including patents, registered designs, trade marks or copyright, then you may be entitled to take action against them for intellectual property infringement.
However, it can be hard to know where to start. IP associate Bryony Gold sets out a few points to consider below.
- Don’t jump the gun
You may be tempted to contact the infringer straight away and tell them to stop. However, this approach can backfire. For example, you might tip the infringer off before you have had a chance to gather enough evidence of what they’re doing. This might give the infringer time to plan how they can continue to use your IP, so you might inadvertently increase the risk to your business.There is also a chance that you could inaccurately state your position or put forward unhelpful arguments by mistake, which could weaken your case and damage any potential future settlement opportunities. You might even find yourself exposed to a claim by the alleged infringer for making unjustified threats against them or their customers.Similarly, do not be tempted to post allegations of IP infringement on social media. In some cases, this can even lead to a claim for defamation or malicious falsehood.
- Evidence, evidence, evidence
It is crucial to gather evidence of what is being copied at an early stage (dated/time-stamped wherever possible), for example photos of an infringing product, its packaging, or screenshots of the website where it is sold. It is also advisable to maintain records of your own use of, for example, any particular get-up or trade mark you want to rely upon, as this can help to prove the reputation or goodwill required in certain IP actions. When it comes to copyright, records of who created the relevant works and when they were created will also be important if you want to enforce your rights.
- Seek professional advice
Always seek the advice of a professional IP lawyer at the earliest opportunity. They will help you to assess the strengths of your possible claim against the infringer and devise a strategy, taking into consideration the wider context (including your commercial aims).
- Assess the strengths
Your IP lawyer will determine the strengths of your case by:
- checking the validity of your IP rights and making sure that there are no ownership issues;
- examining the evidence you have gathered; and
- assessing this against the relevant legal arguments.
- Consider your options against your commercial aims
The typical options to choose from are as follows:
- Asking your IP lawyer to send a ‘cease and desist’ letter on your behalf, to make the infringer aware of your IP rights and request that they stop infringing. Infringement can sometimes be completely unintentional; where this is the case, sending a cease and desist letter is often enough to resolve the dispute.
- Settlement – for example, you may be willing to enter into a licencing or commercial agreement with the infringer, allowing them to use your IP in exchange for a fee.
- Litigation (issuing court proceedings) or some other form of dispute resolution (e.g. arbitration).
- Taking no action. This can be a good option where the claim is not strong, or the underlying IP right is at risk of invalidation.
There are also more creative options that can produce a win-win for both parties. For example, if the infringer is a competitor, is an acquisition by them on the cards?
When considering all the options, it is very important to assess these against your commercial objectives and the relative risk to your business. For example, is the relevant IP a core part of your business now, or will it be in the future?
Taking a protective approach to your IP will be crucial if your commercial success is reliant on having a first-mover advantage in relation to an IP-protected product or process at the heart of your business model.
If you would like to discuss any of the points raised in this article, or suspect that your IP rights are being infringed, please do not hesitate to contact Bryony Gold or another member of Bird & Bird’s market-leading IP team.