Registering your intellectual property (IP) ensures that you have the exclusive right to use your IP, whether it is a trade mark, patent or design. For some, however, registration is not enough to prevent others from infringing your IP. We set out below three ways to resolve a dispute that arises over your IP rights.

Send a Letter of Demand

A letter of demand is usually the first step to take in any IP dispute. More often than not, someone accidentally infringes IP rights and you can send a letter of demand to stop them from continuing to infringe. This is both a quick and efficient way to stop infringement and hopefully avoid further legal costs.

A letter of demand will explicitly state your rights and entitlements regarding the trade mark, patent or design. It should set out all examples of infringing conduct and specify a period within which the infringer has time to stop. If the infringer fails to stop during this period, then legal proceedings may commence.

Remember that under certain circumstances a letter of demand may not be the best option as this will give the infringer time to hide evidence. If uncertain, it is best to consult an IP lawyer on the best approach.

Alternative Dispute Resolution (ADR)

Going to court is an expensive and lengthy process, and it is usually worthwhile to try an ADR method before heading to court. This can include:

  • Mediation
  • Arbitration
  • Expert determination
  • Case administration

If you decide to use the ADR process, it is best to find an ADR professional. The World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) provides these services specifically for resolving IP disputes, both in a domestic and international space.

ADR is preferable to resolving the dispute in court. If it works, then it will allow both parties to avoid the costs of going to court and will help resolve the dispute much faster.

Going to Court

In most cases, going to court is a last resort. However, if you have reached this stage, there are several applications that you can make in court, but before the case goes to trial:

  • Injunction: This is often the order applied for to stop the infringers from continuing their conduct, pending the outcome of a trial;
  • Preliminary discovery: To gain more information and documents about the infringing person, to identify all relevant infringing parties;
  • Anton Piller orders: To gain access and search an alleged infringer’s premises and to take any items that could relate to infringing conduct. However, this is probably the hardest court order to get approved.

You may decide to forgo the interlocutory applications and wait for the trial. IP disputes in court undergo the same formal process that other lawsuits do. As the owner of the IP right, you will need to file a notice and a statement of claim in the relevant court to start the proceedings and serve this on the infringer, who can then file a defence.

Key Takeaways

If you have had your IP infringed after registration, you have every right to assert your rights and stop the infringer from continuing their conduct. It is usually not recommended that you jump straight to going to court except under certain circumstances. A well-worded letter of demand or ADR is the recommended starting point for IP disputes. Talk to one of our disputes lawyers if you have questions.

Lachlan McKnight

Next Steps

If you would like further information on any of the topics mentioned in this article, please get in touch using the form on this page.