Reading time: 6 minutes

If you discover that your intellectual property has been infringed, it is important that you consider your options and devise a strategy to respond to that infringement in the best way to suit your commercial circumstances. While proceeding with court action may seem attractive, litigation can be expensive, tiresome and unpredictable. Therefore, it is always advisable to consider and explore the other channels available to you. Typically, court action should be the last resort. This article sets out some alternative actions you may wish to consider if you face infringement.

Customs Seizures

If the infringement involves the sale of counterfeit or infringing goods, you may wish to take preventive action with the Australian Department of Immigration and Border Protection (the Department). The Department can keep the goods off the market. In these circumstances, you may be able to lodge a notice of objection with customs. This allows you to request that customs seize any goods being imported into Australia which have infringed your intellectual property. This is a great way of tackling infringement early on. It will help:

  • stop the goods from being sold in the Australian market altogether; and
  • prevent any damage to your brand.

While this could still lead to litigation in the long run, it may not depending on how the infringer reacts to the notice of objection. Once customs seizes the goods, the importer has ten days to submit grounds for releasing the goods. If they fail to do so, the goods are automatically forfeited to customs and destroyed. However, if the importer makes a claim for the release of the goods within those ten business days, the objector (i.e. you) will have ten days to commence court proceedings to block the importation of goods permanently. If you fail to do so, the goods will be released to the importer. Accordingly, depending on the circumstances, this can be an effective way of stopping infringing goods from being sold. However, the success of the process will depend on the actions taken by the importer. 

Third Party Platforms 

Often infringement will come to your attention as a result of seeing infringing goods on a third party platform. 

For example, you may find infringing goods on eBay, the Apple store or Facebook. 

A good strategy to stop infringement in a cost effective manner can be to deal with the third party platforms directly. Most third party platforms of this kind have policies in place to make intellectual property infringement complaints. 

Amazon, for example, allows trade mark owners to enrol their brands in the Amazon Brand Registry to locate and remove infringing content. 

In the US, the Digital Millennium Copyright Act of 1998 (DMCA) provides online platforms with a safe harbour to incentivise them to implement notice-and-takedown policies. While we do not have the same protection in Australia, a lot of these large third party platforms are established in the US. Accordingly, these platforms have a model based around this safe harbour. By following the process for infringement set out by these large companies, you may be able to quickly and efficiently deal with the infringement matter. 

Domain Name Disputes 

Often you will notice a party using a domain name which includes your trade mark. This can directly draw business away from your website, as consumers may be confused as to what address they are  accessing. Accordingly, this can cause your business significant damage. If a party has registered an infringing domain name, you can apply for the cancellation or transfer of the domain name through the Uniform Domain Name Dispute-Resolution Policy (UDRP) (or auDA where ‘.au’ addresses are concerned). You do not need to know the infringer’s precise identity and location to do so. UDRP proceedings can be very cost-efficient and fast, with proceedings often finalised in a couple of months.

However, your concerns may be broader than just obtaining transfer or cancellation of the domain name.

For example, you may:

  • have suffered considerable damage as a result of the conduct; or
  • need to obtain some relief to restrict the infringer’s conduct going forward.

In this case, this may not be a suitable solution as remedies are limited to the transfer or cancellation of an infringing domain name.

Making a Complaint to the ACCC 

Often where an infringement of intellectual property such as trade mark or copyright infringement has taken place, the infringer will also have breached the Australian Consumer Law (ACL). The ACL prohibits businesses from engaging in conduct that is likely to mislead or deceive consumers, which can often result from using a similar trade mark or copying another person’s copyright protected material. The regulatory body responsible for enforcing the Australian Consumer law, the Australian Competition and Consumer Commission (ACCC), has broad enforcement powers including: 

  • issuing infringement notices;
  • seeking court enforceable undertakings; or 
  • commencing legal proceedings. 

It is possible to make a complaint to the ACCC about a business’s misleading and deceptive conduct. If the ACCC wishes to investigate the matter, they may choose to exercise their broad powers in this respect. Whilst it is a much more unclear pathway, this is a cost-effective alternative to formal proceedings. It may be appropriate in circumstances where you do not wish to invest any costs in dealing with infringement.

Key Takeaways

Litigation can be financially and emotionally exhausting, as well as very unpredictable. Therefore, you should only proceed with this option when absolutely necessary. If your intellectual property has been infringed, it is important to explore all of your options and assess what is commercially important to your business. You may wish to take a more flexible and preventive approach. These alternatives can be useful options to consider, especially when you wish to proceed in a cost-effective manner. However, it is important to note that sometimes stronger action is necessary. If you need help dealing with intellectual property infringement, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page. 


How Franchisors Can Avoid Misleading and Deceptive Conduct

Wednesday 18 May | 11:00 - 11:45am

Ensure your franchise is not accused of misleading and deceptive conduct. Register for our free webinar today.
Register Now

New Kid on the Blockchain: Understanding the Proposed Laws for Crypto, NFT and Blockchain Projects

Wednesday 25 May | 10:00 - 10:45am

If you operate in the crypto space, ensure you understand the Federal Government’s proposed licensing and regulation changes. Register today for our free webinar.
Register Now

How to Expand Your Business Into a Franchise

Thursday 26 May | 11:00 - 11:45am

Drive rapid growth in your business by turning it into a franchise. To learn how, join our free webinar. Register today.
Register Now

Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Innovation Award 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Award 2020 Employer of Choice Winner – Australasian Lawyer
  • 2020 Financial Times Award 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year Award 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer