Settling Disputes and Enforcing IP Rights

Despite the best of efforts, intellectual property (IP) disputes unfortunately can and do arise. Such disputes can include infringements of your IP rights by third parties or third parties alleging that you have infringed upon their IP rights.

Both cases can potentially result in legal proceedings, demands to cease using the IP asset and/or compensation payments.

Alternative dispute resolution

IP litigation is costly and few small companies would willingly opt for that route, either as complainant or defendant. Alternative dispute resolution (ADR) via mechanisms such as arbitration and mediation is a possible alternative to court litigation.

WIPO ADR

The WIPO Arbitration and Mediation Center is a neutral, international and non-profit dispute resolution provider that offers time- and cost-efficient alternative dispute resolution options.

Arbitration

In an arbitration procedure, all parties agree to submit the dispute to one or more arbitrators who then make a binding decision on the dispute.

The arbitration procedure is private and less formal than court proceedings. An award of damages obtained through arbitration is also more easily enforceable internationally than an award through national court proceedings.

Mediation

In a mediation procedure a neutral intermediary, the mediator, helps the parties to reach a mutually satisfactory settlement. Any settlement is recorded in an enforceable contract.

An advantage of mediation is that parties retain control of the dispute resolution process. This can help to preserve good business relations with the other parties involved.

Expert tip – Incorporate a clause providing for alternative dispute resolution into contracts when entering into relationships with third parties.

Enforcing IP Rights: Who should I turn to?

The burden of enforcing IP rights is mainly on the holder of such rights. In other words, it’s up to you as an IP right holder to identify any infringement of your IP and to decide what measures to take.

Governments have the responsibility to establish institutions that can facilitate the enforcement of IP rights. The judiciary and, in some cases, administrative bodies like IP offices or customs authorities are government institutions which may deal with cases of infringement.

Where measures are available to prevent the import of counterfeit trademark goods or pirated copyright goods at a border, customs authorities have a major role to play. If you are aware that goods infringing your IP are being imported into the country, you can request that the customs authorities suspend the release into free circulation of these goods. Customs authorities can take action upon request of the right holder or to execute court orders. In some countries they may also act upon their own initiative. Furthermore, in some countries, there are industry associations assisting their members in enforcing their IP rights.

TRIPS Agreement

Part III of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) obliges members of the World Trade Organization to provide the IP enforcement mechanisms mentioned in the agreement. The Agreement seeks to ensure that civil, administrative and criminal procedures and remedies meet prescribed minimum standards.

Enforcing IP rights: What can I do in case of infringement?

If you suspect that an infringement of your IP has occurred, it is always advisable to seek expert advice. Depending on the jurisdiction, there are a number of tools available for enforcing your IP rights and the exact proceedures and rights differ accross countries. The next actions to take depend on whether the infringement was intentional or non-intentional.

Cease-and-desist letters

Generally, the first step you can take against someone who has infringed your IP is to send a “cease and desist letter” to the alleged infringer. The letter notifies the other party that a conflict between your IP rights and their business activity may exist (identifying the exact area of conflict) and proposes to discuss a possible solution to the problem.

This procedure is often effective when the infringement occurs unintentionally since the infringer will in most cases either discontinue their activities or agree to negotiate a licensing agreement.

Judicial proceedings

Where IP infringements persist, you could seek the assistance of law enforcement and initiate judicial proceedings. Depending on the national law, a range of remedies are available to protect your IP. As a provisional measure, a court can, for example, order the preservation of evidence of the alleged IP infringement. Once the infringement has been established, a court can order the infringer to stop the infringement and pay compensation for the damages that you may have suffered. In addition, infringing goods may be seized and disposed of outside the channels of commerce, and, in many countries, the infringer may be ordered to identify third persons involved in the production and distribution of the infringing goods and their channels of distribution.

Where an IP infringement amounts to a criminal offence under the applicable national law, such as in cases of trademark counterfeiting or copyright piracy committed wilfully and on a commercial scale, you can alert the authorities and request that the matter be investigated.