When Should You Act on Infringement?

Mathew Forde tells us more below, alongside when to act and how to react to possible infringers.

What classifies as infringement?

Infringement comes in many forms and, in simple terms, it describes the act of violating a law. But in the context of intellectual property, we tend to think of infringement as the act of taking advantage of or exploiting the rights of another party without their permission to do so.  The key to infringement is really the absence of permission.

Mathew Forde tells us more below, alongside when to act and how to react to possible infringers.

Delay serves no useful purpose.

When should a business or client seek legal action during infringement cases?

My advice to any business clients is that if their IP rights truly matter to them then they must act quickly to protect those rights when they are under threat. Delay serves no useful purpose. However, legal action doesn’t always require the direct involvement of lawyers and businesses can take a variety of steps to assert their legal rights themselves. That said, if those DIY steps prove ineffective, then direct legal action may be the only option remaining and that may be the sensible time to pick up the phone to your lawyer!

More often than not a successful resolution will require leverage that is part commercial inducement and part threat of judicial sanction.

What are the available strategies to confront infringement?

If a business can demonstrate that it has actively managed its IP rights, then the task of enforcing those rights before a court of law becomes so much easier. My advice to any business is that it should apply a four-step holistic strategy when managing IP rights. These steps are: (i) protection, (ii) exploitation, (iii) policing and (iv) enforcement. The history of its dealings in relation to each of those steps is vital to proving the strength, scope and value of those rights.

When confronting any infringement scenario, the strategies that need to be considered typically involve direct commercial negotiation combined with the threat of enforcement of rights via the courts. More often than not a successful resolution will require leverage that is part commercial inducement and part threat of judicial sanction.

How do you decide which strategy is best?

Whichever strategy is employed, ultimately the determining question should remain the same, which is simply this: what strategy is more likely to achieve a commercially realistic outcome at the least cost to the client?

Other influencing factors may be whether there are strengths or weaknesses in any arguments asserting the business’s rights, the commercial value of those rights as compared to the cost of asserting those rights, the available court remedies, time factors and, finally, the larger commercial picture.

Courts tend to award higher damages to claimants to take into account acts of flagrant infringement.

When should the infringer be contacted?

Immediately, assuming, of course, that they can be identified and contacted. The reason why notification is so important is that once a party has been placed on formal notice of the infringement it cannot subsequently claim ignorance of its unlawful actions. Therefore, any continuing acts of infringement will have been done in the knowledge of the wrongdoing and will be considered flagrant. Courts tend to award higher damages to claimants to take into account acts of flagrant infringement.

Doing nothing is hugely risky and can, in some cases, completely undermine your ability to enforce your IP rights against an infringing party.

What occurs if nothing is done? Can you lose your IP?

Doing nothing is hugely risky and can, in some cases, completely undermine your ability to enforce your IP rights against an infringing party. Although there are some statutory exceptions to this rule, in the UK, we have a common law rule called the doctrine of acquiescence that basically states that if you knowingly permit another party to infringe your civil rights and you chose to do nothing about it, then you cannot later make a claim against the person who infringed them.

Mathew Forde

Director

Forde Campbell LLC,
1-3 Lombard Street, Belfast
Northern Ireland, BT1 1RB
02890 897610

www.fordelaw.com

 

I am one of the founding partners of Forde Campbell LLC, a boutique commercial law practice based in Belfast and Dublin, which specializes in IP, IT and media law. I am a director of the firm and an IP and reputation litigation specialist. I also head up the firm’s commercial litigation department.  Before founding Forde Campbell in 2006 I practised as in-house counsel for a global pharmaceutical company (2002-2006) and prior to that I practised as a commercial litigator for the City law firm, Lawrence Graham (1994-2001)

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