Intellectual property may be the most valuable asset your
business possesses. It is therefore wise to be on guard against
infringers who seek to dilute or steal that intellectual property.
However, before firing a shot at infringers, it is important to put
your own ducks precisely in a row.
Before issuing a letter of demand on infringers, you need to
ensure that you have the necessary standing in terms of ownership
or exclusive licence of the relevant IP. Where the IP is
registered, it is usually clear who the owner is. However, for
unregistered IP, such as copyright, it is not always obvious who
owns the copyright. For example, if you commission a consultant to
provide you with software, photographs or websites, the copyright
in those works generally vests in the consultant. It would
therefore be necessary to have that copyright assigned to you in
writing before you can accuse others of infringing the copyright.
Even if you or your employees created the relevant works in which
copyright subsists, it is important to ensure that you have
evidentiary records of that creation.
For registrable IP such as trade marks, designs, patents and
plant breeder's rights, it is important to ensure that this IP
is fully registered for all relevant and available IP rights. Trade
marks should be registered in all relevant classes of goods and
services. Designs and patents should be registered for all relevant
IP elements. Registrable IP should be duly registered in all
relevant countries. If your IP is not fully registered this may
leave a "gap" in your registrable IP rights which could
conceivably be filled by infringers at a later date.
You can expect that infringers may retaliate in the face of your
infringement claim. First of all, it is essential to ensure that
registrable IP is actually registered, not just filed. If your IP
is not fully registered, it can be possible for infringers to
formally oppose the registration of your trade marks, designs or
patents. Trade marks are uniquely susceptible to non-use removal
applications by infringers. If you are unable to show that you have
been using your trade mark for all the goods and services for which
it is registered, the trade mark can be fully or partially removed
from the Register. It is also important to remember that there are
statutory provisions prohibiting unjustified or groundless threats
against infringers. It is therefore important for your lawyers to
appropriately draft letters of demand so as to minimise the
likelihood of attracting such a counter-claim by infringers.
Many IP owners may wish to avoid the cost of court action
against infringers. In that case, formal letters of demand,
suitably drafted by lawyers can be very effective in discouraging
infringement without recourse to litigation. It may thereby be
possible for IP owners to stop the infringing action and even to
obtain a settlement sum for past infringing activities. In order to
achieve a satisfactory outcome, IP owners need to ensure that their
own house is in order before attacking infringers. To do otherwise
can place your own IP in peril.
The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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