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.
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.
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.