You should keep in mind that the laws concerning the enforcement of IP are not the same in every country. Hence, since law harmonisation is not the case in IP enforcement, it is safer to try – at least at the first stage – to resolve any IP dispute out of court. However, if all of the attempts to find an out-of-court solution fail, IP owners shall rely on court proceedings. The contribution of an IP lawyer is pivotal at this point.
In this context, two different proceedings can take place; civil actions and criminal prosecution. Bringing a civil action to the court means that you are about to enforce your IP rights by filing a lawsuit for infringement in a national specialised civil court. That is to say, you are applying for a preliminary or permanent injunction or other forms of interim measures (i.e. seizure of bank account) and claiming for a compensation through the award of damages. Other relief measures may also be confiscation as well as the destruction of illegal goods. It is to be noticed that since IP legal proceedings are rather costly, you are advised to anticipate an approximate budget for enforcement litigation and insuring the organisation against the financial costs linked to it.
Criminal prosecution, on the other hand, is also possible under certain circumstances and sanctions such as criminal fines, confiscation, destruction of goods and even imprisonment can be posed by courts. However, these criminal offences can be brought to trial only by public prosecutors and decided upon by criminal courts. Furthermore, it is to be noticed that criminal prosecution is mainly for trademarks and design “counterfeiting” as well as for copyright “piracy” or theft of confidential business information since the legal base of prosecution is usually the infringer’s intention to benefit financially from the commercial advantage of the IP owner.
In case you do not wish to get involved in long-term and costly litigation proceedings, a set of alternative measures is available for you.
First of all, you should approach the person/organisation that is supposedly infringing your IP rights by sending a letter of demand, also known as “cease and desist letter". The letter will advise the alleged infringer that a court action may be taken if the infringing activities do not stop within a certain period of time. It is to be noticed that you should avoid posing threats to the other party, or include false statements as this may lead to your legal liability.
In case the alleged infringement involves shipments of goods from outside of EU (or from EU to third countries) you can bring your claim to the competent customs authority. You can apply a notice with the customs authorities in order to stop shipments of infringing goods directly at the EU border. The intervention application requests the inspection of possible infringing goods imported from or exported to third countries and, where the customs find grounds for infringements, their consequent seizure. This application is valid for one year but can be renewed and no fees are required upon submitting it.
Another viable option is applying one of the Alternative Dispute Resolution (ADR) mechanisms. ADR refers to non-litigious methods to resolve disputes. Depending on the intended result you can choose between informal negotiations and more formal proceedings such as mediation and arbitration. ADR may be advantageous from the point of view of costs and of the likelihood and speed of settlements, as well as appropriate for avoiding that the organisations reputation and, hence, their relations with other organisations and costumers be damaged. Parties may agree in advance to resolve any disputes by ADR before initiating any legal proceeding, by including ADR clauses within commercial agreements. On the other hand, a court decision may order the parties to pursue a specific form of ADR.
In broad terms, negotiation refers to a voluntary and non-binding out-of-court settlement. Even though the assistance of a lawyer is not mandatory, it is strongly recommended that the resulting settlement agreement is to be drafted by a lawyer, since there are complex legal aspects which have to be covered within the final document (compensation, damages etc.).
Mediation is also a non-binding procedure in which an external third party assists the participants in reaching their own decision over a dispute. Mediation is a confidential procedure assuring the parties that any admissions, proposals or offers for settlement will not have any consequences beyond the mediation process. They cannot, as a general rule, be used in subsequent litigation or arbitration. Most important, the mediator has no decision authority and any settlement result is normally enforceable as a contract, a breach of which is enforceable in subsequent litigation.
On the other hand, arbitration is a formal procedure in which the parties submit a dispute to a tribunal of one or three arbitrators who issue an enforceable binding decision. What differentiates the arbitration proceedings from the traditional litigation proceedings is that the arbitrator is not bound to follow substantive law, but may also employ concepts of equity and justice, business practices and whatever technical expertise relevant to the case.
In all those cases, it is advisable to seek a proper legal advice, since the course of action will depend on the circumstances of each particular case.
When you become aware about the possible unlawful use of your rights by third parties, should precisely identify the alleged infringers in order to eventually bring to an end to the infringing activity.
There are several ways to enforce your IP rights, ranging from relatively simple measures to complex litigation. Court proceedings are costly and lengthy and therefore other preliminary tools should be used so as to prevent subsequent litigation. In many cases private negotiation via legal professional is more effective and should be considered as a viable option,particularly for SMEs which often are faced with budgetary constraints.
It is a common practice to approach the person who is supposedly infringing your IP rights by sending a letter of demand, also known as “cease and desist letter". The letter will advise the alleged infringer that a court action may be taken if the infringing activities do not stop within a certain period of time. It is to be noticed that you should avoid posing threats to the other party, or include false statements as this may lead to your legal liability. A previous consultation with a lawyer may be advisable in this respect.
In case a letter of demand does not result in cessation of the alleged infringement, further legal steps are available, such as customs actions, settlements (through informal negotiations, mediation or arbitration) and/or litigation (civil actions or criminal prosecution where available).
In any case, it is advisable to seek a proper legal advice, since the course of action will depend on the circumstances of each particular case.
In general terms, IP infringement is any breach of intellectual property rights.
IP rights are infringed when a work protected by IP laws is used, copied or otherwise exploited without having the proper permission from a person who owns those rights.
Examples of an IP infringement are “counterfeiting” and “piracy."
Counterfeiting is the practice of imitating genuine goods, often to inferior quality, with the intent to take advantage of the superior value of the imitated product.
Piracy is an unauthorized copying, use, reproduction and/or distribution of materials protected by intellectual property rights.