Prevent international infringement

What is infringement?

IP infringement is the violation or unauthorised use of an IP right. If someone is using your IP without your permission, this is infringement. It can seriously damage your business and brand.

It's important to enforce your IP rights to maintain the value of your business and deter potential infringers.

IP infringement

How can I protect my overseas IP?

We recommend tackling infringement proactively, before you have any problems. Here are ways to prepare for, prevent and detect infringement overseas. 

Create an infringement strategy

Make a plan of how you will prevent, detect and enforce IP infringement early in the process of expanding overseas. We suggest working with an IP attorney to develop an infringement strategy as part of your overall global strategy.

Register your IP in local markets

You might already have the IP right in Australia but it's crucial to also register your IP in the target country as soon as possible. It can be hard to get protection if someone local registers it before you. In some countries once you have disclosed your IP anywhere in the world, such as by securing IP rights in Australia, you can't secure rights in that market.

Use anti-counterfeit measures

The increasing incidence of counterfeit goods has prompted many businesses to build in some kind of anti-counterfeit measures that help to identify genuine products.

You can consider:

• Verification and traceability solutions such as QR codes, RFID and smart finger prints
• Overt features such as holograms, security threads and fibres, watermarks, taggants and microprinting
• Covert features such as fluorescent print and other secret markings.

Set up your manufacturing arrangements carefully

If you're having products made overseas, it's especially important to be proactive about protecting your IP. It's not unusual for manufacturers and business partners in other countries to take advantage of Australian IP through their local knowledge. 

Common forms of IP misuse include:

• Someone else registering your trade mark or design under their name
• Using your product to compete with you
• Retaining moulds and plates to continue manufacturing your product after the termination of your partnership.

You should carry out due diligence before making agreements and set up well-structured contracts that will afford you some protection in the event of infringement. 

Monitor the market

Market monitoring is a key part of managing your IP. Counterfeit goods — imitations of your products, often sold at a lower price — are a threat to your business. If you have overseas rights, you need to keep an eye on each country and also watch what's being sold online.

Given the complexity of keeping on top of what's happening in multiple markets, consider engaging someone to help you.

You might:

• Work with local distributors to detect and pursue infringements
• Engage a professional, such as an online brand protection service.

Engage an IP professional

How do I deal with overseas infringement?

If you detect infringement of your IP rights overseas, you should engage a local representative such as an attorney to take enforcement action, which might include letters of demand and court action.

A local attorney can provide advice about:

• Pursuing high value targets
• Carrying out investigations
• Taking enforcement actions such as court action, seizure of goods or administrative and criminal enforcement through local authorities.

Together you should consider managing online infringement, intercepting goods and dispute resolution through WIPO, as described below.

Managing online infringement

If you detect infringement on an online site, you can approach the owners of the site or their e-commerce platform, such as Amazon, Shopify or Alibaba, to request that they take down infringing goods.

You can:

• Make a complaint directly to them
• Arrange for someone, such as your lawyer or brand protection service, to act on your behalf.

Most e-commerce platforms have a take-down mechanism for responding to IP complaints, including counterfeit and replica goods or other unauthorised items.

List your IP with e-commerce platforms before there is a problem

You should be proactive by listing your IP rights with platforms before anyone tries to sell counterfeit goods. Some platforms invite you to add your trade marks and other kinds of IP rights to a brand registry. This is used in automated checks to detect infringing goods before they are even listed for sale.

Intercepting infringing goods

Sometimes the best way to deal with infringement is to intercept infringing goods when they cross the border. In some countries you can report infringement to customs authorities, who can seize infringing goods upon entry. This can be a faster and easier way to deal with infringement than taking legal action.

You should seek professional advice on appropriate enforcement actions in the country where you have IP rights.

Someone is using my IP rights  

Arbitration and mediation through WIPO

If you need to resolve a dispute overseas, you can refer it to the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center.

The centre provides a range of alternative dispute resolution (ADR) services to resolve international IP disputes. Their aim is to facilitate direct settlement between parties or to refer their dispute to WIPO mediation or arbitration as an alternative to court action.

They can conduct ADR proceedings for IP disputes involving Australian nationals. They can also supply Australian arbitrators, mediators and experts with specialised knowledge in IP rights.

Arbitration and Mediation Center