Before taking legal enforcement action
To settle or to litigate
IP litigation, like all forms of litigation, can be time-consuming and extremely expensive. Therefore it is worth exploring other solutions before deciding on what legal action is best. These solutions are best examined with the help of a legal advisor/IP professional with a view to preventing the infringement or settling the matter out of court.
One solution to consider is issuing a letter of demand, or cease and desist letter. This is often used to approach the person who is supposedly infringing the IP rights.
Negotiation, mediation, arbitration and alternative dispute resolution (ADR) mechanisms should also be considered before embarking on litigation before the court. However, if all the attempts to find an out-of-court solution fail, you may be advised that the best course of action remaining is to bring an action in court. If you have not already done so, you should contact a solicitor/legal advisor/IP professional, who can advise you on how to proceed and give an assessment of likelihood of success. Before litigation, the following factors need to be considered and weighed up:
- The strength of your case and the opportunity to sue.
- The risk of failure/likelihood of success.
- The available defences for the counterpart/infringer (e.g. counterclaims or exceptions).
- That you have proofs of ownership of the IP rights in question.
- That you can show that an infringement occurred.
- The amount of relief in the form of compensation and damages which may be recoverable.
- The costs of litigation.
- Any other potential alternatives.
Customs/Revenue Commissioners Application for Action (AFA) process
Another approach is to use a preventive enforcement measure which involves the customs authorities. An IP owner can apply for an action notice with the customs authorities with a view to stopping shipments of infringing goods directly at points of importation to the State. Details are set out in Section 2 of the Customs Enforcement of Intellectual Property Rights Manual issued by the Revenue Commissioners.
Key points to be considered:
- Take stock of all IP owned by and essential to your organisation/company.
- Register your IP rights in the countries where you do business.
- Verify that your invention, trade mark, brand, marketing materials, company website, or imagery for your packaging, product or service is not infringing the rights of others.
- Only use material that is properly licensed.
- Secure confidential business information internally and externally.
- Be vigilant by monitoring the relevant IP landscape.
- Use customs action to stop IP infringing goods shipment.
- Put a defensive strategy in place to combat infringements.
- If you need to enforce your rights, be in a position to make your case before going to court.
- Ensure that the enforcement route that you have chosen is against the right person/company.
- Obtain the assistance of an IP professional.