Enforcing Your IP
Getting IP protection means that you can ensure that the investment of resources in creating the IP can lead to economic reward and further innovation. An infringement of IP rights occurs when others unlawfully use the IPR belonging to another organization or individual. Examples of this include the unauthorized manufacturing of patented technology; the sale of counterfeit products; similar goods bearing another company's trade mark; distribution of music or film without the copyright owner's consent (pirated goods).
Obtaining IP protection can give you a competitive advantage allowing you to sell those products or services at a premium. However, having IP rights in place is meaningless unless those rights are enforced. The threat of enforcement is what allows the IP to be exploited as a commercial asset. Competitors or other third parties may still infringe on your intellectual property rights. If that happens, there are steps you can take to end the infringement.
Enforcement of IP rights is necessary in order to:
- Preserve the legal validity of your IP rights.
- Prevent infringement from occurring or continuing in the marketplace in order to avoid damage including loss of goodwill or reputation.
- Seek compensation for actual damage, e.g. loss of profit, resulting from the infringement.
The Copyright & Related Rights Act 2000, the Patents Act 1992, the Trade Marks Act 1996 and the Industrial Designs Act 2001Designs Act 2002 all contain provisions imposing civil liability for activities that constitute infringement.
Copyright and trade mark owners can take court action in response to alleged infringing activity. The courts have a wide range of civil remedies available to them to compensate aggrieved owners. These include:
- Orders to account for profits
- Orders to seize, destroy and/or hand over infringing goods to right holders.
If you are in a position where you need take steps to enforce your Intellectual Property rights, there are a number of ways, depending on the circumstances of infringement, in which you can proceed.
Should an IP right infringement occur it is suggested that alternative mechanisms to resolve disputes are explored first and that, only when this is not a viable solution, you enforce your rights through legal proceedings
An initial step, particularly in the case of Trade Mark infringement, can be the issuing of a cease and desist letter drawn up by a solicitor. Due to the threat of court action if the infringement continues, in a lot of cases, this action might be sufficient to deter the infringer.
It is always advisable to seek legal assistance to determine how best to proceed and always seek professional legal advice from a solicitor or IP professional before embarking on enforcement proceedings.
Enforcement of intellectual property (IP) rights in other countries can also be complex and require careful consideration. Enforcement actions abroad will require the legal expertise of IP professionals in that country. Irish legal and IP professionals with relevant international experience would be able to identify and instruct a suitable overseas firm to advise and provide representation.
For more information please consult the IPR Helpdesk fact sheet on defending and enforcing IP.
Enforcement Database (The EDB: a new way to protect your products)
The Enforcement Database (EDB) is an online database hosted by the EUIPO (European Union Intellectual Property Office)which helps enforcement authorities to recognise counterfeit goods. It is free of charge and easy to use.
The EDB allows rightholders to protect their products by entering relevant information into the tool.
Information like packaging, identifiers, logistics, prior cases and contact persons for enforcement can all be easily and securely uploaded. As this information is likely to be the same for most of the products of a given rightholder, you don´t need to upload the entire product portfolio; just some key examples that will help customs and police protect your products against counterfeiting and piracy.
Although the tool will NOT replace any of the legal customs procedures, it will create alerts, providing a direct communication channel between rightholders and enforcement authorities.
The information entered into the EDB contains information on protected IP rights and assists enforcement authorities in the recognition of counterfeit goods.
It can be accessed by customs authorities and police across the EU in their language. Of course, you can choose what information to upload, and to whom you want this information to be available.
It is free to join and by adding your IP information, it will help to strengthen your protection against counterfeiting.
Enforcement Agencies in Ireland
The Revenue Commissioners are empowered to take action against infringements of intellectual property rights at points of importation into the State. Revenue is also responsible for liaison and intelligence sharing, with other enforcement agencies, and in particular the National Bureau of Criminal Investigation in An Garda Síochána. An Garda Síochána have a dedicated Anti-Racketeering Unit that deals also with the protection of intellectual property rights within the State such as, in the case of illicit pirated and counterfeit goods.