18 May 2016 Attacking IP infringers - look before you leap

By Eric Ziehlke, Partner

Intellectual property may be the most valuable asset your business possesses. It is therefore wise to be on guard against infringers who seek to dilute or steal that intellectual property. However, before firing a shot at infringers, it is important to put your own ducks precisely in a row.

Identifying ownership

Before issuing a letter of demand on infringers, you need to ensure that you have the necessary standing in terms of ownership or exclusive licence of the relevant IP.  Where the IP is registered, it is usually clear who the owner is.  However, for unregistered IP, such as copyright, it is not always obvious who owns the copyright.  For example, if you commission a consultant to provide you with software, photographs or websites, the copyright in those works generally vests in the consultant. It would therefore be necessary to have that copyright assigned to you in writing before you can accuse others of infringing the copyright.  Even if you or your employees created the relevant works in which copyright subsists, it is important to ensure that you have evidentiary records of that creation.

Perfecting registration

For registrable IP such as trade marks, designs, patents and plant breeder's rights, it is important to ensure that this IP is fully registered for all relevant and available IP rights.  Trade marks should be registered in all relevant classes of goods and services.  Designs and patents should be registered for all relevant IP elements.  Registrable IP should be duly registered in all relevant countries.  If your IP is not fully registered this may leave a "gap" in your registrable IP rights which could conceivably be filled by infringers at a later date.

Anticipating retaliation

You can expect that infringers may retaliate in the face of your infringement claim.  First of all, it is essential to ensure that registrable IP is actually registered, not just filed.  If your IP is not fully registered, it can be possible for infringers to formally oppose the registration of your trade marks, designs or patents. Trade marks are uniquely susceptible to non-use removal applications by infringers.  If you are unable to show that you have been using your trade mark for all the goods and services for which it is registered, the trade mark can be fully or partially removed from the Register. It is also important to remember that there are statutory provisions prohibiting unjustified or groundless threats against infringers. It is therefore important for your lawyers to appropriately draft letters of demand so as to minimise the likelihood of attracting such a counter-claim by infringers.


Many IP owners may wish to avoid the cost of court action against infringers. In that case, formal letters of demand, suitably drafted by lawyers can be very effective in discouraging infringement without recourse to litigation. It may thereby be possible for IP owners to stop the infringing action and even to obtain a settlement sum for past infringing activities.  In order to achieve a satisfactory outcome, IP owners need to ensure that their own house is in order before attacking infringers. To do otherwise can place your own IP in peril.


Eric Ziehlke, Partner  |  Phone: +61 2 9233 5544  |  Email:

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This article is not legal advice and the views and comments are of a general nature only. This article is not to be relied upon in substitution for detailed legal advice.

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