If someone has copied my product, but it's already on the market, there's not a lot I can do about it, is there?Member News
Answer: If an infringing product is already being advertised or sold (which is often how you would find out about it), there are a whole host of remedies – financial and otherwise - that you can claim, including an injunction to prevent further sales.
If you find that your intellectual property (IP) rights are being infringed, it’s important to consider taking action quickly. Often with IP infringement matters, the first remedy to seek is an interim injunction, to prevent the continued infringement until trial. However, you have to act quickly to be able to obtain an interim injunction. Delay may prevent you from getting one, even if the merits of your infringement claim are strong.
If you decide not to go for an interim injunction, usually the first step is a letter before action to the infringer seeking undertakings that they will stop infringing and requesting compensation, along with other remedies. Even without Court action, you can obtain many of the remedies which a Court can order as part of settlement.
The usual remedies in IP cases are:
- damages or an account of profits;
- an injunction to prevent the infringement;
- delivery up, or destruction of, the infringing articles/materials;
- payment of legal costs and interest; and
- publication of the decision, or an apology.
An account of profits is based on how much the infringer has made through selling the infringing product. You are entitled to choose whether to claim either an account of profits, or damages, and you can have disclosure of the infringer’s financial records to help you make this decision.
On top of the financial remedies, there are also others of real value. The key remedy being to prevent the infringer from continuing to carry out the infringing acts. If this is set out in a Court order, rather than in contractual undertakings, then any breach amounts to contempt of Court. Delivery up to you of the infringing material/articles means that you can ensure that they do not somehow find their way back onto the market.
Before you threaten any action, you need to identify the IP rights that exist, be sure that you own them and be satisfied that they are infringed. It’s dangerous to threaten to bring infringement action before you have assessed this, or if you have a very weak case. This is because, for certain IP rights, there are groundless threats provisions. These provisions mean that if you threaten to bring infringement action for certain infringing acts, and the party threatened is not infringing, they can successfully sue you for making groundless threats.
The key to enforcing your IP is to know what rights you have. Even if you don’t own a registered trade mark, design or patent, there are other rights that you may be able to rely on, such as passing off rights, unregistered design rights and copyright. Whilst enforcing registered IP can be easier to enforce in some scenarios, you shouldn’t forget about these other rights as they can often form a strong basis to prevent infringers benefiting from the investment you have made in your products and services.