If you think another business or individual might be infringing your intellectual property (IP), there are several options available to deal with IP infringement before resorting to legal action. These include writing a letter to the person asking them to stop using your IP, reporting infringements on online marketplaces, mediation, and/or licensing or payment in exchange for them continuing to use your IP.
This blog sets out how to deal with IP infringement using these methods, to help you avoid time-consuming and expensive legal proceedings.
How to deal with IP infringement
Cease and desist letters
A good first step when you discover someone is infringing your IP is to write to the person setting out your position and asking them to stop. You can use a cease and desist letter to do this. Although this letter has no legal force, and can’t compel the person to stop or to pay any money to you, receiving the letter may cause the person to stop infringing your rights (especially if they weren’t aware they were breaching your IP). A letter is a good way to start off a process which might lead to negotiation, mediation or an agreement, instead of costly legal action.
Writing to the person calmly and professionally can also help you if you end up in court, as the court takes into account your behaviour leading up to the court case when deciding the case. See our recent blog on whether a cease and desist letter is legally binding for further guidance.
The template letter includes:
- who you are and what your business does;
- the trademark or copyright etc that you feel has been infringed;
- details of the product or service which is infringing your IP rights that the person you’re writing to provides; and
- how that product or service infringes your IP rights.
Note that you aren’t allowed to threaten to sue someone without proper grounds, so be careful about the wording of your letter if you aren’t sure whether someone is actually breaching your IP or not.
If the person infringing your IP stops after receiving your letter, try to get a formal agreement in writing from them recognising that they have been infringing your rights, and that they agree to stop. If your competitor resumes infringing your rights afterwards you can use this agreement as evidence in court. You may want to seek legal advice about what this agreement should contain.
Online marketplaces
Many internet marketplaces have a standard process for how to deal with IP infringement on their platform. You’ll usually need to report the infringement and include the item numbers that the marketplace uses to keep track of products, so that they can identify the relevant products. You may also need to send evidence that you own the IP right in question, like evidence of a trade mark registration. For further guidance on monitoring trade mark infringements, see our Q&A.
Mediation
Mediation is a voluntary process by which an independent third party (a mediator) helps two or more parties in dispute come to a mutually acceptable arrangement. Advantages of meditation are that it’s more private, less time-consuming and usually less stressful than going to court. You may also be more likely to maintain a good relationship with the other party.
The easiest form of mediation for IP disputes is through the IPO mediation service, where an independent expert from the IPO helps you resolve your dispute. A mediator won’t make a decision on your dispute, but helps you resolve it yourselves. See our Q&A for further guidance on the IPO mediation service. Note that mediation can only happen if both you and the other person agree to it.
However, if you need an immediate solution (like stopping someone selling their product because it’s impacting your sales or brand) only a court can order this. If you don’t want to wait for meditation, you would need to apply to a court for an injunction.
If you want an example to be set, perhaps to scare off other would-be infringers, or to establish a legal precedent that the infringer violated your rights, you’ll likely need to go to court. This is because court cases are public, while most mediations will agree to a confidential settlement.
Payment in exchange for continuing
If someone is infringing your IP, you may want to negotiate a licence. This is an agreement where someone else is allowed to use your IP, usually in exchange for payment. A licence doesn’t give the other person ownership of your IP, but gives them permission to use your IP in a certain way. This will let them continue what they are doing, but they’ll pay you to use your IP rights.
For more information, including practical steps, see Licensing your intellectual property.
Co-existence agreements
A coexistence agreement is a contract between two or more parties who have similar IP. This is useful if you think another person or business is trading with similar IP to yours because this agreement would govern how each of the parties will coexist without coming into conflict over their IP.
For example, if an Indian restaurant called ‘Indian Gourmet’, located in Leeds, receives a cease and desist letter from a restaurant with the same name in South London, the two restaurants may decide that they have no problem with one another so long as one only trades within Greater London and the other within Yorkshire. In this case, a coexistence agreement is a way for both to get assurances that the other won’t later expand into trading in the other’s locale.
Formal legal action
If all other options are unsuitable, consider whether you want to take formal legal action. It offers a wide range of remedies, enforceable through court orders, including money and injunctions which prevent infringements happening in future. Legal action is usually more expensive than other options, and may require you to get a lawyer. See our Q&A for further guidance on what to consider when taking legal action over your IP rights.
The content in this article is up to date at the date of publishing. The information provided is intended only for information purposes, and is not for the purpose of providing legal advice. Sparqa Legal’s Terms of Use apply.
Marion joined Sparqa Legal as a Senior Legal Editor in 2018. She previously worked as a corporate/commercial lawyer for five years at one of New Zealand’s leading law firms, Kensington Swan (now Dentons Kensington Swan), and as an in-house legal consultant for a UK tech company. Marion regularly writes for Sparqa’s blog, contributing across its commercial, IP and health and safety law content.