Which steps can a right holder take if he discovers that his IP rights have been infringed?
An important first step for a right holder is the careful assessment of the alleged infringement. This examination should address a range of issues, such as who the infringer is, the impact the infringement may have on his business, the seriousness and the extent of the infringement, or the question of repeated infringement. Generally, it would be advisable to seek advice and to try to settle the dispute at an early stage, if possible.
Frequently, it is worth attempting to settle the situation in a friendly way by informing the infringer of the activities in question and pointing out the existence of the right owners intellectual property rights. In cases of non-voluntary infringements, an infringer may stop his action upon being informed of the illegality of his behavior. In some countries, such a step may also be of importance in future court proceedings, because a plaintiff who has failed to give such a notice or warning may risk incurring with the costs of the proceeding if the defendant acknowledges the claim in the first hearing. The adequacy of a first notice, however, will depend on the circumstances of a particular case. If the right holder does not have sufficient reasons for assuming an infringement, he could become liable for damages resulting from an unjustified warning and subsequent action.
If an infringer does not agree to stop or change his activities, negotiation may become an important element of enforcing ones rights. Again, the success of such a proceeding will strongly depend on the circumstances of the case. In addition, alternative dispute resolution (ADR) procedures are increasingly recognized as offering an effective means for settling disputes concerning intellectual property.
Often, it may be useful for the right holder to avail himself of professional assistance by an IP attorney or agent before deciding on an appropriate course of action. It may also be useful for a right holder to consider contacting a respective right owners association. In areas seriously affected by counterfeiting (increasingly, mass-produced goods such as fashion, sportswear or pharmaceutical products) and piracy (such as music and software business) right owners have formed such organizations in many countries. In the area of copyright, collective management organizations also could be a contact point.
In a number of cases, the right holder will decide to take legal action against the infringer. In most jurisdictions, remedies that may be available to right owners such as injunctions, damages, or provisional measures, will be handled in civil courts. Because of the costs involved in civil litigation, it may be worth considering legal insurance policies in advance, where applicable.
In most countries, criminal sanctions are available for serious IP infringements, which are undertaken intentionally and for commercial purposes. National laws govern the procedures and the relationship between such criminal action and any other action taken by the right holder. In case of criminal offenses, action by the competent authorities in some legal systems does not depend, but will be facilitated and supported by, the initiative of the right owner.