Before taking legal action

To establish legal action against an alleged infringer you must clearly prove that your intellectual property (IP) rights exist in law.

You must prove that:

In relation to trade mark infringement you must establish that:

Proving your right is still in force

IP rights do not continue indefinitely. Renewal fees are required for all rights. Patents, designs and plant breeder’s rights (PBR) all have an expiry date. The exception is trade marks, which can continue to be renewed and will remain in force as long as the owner uses their trade mark and keeps the registration current. People are generally free to use the IP rights once they have expired.

A first step in any proposed litigation is to be satisfied that IP rights actually exist for the relevant product or goods. This is straightforward when the rights are subject to registration as is the case with patents, designs, PBR and trade marks.
Enforcing copyright

Proving the existence of copyright is not as simple as other IP rights, because there is no registration procedure and no certificate to prove its existence.

To prove copyright exists it is usually necessary to prove the:

Proving the ownership of the rights

Only the owner of an IP right or someone entitled to act on their behalf can bring infringement proceedings.

Establishing ownership can be straightforward when the right is subject to registration.

In the case of copyright the author or maker is generally regarded under the Copyright Act 1968 as the owner of that material. However, if the material was produced by an employee as part of their job then the employing company would hold the copyright.

If the author or maker is not the person bringing the proceedings it is necessary to prove that there were written assignment/s of that IP interest from the author or maker to the person claiming ownership.

Each step in the process of a transfer of title must be established by documents.
Proving your work has been copied

To establish infringement, it is necessary to show that the infringer has copied the whole or a substantial part of your product or material. In some cases this is self-evident.

A clear example is a person who copies a film. A quick visual comparison between the owner's film and the infringer's film will establish whether or not one is a copy of the other.

In other cases the answer may not be so clear. This is particularly so with complex and technical patent specifications.

It may be necessary to obtain expert assistance to analyse the various elements of the infringer's product and compare those with the specific scope of protection afforded by the patent.

Another example would be where only elements of a film or script are copied and the infringing film does not bear any visual similarity to the original.

Proving who has permission to use your work

You are also required to prove that an infringer did not have permission or consent to exercise the infringed rights. The only time you will not be required to prove this is if the infringer does not contest this issue.

This is not always easy for you to prove, but is easier if you have someone responsible for implementing a documented system for granting licences and approvals to third parties.

Remember, it is your responsibility to monitor the marketplace and defend your rights. While we grant rights we do not enforce them.

Get advice

Before you take any action you should consider getting legal advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success.

Proving infringement is an important issue that should be considered before taking legal action. Making an unfounded claim of IP infringement is legally prohibited and can result in liability for damages.

Wed, 9 Aug 2017 @11:45

Latest Articles
Understanding trade marks

Trade mark basics
Find out what a trade mark is and learn about the differences between a trade mark and a design right, business name or domain name.

Types of trade marks
A trade mark is not limited to being a corporate logo. It could also be a jingle, your business name painted on the side of your truck or even a scent.

Benefits of a trade mark
A trade mark can be your most valuable marketing tool. It is your business identity that helps you promote your products or services.

Examination process
The examination process is where we check your application to make sure it contains all the correct information and meets legislative requirements.


Jl. Soekarno Hatta 590
MTC Kav. B-36 Lt.2
Bandung 40286

Phone : +62-22-753 7469
Facs  : +62-22-753 7092
SMS/WA :0811 2283 083
Pin BB :5711DC6A

Copyright © 2021 · All Rights Reserved