This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
If you are being accused of infringing someone’s IP outside Australia, there may be some specific considerations to bear in mind – beyond those when dealing with Australian infringement issues. The location of the alleged offending might affect how you choose to respond.
This page provides an overview of considerations when being accused of infringing overseas.
Different countries have different IP laws. Australian IP registration does not specifically provide protection in overseas markets. It may be possible to infringe someone’s IP in an overseas market even if you hold an Australian IP registration or are not infringing anyone else’s IP rights in Australia.
At a general level, IP infringement considerations can in many jurisdictions be quite similar to those which apply in Australia, and in considering your options may explore matters such as:
- whether you have engaged in any activities within the relevant overseas market
- whether you have otherwise done any of the things that have been alleged against you
- whether the person making the allegations against you holds the IP rights they say they hold
- whether the things you have done involve infringement of IP rights held by that person (applying the laws of the relevant jurisdiction)
- what would be a good commercial outcome for you in resolving or addressing the allegations made against you
- whether you may be entitled to register your own IP in the relevant country to bolster you position against the other person
- whether you are open to engaging in negotiations, or alternative dispute resolution processes such as mediation, to reach an agreement with the person making allegations against you
- whether you may be prepared to go to court or similar to protect your commercial position regarding the allegations against you
- what the cost implications for any option available to you may be.
It is important to understand that the law and legal processes in each jurisdiction will vary around the world. What may not be considered IP infringement in one country, may potentially be in another. Similarly, what makes for a good strategy to address infringement allegations in one country, may not operate in exactly the same way in another.
The IP First Response tool provides information about Australian IP law. If you are accused of infringing IP outside of Australia, you may wish to speak to a lawyer who is qualified to advise on the law of that country in which you are being accused of IP infringement. Australian IP lawyers and IP attorneys may be able to help you with referrals for foreign lawyers and otherwise assist you to communicate and engage with foreign lawyers.
What are the benefits?
Responding with due consideration to overseas threats reduces risks of negative outcomes and may mean a more suitable response, limiting investment of resources as much as possible.
Should you choose to engage a local legal IP lawyer or IP attorney from the country where you have been accused of infringement, you may see the following benefits:
- In most cases, engaging an IP lawyer or IP attorney is likely to reduce the risks you may encounter in enforcing your IP rights.
- IP lawyers can provide a wide range of legal services and develop a holistic IP enforcement strategy suited to your IP and business goals, and IP attorneys can provide specialist IP advice in their areas of expertise such as trade marks or patents.
- They have the knowledge, training and experience in the relevant jurisdiction to guide you through a dispute or a conflict which can be highly stressful and draining.
- They have an in-depth knowledge of relevant legislation and industry practices surrounding IP in the relevant jurisdiction, with the ability to leverage both appropriately and proportionately.
- They are able to recognise common issues which come up and refer you to other professionals when needed.
What are the risks?
- Failing to respond appropriately to accusations of overseas infringement can reduce your entitlement to IP in overseas markets, your existing market presence and potential for future expansion.
- If you do not respond appropriately to accusations of infringement in foreign jurisdictions, there is a risk of having a court decision against you in the relevant jurisdiction, which may then be enforceable in Australia, jeopardising your interests and market position in the domestic market as well.
- Outcomes and costs can be less predictable in some jurisdictions than they would be in Australia.
What are the possible outcomes?
We have not provided indicative outcomes for this option guide because it encompasses a variety of situations that IP Australia does not have data on.
What might the costs be?
We have not provided cost estimates for this option guide because it encompasses a variety of situations that IP Australia does not have data on.
How much time might be involved?
We have not provided indicative timeframes for this option guide because it encompasses a variety of situations.
How much is this used?
As the IP system is international, it is not uncommon to be contacted by other parties who are based overseas. However, international scams are also common. For more information on assessing letters of demand and scamming, fraudulent activities concerning IP, see: Receiving a letter of demand, Reporting a threat or a scam that you received.
Who can use this?
Anyone.
Who's involved?
We have not provided an indication of who’s involved in this guide because it encompasses a variety of situations. In general, yourself and an accuser will usually be involved. You may wish to discuss this with an IP Lawyer or IP Attorney.
What do you need to proceed?
The steps and procedures involved in how to respond to accusations of IP infringement from overseas would vary heavily depending on individual circumstances, laws and industry practices in the relevant overseas jurisdiction.
Some international IP offices provide information on enforcement in their jurisdictions and may have services to help you with dispute resolution or enforcement. You can find out the relevant IP office and what services they provide using the Directory of Intellectual Property Offices .