Australian businesses that discover their intellectual property (IP) is being infringed overseas face unique challenges. By understanding these challenges, they can make informed decisions about how to protect their IP internationally.
One key point to keep in mind is that IP rights are territorial in nature.
IP that requires registration, such as trade marks, patents, designs, and plant breeders’ rights, only provides protection in the country where it is registered. Applying for and registering with IP Australia does not extend IP rights protection to other countries.
For example, Sarah registers a design for a chair in Australia. When she discovers that a Chinese manufacturer is copying her product, she finds that her Australian design registration offers no protection within China. Although a registered design can prevent the copied product from being imported into Australia, to take formal legal action within China, she would first need to obtain a Chinese design patent.
Copyright, however, can be protected in several countries under specific conditions. If the copyright material was created and protected in Australia, it will also be protected in countries that acknowledge its protection through international treaties.
For example, Alec discovers that someone has been reproducing his painting in the UK. He could take action in the UK for copyright infringement of his artistic work, as both Australia and the UK recognise the protection of copyright in each other’s countries.
Key considerations for overseas infringement
If you find that someone is using your intellectual property overseas, consider:
1. Do you have IP rights in that country?
Before taking action, ensure that you have registered your IP rights in the relevant country. Without local protection, your options for enforcement are limited.
When protecting your IP in Australia, it is a good time to consider filing for protection in other countries as well. When deciding where to seek protection, consider filing in countries where you manufacture products, where you sell or intend to sell, where you may encounter copying risks, or where your competitors are based. The cost of obtaining protection in multiple countries can be significant, so most businesses need to prioritise based on commercial importance and risk.
For some IP that requires registration, specifically patents and trade marks, the World Intellectual Property Organisation can facilitate the filing of applications in multiple countries. See How to Apply for IP Overseas for more information.
2. Different laws and enforcement standards
Every country has its own IP laws, registration requirements, court systems, and enforcement practices. What might be viewed as infringement in Australia could be treated differently elsewhere.
For example, the protection of trade marks can vary significantly. Some countries, like China, Indonesia, or Thailand, follow a first-to-file system, where rights are generally granted to the first person to register the trade mark, regardless of whether they have used it in the market. In Australia, prior use of a trade mark can provide protection and rights, allowing a party that used a mark first to oppose or seek cancellation of a later registration.
Such differences can create issues for businesses expanding internationally. Consider a business owner, Sean, who sells branded shoes in Australia under the name ‘Voice’. Later, he discovers that someone in China is selling shoes under the same name. Upon further investigation, he finds that this person has registered ‘Voice’ as a trade mark for shoes in China. Because China operates under a first-to-file system, Sean would likely encounter challenges in contesting the Chinese trade mark registration.
3. Costs and practical challenges
Overseas enforcement can involve significant expenses that exceed your expectations. You will likely need to engage local legal representation since foreign lawyers are generally not permitted to appear in the courts of other countries. Translation costs can be substantial, especially in countries where all documents must be officially translated. Foreign legal procedures can be challenging to navigate and may lead to significantly higher legal fees.
4. Online infringement crosses borders
The internet has made the territorial nature of IP rights more complex. A website selling infringing products might be hosted in one country, operated from another, and cater to customers globally. This situation creates practical challenges in determining where to take action. Generally, it’s most effective to focus on where the most damage occurs. Consider where your customers or the infringers are located.
Online marketplaces present both challenges and opportunities. While infringers can easily reach customers through platforms like Amazon, many of these platforms have established procedures for addressing IP complaints and assist in removing infringing material or listings.
Enforcement options
When addressing overseas infringement, you have a range of options, each carrying different costs and likelihood of success. Some options include:
Direct negotiation. Sometimes, a letter of demand from local lawyers can resolve matters without the need for court proceedings. This is often the most cost-effective first step.
Platform takedown notices. Many e-commerce platforms have IP complaint procedures for online infringement, enabling rights holders to request the removal of infringing listings.
Customs enforcement. Countries like Australia allow IP rights holders to register with customs authorities, which enables officials to identify and seize infringing goods at the border. This can be particularly effective for physical products being imported.
Legal proceedings. Court action is appropriate when the infringement is causing significant commercial damage or when other methods have been unsuccessful. Legal proceedings should be a last resort due to their costs, complexity, and uncertainty in foreign legal systems.
Practical tips
Preventing issues is always better when it comes to international IP protection. Consider filing for protection in key markets early, ideally before launching products or services. While this requires an upfront investment, it’s generally far less costly than trying to stop infringement once it has already begun.
Addressing overseas IP infringement is a complicated and often costly process. Consider consulting an IP lawyer who specialises in international IP protection and enforcement. They can offer specific advice tailored to your situation and help you craft a cost-effective international IP strategy. While it’s frustrating to see your IP copied internationally, weigh the costs against the potential benefits carefully. Focus your resources on protecting key markets where enforcement is practical and commercially justified.