Choose not to act immediately

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?

See information about what counts as infringement

Taking no action when you have identified infringement might well be a valid and common strategic choice to consider. People may choose not to actively pursue enforcement actions for several reasons, including where:

the identified infringement is inconsequential
for trade marks – the infringement has little risk of confusing your customers
for trade marks – there is low risk of damaging your brand or business
an identified reputational risk in taking action makes it not worthwhile
the chances of successful enforcement might below compared to the costs involved.

It is important to take a holistic approach to addressing infringement which considers several factors including:

the details, and relative strength of your IP rights
your current business situation and objectives
your personal circumstances
the nature and potential consequences of the infringement.

It can feel very personal when someone is infringing on your intellectual property – and it is important to acknowledge any emotional response you have to the situation – but choosing to take no action (as part of a thought-out IP strategy) can be a valid and rational choice.

An IP lawyer or IP attorney can help you develop an overall IP strategy, which makes it easier to decide when and how to respond to different types of infringement, as well as taking pro-active steps to prevent future infringement.

What are the benefits?

It does not require significant time, cost and effort. These will be required if you elect to take action to prevent infringement of your IP, and doing so may not be justified at this point in your business or IP journey.
Taking no immediate action can allow you to gather evidence and time to evaluate the true risk and possible damage to your business, so you can act when the time is right – but you should consider the risk in delaying action.
Choosing to avoid enforcement actions shelters you from needing to establish or defend your rights.

What are the risks?

There may be easy and effective enforcement options that you may miss out on by taking no immediate action.
Delaying taking enforcement action may make it more difficult to take action in the future and, in some cases, may even prevent you from taking some types of enforcement action.
Delaying taking enforce action may impact your chances of success and the remedies you might be able to claim. For example, if you do not put the alleged infringer on notice:
- they might be able to make an innocent infringement defence for patent or copyright infringement if you later make a legal claim
- they might be able to claim they were honestly using a substantially identical or deceptively similar trade mark if you later make a legal claim
- this could impact any damages/compensation or other remedy you might be awarded by a court if you later make legal claim, even if you are successful.
The cost and energy of monitoring any ongoing infringement may exceed the effort of taking enforcement action to deal with it immediately.
If infringement has happened and you do not take action, the infringement may be repeated by the current infringer or others.
Allowing infringement – even that which doesn’t directly damage your business – may:
affect public perception of your rights
undermine your entitlement to, or the value of, these rights.

What are the possible outcomes?

The infringement may continue or become worse, and this could negatively impact your business (for example, through loss of sales, loss of potential royalty/licence fees or reputational damage).
The infringement continues but you remain comfortable with not taking any action.
The infringement continues and you re-evaluate available enforcement actions.
The infringement stops without you taking any action.
The infringement gets worse or otherwise begins to affect your business or the value of your intellectual property rights.

What might the costs be?

There are no upfront or direct costs if you take no immediate action. However, it could be prudent to consult with an IP lawyer or IP attorney to help you consider the situation.

Note that there may be an indirect cost, in that allowing continued infringement may damage your business or the value of your intellectual property rights.

How much time might be involved?

It may take some time to research the infringement taking place, the options available, and the consequences for your business before deciding to take no immediate action.

Who can use this?

Both large and small businesses use this strategy frequently – only pursuing enforcement action when it makes commercial sense to do so.

Who’s involved?

You
an IP professional – professional advice can help provide you with advice about your specific situation. Some services can also help you monitor infringement.

How often is this used?

Variable. Many businesses may suspect infringement and have not, or will not, take action – ultimately it is a business decision that will depend on the specific circumstances of a business. Additionally, many possible actions may be resolved between two parties directly.

What do you need to proceed?

Consider consulting with an IP professional on whether taking no immediate action is appropriate for your situation.
Review IP First Response resources to understand all your enforcement options, even if you're not using them now. This will provide you with some information about what options may be available if you change your mind later or the situation changes.
If you decide not to take any immediate action, make sure you are comfortable with the risks discussed under ‘What are the risks?’ above.
Consider developing a clear strategy for if and when you will take future enforcement action. Your plan should outline specific triggers that will prompt you to act. Some of the factors that can be considered include the following, although please note these will vary depending on your specific circumstances.
- Size of the businesses involved
- Where they operate – marketplaces and jurisdictions
- The types of products and services they offer
- Length of infringement
- Other meaningful boundaries.
Have an understanding of the potential costs and timeline for different enforcement actions. This helps you budget and prepare for if you do decide to take action later.
Keep documentation of the infringement, including dates and evidence, to maintain a strong foundation if you choose to take action in the future.