Enforce your IP overseas

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?

Different countries have different IP laws. Australian IP registration does not usually protect against overseas infringement. If your IP is being infringed overseas you might need to consider different enforcement methods specific to those jurisdictions. Enforcing your IP overseas can be complicated, but there are still a wide range of options available.

This page provides an overview of considerations when facing overseas infringement.

Actions you can consider against an overseas infringer will depend on the jurisdiction, but usually include:

Informal enforcement options such as sending letters, negotiations or online takedown notices. However, it might be more difficult to engage with international actors.
Strategic options such as securing international rights for your intellectual property, partnering with local businesses, or other commercially-driven approaches.
Alternative dispute resolution (ADR) options are also available. These can be organised directly with he suspected infringer, through the World Intellectual Property Organization (WIPO), or through services offered by the relevant IP offices.
Civil, administrative or criminal legal enforcement options/schemes such as taking court action overseas. These will depend on the country/market involved.

Without careful attention to the local operating environment, you may risk undermining:

your entitlement to IP in those markets
your existing market presence/potential for future expansion.

A local legal representative can help you understand these risks and how to mitigate them.

What are the benefits?

In most cases, engaging a legal professional is likely to reduce the risks you may encounter in enforcing your IP rights in another country.
Legal professionals can provide a wide range of legal services and develop a holistic IP enforcement strategy suited to your IP and business goals. 
They have the knowledge, training and experience in their country to guide you through a dispute or a conflict which can be highly stressful and draining. 
They have an in-depth knowledge of relevant international legislation and industry practices, with the ability to leverage both appropriately and proportionately. 
They are bound by codes of conduct, professional standards and ethical obligations to act in your best interests, stay away from conflicts of interests and unethical conduct. 
They can recognise common issues which come up and refer you to other professionals and services you may not be aware of.

What are the risks?

It can be complicated to enforce your IP overseas, which can cause pressure on you and your business.
Outcomes and costs can be less predictable in some jurisdictions than they would be in Australia.
Some legal professionals have different specialties and may be more effective in their particular field of expertise. For instance, one lawyer may be highly experienced in dealing with multi-national trade marks, but not so experienced with patent licencing deals, or vice versa. 
Once you engage a legal professional for their service, they are obliged to follow your instructions. While they can advise you on certain courses of action, you have the ultimate decision. Using a legal professional can lead to a false sense of security if you do not understand and pay heed to their advice.

What you need to proceed?

Check international IP registers for someone else’s rights

A critical step in assessing potential infringement is to ascertain if the suspected party holds any valid registered intellectual property rights that could provide them with legal rights in the country in which infringement is suspected.

You can perform an initial check yourself - read about searching international IP registers here – but you may need to hire a professional IP search service to do a complete search. The IP professionals listed below will often conduct these searches as part of their services as it will be a critical step to understand your position.

Contact a local representative or legal advisor in the relevant country

Seeking support from a local legal practitioner or IP professional may be necessary for some actions. A local representative can advise you on the options that are appropriate for you in the relevant countries, and will have the legal authority to represent you in that country.

Australian IP professionals with relevant international experience may be able to refer you to an overseas representative.
Australian law firms often have offices operating internationally which can coordinate actions for you across each country.
Government resources or reputable industry associations in the relevant country may provide a list of IP professionals you can contact.

While it may be useful to seek the advice of an IP legal professional (who can start legal actions such as court in the jurisdiction), you might also wish to consult an IP strategic or commercialisation professional about your general IP strategy including ways to protect and commercialise your IP overseas.

Part of enforcing your rights in other countries, even in response to current suspected infringement, may involve registering your IP in another country. This consideration can be discussed with an IP professional familiar with the IP system in that country.

See what services the local IP office provides

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.