How do I start infringement proceedings?

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Published on LexisPSL on 04/12/2013

The following IP Q&A provides comprehensive and up to date legal information covering:

  • How do I start infringement proceedings?
  • Take stock
  • Gather evidence
  • Warning letter
  • Threats
  • When warning letters go unheeded
  • Key legislative provisions

How do I start infringement proceedings?

If starting infringement proceedings is not your day job, the following points may help reduce exposure to common pitfalls when litigation is contemplated:

Take stock

Cover the following with your client: evidence that the IP right exists, is in force and subsisting, that the client is the proprietor or exclusive licensee, that the alleged act is an infringing act, whether an infringement has occurred and the damage to the IP right and loss to the client's business. Decide whether immediate action is required to restrain the infringing act (an injunction).

Gather evidence

Obtain a sample of any infringing product being offered for sale, retain the invoice and any packaging, or make or gather records of any other appropriate orders or offers (eg in cases involving infringing services), and gather evidence of any physical and online advertising (including screenshots or photographs). Identify which infringers to pursue—including, as appropriate, any manufacturers, suppliers, importers, exporters, distributors, wholesalers and retailers, and any parent or subsidiary companies or directors.

Warning letter

Dialogue has been exhausted and your client has taken stock of its claim and wants to send a formal request for the infringing behaviour to cease. The claimant should

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