Various measures are available to enforce intellectual property rights, which may culminate in an infringement action before a court of law. These include, amongst other things, anti-counterfeiting labelling of products, requests for authorisation, formal warnings, border seizure procedures, interim injunctions for the preservation of evidence or seizure, and, ultimately, infringement proceedings. In cases of cross-border infringement of intellectual property rights, coordination and consultation between national representatives can be very time-consuming due to the varying durations of proceedings. The chosen approach also depends on the cultural background of the competitor. The communication and willingness to engage in dialogue within competing companies in an industry, which is customary in Europe, is often interpreted as a weakness in some Asian countries, whilst for US companies, profit is often the only consideration. The strategy for resolving the issue of ‘infringement of intellectual property rights’ must be tailored to this.

Depending on the nature and scope of the intellectual property infringement, action must be taken at very short notice, for example at trade fairs with applications for injunctions and border seizures. As the preparation time is often extremely short, a well-organised portfolio of intellectual property rights can greatly facilitate the representatives’ work by providing the necessary information. Applications for injunctions can also be prepared in advance, as the list of exhibitors – and thus potential infringers – is known well in advance.

When filing national infringement claims, procedures can vary considerably. Whilst in Germany uncertified extracts from the register regarding the owner and the validity of the rights are often sufficient, in many other countries the extracts must be notarised, which significantly increases the workload. In all infringement proceedings, it is advisable to first acquire detailed knowledge of the company being sued, its capital and shareholders, along with their political contacts. If the shareholders are part of the political system, a strategy based on a single intellectual property right will often prove unsuccessful.

Defence against intellectual property infringement claims, on the other hand, is a different matter. The first priority here is to keep calm and buy time to clarify the facts. In addition to determining whether an infringement has actually occurred or whether a national prior use right can be asserted, it is essential to clarify within the organisation why legal issues were ignored or disregarded. Here, the patent infringement also impacts the company’s compliance system. With regard to the attacking intellectual property rights holder, there must be a clear internal policy within the company on how the problem might be resolved: through a judgment by a court of law or an out-of-court settlement. There are many possibilities in between. In particular, cease-and-desist declarations should only be signed after seeking legal advice, as these are often too broadly worded and restrict your existing rights.

We are happy to advise you on these various courses of action and support you with the preservation of evidence, trade fair preparations, applications for border seizures, and infringement claims; naturally, this also includes defending against attacks, including invalidity and cancellation actions against thee.