Enforcement of intellectual property rights

Counterfeiting & piracy

It is sometimes said in the industry that copies are permitted as long the design varies from the original on at least seven different points. This is a gross misunderstanding. Sometimes a single difference is enough to make a ‘copy’ acceptable. In other cases, dozens of differences may be identified, but the copy still infringes the original design. The question of whether a “copy” infringes your rights is therefore not easy to answer and requires an expert review of the facts and the law.

Possible approaches in the event of infringement

If an infringing copy has been discovered, you as the rightholder can bring various claims against the infringing party. You can therefore require the infringing party to cease the infringement permanently. The infringing party will then be required to cease the production, offering and sale of the copies immediately. Furthermore, the infringing party will be required to recall the products from business customers.
Once the infringement has been dealt with, the infringing party must confirm this to you in writing, failing which they will be liable to pay a contractual fine. They will also have to undertake that they will not resume manufacturing in the future. You may also require the infringing party to revoke or surrender the remaining stock of the products in question. Furthermore, you are entitled to compensation for the loss you have incurred. In this context, you may claim the profits made by the infringing party as a result of the infringement.

A common defence put forward by infringing parties is that they were unaware that they were infringing the rights of third parties. They often state that they purchased the products in good faith from their (foreign) supplier. However, any such “good faith” is not of importance when determining whether an infringement has occurred or not. Every commercial entity has a duty to ensure that the products it offers and sells do not infringe the rights of third parties. It is therefore not possible to hide behind any claim of “good faith” or a supplier.

Finally, it is important to note that if you fail to take action against infringements of your rights for too long and/or too often, you may ultimately forfeit those rights. This is unnecessary and, of course, a pity.

Costs of the proceedings

In intellectual property law, special rules govern the reimbursement of any legal costs. Unlike in other proceedings, the losing party in proceedings concerning infringement of intellectual property rights is, in principle, required to reimburse the winning party for their full legal costs. The aim of this rule is to ensure that you, as the rightholder, are not (always) left to bear the costs when you have to take action against one or more infringing parties. Without this rule, the enforcement of intellectual property rights would, in practice, prove too costly for many rightholders.

Do you need legal assistance?

If you would like to find out more about the options available to you for taking legal action against counterfeits and unauthorised copies, please feel free to contact one of our specialists from the intellectual property team, with no obligation. We are happy to assist you.

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