Defending a claim for IP infringement – What if someone claims that you have infringed their patent, trademark or copyright?
Just as there may be instances where you find that someone else has copied your product, brand or work, there may also be instances where someone else claims that you’ve copied, or infringed their intellectual property rights.
These claims typically come by way of a demand letter, setting out the other party’s rights, what you’ve done, and what they want you to do about it. The letter may come from a company, an individual, or their lawyer, and the demands can range from a simple notice (e.g., we see what you are doing, and we are monitoring your activities) to a request that you deliver to them the product at issue and pay them for their damages suffered. There will often also be consequences set out in the letter, such as a threat of legal action if the demands are not met in a timely manner.
While such a letter does not mean that a lawsuit has been filed against you or that you have a legal obligation to respond, there are good reasons for providing a timely response. One reason is that if there are any misunderstandings about your product or brand (e.g., you are not selling it, or it has nothing to do with the rights claimed), this is a good opportunity to clarify before things escalate. If the other side is represented by a lawyer, and they see that there is merit to your response, they may advise their client to not pursue the matter further. Another reason for responding to a demand letter is that it may open a dialogue for settlement discussions early, before significant legal fees are incurred. What is important in providing a response is that you do not make any admissions that can be used against you if the other side decides to commence a legal action.
If you do not provide a response to the demand letter, or if the other side is not satisfied with your response, they may choose to commence a legal action to assert their rights. When this happens, you are required to file a statement of defence within a short period of time, and if you believe that you may have a claim against the other side (e.g., they have infringed your rights, or that their rights are invalid), you can also file a counterclaim together with your defence.
A court proceeding is a complicated, expensive and lengthy process that will often require lawyers on both sides. Where the claims are relatively small, it is often in the best interest of the parties to come to a settlement at the early stages of the proceeding. A good defence and/or counterclaim will likely bolster your position in any negotiations.
Please contact Jerry if you have any questions about any of the above. Jerry can assist clients throughout all stages of defending an IP claim, including:
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Preparing an infringement/validity opinion (to confirm the other side’s IP rights, and/or whether your product/brand/work actually infringes those rights)
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Responding to a demand letter
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Defending an infringement lawsuit
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Representing you throughout the lawsuit including attending trial
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Negotiating settlements
Disclaimer: The resources published on this website are available for informational purposes only and should not considered legal advice on any subject matter. By viewing these resources, the reader understands there is no solicitor client relationship between the reader and JZC Intellectual Property Law. This website should not be used as a substitute for legal advice, and readers are urged to consult legal counsel on any specific legal questions concerning a specific situation.