ENFORCEMENT COMMERCIAL. PROPERTY RIGHTS

In enforcement, rightholders prohibit the unauthorized use or distribution of their intellectual property. But how do you go about it? Entrepreneurs should in any case deal with the possibilities of enforcement.

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THE ENFORCEMENT COMMERCIAL. PROPERTY RIGHTS

 

The enforcement of property rights usually has two goals.On the one hand, specific acts of infringement are to be stopped, and on the other hand, compensation for the damage incurred is to be achieved.  

Many positive assessed effects go hand in hand with the enforcement of property rights. For example, identifying licensees is a real challenge in many industries. However, if an infringement is found, it is often only a small step to the license agreement.  

The enforcement of industrial property rights is the responsibility of the owner of the rights. So you shouldn't expect trademark or patent offices to take sides. The administration of industrial property rights therefore requires a continuous analysis of the market and of competitors.
If a violation is found, administrative, civil and criminal measures can be taken. 

 

STEP 1: EXTRAJUDICIAL AGREEMENT

A first step towards enforcement is the cease and desist letter. This measure is not very complex and nevertheless - in many cases - quite effective. This can be related to the fact that alleged violators are often unaware of their offense. Almost half of all European, small and medium-sized companies (48%) do not take any precautions to avoid infringing third-party property rights .¹¹ 

Unterlassungsschreiben
Source: own depiction 

If the other side gives in, claims for damages can be made in an extrajudicial forum (mediation or arbitration). The conclusion of a license agreement can also be considered. 

mediation oder Schiedsverfahren
Source: own depiction 

Often times, it is possible to resolve a dispute using the above methods. If not, there is the possibility of judicial enforcement. 

 

STEP 2: JUDICIAL ENFORCEMENT

It is advisable to develop a strategy before taking any enforcement action. Some points should be clarified as early as possible:

  • Legal counsel should be appointed as in many cases self-representation in court is not permitted.
  • A decision should be made about the place of jurisdiction (i.e. the place of the proceedings).
  • If necessary, an injunction and confiscation should be arranged.
    (Depending on the circumstances, this measure also serves to preserve evidence)

Zivilrechtliche Durchsetzung
Source: own depiction 

Civil law proceedings are usually lengthy and costly. Criminal proceedings can also be initiated in cases of counterfeiting and piracy. This often speeds up the overall process. Cases of public interest are dealt with in criminal proceedings. Accordingly, the police and the public prosecutor's office investigate in order to uncover criminal acts and to hold those responsible to account in the subsequent proceedings.  

Within the EU, the customs authoritiescan also withhold goods at the request of the right holder. This also corresponds to a form of enforcement. This can also be weighed up when creating an enforcement strategy.


¹ 2019 INTELLECTUAL PROPERTY SME SCOREBOARD, European Union Intellectual Property Office, October 2019, page 13 

Michael Schaub

CEO, IP- and mobility expert

Fully Exploit the potential of your intellectual property !