Why Shouldn’t You Delay Action Against Infringement?

Any ideas or inventions that are valuable assets for you or your business can be termed as intellectual property (IP). These may be machines, processes, name, phrase, logo or symbol. Intellectual property can be of immense value and beneficial to your business. These assets should be protected by registering them as trademarks, patents or other intellectual property registrations. Registration of intellectual property not only gives you exclusive rights but also provides an advantage when faced with IP infringement.

Intellectual property registrations can provide you with an advantage in the case of infringement. This advantage, however, may be lost when IP owners delay in enforcing their rights against infringers.

Reasons For Not Delaying Action Against IP Infringement

An action against infringement may begin with the owner serving a notice or a cease and desist letter that voices allegations and issues. A defendant may respond to the notice or letter but may choose to ignore the allegations set forth in the ltter. As a patent or trademark owner, you must have a strategy in place before commencing action against the infringer. Simply sending a cease and desist letter without follow-up, may prohibit you from moving forward with the enforcement procedure, as a result of estoppel. Estoppel occurs when there is a long silence after serving the cease and desist letter to the infringer.

An IP owner may be prohibited from enforcing rights against an infringer, after a period of time from the first notice against the infringer, if the following conditions are met:

• Misleading Conduct/ Silence

When the IP owner does not take any action after serving the first notice, the silence can mislead the infringer. The infringer may reasonably infer that the IP owner does not intend to enforce his rights against him.

• Reliance

The infringer tends to rely on the misleading conduct by the owner.

• Prejudice

The infringer is materially prejudiced or injured if the IP owner is allowed to proceed with the claim.

Based on this, the IP owner would be better off withholding any initial communication against the infringer unless there is an enforcement strategy in place. This may be a defense even where the infringement goes unnoticed for a long period of time. Whether as a result of failing to follow up on an initial notice or failure to notice the infringement, failure to take legal action against an infringer can have dire consequences.

Additionally, delay in action against infringement may even lead to loss of recovery from the infringer under the doctrine of laches. Both the doctrines of estoppel and laches are subject to the Court’s decision and dependence on particular facts of the case. In both instances, the defendant must prove that the plaintiff unreasonably delayed asserting an infringement claim and must also show prejudice caused resulting from the delay.

The information above makes it clear that once IP infringement is identified, you should enforce your rights without delay. Intellectual property and infringement are complex issues. Experienced patent lawyers should be consulted to avoid costly mistakes and delays.