IP litigation

Litigation law or civil procedure refers to the laws, rules, and procedures governing the resolution of disputes through the court process. In addition to handling trade mark opposition proceedings before the Australian Trade Marks Office, we also represent clients in the resolution of disputes through the court process. We provide you with cost estimates for every stage of the legal proceedings. We also work closely with intellectual property barristers to appear in the courts, and we engage other experts including patent attorneys and expert witnesses.

The adversary system

Court proceedings in Australia are conducted on the basis of the adversarial system, where the parties must commence the proceedings, present their position, and choose whether to settle or go to trial and judgement. The parties disclose the issues in the pleadings that they want the court to resolve. A pleading is a written statement that sets out the material facts on which a party relies. The pleadings are for the purpose of identifying the material facts and not the evidence by which those facts are proved. The proceedings are generally heard by impartial judges who hear each side, determine the outcome and are obliged to give reasons for their decisions at the end of the trial.

Australia’s IP laws

Australia’s IP laws are codified within the Trade Marks Act 1995, the Copyright Act 1968, Designs Act 2003, Patents Act 1990, Plants Breeders Rights Act 1994 and the Circuit Layouts Act 1989. Intellectual property rights are also protected under the common law action of passing off. In addition to specific IP legislation, the Competition and Consumer Act 2010 (‘CCA’) can also provide further grounds to protect intellectual property rights, through Schedule 2 of the CCA, which consists of the Australian Consumer Law (‘ACL’). The ACL is a single, national law covering consumer protection and fair trading, and operates equally across all states and territories of Australia. Section 18 of the ACL prohibits people and corporations from engaging in misleading or deceptive conduct across all areas of trade and commerce. Section 29 of the ACT prohibits a person from making false or misleading representations in connection with the supply, possible supply or promotion of goods or services.

Federal Court

The Federal Court is established by the Federal Court of Australia Act 1976. The court is not one of general jurisdiction and is limited to matters where jurisdiction is specially conferred by a statute. Each of the Trade Marks Act 1995, the Copyright Act 1968, the Designs Act 2003 and the Patents Act 1990 vests primary jurisdiction in the Federal Court (and the Federal Circuit Court except for the Patents Act).

A case management system applies in the Federal Court which is administered through an individual docket system by a judge allocated to each case. The individual docket system is a case management system where each case is allocated to a judge who then manages it from the start to finish. The overarching objective of procedure in the Federal Court is to resolve disputes quickly and justly in accordance with the law. The parties and their lawyers are obligated to conduct the proceedings in accordance with this overarching objective.

Fast track directions

A case that is capable of speedy determination may be allocated to a fast track at the election of the parties or direction of a judge. An intellectual property proceeding (excluding patents) is eligible for fast track. The main elements of the fast track are:

  • filing and serving fast track statements instead of pleadings
  • the applicant or plaintiff files a fast track statement (sets out the nature of the dispute, the issues, contentions including material facts, relief claimed and legal grounds for that relief)
  • the respondent or defendant files a fast track response (sets out the nature of the dispute, the issues, response to contentions (admitting or denying each), material facts not included in the fast track statement and legal grounds for opposing relief)
  • a scheduling conference will be scheduled not less than 45 days after filing (perhaps earlier, if urgent) where the parties will discuss an initial witness list, whether evidence will be given orally or by affidavit, the issues and facts in dispute, whether the matter should be referred to alternative dispute resolution, the fixing of a trial date (usually between two and five months from the date of the scheduling conference) and establishing the date for a pre-trial conference
  • the court will try to deliver its judgement within 6 weeks of the conclusion of the trial

A fast track direction will not apply where a trial is likely to exceed 5 days.

Expert evidence

It’s often necessary to retain an expert to give expert evidence in intellectual property cases involving engineering, scientific, technical or other specialised knowledge. The expert helps all parties and the court understand the evidence in court proceedings. The expert witness should not appear to be an advocate for a party or appear to be a representative of the lawyer. In this role, the expert witness has an overriding duty act to assist the court as an independent agent and give evidence which is based on reliable principles and methods that are properly applied to the facts.

Hot tubbing

The giving of evidence concurrently by experts or ‘hot tubbing’ is a technique of giving expert testimony on the basis that the method saves time and cost because the experts give evidence together on a panel rather than one-by-one. Competing experts present their evidence at the same time, the lawyers and judge can question them in each other’s presence, and there is the opportunity for discussion and questioning among the experts themselves. The technique aids the understanding of complex issues and helps the court synthesise the real issues between the parties.

World Trade Organization Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS)

Australia is a signatory to TRIPS, which includes in the Preamble the promotion of effective protection for intellectual property rights. TRIPS has specific provisions which provide that members shall ensure that enforcement procedures are available under their law to permit effective action against any infringement of IP and appropriate remedies to act as a deterrent to further infringements. TRIPS also provides that any decisions on the merits of a case should be based on the evidence and preferably in writing with reasons provided.

Going to court

Court proceedings should be treated as a last resort because of the personal and financial burden that a party may bear. Parties are obligated to take what is known as ‘genuine steps’, under the Civil Dispute Resolution Act 2011, to try and resolve the dispute before starting proceedings. The determination of a dispute through the court system can be a costly and time consuming process, and resolving a dispute through an early settlement will save the parties considerable cost and time.

Civil Dispute Resolution Act 2011 (Cth) (‘Act’)

The Act applies to proceedings commenced in the Federal Court of Australia or the Federal Magistrates Court. It requires that a person (and their lawyer) make a genuine attempts to resolve the dispute before commencing litigation proceedings:

  • they must file genuine steps statements in the court, setting out each and every step they have taken to resolve the dispute, otherwise the court may take into account any failure to do so when exercising its discretion in awarding costs
  • the lawyer must inform their client of this requirement and help them comply with it, otherwise s/he risks personal cost consequences which are not recoverable from the client

What are genuine steps?

Section 4 of the Act gives examples of what is considered a “sincere and genuine” attempt to resolve the dispute, including:

  • notifying the other person of the issues that are or may be in dispute, and offering to discuss them in a way that resolves the dispute
  • responding appropriately to such a notification
  • providing relevant information and documents to the other person to help them understand what the issues are and how they can be resolved
  • considering whether the dispute could be resolved by alternative dispute resolution or a different process
  • trying to negotiate with the other person to resolve some or all of the issues in the dispute

IP litigation strategy

The overall strategic decision you need to make as a rights holder is how to enforce your rights. Your options can range from offering a licence to starting litigation proceedings. Enforcing your IP rights should be used effectively as part of an infringement strategy. This requires an assessment of why you’re starting litigation proceedings, what you expect to achieve and the merits of your case.

The reasons for starting litigation proceedings can be varied. You may want to enforce and protect your IP rights, create legal precedent, stop competition from entering the market for as long as possible or generate further licensing revenues. Or it may simply be anger, ego or frustration. But litigation proceedings should never be started on the basis of emotion. They should be part of an overall strategy, which includes an evaluation of:

  • your ownership rights in the IP and the enforceability of those rights
  • whether there has been an infringement, and the grounds for that infringement, including whether there is evidence
  • the facts and surrounding circumstances
  • the legislation and case law (judicial precedent) applied to the facts
  • what defence or counter claims the alleged infringer might have
  • the strength of your case and whether a right to relief can be demonstrated (any difficulties in proving the IP rights or infringement)
  • what remedies are available (generally damages or account of profits, delivery up or injunction)
  • personal and financial burdens, including how long the case might take (with delays)
  • what you’ll settle for if the litigation costs outweigh the value of succeeding in the infringement proceedings