Defending intellectual property rights: Determine your enforcement strategy


3. Determine your enforcement strategy

Here are some strategies you could use to enforce your intellectual property (IP) rights. Sometimes a combination of these strategies is used.

  • Notice and/or cease and desist letter
    In the case of online copyright infringement, Canada's Copyright Act provides a notice and notice regime. This enables a copyright owner to ask the Internet service provider (ISP) to forward a notice of alleged infringement to the Internet subscriber linked to the subscriber's account at the time of the infringement. The ISP then gives notice to the copyright owner that the notice was given to the Internet subscriber. For other IP rights, and for non-online copyright infringement, a cease and desist letter can be sent to the infringing party.
  • Licensing
    You may offer the infringer the option of licensing your IP.
  • Customs program
    The Canada Border Services Agency (CBSA) helps prevent counterfeit and pirated goods from entering Canada. The CBSA only plays a role with respect to copyright, geographical indications and registered trademark goods; it does not act upon any other IP rights infringements for patents or industrial designs.
  • Alternative dispute resolution
    You can consider pursuing alternative dispute resolution options through a mediator or an arbitrator.
  • Litigation
    You can resort to the local judicial system to enforce your rights.

Other enforcement actions to be aware of

Enforcement can also include requesting a re-examination of existing IP rights. This may result in the expungement of a trademark, the invalidation of patent claims, etc.

Weigh the costs vs. potential benefits of an infringement case

Enforcement can be an expensive battle. Before embarking on an infringement case, consult an IP lawyer to determine the best strategy for your particular situation and get an estimate of the costs. The cost of enforcement varies and depends on factors such as the following:

  • jurisdiction
  • type of infringement
  • number and complexity of IP issues

Also weigh the costs vs. the potential benefits of enforcing before engaging with an agent or a lawyer. Ask yourself these questions:

  • What is the cost of enforcement?
  • What is the cost of not enforcing your rights?
    • Will you be acquiescing to the infringement and/or to the dilution of your goodwill and reputation?
    • Will you be opening the door to other future infringers?
  • How big is the risk that your IP could be invalidated?
  • What is the value of the IP? Consider different scenarios:
    • What is the monetary loss if the IP is invalidated?
    • What are the potential gains of excluding the party from practicing your IP? For example, will you get an increased market share or improved margins?
    • What are the potential gains of licensing the IP to the infringer in return for other IP or revenue?
  • What is the likelihood of a meaningful recovery
    • Does the infringer have sufficient assets to allow you to recover all or part of your litigation costs?
    • Does the infringer have sufficient assets to allow you to recover monetary damages awarded in your favour?
    • Will enforcement action send a message to other potential infringers?