Enforcement of intellectual property rights and dispute resolution for SMEs

generally available only when the dispute over IP rights is between parties to a contract, for example, between a licensor and a licensee, or between joint venture partners, who have agreed to take recourse to mediation or arbitration in preference to adjudication in a competent court of law.

It is prudent to consider the possibility of a dispute and provide means for its settlement at the time of drafting the original contract.

As part of your business strategy, your SME would be well advised to incorporate appropriate clauses in agreements so that the option of dealing with IP disputes first (and possibly only) by recourse to mediation or arbitration if available. Enforcing the intellectual property rights of

your SME Acquisition and maintenance of an IP right is meaningless if that right cannot be enforced in the marketplace.

It is the threat of enforcement which allows an intellectual property right to be exploited as a commercial asset.

When viewed in this context, the existence of an effective enforcement regime becomes a central aspect of a well-functioning IP system.

Why Enforce IP Rights The main objective of acquiring IP protection is to enable your SME to reap the fruits of those inventions and creations of its employees which resulted in IP rights for your SME.

Its IP assets can only lead to benefits when the acquired IP rights can be enforced, otherwise, infringers and counterfeiters would always take advantage of the absence of effective enforcement mechanisms to benefit from your hard work.

In a nutshell, the enforcement of IP rights is essential for your SME in order to:

Preserve the legal validity of its IP rights before the relevant public authority.

Prevent infringement from occurring or continuing in the marketplace in order to avoid damage including loss of goodwill or reputation.

Seek compensation for actual damage, e.g. loss of profit, resulting from any instance of infringement in the marketplace.

Enforcement — Whose initiative? The burden of enforcing IP rights is mainly on the holder of such rights.

It is up to your SME as an IP right holder to identify any infringement/counterfeiting of its IP rights and to decide what measures should be taken.

Whereas in most cases you would initiate civil proceedings, in the case of counterfeiting and piracy you may consider initiating criminal procedures, if that option is available.

It is the responsibility of the national or state governments to establish institutions which facilitate the enforcement of IP rights.

The judiciary and, in some cases, the administrative bodies like IP offices or customs authorities are government institutions which may have to deal with infringement or counterfeiting cases.

Where border measures are available to prevent the importation of counterfeit trademark goods or pirated copyright goods, customs authorities have a major role to play when it comes to IP enforcement at the international border(s) of your country.

According to the provisions of the applicable legislation, the customs authorities have to take action at their own initiative, on request of the right holder, or execute court orders.

Availability of enforcement procedures The Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) obliges members of the World Trade Organisation and Zimbabwe is one, to provide the prescribed mechanisms for enforcement of IP rights.

The relevant provisions of the TRIPS Agreement seek to ensure that civil, administrative and criminal procedures and remedies meet the prescribed minimum standards regarding evidence and availability of injunctions, damages, other remedies, right of information, indemnification of the defendant and administrative procedures.

For your SME as an IP right holder, it is of great practical importance to know that judicial authorities in a large number of countries are vested with powers to order prompt and effective provisional measures aimed at stopping an alleged infringement.

In order to prevent the importation of counterfeit trademark and pirated copyright goods, border measures are available to the right holder in many countries through the national customs authorities. As an IP right holder your SME can be helped more easily by the customs authorities at the border; because otherwise you would have to deal with many infringers once the goods have been distributed in the country.

How do you enforce the intellectual property

rights of your SME? It is always useful and often necessary to seek expert advice once you have established that someone is infringing your IP rights.

In order to avoid tying up the limited financial and human resources of your SME in formal proceedings, once you have found out that someone is infringing the IP rights of your SME, you should first think of sending a letter (commonly known as “cease and desist letter”) to the alleged infringer informing him/her of the possible existence of a conflict between the IP rights of your SME and his/her business activity (identifying exact area of conflict) and suggest that a possible solution to the problem be discussed.

It is advisable to seek the assistance of an attorney when one writes such a “cease and desist” letter in order to avoid court proceedings initiated by the alleged infringer protesting that no infringement has taken place or is imminent.

This procedure is often effective in the case of non-intentional infringement since the infringer will in most such cases either discontinue his activities or agree to negotiate a licensing agreement.

When you are faced with intentional infringement, including, in particular, counterfeiting and piracy, you are well advised to seek the assistance of law enforcement authorities to surprise the infringer at his/her business premises in order to prevent an infringement and to preserve relevant evidence in regard to the alleged infringement.

Furthermore, the infringer may be compelled by the competent judicial authorities to inform you of the identity of third persons involved in the production and distribution of the infringing goods or services and their channels of distribution.

As an effective deterrent to infringement, the judicial authorities may order, upon request of your SME, that infringing goods be destroyed or disposed of outside the channels of commerce without compensation of any sort.

If you consider it in your interests to avoid court proceedings, you may consider making use of available alternative dispute mechanisms such as arbitration or mediation.

Aleck Ncube is an Intellectual Property Scholar. He can be contacted on aleckncube@ gmail.com or follow me on Twitter: @aleckncube