Welcome to the Canadian Intellectual Property Office's, CIPO,s
educational video series called 
“IP protection abroad: Leveraging IP in new markets.”​
Part 5: Enforce your IP rights
Monitoring your intellectual property, or IP, rights for possible infringement
is your responsibility as the IP holder, not the IP office’s.
If you suspect, or know, 
your IP rights are being infringed,
we recommend you seek professional help 
to determine the next step.
But, before you seek help, watch this video to learn more about what infringement is
and how you, as an IP rights holder, can enforce your IP rights if someone is using your IP without your consent.
Simply owning IP is not enough to stop other people from using it without your permission.
While CIPO and other IP offices grant IP rights, such as trademarks, patents, industrial designs and copyright,
they don’t police exclusive rights or monitor the marketplace for potential infringement.
So, what are some of the ways 
your IP rights could be infringed?
Let’s start with trademarks as an example.
If someone has produced a visual 
imitation of your trademark
that the public could confuse with your actual trademark,
this could be an infringement.
However, there are instances 
where an exact replica is fine:
for example, when the exact shape 
is functionally required.
Counterfeit products are becoming more common with the growing popularity of online ordering,
where the online images show the original product, 
but the shipped product is counterfeit.
The same is true for patents when someone makes, uses or sells a patented invention
without the patent holder's consent.
Someone can also contribute to an infringement by, for example, selling parts of an invention to a third party
who then uses these parts to 
make the patented invention,
with or without the knowledge of the patent owner.
Industrial design infringement is when someone makes, imports, offers to sell
or sells a product to which a design is applied that is not substantially different from a registered design.
Copyright infringement is when a person copies or communicates copyrighted work to the public
without permission from the owner of the copyright.
Sometimes these works are referred to as pirate copies.
Copyright also includes the rights of an author or performer to be identified as the author of a work,
as well as ways to protect the integrity of authors
and performers so they can preserve 
their good name and reputation.
Solving conflicts involving 
IP infringement is often complex.
The infringer can be sued by the IP owner—
and certain unauthorized activities can lead to 
fines and prison penalties.
Often, only a court of law can rule 
whether infringement has occurred.
Implying that someone has infringed 
on your IP rights is a drastic step
and can have serious consequences if the defendant is proven not to have infringed on your rights.
Laws on the enforcement of IP 
are not the same in every country.
So, it’s always a good idea to seek legal advice 
before deciding what to do next
Knowing what to expect as a result of taking action to stop the infringement
will help you make an informed decision.
There may be repercussions to 
accusing someone of infringement.
For example, the alleged infringer can start court proceedings against you and protest your allegations.
The infringer may oppose or even invalidate your IP.
If you suspect someone is infringing on your IP rights,
we strongly recommend that you seek the
help of a professional.
This could be an IP professional with extensive experience offering their advice as a service.
It could also be an IP agent who has passed qualifying exams and is entitled to act on your behalf with CIPO.
Finally, you could choose a qualified IP lawyer specializing in IP law and related legal matters.
If the infringement is happening in another country, a Canadian IP professional
may be able to coordinate work with an IP professional based in another jurisdiction.
As enforcement can be an expensive battle,
you may also want to evaluate the costs and potential benefits of enforcing your rights,
even before engaging with an agent or lawyer.
The cost of enforcement can vary considerably 
by jurisdiction,
along with the type and number of 
pieces of IP that are being enforced.
Each type of IP right will have different requirements to establish infringement.
Of course, each case is unique,
but it can be helpful to come prepared as you seek the help of an IP professional,
so consider a few things:
Make sure you can identify the infringer or infringers.
Try to verify their legal name and address and to find out if they have a history of similar activities,
and, if so, what the outcome was.
You may also want to research whether they have the means to pay you,
if a court determines that they infringed your IP rights.
In addition to identifying the infringer, make sure you can show which parts of your IP rights are being infringed.
For example, to make a valid claim for patent infringement,
you must prove that all essential elements in a patent claim are in the infringing product or process.
You may need the help of the inventor, creator, designer or author to take a closer look
—and sometimes your suppliers and clients can also help. 
There have been cases where infringement 
was initially detected by clients
who then contacted the IP rights holder to inform them about the infringing activity.
Also assess what damage, financial or otherwise, the infringement has caused and how you could prove this.
Start thinking about the potential 
cost of enforcement actions.
Make sure to take into consideration the risk that your IP will be rendered invalid,
as well as any potential gains by enforcement.
The potential gains will depend on your enforcement strategy, so let’s look at that in more detail.
It’s typical to simply want the infringing activity to stop, but don’t rush into action.
Seek help and evaluate your options,
and remember that enforcement is a process that can involve a combination of strategies
until a resolution is found.
A common start is to send a notice or cease-and-desist letter to the infringing third party.
The letter often advises the infringer that a court action may be taken against them
if the infringing activity doesn’t stop.
While this may seem quite simple,
seek legal advice before sending cease-and-desist letters, as doing so may present risks.
You could be liable if a letter is considered 
abusive or defamatory,
or if it doesn't conform to legal requirements.
You may offer the infringer 
the option of licensing your IP.
This way, the owner keeps the ownership of the IP
and both licensees and licensors 
can make money from the IP.
In some countries,
owners can work with customs authorities to prevent illegal importing or exporting of IP-infringing goods.
For this reason,
it can be critical to have a registered trademark in countries where you think copies of your brand
are being illegally manufactured.
The trademark registration can allow for the inspection and seizure of infringing goods
imported from or exported to another country.
Some countries, such as China, have other administrative enforcement options.
These are conducted by local government authorities and could involve the seizure of goods.
In straightforward cases, administrative enforcement is relatively fast and inexpensive
and typically ends with a fine and/or an order 
to stop the infringing activity
—but compensation to the rights holder 
cannot be awarded.
Enforcement can also include requesting a re-examination of existing IP rights.
This may result in the expungement of a trademark or invalidation of patent claims.
Some countries have local IP offices that handle and mediate patent infringement disputes,
order the ceasing of infringement and punish the act of passing off in the area of patents.
This is usually an inexpensive process that stops infringing activity with a fine to the infringer,
with no damages to the claimant.
With litigation, you can resort to the local judicial system to enforce your rights.
Litigation is probably at the most aggressive end of the spectrum of potential enforcement activities.
Often litigation is the last resort 
in a failed negotiation between 2 parties.
Both parties present their cases in court to a judge, who then hands down a ruling.
Litigation can be a very effective enforcement tool, but it can be expensive, complex and time consuming.
Therefore, it’s common for cases that go to litigation to end up being settled before the end of a trial.
Finally, you may consider alternative dispute resolution. You can pursue options through a mediator or arbitrator.
This is especially useful if a dispute spans many jurisdictions, such as many countries.
The main types of alternative dispute resolution available to parties are
negotiation, mediation and arbitration.
Negotiation is often the first approach taken to resolving an IP dispute.
In this process, the parties hold discussions in hopes of reaching a mutually satisfactory agreement.
A negotiated agreement can become a contract enforceable by the courts.
Mediation is a process where a mediator assists the parties in reaching a resolution.
The mediator is an impartial third party who facilitates communication between the parties.
The mediator also highlights the parties' needs and interests and helps overcome impasses.
Arbitration is a more formal method of dispute resolution than mediation.
It’s still a voluntary approach
to dispute resolution, and the arbitrator’s final decision is both determinative and legally binding.
Infringement and enforcement can have a serious impact on a business.
We strongly recommend consulting with experts to determine an enforcement strategy.
Here are some of the resources that may help you. 
Links are available in the description.
This concludes the video series on 
“IP protection abroad: Leveraging IP in new markets.”
In the first step, you learned some of the most common mistakes people make as they take their IP abroad.
You know IP rights are territorial, and that you should start planning
for your IP rights abroad sooner rather than later.
You also know that it can be a good idea to protect your IP not just in markets where you see business potential,
but also in places
where someone may want to manufacture, import or even copy your creations and inventions.
In the second step, you learned that while you're planning for
formal IP rights, you need to minimize disclosure, and you learned some ways to keep your ideas secret.
You also learned about the most common way secrets are lost,
and some of the common ways to prevent this from happening to you.
In the third step, we highlighted the importance of learning about IP
and the IP laws and regulations of your target countries.
You now know about some of 
the main differences you may encounter
—like grace periods and 
goods and services classes for trademarks—
and  that these and other regulations are country-specific.
We showed you some of the main databases where you can find out more about IP
and IP regulations specific to a particular territory.
In the fourth step, we explained the different ways to apply for IP rights abroad.
You now know it can be a complex process and that you should consider getting professional help.
If you’ve studied existing IP rights, IP regulations and how to apply,
you’ll be well prepared 
to meet with your IP professional.
Finally, in this fifth video, you’ve seen some examples of infringement
and, most importantly, the considerations involved 
in enforcing your IP rights.
You now know that infringement is serious
and that you need to be absolutely certain,
and have professionals help you, 
if you decide to enforce your rights.
You also know some of the strategies
involved in enforcement
and can come prepared to discuss these
with an IP professional,
as well as how to find expertise in
Canada and around the world for these matters.
If you have questions about IP, contact us!
Our Client Service Centre and IP advisors 
are here to help.
IP advisors act as a source of information about IP for small and medium-sized enterprises, or SMEs,
entrepreneurs, intermediaries in the innovation system,
post-secondary institutions and 
government stakeholders
IP advisors help SMEs and entrepreneurs understand the strategic value of their IP
and can provide information and guidance as they develop an IP strategy for their business.
