I have blogged about what to do if you receive a cease and desist letter (also called a “letter of demand”) here.  But what if you own an IP right (eg a registered trade mark, copyright, patent, design or an unregistered trade mark) and you believe that someone is infringing your rights?  What do you do?

First step – evidence

Obtain some evidence of the infringement.  This may involve taking screen shots of products on a website, or, if the infringing product is not too expensive, buying a sample.  Make sure you keep the receipt.  Otherwise try to take photographs of the product, infringing signage etc.

Step 2 – legal advice

Seek legal advice.  Intellectual property law is highly complex, so make sure you approach a lawyer who has expertise in intellectual property law (or in the relevant area of intellectual property law like copyright, trade marks, patents or designs).

What your lawyer will need

When you visit your lawyer (or have a videoconference) be prepared.  This means:

• If your right is registered, have the registration details handy.

• There is no registration of copyright in Australia. Copyright protection is automatic once you have recorded your creation on paper or electronically.  Normally, you will own the copyright if you created the material. 

• If you employed the creator and they created the material (an invention, design or copyright material) in the course of their employment with you, you will normally own the IP. Try and locate their employment contract.

• Did you commission the material (instead of it being created by you or your employee)? For inventions and copyright material, you won’t own the IP unless it was transferred in writing to you.  Try to locate the commissioning contract.

• If you have previously had dealings with the person who you believe is infringing your rights – eg if you had a contract with them as an ex-distributor – give your lawyer that contract and any relevant correspondence with them.

• Bring your evidence of the infringing conduct (from Step 1).

Typical issues

The lawyer will need to look at this documentation to see if they think you have a case.  For example:

• If your right is a registered trade mark – is the infringing mark sufficiently similar to your mark and are the goods or services sufficiently similar to your registered goods or services?

• If your right is copyright – is the infringing material sufficiently similar? Do you know how the infringer would have had access to your material? 

• Do you own the IP? – see above. If not, will you be able to get it transferred from the owner (who may want money to transfer it).
• If you do not have a registered trade mark but the infringer is using your name or product get-up – what level of sales have you had in your business or for the product? For an unregistered mark, you will need to show that you have a reputation in your name or get-up.

Step 3 – cease and desist letter

Assuming that the lawyer thinks that you have a case, they will usually send a cease and desist letter to the other side setting out your claims, why the other side is infringing your rights and the remedies that you seek.

It is best not to do a cease and desist letter yourself.  For most IP rights, if you threaten legal action and the claims of infringement are false, the other side can go to court to seek an injunction to stop your threats and claim compensation from you for any loss you have caused them – eg if you have threatened action against their retailers who have returned the product to them.

Step 4 – outcome

Many cases will settle at this stage – either the other side gives in completely or they reach a compromise with you.  Perhaps they want a sell-off period to sell out their existing stock.  Perhaps you are seeking monetary compensation and they haggle over the amount.  Or they may reject your claims completely. 

If your lawyer is not able to persuade them to stop, then you may have to consider whether you want to sue the other side.  This is a significant and expensive step and you need to discuss this with your lawyer.

Be quick

When you discover that someone seems to be infringing your IP, it is important to act quickly because:

• the longer an infringer continues, the more invested they are in using the IP and the less likely they will be willing to stop; and

• delay can prevent you from gaining an “interlocutory injunction”.

Sometimes the infringing conduct is so serious and doing such damage to your business that you may want to take them to court.  A court can issue an “interlocutory injunction” which is a temporary order to stop the conduct pending a later trial of your claims.  If you succeed in gaining such an order, it often resolves the dispute because the infringer may give up at this stage (although some alleged infringers will fight on). 

Gaining an interlocutory injunction is an expensive option because you have to have a mini court case on an urgent basis.  You would also have to give “the usual undertaking as to damages” to obtain the injunction, which means that, if you ultimately do not succeed at a final trial, you will have to pay the other side any damage caused to them (or anyone else)  by you gaining the injunction.

Delay is a reason for a court to refuse an interlocutory injunction.  So, from the time you first learn about the infringement the clock is ticking.  You should be looking at weeks until your lawyer sends the cease and desist letter.  If the other side refuses to give up, your lawyer can discuss the possibility of seeking an interlocutory injunction. 

I can assist clients with claims for infringement of their copyright or trade marks and in responding to a cease and desist letter.

This blog provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a lawyer if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2026