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Avoiding threatening patent or design infringement action

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Avoiding threatening patent or design infringement action

26th September 2018

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It often happens that rights holders enforce their rights against others as a scare tactic whilst knowing that enforcing their rights would not be that simple. A prime example of this is threatening patent or design infringement action against a third party, knowing very well that their patent or design is not necessarily valid or that the third party would have a valid excuse. Fortunately in South Africa, these aggrieved parties would have a good defence available against “infringement bullies”.

Section 70 of the South African Patents Act No. 57 of 1978 provides that a person aggrieved by threats of proceedings for an infringement of a patent may institute proceedings against that person to restrain the continuance of the threats. Such aggrieved person, if successful, has the following remedies available:

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  • a declaration to the effect that the threats are unjustifiable;
  • an interdict against the continuance of such threats; and
  • such damages, if any, as he has sustained by the threats.

Section 37 of the Designs Act No. 195 of 1993 is essentially identical to section 70 of the Patents Act and an aggrieved person could similarly make use of those provisions in the appropriate manner.

The Patents and Designs Acts also make provision (under sections 69 and 36 respectively) that a court can declare non-infringement of a patent/design. This is yet another defence against a bully.

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Although there are some considerations one needs to make before one can institute any of these proceedings, the above provisions are good defences against infringement bullies. KISCH IP was recently involved in a matter where a bully threatened action against a client for, inter alia, infringing the bully’s registered designs. (It transpired that the bully also threatened other parties in this particular commercial field, which supported the contention that these guys were bullies.)  Despite presenting the bully with our client’s defence, the bully would simply not back down from its position and continued its threats of instituting infringement proceedings. In the meantime, our client’s customers were made aware of this “alleged infringement” which appeared to cause some reputational harm to our client. We then instituted proceedings under sections 36 and 37 of the Designs Act to set the record straight.

In the end, the bully capitulated and agreed that their threats were unjustified, that they should be restrained from the continuance of such threats, and that our client’s articles do not infringe their registered designs. This will now be made an order of court for good measure. A clear win against the bully! What is more, our client could now inform its clients about this bullying and give them the assurance that they are not infringing the bully’s registered designs.

This case illustrates that one needs to be careful when instituting proceedings haphazardly and with the sole aim of bullying others. What is more, successfully defending these alleged infringements would call out the bullies for all to see, thereby damaging their reputation in the marketplace.

Enforcing your rights must be a priority, but it is imperative to carefully consider all aspects before instituting proceedings for infringement against others. And if you are on the receiving end, contact your IP attorney to help you take care of the bullies!

Written by Fredo Ströh, Director & Patent Attorney, Kisch IP

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