Not every online intellectual property (“IP”) infringement can be resolved by a takedown request or a letter of demand. Some infringers may refuse to cooperate, continue selling counterfeit goods, operate through multiple accounts, or cause serious damage to the business and brand owner.

In such cases, legal action may become necessary.

Before commencing proceedings, the IP owner should carefully assess the available causes of action. Depending on the facts, the claim may involve trademark infringement, copyright infringement, passing off, unlawful use of confidential information, breach of contract, or other related claims.

A strong case usually depends on proper documentation. The IP owner should be able to show ownership of the relevant IP rights, how the infringer has used or copied the protected materials, and how such use has caused or is likely to cause confusion, loss or damage.

Evidence is especially important in online infringement matters. This may include screenshots, platform links, purchase records, courier details, seller profiles, customer complaints, advertisements, payment records and correspondence with the infringer. Where possible, the evidence should be preserved in a manner that clearly shows the source, date and contents of the infringement.

If the infringement is serious and urgent, the IP owner may consider seeking interim relief from the court. This may include an injunction to stop the infringer from continuing the infringing acts pending the final disposal of the matter. In suitable cases, court orders may also be sought to preserve evidence or compel disclosure of relevant information.

However, litigation should be approached commercially. Court proceedings can be costly and time-consuming. The IP owner should consider the value of the brand, the scale of infringement, the potential loss suffered, the infringer’s ability to pay damages, and whether a negotiated settlement may achieve a better commercial outcome.

Apart from legal proceedings, businesses should also strengthen their long-term IP protection strategy. This includes registering trademarks in key markets, maintaining proper copyright records, monitoring e-commerce platforms, reviewing reseller and distributor agreements, and ensuring that employees and business partners understand the company’s IP policies.

For businesses that operate across borders, IP protection should also be considered internationally. Online infringement may originate from another country, and enforcement strategy may differ depending on the platform, jurisdiction and location of the infringer.

Ultimately, legal action is not merely about stopping one infringer. It also sends a clear message that the business is serious about protecting its brand, reputation and commercial value.

A well-planned IP enforcement strategy should combine practical takedown measures, formal legal notices, litigation where necessary, and long-term brand protection. This allows businesses to respond effectively to infringement while protecting the goodwill and value they have built over time.

Prepared by Victor Tai & Lau Jian Quan

This article is intended for general information only and does not constitute legal advice. It should not be relied upon as a substitute for specific legal advice based on the facts and circumstances of any particular matter. Legal advice should be sought before taking, or refraining from taking, any action in reliance on the contents of this article.

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