Virtual Marking – Say Good Bye To Innocent Infringement

Generally speaking, in intellectual property (“IP”) infringement cases, damages are awarded to IP right owners as compensation for losses suffered as a result of IP right infringement by an infringing third party. However, in some instances damages may not be awarded, or may be reduced, if the infringer is able to prove that they were an “innocent infringer” unaware of the existence of the registered IP right at the time of infringement and had no reasonable grounds for supposing that the infringed subject matter was protected by a registered IP right (“innocent infringement”).

To avoid “innocent infringement”, IP right holders have traditionally been encouraged to physically mark their protected products (and associated marketing and/or packaging materials) with words such as, e.g., “patented”, “patent”, “patent pending”, “registered design” or the like, optionally together with a relevant serial number, to signal the pendency or registration of an associated IP right. The purpose of such physical markings is to put third parties on constructive notice of the existence of the associated IP rights and avoid any finding of “innocent infringement”.

More recently, however, “virtual marking” has become an attractive alternative to the traditional physical marking of IP protected products. Virtual marking means products (and associated marketing and/or packaging materials) are marked only with a web site address, which directs an interested party to a web page dedicated to identification of all relevant IP rights associated with the product.

Virtual marking offers many advantages over traditional physical marking, including the ability to quickly and cost effectively update the details of any associated IP rights. This is extremely important as failing to update the details of a marking as, e.g., if the IP right proceeds to registration, is cancelled, lapses or even expires, can amount to a criminal offence in some jurisdictions of falsely marking that a product is protected by a registered IP right, when no such right exits.

Additionally, virtual marking advantageously removes the tooling costs and difficulties associated with physically marking products with all relevant IP rights. For example, depending on a product’s size, this can be particularly difficult when registered IP rights exist in several jurisdictions.

In summary, virtual marking is an attractive alternative to physical marking, particularly due to the ease with which the particulars of IP rights can be readily updated. However, before abandoning physical marking all together, we strongly recommend you reach out to us for specific advice as virtual marking is not yet recognised in all jurisdictions.