Lifecycle of a Smart Idea | Defending your trademarks & designs: global enforcement strategies

06 November 2020

Even the most careful cultivation of a global brand can present serious threats at every turn. For organisations across all sectors, such threats must be met with coordinated and creative solutions underpinned by a thorough understanding of the legal, cultural and business IP landscapes across different jurisdictions.

On November 4, 2020, members of our intellectual property team presented a live webinar – as part of our Lifecycle of a Smart Idea series – that examined the critical considerations that help shape a winning trademark and design enforcement strategy.

LSO: This program is eligible for up to 1 hour of substantive content
Quebec: If you require a certificate of attendance, please contact Shannon Wadsworth
LSBC: This program is eligible for up to 1 hour toward the LSBC's CPD requirement
LSAB: This program is eligible for up to 1 hour of credit toward the CPD program

This scenario-based webinar involved a fictional ATV company, Hellranger, that recently discovered its distributor in Germany and Russia have started to sell infringing HELLRISER products in six key jurisdictions: Canada, UK, Europe, UAE, Russia and China. The same distributor has also filed infringing HELLRISER trademark and design applications.

Moderated by Toronto partner Charlotte McDonald, the webinar saw Gowling WLG’s top intellectual property lawyers from across the globe weighing in on a number of strategy-related questions, including:

  • What is the best way to map out high-level plan for a global enforcement strategy?
  • What steps should be taken immediately to stop the infringement?
  • What steps are available to stop the pending infringing trademark and design applications?

The webinar, the second in the “Trademark and Design” segment of our Lifecycle of a Smart Idea series, is now available on demand below.

Here are some of our panelists’ top tips:

John Coldham – Partner, London, UK

  • There are many different ways to resolve issues like this. Taking a moment to devise a strategy that fits the commercial goals will usually be a good use of your budget.
  • If you do decide to litigate, the UK now offers many different options, some quicker, some cheaper, some lower risk, some higher risk but more likely to force the other side to consider settlement. There is no single correct option, but the UK has moved a long way in the last few years to dispel the old adage that it was expensive and slow to litigate.
  • Designs are really worth considering for enforcement. Unregistered design rights in particular have seen great success in the English courts in recent years, so it is worth taking advice on the best way to ensure that you qualify for them and are in a position to prove that they are yours.

Manuela Finger – Partner, Munich, Germany

  • EU Trademarks and Registered Community Designs are a great and cost-effective tool to cover the whole of the EU. You may still need to consider registering for national rights in the European countries that are important to your business.
  • When an infringement has occurred, you must identify a) the earliest rights you can rely on (including possible unregistered national rights), b) where the infringement is taking place, and c) whether the infringer is seated in an EU Member State. This information will form the basis of your enforcement actions – for example taking steps in the country where the infringer is based to obtain an EU-wide injunction when you rely on EU Trademarks of Registered Community Designs.
  • When developing an enforcement strategy, make sure you consider other cost-effective measures, such as takedown procedures.

Veronica Fridman – Counsel, Moscow, Russia

  • Always apply for registration of your trademarks and designs before entering the Russian market. If you have not done so, remember that you may also be able to defend yourself based on prior rights in your company name.
  • Set up a watch for third-party applications and make use of Russia’s informal opposition process as a tool to stop those applications early.
  • If you decide to sue your distributor, remember pick the right forum to minimise “local influence” on the case. It’s best to apply for jurisdiction of the Moscow or St. Petersburg-based courts whenever possible.

Nelson Godfrey – Partner, Vancouver, Canada

  • Make sure you register your trademark and design rights as soon as possible. In Canada registration facilitates enforcement, allows you to register those rights with border enforcement programs, and provides passive protection against applications filed by others.
  • While interlocutory injunctions are difficult to obtain in Canada, there is a recent trend that suggests they may be easier to obtain than in the past.
  • There is also a recent trend in the Federal Court that favours summary judgment in IP matters, which may be the most cost-effective and expeditious way to obtain injunctive relief.

Ivy Liang – Director, Guangzhou, China

  • China has a “first to file’" system for patents and trademarks so you need to make sure you file your applications as soon as possible.
  • You should also record your marks with customs. Customs in China will proactively select and check the suspicious products at random, which can help stop infringing products.
  • Don't hesitate to approach our colleagues and seek their professional local advice. Our multi-dimensional strategy from different jurisdictions will give you a blue sky to protect your multiple types of IP rights.

Jon Parker – Partner, Dubai, UAE

  • It is very important to register and record your trademark and design rights in the UAE.
  • Take steps to support and train enforcement officials to recognize your trademarks and stop infringements at the border.
  • Make sure to have a watch service in place to oppose potentially conflicting marks.

Would you like to discuss these or other issues related to protecting and maximizing your intangible assets? We’re all about being connected. Get in touch with your trusted Gowling WLG IP adviser here.

Watch the webinar


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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