Asia IP

SAN DIEGO (MAY 4) – Brand owners were put through their paces when asked to help role play a multi-jurisdictional trademark dispute at the International Trademark Association’s 2015 Annual Meeting here.

The session featured a hypothetical dispute and strategic discussion among four panelists regarding where to file, how to gain leverage and what other considerations arise in different jurisdictions.

“The first step in any dispute is to know your enemy,” said Jeremy Kaufman, senior vice president, intellectual property, at Twentieth Century Fox in Los Angeles, who played the in-house counsel role in the dispute. “Hire an investigator. The more you know about them, the better you can battle them.”

While the discussion between the panelists involved a number of complex issues, it also raised many basic considerations in a multi-jurisdictional dispute, including filing preliminary injunctions where possible and pursuing enforcement actions through customs authorities. “It’s fairly low cost. We can go do some occasional training of customs agents to help them identify the infringing products,” Kaufman said.

He also suggested that rights owners immediately select the company’s top territories in which to pursue greater trademark protection. “Let’s be aspirational about what those top territories are. Even if we’re not sure we’re going to have a business in India [for example], if there’s even a glimmer of hope, let’s just file there and preserve our right to be there.”

Kaufman also advised that companies look at IP enforcement holistically and be prepared for whatever the dispute may bring. “No matter what, litigation is going to be disruptive to our business. It’s going to be a massive distraction.”

Being organized is an attribute which will prove very useful, the panel noted, due to the interrelated actions which will almost certainly be taking place in different jurisdictions. Strong organization of the dispute will allow a company to keep its arguments consistent  – and allow it to spot inconsistencies on the opponent’s side, Kaufman said.

Jeremy Dickerson, a partner who leads the IP litigation team at Burges Salmon in Bristol, played the role of a UK-based outside counsel to the company involved in the dispute. Dickerson said his first concern was to sort out what the opponent could do to attack his client. In the scenario, the company had recently imported a large quantity of its goods into the United Kingdom. Dickerson advised his client to immediately move the goods out of the country, and to possibly sell them elsewhere in Europe.

“You have [your goods] in London when the opponent has a registration in the UK. It has a strong chance to injunct you and seize those [goods],” Dickerson said. “That’s not good. Before you do anything else, you need to get those [goods] out of the UK, because if you file a suit, you’ll put [the opponent] on notice and they will try to seize those [goods].”

Nick Redfearn, the Jakarta-based deputy CEO of Rouse, played the role of an Asia-based advisor to the company. Among his advice was for the company – which acted as an original equipment manufacturer with offices in Hong Kong and manufacturing in mainland China – to assume that its trademark had already been registered in China. “There have recently been some Supreme Court opinions that this is not infringement, because the goods do not enter the market in China,” Redfearn said. “My best guess is that if they went to court to try to stop you [from manufacturing your goods in China], you would win, but people do win these cases [from the other side], so there is a risk.”

Redfearn noted that OEM litigation in China would take a year to play out, and perhaps another year for the appeals. He also advised his client to file elsewhere in the region, but also to sell its goods elsewhere to develop non-registered rights.

The hypothetical ended with a discussion involving lawyers attending the session, and a summary of the case. Anessa Owen Kramer, a partner in the Bloomfield Hills, Michigan, office of Honigman Miller Schwartz and Cohn, who played the role of the CEO in the session, noted that it was probably unrealistic for her CEO character to obtain as much territory as possible without a co-existence agreement between the companies, unless her company had been willing to drastically outspend the other. “You are probably going to have to negotiate in a case like this,” she said.

Even if you manage get consents from both sides to register in certain countries, there is no guarantee that all registries will accept those consents, said Dickerson. “You will need local advice on every single point before you sign any sort of co-existence arrangement,” he said.