A Few REALLY Important Trademark Lessons

The International Trademark Association met in Hong Kong this week for its 13th annual meeting. Here are some extremely helpful highlights and useful key points from the week that lawyers, designers and brand owners can all learn from ...

Protecting brands from infringement online has become in-house counsel's “worst nightmare." According to Tiki Dare, counsel at Oracle, the most difficult question facing their company was which websites to go after once infringement had been detected. Due to the sheer number of infringers, “We need to decide what is cost effective and what may potentially confuse customers," she said. John Robertson, deputy director in the IP rights department at the US FBI, addressed how difficult it has become: “If you shut down one website, another comes up,” said Robertson, who also noted that  many domain names are registered overseas, making it harder to find the owners.

Operating in China: Foreign companies should still be wary of widespread piracy and bad-faith trademark registrations that exist in China. Kevin Ching, chief executive at Sotheby's Asia, spoke to this point, saying, for instance that Chinese businessman, Mr Li, anticipated Sotheby's popularity in Asia and registered several variations of Sotheby's as a trademark in Hong Kong and mainland China, preventing the company from registering its own. Vivien Chan, a lawyer at Vivien Chan & Co in Hong Kong, noted, however, that China presents great opportunities for brands, as “China has seen a shift towards a consumer market and is no longer a factory for the world."

Infringement in Social Media: Anthony Falzone, legal counsel at website Pinterest, noted that fan-created content could, provided it is used effectively, be a “far greater tool” than a brand's own advertising, as it (as well as social media as a whole) has become valuable for “enhancing engagement” with consumers. Rebecca Borden, counsel at CBS said that when looking to protect rights it is important to differentiate between clear infringements and fan enthusiasm that could lead to unintentional infringement. “When a fan wants to do something that they have spent time and effort on [such as posting a clip of a CBS television show on Vine], we try very hard not to snap into legal words but there is an overwhelming amount of straight-out infringement,” Borden said.

Exports of counterfeit goods from Hong Kong are on the rise, as Chinese counterfeiters are becoming “clever, efficient and flexible” by changing their shipping routes. There was a 50%  increase in goods shipped from Hong Kong to the US and a 20% increase to the EU in 2013. Additional changes include altering the starting port for items being shipped to South America from Ningbo, in the north of China, to Shanghai, and altering their final destination to enter the continent via Mexico and Panama.

Policing your trademark: Trademark owners are urged to “act quickly” when trying to enforce rights on private-label products (those that are sold using another company's brand name). Failure to act quickly on potential infringements and look-a-like products would be detrimental to brand owners. “The longer you leave it, the harder it will be to distinguish yourself and stop other competitors from copying your brand. Once you allow one, you allow a lot,” said Mars and Red Bull in house counsel, Ann Chen.

Mobile app markets are becoming a home to widespread trademark infringement and brand owners should be vigilant, according to Visa International's in-house counsel Denise Yee. “I'm not sure if you're watching your brands on mobile marketplaces, but they're being infringed,”Yee said. “Does your project need a name? Is this product going to be marketed to consumers or businesses? What's the shelf life of the product or service?” are some of the questions Yee asks when thinking about registering a trademark.

New gTLD update: The head of ICANN's IP constituency told INTA attendees to “pay attention." She suggested that brands assess the applied-for addresses, decide which are the most relevant from both a defensive and offensive viewpoint, and then identify what the rights protection requirements are at the registry. One of the main lessons to learn about the URS is that complainants must demonstrate clear and convincing evidence of cybersquatting, she added.