International Trademarks: Monitoring, Policing Third-Party Marks, Evaluating Infringements, Pursuing Enforcement

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A International Trademarks: Monitoring, Policing Third-Party Marks, Evaluating Infringements, Pursuing Enforcement TUESDAY, NOVEMBER 21, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Olivia Maria Baratta, Partner, Kilpatrick Townsend & Stockton, Atlanta Sheila Fox Morrison, Partner, Davis Wright Tremaine, Portland, Ore. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

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5 International Trademarks: Monitoring, Policing Third-Party Marks, Evaluating Infringements, Pursuing Enforcement Olivia Maria Baratta Kilpatrick Townsend & Stockton LLP Sheila Fox Morrison Davis Wright Tremaine LLP

6 International Trademark Monitoring How do you become aware of infringement Trademark watch options Train your licensees, distributors, and front lines Monitoring of social media (infringing Instagram accounts; Facebook) 6

7 Policing Determining when to take action again potential infringers Need to have a good understanding of your client s short term and long term international plans Where are they producing products? Where are they planning to sell goods or provide services? Where do they want to maintain defensive protection? What s the budget? Must weigh cost/benefit of taking action in international jurisdictions. 7

8 Pursuing Enforcement Efforts Challenges of international enforcement Must use local counsel Considerations for choosing local counsel Educating counsel about your client and clients business goals Getting a second opinion Balancing what local counsel says vs. your own take on the situation 8

9 Pursuing Enforcement Efforts Standard practice v. being creative Can be difficult to deviate from standard practices particularly in China and certain other Asian jurisdictions, but often true in all jurisdictions. Standards are different each jurisdictions Client Conflicts Do not assume local counsel views conflicts and potential conflicts as you do. 9

10 Country Highlights China POA, Certificate of Good Standing and other formality requirements (changing all the time); showing prior use in China; difficult to showing bad faith in China; similar marks/related goods analysis is different (tends to be more rigid) subclass system other options administrative raids 10

11 Country Highlights Mexico New opposition procedure (August 30, 2016). Because it s a new procedure, local counsel have limited experience (limited ability to advise). One month opposition period; no extensions. No default judgment. Once opposition is filed, no further pleadings (or costs). Does not suspend examination. Timing? 11

12 Country Highlights Korea Two month opposition period; no extensions. Notice filing with supporting arguments and evidence in 30 days. More strict analysis with respect to marks and goods/services. Evidentiary burden is high. Also have option of filing an information brief prepublication. 12

13 Country Highlights Europe EUTM vs. National Offices At EUTM no refusal on relative grounds; notice to owners of potentially conflicting marks Resolutions are often negotiated Cancelation for non-use grounds quite common Must hire counsel in specific country if challenge is to national application, and follow their respective procedures 13