3 Suggested approaches when an infringer keeps infringing

03 Jul 2015

SCENARIO

There is an infringer that keeps using several trademarks that are confusingly similar to our registered trademarks on similar products, and we have recently obtained the favorable TMO opposition decisions and TRAB appeal decisions, and also the favorable final civil litigation judgment. However the infringing products and information keep appearing in the market, what should I do?

Nikita's suggests...3 NEXT STEPS

The case would be complicated, since the competitor not only produces and uses the infringing marks on the products, but also has strong trademark acquisition consciousness. The infringer applied and registered some of the trademarks that contain identical or similar parts with our clients trademarks, and that has increased the difficulty for the brand owner to protect their rights.

Nikita Xue, Partner at HFG has outlined at least three approaches to consider on this case:

1) With the final judgment made by the 2^nd instance court, it is suggested to follow up closely with the court to make sure that the judgment has taken into effect, and usually there would be a kind of Effective Judgment Statement, and meanwhile, the brand owner should cooperate fully with the court on judgment execution, which usually the infringer would take a negative attitude towards.

2) It is important to make good use of the favorable judgment and decisions and build a communications plan to create public awareness and education. The infringing products are seeking market share, so the brand owner should focus on the market deterrence by taking proper and timely actions to stop the relevant infringing products being sold on the markets, whether it be by the infringer directly or by their distributors.

3) With regard to the trademark acquisition, it is also important to make every effort to keep the favorable decision active. The infringer might take the case to the court for administrative lawsuit, and as 3^rd party, brand owner you should also take a priority at responding to support TRAB on the litigation. Unless the infringing trademarks have been invalidated, the infringer would not find the legal cover for their infringement.