I would like to continue the discussion concerning developing
effective brand management policies. This month I will discuss
In some cases there may be no alternative but to enforce a brand
owner's rights against third parties. Each case turns on
its facts and the rights in issue but there are some general
matters which should be considered in virtually all cases.
First, the importance of carrying out a thorough investigation
of the relevant facts cannot be over-emphasized. An appropriate
response cannot be developed without full knowledge of the facts.
Frequently this may require the assistance of independent
investigators to assist in gathering the evidence.
Second, a review should be carried out to determine the nature
of the third party's business activities, the intellectual
property owned by it, basic corporate information including
business name registrations, and its general financial strength
including its ability to engage in protracted litigation.
Third, once such investigations have been carried out it can be
determined what type of claims should be asserted, the strength of
the claims and the scope of potential remedies available. The
most appropriate negotiating position, the claims asserted in a
demand letter or statement of claim and the foundation of a
litigation strategy will follow from this determination.
Concurrently, an assessment should be made concerning the
appropriate court or tribunal for asserting those rights.
Fourth, an assessment should be made of the potential costs of
enforcing the rights in issue. This should include the direct
costs of retaining counsel and other litigation costs, the indirect
costs relating to the loss of employee time devoted to the
proceedings, the potential exposure for costs that the brand owner
will be subject to and the potential recovery.
Finally, it is important to develop a general strategy to arrive
at the desired goal. The strategy, including the specific
tactics or steps to be followed, should be committed to writing and
not varied without careful consideration. The formulation of
a realistic plan and obtainable goal is dependent on the
thoroughness of the investigation and analysis described above.
Protecting Your Brand Against Cybersquatting: How your Company
Can Fight Back
The Knowledge Group has assembled a panel of thought leaders to
discuss the latest and most significant issues regarding
cybersquatting. The writer has been asked to take part.
The webinar will take place on June 3, 2016 at 10:00 a.m. We
still have some complimentary passes available if you are
interested. Click here for a link to information relating
to the program.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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