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There are a number of intellectual property myths that attorneys
hear over and over again. Periodically, we'll feature
some of these myths and examine the reality.
Myth: Because my company sells only in the
United States, we don't need to worry about protecting our
trademarks internationally.
Reality: Although trademark rights are
territorial in nature, in some countries use is not required to
obtain rights. In these countries, notably including China,
trademark priority goes to the first person to file an application
(often called "first-to-file" jurisdictions), regardless
of whether or not the applicant is using or even plans to use the
trademark in that country.
Consider, for example, a company located in the United States that
sells its products exclusively in the United States, but
manufactures goods or has suppliers in China. It would be
possible for a third party to register the U.S. company's
trademarks in China and then bring or threaten a lawsuit. It
might be that a Chinese court would dismiss these claims, but many
trademark owners decide that obtaining foreign trademark
registrations in first-to-file jurisdictions is a worthwhile
investment to reduce the risks of facing a foreign trademark threat
or lawsuit.
For another example, consider a company that sells a popular
consumer product in the United States. Even if the company
has no activity in China and never intends to -- it may want to
obtain a Chinese trademark registration as a way to try to deter
counterfeiters.
A trademark attorney can provide advice on whether it is possible
to obtain trademark protection in a foreign country without use in
that country and the benefits it may provide based on individual
business needs.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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As is well known, patent trolls often threaten dozens of alleged infringers in the hope of scoring quick license fees from those who understandably prefer to provide a modest payoff, thereby avoiding expensive and protracted litigation.
In order to best protect the IP rights of a U.S. company seeking to produce goods through a Chinese manufacturer by providing a protected design, the U.S. company needs to take actions even before the contracting stages.
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The U.S. Court of Appeals for the Ninth Circuit affirmed a summary judgment ruling in favor of seven film studios finding that the defendant induced third parties to download infringing copies of the plaintiffs’ copyrighted works.
2013 IP Developments (Video Content)
