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During the lifecycle of protecting a good idea, enforcing
trademark rights can become an issue on a global scale. Knowing the
ways to enforce those rights around the world is vital to any
successful plan to protect the good idea. In this on-demand webinar
we take a close look at the evidence needed to win a trademark case
in the courts in Canada, UK, Europe, China, Singapore,
and the UAE, respectively. We also cover both common law and
civil law practice, as well as statutory and common law rights, as
may be relevant in such cases.
Members of Gowling WLG's Global IP team address the
following questions:
What evidence does a plaintiff need to lead with to win a
case?
What are the significant differences between enforcing common
law rights and statutory rights in the trademark?
What about enforcing those rights in a civil law
proceeding?
How does a plaintiff handle various defences raised by the
defendant?
Who has what burdens of proof in a trademark case?
Speakers
Ron Dimock - Partner, Gowling WLG
Kelly Gill - Partner, Gowling WLG
Céline Bey - Partner, Gowling WLG
John Coldham - Partner, Gowling WLG
James Green - Partner, Gowling WLG
Jia Ling Quek - Senior Associate, JurisAsia LLC
Sau Lin Wan - Principal Associate, Gowling WLG
Molly Zhuang - Partner, Aquila Law Firm
Watch previous episodes
This is the 18th installment in our Lifecycle of a Smart Idea
series, dedicated to helping you maximise opportunity and minimise
risk when taking innovative ideas to the global market. Watch more from the series »
*This program is eligible for up to one hour of substantive
CPD credits with the LSO, the LSBC and the Barreau du
Québec. If you require a certificate of participation please
contact Shannon Wadsworth.
Top tips from the panelists
Think about the specific saisie-contrefaçon procedure
available in France. This is a very powerful tool enabling
trademark owners to get precious evidence of infringement that can
be used in other jurisdictions and of such a nature as to give a
real advantage over the opponent from the outset.
In the UK, remember that there are different court options that
provide for different approaches to cases, so it's important to
consider the pros and cons of each option early.
It's also important to ensure you have considered all the
different ways that you can gather evidence, from doing a test
purchase to scouring the internet for unsolicited evidence of
confusion.
Finally, it's key to ensure that, if you are relying on
use, goodwill or reputation, that you have focused and targeted
evidence to prove these points.
In Canada, remember that there is the
"application" procedure to bring infringement
matters to Court in a quick and cost effective way as an
alternative to traditional litigation with full blown discovery and
trial.
This option is very well suited for repetitive enforcement
campaigns based on registered trademark rights where the main goal
is to get a permanent injunction against the infringer
quickly.
Focus your evidence to only relevant material and organise it
to make it easy for the judge. If it's not relevant, don't
include it!
Ensure clear records of consistent and genuine use of your mark
are kept properly so we do not end up in a situation when enforcing
our rights we are not able to prove strong prior use or
reputation.
China is a "do it yourself" jurisdiction when it
comes to evidence collection. Ensure you have collected proper
evidence before taking any actions.
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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