- Determine what products are likely to be infringed
- Determine where the infringement is likely to take place
- Fill in the legal and commercial gaps
- Be on the lookout
- Prepare for action
- Budget for the inevitable
1. Determine what products are likely to be infringed.
- what is a big seller in the company
- what is easy to copy
- what has potential to be a big seller
2. Determine where the infringement is likely to take place (manufacture/retail)?
- which are your biggest/potentially biggest markets
- which countries do you know/believe have the capability to produce cheap copies
3. Fill in the legal and commercial gaps
Legal - make sure you have adequate/appropriate protection in place in the right markets
Commercial - look at your own supply. The copiers are opportunists. The classic opportunity so often overlooked by companies is to fill a gap in the market that the right owner should himself be filling with genuine products.
If retailers can't get genuine product to meet demand they will soon look elsewhere.
Make sure your rights are enforceable. For example, trade marks are cancellable in most countries if they are used by their proprietor for a given period - usually 5 years. You may need to protect a market where you have no sales because it is a prime production area (China, Korea and India are good examples). In such countries you should effect some sales to keep your rights valid so they can be used to attack problems at source. The alternative of chasing the retail manifestation of the problem in numerous territories is clearly not so cost effective.
4. Be on the lookout
All too often the copies appear on the market and then go unnoticed, sometimes for years. Usually it's not that nobody has seen the product concerned, it's simply that the people who have seen it do not appreciate that it is actionable or do not know who to report it to.
Educate the sales force, and perhaps various outside agencies such as distributors, and even retailers. Invest time and effort with these people in those markets where experience tells you actionable infringements of your intellectual property rights are likely to appear.
Educate them as to the broad range of activities which are actionable - the classic misconception is that if a trade mark, or design of a product, is not identical to yours then its OK - and what to do if they come across something suspicious.
Consider things like:-
- sighting report sheets to facilitate reporting
- in house seminars
- in house brochure
- even an in house video
- newsletter
- incentive scheme to reward vigilance
5. Prepare for action
It is no use identifying the markets where you're most likely to have problems, getting the appropriate protection in place, and setting up your early warning system, if you are not then ready to act quickly when a problem arises.
So, be prepared to invest time now in making sure that lines of communication are in place between you and local lawyers so that when the time comes you can move with the speed required to be really effective.
If, for example, Japan is a big market for you make sure that you or your legal advisors have got good contacts in Japan with the right lawyers - preferably ones who are not only good, but also provide all those other elements of service that fit your particular criteria.
This is all about networking for the future. Lawyers, particularly in this field because it's so international, are doing this all the time, and you will find that even if you do not yourselves know the right overseas lawyers, your domestic IP lawyers probably will. You should check that they do, and get your local management to meet them so that there is an easy line of communication in place should it be required.
6. Budget for the inevitable
If you have anticipated problems it is only sensible to budget for them. Hopefully, you will have stress free years where your budget goes untouched. But if your foresight is correct, life will be so much easier if money has already been set aside.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
For further information please contact Peter Rouse at Rouse & Co at
The Isis Building Thames Quay 193 Marsh Wall London E14 9SG Tel No: +44 (0) 171 345 8888 Fax No: +44 (0) 171 345 4555 E-mail: Click Contact Link
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