Madrid and Enforcement

Posted by . updated on 11/11/2009
Can anyone comment on whether it is worth it or not to file in Japan, China, Korea etc, from the enforcement and cost perspective?  I have heard that it is very difficult to enforce registered marks in some of the countries over there.

Regards,

Answers (1)
 
Kendall Thiessen (t...
I would never purport to be an expert on TM law in each of those jurisdictions but my experience as an in-house IP counsel was that the enforcement of international marks was VERY cost prohibitive and arguably not justified unless you have enough business to make it work. For companies like mine that would dabble in these countries with modest revenue (1-2 million or less), I found any attempts to enforce our marks almost impossible as it required a significant budget behind me and that budget would eat the margins on our revenue. This was particularly true in China where knowing local officials, and having local allies is so very important to getting any real action on the ground.

With that said, I do think that you might want to consider filing as a defensive measure--to avoid claims by nefarious businesses that will file before you and then sue you for damages. Again I want to speak directly to China where TM manipulation is common practice.

The alternative to defensive filing is going with a generic product name in those jurisdictions but sometimes that is not a workable solution.

As a result, in my case, my strategy was to file in my top ten most important international markets and maintain the marks (also expensive with annual fees etc) but to largely avoid the enforcement game except in the most extreme circumstances.

I hope this helps.

Kendall (twitter/@ideasurge)
 

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