Intellectual property barriers and enforcement overseas
Exporting products or services is a goal of many business owners. However, those that do export rarely ever speak of an incident-free journey to market. Some major incidents are the result of issues with intellectual property (IP), including with branding/trade marks, domain names, copyrighted images and written works, patented products and processes, and registered product designs. Therefore, it is important to conduct searches in the intended export market, and ensure your IP is protected and enforced.
IP Barriers to Marketplace Entry
Before using a trade mark, innovative technology or product design in a foreign country, it is recommended that searches be conducted to ascertain whether the trade mark, innovative technology or product design is, in fact, available for use (and registration) in that country. Searches of national IP databases should be conducted. With respect to trade marks, searches of trade marks used in the marketplace for which registration has not been sought should also be carried out.
It is possible that use of the trade mark, innovative technology or product design may infringe earlier patent or design rights belonging to a third party. Unauthorised use of a trade mark (including one that is deceptively/confusingly similar to a registered trade mark), patented invention or registered design may amount to infringement and render the user liable for costs.
Searching is a specialised task, and it is recommended that searches be carried out by competent searchers, and the results analysed by qualified patent or trade mark attorneys.
A solid first step to IP enforcement is to mark your goods/ processes/services with your registered IP rights – e.g. Patent Pending, Patent No, TM, ®, Registered Design. In this way, it will be harder for a third-party to claim that they were unknowingly infringing.
A second step is to monitor the marketplace for infringement and to act against infringers. If not, then it may be more difficult (if not impossible), and expensive to stop the infringement. Normally, letters of demand are sent to infringers, to ‘cease and desist’.
Failure to enforce your trade mark rights may result in other traders obtaining registration of the same or similar trade mark which may lead to your trade mark being unenforceable and/or there being a limitation on the recovery of costs for infringement.
IP laws vary from country to country and are constantly changing. There are many traps for the unwary, and valuable IP rights may be lost inadvertently. It is advisable to seek professional advice from a patent and trade mark attorney at an early stage. Please contact our IP experts at Spruson & Ferguson should you require any assistance.
This article is written by Gint Silins, Principal at Spruson & Ferguson.