12.26.07

How Can I Protect My Intellectual Property? – Part 2 Strategies for Countries With Good or Strong Enforcement

Posted in Intellectual Property at 11:25 pm by Administrator

So now you have your product patented, trademarked and copyrighted in the countries your are doing business in,how can you enforce your rights? Here are some strategies that I’ve seen companies use:

• Hire a local person monitor the market and report on any potential violations. This could be your agent, a local attorney or a consultant. They should look at advertisements, ask for promotional and technical literature from competitors, and as appropriate drive past storefronts.
• Do your own periodic web searches on product offerings from your competitors. It’s always amazing how you can find hidden deep in a web-search. Be creative in your terminology usage and search on parts of the words (especially for your trademarks or marketing slogans) since copycats like to make it sound like the original product. Remember you can also use the translation programs to look at non-English websites (usually too literal but the translations can give you an idea if you need to look at the site further.
• If you find a potential violator, consider your options. In some cultures, a polite letter from your company can be sufficient; in others, a strongly worded letter from a law firm might be the option. If you can trust the local court system, you can ask for an injunction. (One cautionary note: Consider how your approach might look in the US. One major US film studio came down hard on a small Salvadoran producer and it was played up as David vs. Goliath in the local press.)
• If your competitor is exporting the product back to your company’s country or to a third country, you can seek to stop the product at the importing country border.
• If you’re not getting results or the cooperation from the government, bring in your Embassy. When I was in El Salvador, I intervened numerous times on behalf of US patent, trademark and copyright holders. The owner of a local franchise lost rights to the trademark but told me how he was still going to use it. After consultations with the trademark owner in the US, I asked the Salvadoran government to shut down the operation. When the operation was shut down, there was considerable press play and the Salvadoran brought suit against the Embassy and me for depriving him of his livelihood. The suit never went anywhere and in the end, the US intervention stopped the trademark infringement.

Part 3 will deal with strategies for enforcement in countries where intellectual property protection is weak or non-existent.

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