International Enforcement of Trademark Rights

Brand owners expanding into foreign markets should obtain appropriate international trademark registrations to protect and enforce their brands. An existing registration creates a presumption of ownership of a valid trademark, making the brand owner less susceptible to allegations of infringement by third parties and better able to exploit the local judicial system and government resources where the infringement occurred. Additionally, a U.S. court could potentially award damages for trademark infringement in the infringing country.

In addition to budgeting and other considerations discussed in earlier posts about international filing strategies, when it comes to enforcement, brand owners should have monitoring services in place for the primary territories of operations to track trademark filings by third parties of their marks or similar marks. Third party registrations are often a good indicator of infringing activity in a foreign territory. The U.S. Customs Department also issues an annual report with statistics on the largest counterfeit products coming in and the source countries, and this information may encourage brand owners to file for registration in those countries with higher instances of counterfeits.

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Practice Areas

There are several ways to address an international trademark infringement matter in addition to hiring local counsel to pursue litigation, many of which may be pursued simultaneously. For example, the United States Patent and Trademark Office (USPTO) has local IP attachés posted in various regions around the world, including Mexico, Brazil, China, Indonesia, Africa and Geneva. These attachés can provide a good understanding of the business and legal landscape of the country as well as information on local counsel and government enforcement resources. Depending on the scope of infringement, the attachés may also coordinate with other government agencies to coordinate an action plan to address the infringing conduct.

In addition to IP attachés, the International Trade Association (a bureau within the U.S. Department of Commerce) and the local U.S. embassy may also be useful resources. For instance, if there is any undue influence or other interference impacting the judicial process or other publically available remedies in the locale, U.S. officials may reach out directly to the appropriate foreign officials to inquire and help resolve.

We also advise and assist brand owners to communicate with and establish relationships local customs officials so they can better identify their products and more effectively assist in dealing with counterfeits. Let customs officials know who they can contact directly to address possible counterfeits; for instance, provide contact information for customs officials on your website and send them the information directly so they have it on file. Send customs a packet of what your goods look like, and update the information so they know what your priorities are.