Intellectual Property, Brand Protection and Border Measures

We have a strong specialist IP practice and act for a number of leading global brands, small businesses and start-ups. We offer niche IP services at significantly reduced rates compared to onshore law firms and in particular, specialise in online brand protection.

Our contentious and non-contentious IP and brand protection services include:


Domain Names - monitoring and enforcement

Trademark infringers register domain names for commercial gain and to exploit the reputation of brand owners. This damages trademarks and the brand owners' business.

We assist through:

  • Detection of online infringements - searching, monitoring and reporting services
  • Services offered for all gTLDs and most ccTLDs including, .com, .net, .org, .us, .uk, .eu, .ca, .sg, .hk
  • Pre-action enforcement action and negotiating with trademark infringers
  • Enforcement actions and arbitrations - including handling UDRP, USDRP, Nominet, CDRP, SDRP

 

New gTLDs

Several hundred new gTLDs will be launched in 2012, which will significantly increase the number of domain name extensions. This impacts on brand owners as the potential for trademark infringement on the internet will be much greater. We assist by:

  • Registering trademarks with the trademark clearinghous
  • Monitoring applications to register new gTLDs and filing oppositions of infringing registrations during the sunrise period
  • Handling Uniform Rapid Suspension system (URS) disputes - bringing action against infringing domain names using the new gTLDs
  • Handling "Trademark Post-Delegation Dispute Resolution Procedures" (TPDDR) – taking action against gTLD registries that are using the trademark in an infringing manner

 

Social Media and Mobile Devices - monitoring and enforcement

Trademarks are increasingly being infringed on social networking sites when third parties create unauthorised profiles and where mobile device applications are created using brand owners' registered trademarks. We assist by:

  • Searching, monitoring and reporting on trademark infringements on social networking sites (Facebook, Twitter, YouTube etc) and in mobile device applications
  • Enforcement actions and negotiating with trademark infringers and social networking site operators and sellers/distributors of mobile device applications

 

E-Commerce - monitoring and enforcement

Unauthorised sales of counterfeit and genuine goods take place every day via online commerce, auction and B2B and B2C exchange sites. We assist by:

  • Monitoring for trademark infringements on commerce, auction and B2B and B2C exchange sites
  • Enforcement actions and negotiating with trademark infringers and website operators

 

Keywords and Adwords - monitoring and enforcement

Online sellers are increasingly attracting internet traffic to their own sites by using famous trademarks in the keywords or adwords used to describe their sites. We assist by:

  • Monitoring and reporting on trademark use in keywords and adwords for consumer good brands on sites such as Google, Bing, Yahoo etc
  • Submitting complaints to the relevant advertising forum providers

 

Border Measures

Counterfeiting and unauthorised trade in branded goods is a global business. Customs seizures account for 70% of all counterfeit goods seized around the world and increased vigilance is required to combat trade in counterfeit goods. We assist by:

  • Recording trademarks with customs agencies
  • Reporting suspected counterfeit shipments to customs
  • Liaising with customs agencies to detect counterfeit and unauthorised shipments of genuine goods
  • Coordinating seizure of goods
  • Conducting investigations to detect counterfeit and authorised goods
  • Training Customs in the identification and seizure of counterfeit goods
  • Auditing IP rights and implementing appropriate protection strategies

 

Trademark and copyright registration and administration

Trademarks and copyrights are valuable and brand owners dedicate significant internal resources to registering, renewing and managing their global trademark portfolios. We assist brand owners in cutting costs, improving efficiency by centralising coordination and access to trademark and copyright information. We achieve this through:

  • Management of trademark and copyright portfolios
  • Advising on registration and renewals globally
  • Registration, renewal and recordals of trademarks and copyrights
  • Searches for prior registration of conflicting trademarks
  • Drafting legal documentation including licensing, assignment and confidentiality agreements

 

IP and brand protection support services

At times when in-house teams need assistance and support with any aspect of intellectual property law and brand protection related work we can assist by:

  • Drafting and review of pre-action and dispute resolution related documents and licensing, assignment and confidentiality agreements
  • Managing and coordinating enforcement
  • Liaising and coordinating with external counsel