“Legal systems in south east Asia very tremendously with their own unique challenges and difficulties” said Yvonne Chua, partner of Wilkinson & Grist in Hong Kong and the moderator of the mini-plenary. “It is important that IP owners are aware of what is legally and practically possible.”
Andrew Olsen, legal counsel for Prada Asia-Pacific, spoke about the challenge of fitting brand enforcement work into his general legal role. “Management often focus priorities on commercial things. IP can sometime take a secondary role,” he said.
He added that in-house counsel can minimise the problem of a limited legal budget by focusing enforcement efforts on larger retailers and wholesalers rather than small scale sellers, and by cooperating with other brand holders whose brands are being infringed.
Prada is one of the companies targeting the landlord of the Silk Market in Beijing, a notorious fake-selling market.
“In our case it [cooperation] has been very effective and worthwhile,” he said.
Olsen also advised brand owners in China to be careful about the investigation service providers they use, saying that some have provided him with the same photos for supposedly different raid actions conducted for Prada.
Dan Plane, senior associate for Gide Loyrette Nouel in Hong Kong who was previously senior anti-counterfeiting manager for LVMH Fashion Group in the city, then outlined how to develop an anti-counterfeiting strategy in the region. “Practicality comes into play a lot more than legality does,” he admitted.
Plane outlined a series of steps that brand owners need to take including making sure your IP is registered, knowing how well your product and your competition’s products are selling, and putting in place a programme with specific goals.
He also acknowledged that it can be tough to justify your budget in tough economic times. “Anti-counterfeiting is one of those areas where you just don’t make a lot of money for the brand,” he said.
To counter this, Plane said that it was important to get management on board by giving regular updates on your programmes. He also said it was a good idea to get local employees, who are directly affected by counterfeiting, to “be your eyes and ears on the ground”.
Plane added that it was important to build relationships with local authorities by doing things such as responding to ex officio seizures by Customs.
Theodore Kavowras, a former NYPD officer and now operations manager for Panoramic Consulting, provided practical tips based on his experience as an undercover investigator.
“Factories are aware of companies’ enforcement budgets and are taking advantage of it,” he said. He gave the example of a Swiss company that only does one raid a year, so when that raid has been completed everybody can infringe with impunity.
Kavowras said that he did not believe the criminal enforcement system in China worked well but praised the progress he has seen in the civil litigation system. “Litigation in China has become a really viable system,” he said.
Noel Delos Reyes, a police senior superintendant in the Philippine National Police, said that brand owners should be realistic about the challenges they face in developing countries – such as corruption and the perception that IP infringement is a white collar crime that should be treated more leniently.
Susan D Villanueva, senior partner with Villaraza Cruz Marcelo & Anganco, advised that in the Philippines the administrative system can provide a cheaper, quicker and more effective way to enforce brands than using the judicial systemt. She used the example of a trade mark infringement case involving Californian burger company In-N-Out Burger, which took action against an individual who registered that trade mark in the Philippines and then tried to open a copycat restaurant.
Villanueva said that in the Philippines filing an IP violation case with the bureau of legal affairs of the Philippines IP Office can lead to the same remedies as civil litigation, such as injunctions and damages. However, such cases are heard by people with more IP expertise.
In-N-Out won the case and the Supreme Court upheld the ruling in 2007.
The Licensing Executives Society International Annual Conference was held from June 7 to 10 in Makati City, Philippines and was attended by delegates from more than 45 countries.
