The number one issue for IP owners
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The number one issue for IP owners

What is the biggest challenge for IP owners entering emerging markets? This was one of the questions addressed by the UK’s IP attachés, who were visiting London recently from their bases in Brazil, China, Singapore and Switzerland

IPAN panel

Their two roles are to provide practical support to UK companies, particularly SMEs, entering new markets, and to work with host nation governments on improvements to laws and enforcement. France and the United States have similar networks of representatives.

Speaking at an event hosted by IPAN at CIPA last month (right), the UK attachés noted that they have worked with 233 individual companies, who have IP rights estimated at £377 million ($600 million).

They also spoke about some of the specific issues they have been working on. So what, I wondered is the single biggest challenge for UK rights owners in these markets? Is it counterfeiting? Copyright piracy? Problems with patentability? Cybersquatting? Compulsory licensing? The expense and time of litigation? The difficulty of finding local lawyers?

It turns out it’s more mundane. About 40% of the issues the attaches work on concern trade marks. And based on their presentations and from speaking to them afterwards, it seems like the single biggest headache is bad faith applications. As the UK attaché in Beijing Tom Duke said, one of the main unanswered questions about the revisions to China’s Trade Mark Law is: “How will they deal with the systemic problem of bad faith applications?”

Wait Rose Chennai

Some of these experiences might be unique to British institutions – both Buckingham Palace and the Royal Mint have had to take action in India – but others are typical for owners of well-known brands. One example given (also from India) was the Wait Rose supermarket set up in Chennai - the two words separated by a picture of a rose (see photo).

In some ways it seems ridiculous that more than 130 years after the Paris Convention was signed, and despite the popularity of systems such as the Madrid Protocol, trade mark owners are bedevilled by chancers exploiting their hard-earned goodwill to confuse consumers.

On the other hand, perhaps it’s an unavoidable effect of the flattening of the world. Some people might also say trade mark owners only have themselves to blame if they don’t take steps to register their rights promptly.

We’d be interested to know what readers think. Are bad faith applications a nuisance, or something worse? And can anything realistically be done to tackle them?

For more information on the UK IP attachés, read the independent report on their work so far.

more from across site and ros bottom lb

More from across our site

The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Managing IP’s Max Walters appeared on the latest episode of ‘Two IPs in a pod’, a regular podcast hosted by the UK patent attorney body, to discuss AI, awards and more
Sources at law firms say they have spent more than three years waiting for IP regulations and explain how the delay is affecting their business
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Managing IP will host a ceremony in London on April 11 to reveal the winners of the EMEA Awards 2024
Lawyers reveal what trends they have noticed in the Western District of Texas and the advice they have been giving clients as a result
Concerns over the EU’s proposed SEP Regulation are based on little empirical support, say Benno Buehler and Kilian Mueller of Charles River Associates
Gift this article