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

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article