After completing the regular background research and preliminary preparations in a recent trademark infringement and unfair competition case, we held a short meeting with the client and its legal team, during which we set out a precise and pertinent plan. Compared with the ritualistic communication process found in many cases, a succinct meeting like this ends up saving not only considerable time for all parties, but cuts down on expenses for the client, too.
Companies wishing to secure a tailor-made set of strategies through rapid and efficient communication are advised to pay attention to the following aspects.
Understanding disputed IP
Good communication is impossible if either party lacks a proper understanding of the IP in dispute. Clients should be aware of the basis of their rights, how they were infringed and the objective of the action. IP agents, for their part, must be intimately familiar with the pros and cons of each plan, the expected expenses and possible outcomes. Only then can agents propose a sound strategy that is both well-informed and effective.
The opposite is also true: Agents cannot provide a well-formed solution if critical information is missing or if the matter is approached with a formulaic mindset.
Perhaps the best thing about high-quality communication is that it gives the parties precious advantages in timing. IP infringers – who are often already on high alert for fear of being found out – are quick to switch methods or delete evidence to escape legal liability.
If communication stagnates, it becomes ever more difficult to come up with an effective plan, and the best window for investigation or securing evidence would be likely to have closed. This can result in anything from a delay in the case to losing all hope of holding the infringer responsible.
Good communication saves precious time for both parties while also sparing costs of redundant consultancy and is, therefore, highly beneficial.
Efficient communication is the product of sound preparation conducted by both parties prior to any discussion. Notable details to account for in preparation include:
A distinct objective
The client, being the holder of the IP rights, naturally comes with a good understanding of its own rights and the facts of the case. Other facts, such as possible IP rights of the opposing party or other infringing parties or actions, may only surface after further investigation. The agent is responsible for organising and keeping track of the basis of rights. Both parties, however, must be on the same page regarding their objectives for the case, which depend on their existing rights. For example, the goal could be to put a stop to the infringement in the fastest, most economical manner; or perhaps conducting in-depth investigation to eventually hold the infringer civilly, or even criminally liable.
Know your enemy
If the IP possesses considerable commercial value, the rights holder is likely to encounter all sorts of infringement.
Some are perpetuated by opportunistic infringers seeking to make a profit, others by more ambitious, competitive ones eyeing market share, many of which are IP right owners themselves. Given this complexity, an ideal solution is unlikely to be achieved by merely adopting a fixed formula. Indeed, plans must always be subject to adjustment based on the specificity of the infringement – another reason for preliminary investigation in IP disputes.
Evidence and follow-up actions
After gaining a thorough understanding of the objectives and all related facts, it is time to plan the next move. Generally speaking, unless in special or urgent circumstances, it is advised to first secure all evidence and then, based on the evidence collected, determine the follow-up actions. Timing is of the essence in the collection of evidence, as it may no longer be possible if the window is missed. After all evidence is secured, there is usually time to work out the next steps.
Minimise bad communication
Improving communication means cutting time wasted in ineffective communication. Clients often approach a case underestimating the intricacies of IP protection.
Confident in the legitimacy of their own rights, they sometimes dismiss the effort needed to actually battle for them. At other times, they may believe that IP protection is a simple matter of following protocols with no need for further discussion.
Under these circumstances, even when presented with a tailor-made plan of action, the client is probably unlikely to study it in detail, and consequently consensus between the parties can be hard to find.
Sometimes it is the agent that too easily reverts to a familiar formula, approaching all cases with the same set of “tricks” without sufficiently considering the facts and the objectives of the individual case.
This could make a reasonably tailor-made strategy seem more like a far-fetched luxury.
In order to protect IP rights via effective communication, clients must sufficiently understand and acknowledge the value of their own IP.
In addition, they should be reasonably knowledgeable about the relevant market environment and IP infringement so as to be able to make informed selections and decisions when multiple plans are put to them.
An agent, once selected, must be trusted without reservation with all the relevant facts. Only an agent familiar with the case and the needs of the client can propose a plan of action that best addresses the infringement.
To sum up, the secret ingredients for effectively protecting IP rights from infringement are preparedness, trust and good communication for both client and agent.
Frank Liu is a partner at Shanghai Pacific Legal
Room 2709, 27/F, Plaza 66 II
1266 Nanjing Road West, Shanghai 200040, China
Tel: +86 21 6086 0199
Fax: +86 21 6086 0111