Risk of trademark infringement is compounded in the digital age
Clients warned that, while in certain jurisdictions opposing a trademark is a purely administrative proceeding, in other countries, court hearings are inevitable
The risk of your company’s trademark being used in a jurisdiction where it has not been registered is compounded in the digital age, participants at a Barcelona event hosted by The Latin American Lawyer in conjunction with Kluwer Law International heard.
The risk is greater due to the fact that a country-specific launch of a new product will be visible worldwide, so some people might rush to register that trademark locally before the rightful owner has a chance. However, attendees were also told that in certain countries, such as Colombia, courts are more aware of these issues and – given that such countries have more judges specialised in intellectual property – trademark infringement cases are resolved more easily.
Seeking dialogue
Companies should follow protocols to avoid expensive and lengthy cases, the event heard. Proceedings vary from country to country and there is an emerging trend for seeking dialogue before embarking on litigation. In addition, participants said an increasing number of countries are changing legislation in order to adjust to this new environment and also follow global regulatory protocols, such as the Madrid Agreement and the Washington Treaty. To cite one example, Mexico is implementing a new system for opposing trademark registration, which is set to make proceedings quicker and more straightforward.
However, clients should be aware that, while in certain jurisdictions opposing a trademark is a purely administrative proceeding, in other countries, such as Panama, you have to go to court and go through the litigation process, attendees were told. Participants also warned of the consequences of relying too much on ‘cease and desist’ letters as a strategy. These documents could potentially be shared on social media and cause damage to a brand and as well as the company’s reputation.
