TM protection all about strategy

By Frank Liu, Jincheng Tongda & Neal
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We have discovered in our daily operations that many people do not have a complete and clear understanding of trademark strategy. Some people envisage trademark lawyers as people who “go after fakes”. People who have a better understanding of trademark law will believe that all that can be done to protect trademark rights is sending lawyers’ letters, and administrative complaints and legal actions. In fact, a trademark strategy is not just a simple aggregation of single acts, but rather an organic combination of effective solutions tailored for the client based on the specific circumstances of the trademark and practical experience.

刘建强 FRANK LIU 金诚同达律师事务所合伙人 Partner Jincheng Tongda & Neal
刘建强
FRANK LIU
金诚同达律师事务所合伙人
Partner
Jincheng Tongda & Neal

Just as in constructing a high-rise building it is necessary to first have a preliminary survey and design, the establishment and protection of a trademarked brand also first requires a strategy that is tailored based on the specific circumstances. A strategy is like the construction design drawings for a high-rise; subsequently, as long as the construction team proceeds with the construction in line with the details determined in the design drawings, the high-rise will go up. Similarly, as long as a strategy is drawn up based on the specific circumstances of the trademarked brand and actions are taken based on the specific action plan determined in the strategy, the establishment and protection of the trademark rights can achieve the corresponding effect.

Accordingly, an organized strategy is more important than the actions themselves. However, an organized strategy is not a simple enumeration of common trademark right establishment and protection actions. It requires an in-depth understanding of the circumstances of the trademarked brand at the outset and, after a detailed analysis based on the specific circumstances, a tailored series of combination solutions.

For example, when establishing a brand it is necessary to consider: what brands need to be established? Among these brands, which are the more important core brands? What trademarks are to be applied for these brands? What are the combination solutions for these trademarks? For which classes are the applications to be made? Through a search, confirming which obstacles could be encountered in applying for the various classes. How are these obstacles to be overcome if encountered? If insurmountable, what is plan B?

Furthermore, a strategy itself should not be immutable. Even a strategy that is well thought out from the outset will be unable to respond when an investigation or evidence reveals new facts. Accordingly, after a strategy is formulated, it is only by promptly adjusting the response strategy based on the change of circumstances faced by the trademarked brand that better results can be achieved in the course of trademark right establishment and protection.

A strategy should focus on the big picture, considering specific action arrangements at a higher level. Of course, the success or failure of each specific action will have a major impact on the ultimate outcome of the implementation of the strategy.

However, looked at from the strategy level, each action needs to be divided into the minor and major, the non-urgent and urgent, and should not each be given average attention. In trademark conflict cases, it is common for each of the parties to the dispute to have a trademark registered in different classes. If it is difficult to prevail in every single conflict case, from the strategy perspective, it is necessary to clearly distinguish the impact that each individual case could have on subsequent cases or the overall outcome and concentrate resources on the key cases so as to ensure, in the first instance, prevailing in the key cases.

Lawyers must not limit themselves solely to legal solutions in the establishment and protection of trademarked brand rights. The client will not be in the stronger position in every case. If, in practice, the weaker position cannot be turned around, it is necessary to think beyond the legal aspect and consider a possible commercial solution.

The author once took over in a case where the client was appealing after a loss at first instance. The client had exhausted all appropriate means at first instance and its chances of succeeding at appeal by relying on a legal approach were extremely slim. Furthermore, the other party had had the court place a large quantity of the client’s property under seal, so the consequence of losing was extremely serious. Given this situation, we opted to satisfactorily resolve the dispute through a commercial solution. Regarding the losing party in a trademark right protection case, the prevailing rights holder can also consider adopting, beyond obtaining compensation, a commercial solution that could serve to further the rights holder’s relevant business. The outcome so generated may far exceed the results that could have been achieved by simply using a legal solution.

When applying a trademark strategy, taking a conflict case as an example, what first needs to be taken into consideration is which action in the arrangement is to be the main line. The discrepancies between different actions, the conditions required for the success of these actions and the effects generated after such actions are very large. Determination of the main line of action is tantamount to determining the entire direction of the strategy. To have the strategy generate a better result, it is necessary to leverage the synergy effect.

The main line of action will usually require other complementary actions. When coordinating the actions, the sequence and timing of different actions will be extremely important. If litigation is the main line of action in rights protection, when facing an extremely vigilant opponent, if the securing of evidence has not been completed and a lawyers’ letter is hastily sent, the same could have a major adverse impact on the legal action and may even make the collection of further evidence impossible by giving warning to the other party, resulting in the failure of the main line of action. Also, the speed and intensity of each of the actions that constitute the overall strategy also require organic complementarity and synergistic expression of their effects.

As mentioned above, the implementation of a strategy is not the enumeration of knowledge points, but is more a practical activity that synergistically combines actions, timing, speed and intensity, and is more similar to a defensive sport. If the basic skill knowledge points of basketball or boxing are enumerated, they seem quite simple, but an actual match presents myriad situations, fully reflecting the organization and implementing effect of the strategy. It is only with the in-depth understanding and skilled application of a trademark strategy that the effect of comprehensively and effectively establishing and protecting trademarked brands can ultimately be achieved.

Frank Liu is a partner of Jincheng Tongda & Neal

Jincheng Tongda & Neal

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