Enforcing Intellectual Property Rights Internationally

For companies that do business around the world, enforcing their intellectual property (IP) rights internationally is a significant concern. Infringing and counterfeit goods can not only divert sales, but they can also cause loss of brand value and goodwill—and they can eventually lead to loss of exclusive IP rights entirely. As a result, working with an experienced Florida IP infringement attorney to implement an effective global enforcement strategy is critical.

Even when companies don’t do business overseas, foreign infringement and counterfeiting can have similar consequences. When foreign companies export infringing and counterfeit goods to the United States, IP owners can find themselves forced to contend with the consequences. International enforcement can become critical in this scenario as well, and this may involve taking action both in the U.S. and abroad.

Registering IP Rights Overseas

While registering trademarks, patents, copyrights, and other intellectual property assets is a key step for IP protection, it can also be a key step for IP enforcement. In some cases, registration is a prerequisite to pursuing enforcement (or gaining access to certain remedies) in foreign jurisdictions. The Uniform Domain Name Resolution Policy (UDRP) similarly only allows for enforcement by registered trademark owners (though, in this scenario, registration with the U.S. Patent and Trademark Office (USPTO) is sufficient).

If your company needs to enforce its IP rights overseas, an experienced Florida IP infringement property attorney should be able to assist with determining what steps are required. At Lott & Fischer, PL, we routinely assist domestic IP owners with international IP enforcement, working with local counsel in countries around the world as necessary. If your company needs to protect its IP rights in a jurisdiction where registration is required, we can assist with the registration process while simultaneously pursuing informal means of enforcement (i.e., issuance of a cease and desist letter) during the registration process.

To be clear, failing to register IP rights prior to the need for enforcement can prove costly. Even if registration isn’t required to establish exclusive rights, failing to submit a timely application for registration can limit the protections and/or remedies that are available. Under first-to-file rules, delayed registration can also preclude enforcement in some cases.

If your company’s IP rights are already registered in the relevant jurisdiction—whether under the Patent Cooperation Treaty (PCT), Hague Agreement, Paris Convention, or through other means—your company’s IP counsel should be able to take action immediately. What this entails will depend in the jurisdiction where the infringer or counterfeiter is located, the type of intellectual property involved, and other factors. Given that time is frequently of the essence in IP enforcement matters, it will be important to engage your company’s IP counsel as soon as possible.

Identifying IP Infringers and Counterfeiters

Oftentimes, one of the first challenges that U.S. intellectual property owners need to overcome in international enforcement matters is identifying the infringer or counterfeiter. While the infringer’s or counterfeiter’s identity will be easily discernible in some cases, in many cases, it will not.

There are a variety of ways to identify both individuals and organizations around the world. However, the forensic measures required in any particular case will depend on the specific circumstances involved. This is another area where engaging experienced legal counsel comes into play. The longer it takes to identify an infringer or counterfeiter, the more costly the infringement or counterfeiting can become. We have significant experience in this area as well, and here, too, we work with long-standing colleague law firms around the world to help our clients enforce their international IP rights as quickly and cost-effectively as possible.

Pursuing Legal Action in the Appropriate Forum

Having identified the infringer or counterfeiter, the next step is to pursue legal action in the appropriate forum. This, too, is often easier said than done. Between the varying tribunals, registrars, international organizations, and other entities that could potentially have jurisdiction over a particular dispute, determining where to seek relief is often a task in itself.

In this same vein, it is important to understand that intellectual property laws vary widely between jurisdictions. Judicial procedures and other enforcement mechanisms vary widely as well. As a result, an informed and insightful approach is key, and this, again, requires highly experienced legal counsel. Lawyers with relevant experience will be familiar with the relevant rules, procedures, and substantive IP rights, and they should be able to take appropriate legal action without unnecessary delay.

Taking Action at Home

Along with pursuing enforcement measures overseas, in many cases, U.S.-based IP owners can also benefit from taking action at home. This is particularly true in cases involving infringing and counterfeit goods imported from overseas.

When foreign entities export infringing and counterfeit goods to the United States, federal IP protections apply. This means that companies can rely on their U.S. patent, trademark, and copyright registrations (or, in some cases, their unregistered IP rights) to block illicit sales.

Registering with U.S. Customs and Border Protection (CBP) can be an effective means of domestic IP enforcement against foreign infringers and counterfeiters as well. As CPB explains, it “has the authority to detain, seize, forfeit, and ultimately destroy merchandise seeking entry into the United States if it bears an infringing trademark or copyright that has been registered with the United States Patent and Trademark Office (USPTO) or the United States Copyright Office (USCOP), and has subsequently been recorded with CBP.” While this may not stop a foreign entity from manufacturing infringing or counterfeit goods, it will at least prevent illicit goods from entering the U.S. market—and this can afford the time needed to take additional enforcement action abroad.

Speak with a Florida IP Infringement Attorney at Lott & Fischer, PL

With offices in South Florida, we represent IP owners in enforcement matters throughout the U.S. and worldwide. If you would like to speak with a Florida IP infringement attorney at our firm, we invite you to get in touch. Please call 305-448-7089 or contact us online to arrange a confidential initial consultation.