Haldiram is the latest addition to the ever-growing list of victims of international trademark infringement. They have filed a suit in the US district court alleging that Aahar Food Distributors LLC has imported, distributed and sold counterfeit Haldiram products in the United States. Had Haldiram not protected their mark outside of the origin country (India) Aahar would have had a chance to get away with this fraud that might now cost them over $2 million in damages.
Intellectual Property protection is an important aspect of any business to foster and monetize their innovations. As the company scales, it is important to scale the IP protection framework too. With added spread of information of your products, comes an added responsibility to restrict even more people from counterfeiting. Since trademark law is territorial in nature, it is important to protect your mark in various nations in which your mark is being advertised or marketed.
How are other countries protecting their brand internationally?
All relatively famous companies make sure to protect their IP as far around the globe as possible, because it is extremely easy for someone on the other side of the ocean to counterfeit an idea and run a monopoly on that side. That counterfeiter could cause even more harm to the origin company by providing sub standard goods and spoiling the brand’s reputation in the eyes of consumers whom the brand hasn’t even reached yet. In April ’21 a Belgium Court ordered American International Gemological Laboratories to cease using the mark ‘AIG’ as it was deceptively similar to the ‘GIA’ mark of the Gemological Institute of America, a no-profit institute dedicated to research and education in gemology. This came with reasoning to not only protect the rights of GIA, but also to protect consumers around the world who rely on GIA’s expert gemological reports to conduct trade.
One may believe that since they are a large company, small counterfeiters won’t impact them, but the fact of the matter is that every counterfeit item sold by anyone except for the company is a direct loss to the company. This is why Disney stays more than vigilant to catch and prosecute every infringement. Back in 2008, Disney sued a small family owned enterprise for advertising their business using costumes of the trademarked characters ‘Tigger and Eeyore’ that they had purchased off of eBay. The family followed all of Disney’s requests to cease using the advertisements and costumes, but instead of handing over the costumes to Disney to destroy, they returned it to the company they purchased it from, and for that they got sued for $1,000,000. And this is just one of the probable 100s of infringement cases Disney has filed till date.
Why is it important to protect brands internationally?
Disney understands brand protection and the threats they may face if this is taken lightly, but not all companies do. The Elon Musk run Tesla Motors Inc. was sued by a Chinese businessman in 2014, who managed to register the rights to the TESLA mark in China before Musk did. The businessman might not succeed in his claims as Tesla Motors can hopefully prove that this is nothing but an attempted fraud, but it will cost the company a huge sum in legal fees, maybe a settlement amount and even cost to purchase the trademark, all of which could have been easily avoided if they were vigilant while starting up.
Since trademark rights are jurisdiction specific, it is possible that different parties may own different trademarks in different countries as seen in the Tesla case. Therefore, it is advisable for trademark owners to consider registering their trademarks under an international regime.
How can one protect their brand internationally?
The Paris Convention adopted by 177 countries makes it possible for IP rights owners in foreign countries to be afforded the same protection and rights under the law as available to the citizens of that country. It also provides an extra six months to rights holders in one of the member countries to file for rights in any of the other member countries. These subsequent applications will be regarded as having been filed on the same day as the first application, and hence have priority over other applications filed by other individuals in that six-month period. Another regime is the Madrid system, which allows for the application of registration of their trademark in a large number of jurisdictions at once. Per this system, nationals may secure protection of their trademark in all the states that are party to the agreement even if it is registered only in the origin country. Any registration secured under this scheme is designated an International Registration.
With the advent of technology, monitoring the internet market for counterfeits has become relatively convenient. Using these trademark watch software makes it possible to spot infringements early on. When the counterfeits are spotted early, the abundant time can be used to conduct preliminary investigations before taking appropriate civil or criminal action. One can choose from a variety of broader measures to combat infringement when caught early.
Conclusion
When a start-up wants to go international, IPR plays an important role to increase value and open doors in multiple jurisdictions, making intellectual property and brand value as major assets for the company. Therefore it is important to be vigilant and have an international vision while doing business in today’s technologically savvy internet world. It is not as difficult to be vigilant and to take care of your livelihood as it is easy for someone else to damage it. There have been many instances of world renowned brands suffering due to blatant trademark infringement, Air Jordan and Qiaodan in China, American Eagle Outfitters and Urban Eagle Authentic Outfitters in India, Louis Vuitton and Louis Vuitton Dak in South Korea and Gucci and Forever 21 in the USA.
Don’t let your company come next on the list; Share your experiences with infringement and allow us to help guide you through the process of protecting your brand and its intellectual property internationally.
