Enforcing Rights

In some cases there may be no alternative but to enforce a brand owner’s rights against third parties. Each case turns on its facts and the rights in issue but there are some general matters which should be considered in virtually all cases.

First, the importance of carrying out a thorough investigation of the relevant facts cannot be over-emphasized. An appropriate response cannot be developed without full knowledge of the facts. Frequently this may require the assistance of independent investigators to assist in gathering the evidence.

Second, a review should be carried out to determine the nature of the third party’s business activities, the intellectual property owned by it, basic corporate information including business name registrations, and its general financial strength including its ability to engage in protracted litigation.

Third, once such investigations have been carried out it can be determined what type of claims should be asserted, the strength of the claims and the scope of potential remedies available. The most appropriate negotiating position, the claims asserted in a demand letter or statement of claim and the foundation of a litigation strategy will follow from this determination. Concurrently, an assessment should be made concerning the appropriate court or tribunal for asserting those rights.

Fourth, an assessment should be made of the potential costs of enforcing the rights in issue. This should include the direct costs of retaining counsel and other litigation costs, the indirect costs relating to the loss of employee time devoted to the proceedings, the potential exposure for costs that the brand owner will be subject to and the potential recovery.

Finally, it is important to develop a general strategy to arrive at the desired goal. The strategy, including the specific tactics or steps to be followed, should be committed to writing and not varied without careful consideration. The formulation of a realistic plan and obtainable goal is dependent on the thoroughness of the investigation and analysis described above.