IP protection: Thinking outside the box

There will always be cases about confirming the ownership of intellectual property (IP) rights or protection of IP rights that share commonalities. And in dealing with these cases, IP agents may be trapped in some sort of mindset and follow patterns developed previously.

This approach significantly improves efficiency and allows the agency to follow a proven and well-established procedure. However, it also ignores the differences among cases by treating them all in the same way, and fails to effectively cope with new situations.

The IP strategy should be tailor-made to the specifics of each case, whether it’s an average case that falls within the scope of regular procedures, or a difficult case. Even among average infringement cases, the motivations of the infringers, the infringing behaviours and methods, and the impact on the right owners, are different. Thus, adjustments to a pre-set approach and procedure are needed. An unconventional infringement case should be responded to with a customized strategy. IP agents should think outside the box and adopt a new solution where the existing pattern fails.

Based on the author’s experience, there are two types of “out-of-the-box” thinking, which will be analyzed through two cases, i.e., to jump out of the existing pattern and consider new mechanisms within the legal framework, or to abandon legal thinking altogether and seek commercial solutions where possible.

Case No. 1. Trademark squatter A has applied for the registration of trademark b of company B in a related category (with application pending) and registered the domain name “b.com”.

Company B filed for a domain name arbitration for “b.com” and secured a favourable award. In general, squatters would not challenge the arbitral award in a court, as the likelihood that the award is overruled is small. Right owners would then apply for the transfer of the domain name by virtue of the effective arbitral award.

The trick in this case was that squatter A understood that company B highly valued the domain name, and therefore A filed a lawsuit in the court in the place where A resided, and applied for the freezing of the domain name. A also offered to transfer the domain name to B at a high price.

One common approach would be to proceed with the lawsuit on the domain name ownership dispute, where company B might be able to win the case and secure the ownership of the domain name. However, even so, the delay caused by the proceedings would damage the reputation of B. Upon a full understanding of the needs of the client, the author believed that the common approach would incur commercial loss to Company B, even if B won the case. The author decided to pressure A from a different perspective.

The new strategy was to sue A for infringement on top of the existing case on a domain name dispute. We challenged the jurisdiction of the court over the domain name dispute and won the support of the court, and the case was thus transferred to the court in the place of the operation of B.

In the trademark infringement case, we claimed a significantly high compensation and had the case successfully established in the court of the place of B’s operation. The two cases, ownership dispute and infringement case, running simultaneously, imposed high pressure on A. The result was that A assisted B in domain name transfer free of charge, and paid a considerable amount in damages to B, and the trademark was also transferred to B free of charge.