Strength of action in implementing trademark strategies

As trademark holders easily understand, the timing and speed of actions is crucial to the effective implementation of trademark strategies. However, it is also necessary to control the strength of each implementation of a trademark strategy, taking into account the target of the action and any other moves related to it, as well as the ultimate business purpose to be achieved for the trademark holder. Moreover, appropriate control of strength is also of great significance to realizing the strategy itself. The following is an illustration of the strength of actions appropriate to different scenarios.

Strength of actions against the same target at different stages. The implementation of a trademark strategy may involve either multiple different actions or only one complex action. Even if there is only one action, it is necessary to adjust its strength at different stages in line with the reaction of the target. For example, sometimes safeguarding trademark rights may involve an infringing target that has business partnership with the holder of the infringed trademark. In such a situation, legal action at the early stage generally needs to be taken with a moderate approach, and the lawyer’s letter has to focus on discussion or negotiation with the aim of resolving the dispute through means that do not affect the business relationship. However, if the other party does not want to cooperate, the trademark being infringed may suffer greater damage, possibly impacting other infringement activities in the market, which, ultimately, may have severe consequences. Despite such a situation, the trademark holder may still be reluctant to take an aggressive approach. In such a scenario, the lawyer’s letter will need to have a tougher tone, giving a clear statement of the infringement and related legal consequences to put further pressure on the infringer to stop the infringement.

There are times when merely sending lawyers’ letters to targets do not work. This prompts the need to consider a combination of moves, thereby enhancing the strength of actions to facilitate the effective implementation of the trademark strategy. For example, when lawyers’ letters are unlikely to work, we may consider lodging complaints or cracking down on counterfeits through third-party platforms, or even filing a civil or criminal tort lawsuit to stop the infringement.

Frank Liu is a partner at Tiantai Law Firm in Shanghai