Avoid legal route when it comes to trademarks

Avoid legal route when it comes to trademarks – trademark lawyer

A trademark lawyer is advising businesses to avoid the legal route when it comes to protecting their brand.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property management consultancy in Wellington, said 99% of trademark problems may be solved by taking a commercial option over litigation.

“Brands are very personal, so when somebody infringes your trademark it’s very easy to get hot under the collar and call in the lawyers, but that’s sometimes the quickest route to disaster.

“Easily 95% of trademark disputes that we act on for our clients are solved through negotiation, or by finding ways to co-exist. The best commercial option is usually not the legal one.”

A former Assistant Commissioner of Patents, Trade Marks and Designs at the Intellectual Property Office of New Zealand, Mr Doucas said that when another party infringes your trademark and is properly notified, they will almost always take the situation seriously and be prepared to talk and listen.

“Resorting to legal action off the bat can often make the other party dig in their heels. Telling somebody to ‘cease and desist’ before both sides understand each other’s position makes the conflict personal very fast, and then it gets messy,” said Mr Doucas.

He said how the other party is approached is critical to a successful outcome.

“One local client had been using a trademark for several years and applied for trademark registration, only to find that an overseas company had already applied for the same trademark.

“We entered negotiations with the overseas company, who ended up buying our client out and paying for them to develop a new brand, plus they got to keep their company – it was like getting their cake and eating it too.

“The lesson here is that a trademark is like any other asset, it accrues in value and can be leased, bought and sold like any other property,” said Mr Doucas.

“Remember, if all else fails you can always go the legal route. But it should be the means of last resort.”

About Zone IP

ZONE IP is an intellectual property management consultancy providing authoritative advice in trade marks, copyright and branding. ZONE IP is headed by a former Assistant Commissioner of Patents, Trade Marks and Designs of the Intellectual Property Office of New Zealand (IPONZ).

ENDS

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