“As if the loss incurred by global markets due to trade of counterfeit and pirated goods was not enough modern counterfeiters have now found another means to dodge the law enforcement…”
Global supply deployment into global south and supply chain disruptions due the pandemic have been a great opportunity for manufacturing networks and counterfeit industry, that were the quickest in adopting intellectual property provisions with trademark domiciling; to boost their domestic industry operations. While markets and countries enjoyed the surf ride of Made Elsewhere but Sold Here, today brands are falling trap to trademark infringement calls by counterfeiters and vendors.
As if the loss incurred by global markets due to trade of counterfeit and pirated goods was not enough modern counterfeiters have now found another means to dodge the law enforcement by trademarking overseas manufacturing orders by foreign brands in their own names to claim trademark ownership.
What is Trademark Domicile?
“Besides, a provision of market ownership or goodwill in trademark exists in favour of the manufacturer…”
Trademark domicile is a procedure that enables a manufacturer or a counterfeiter appropriate a foreign brand’s rights by trademarking the brands production in the country of manufacturing. Trademark rights are territorial, that is you can exercise those rights in countries of registration or origin. Therefore, unless the brand procures trademark rights in the country of manufacturing, they are at a risk of becoming a victim of trademark war by a counterfeiter or a vendor; who then can claim their trademark rights on your brand.
Besides, a provision of market ownership or goodwill in trademark exists in favour of the manufacturer, where the benefit of doubt goes to manufacturer if the foreign brand cannot claim proprietorship to its trademark ; allowing counterfeit producers or supply order vendors to put their mark on your product . According to report on IP-crimes by OECD and EUIPO, Europol’s operation OPSON IX in 2021, authorities seized almost 2 000 tonnes of IPR-infringing medical and healthcare products which were claimed to be trademarked outside of the European Union.
In our experience, Nicomedia Partners have come across cases where international companies fail to file for trademark rights in country of manufacturing and instead chose to outsource production without due diligence. Thus, meeting with hefty claims of trademark infringements on its exports because the manufacturer decided to profit off its goodwill by trademarking the product in their name.
Even though you can claim bad faith to re-claim your brand’s rights but overseas laws can be time consuming and depletes your market value; considerably.
“While, your trademark carries significant value, the solution to combat this new counterfeiting approach is not just filing for trademark …”
Securing your Off-shore Trademark Rights
Trademark ownership disputes are not uncommon and brand-manufacturer disputes are a rapidly growing segment of IP crimes around the world. While, your trademark carries significant value, the solution to combat this new counterfeiting approach is not just filing for trademark but also creating your go-to market IP strategy that registers your trademark in foreign land and build binding contracts for your manufacturers and distributors.
If you are a new brand trying to in-road a new geography then get in touch with Nicomedia Off-shore Legal service team to understand your businesses rights and register your brand rights that meet domestic market statues and secures you from infringements.