Best practice in trademark litigation

By Mark Puzella, Azlina Aisyah Khalid, Lim Eng Leong, Abhai Pandey, Priya Anuragini, Zoya Nafis, Kirsten Gilbert and Vicky Butterworth

Trademark practitioners from around the world offer practical guidance on litigation best practice in their jurisdictions

While litigation is usually the last option for dispute resolution, there are times when it becomes unavoidable. When this happens, it is vital that the right strategies be implemented. This involves identifying the right approach for the particular dispute and facts, understanding the nuances of the local regime when litigating in other jurisdictions and striving to keep potentially budget-busting costs manageable.

With this in mind, World Trademark Review sat down with a panel of experts from across the globe – Abhai Pandey, Priya Anuragini and Zoya Nafis from LexOrbis in India; Azlina Aisyah Khalid and Lim Eng Leong from Henry Goh in Malaysia; Kirsten Gilbert and Vicky Butterworth from Marks & Clerk Solicitors in the United Kingdom; and Mark S Puzella from Fish & Richardson in the United States – to discuss litigation strategies and explore ways to keep costs down.

At what stage should court action become the preferred option?

Mark S Puzella (MSP): Filing an action may be a preferred early or later step in a dispute, depending on the circumstances. Factors to consider include whether a cease and desist letter may elicit a declaratory judgment action in a less favourable jurisdiction, an assessment of the infringing party’s likely response to a letter versus a more aggressive approach and the desired outcome (ie, a negotiated settlement or court order). However, filing an action is typically not recommended unless the client is willing to pursue the matter through to trial if necessary.

Azlina Aisyah Khalid (AAK): That is a good point. A court action can become the preferred option if there is sufficient evidence to support a viable cause of action – and the rights holder is confident to see the action through.

Ultimately, a court action may sometimes prove to be not just the preferred, but the only option to enforce the trademark owner’s rights if there is a clear indication that an amicable settlement is not viable or realistic – for example, when the other party is not cooperative or responsive to attempts to negotiate for a settlement. However, a court action can also be the preferred option if the rights holder wishes to take advantage of the element of surprise – for example, if it wishes to apply for interlocutory relief such as an interim injunction or an Anton Piller order. More often than not, a court action is the right route if the infringement significantly affects the rights holder’s business or market share and a strong message has to be sent to competitors which act unlawfully (eg, using a confusingly similar trademark to draw custom).

Kirsten Gilbert (KG): Certainly if the defendant refuses to engage positively with the claimant on receipt of a letter before action or the claimant does not want to be drawn into protracted pre-action correspondence (the costs of which may not be recoverable), court action should, in theory, become the preferred option.

An application for an interim injunction must be made as soon as the infringement is discovered

However, each dispute is different. The stage at which court action should become the preferred option will differ in each case and will depend on many factors, including the nature of the dispute and severity of the infringement, the attitude of the claimant to litigation and whether productive settlement discussions are ongoing. Indeed, the circumstances of the dispute may be such that court action may never be appropriate. If the infringement has only recently (or not yet) commenced and the damage caused would be substantial yet unquantifiable, then early court intervention in the form of an interim injunction application as mentioned above (with or without notice to the defendant) could be essential. An application for an interim injunction must be made as soon as the infringement is discovered, failing which the court is likely to conclude that the status quo should be maintained pending the full trial.

Abhai Pandey (AP): I would say that once the rights holder discovers infringement or passing off – depending on the nature of the violation, the nature of business and the platform where the violation takes place – it can be decided whether to initiate court action or instead to notify the infringer and demand an undertaking from it to stop using the mark. This can be done by sending a cease and desist notice to the infringer – if it agrees to comply, the dispute ends.

In cases of trademark infringement on web-based marketplaces, a takedown notice can usually be sent to the owners of the site, with concurrent actions initiated against the infringers. However, should the infringer decide to contest the notice or fail to respond, court action becomes necessary. It is preferable to institute a legal action if the mark is registered or well known in India and the rights holder can establish that a prima facie infringement of its rights has taken place, which is likely to result in irreparable loss. This will enable it to secure interim relief from the court, often during the first hearing. This in turn will prompt most infringers to come to the negotiating table so that an early solution can be reached

Having decided that litigation is inevitable, is it possible then to forum shop in your jurisdiction and, if so, what issues should be weighed up when doing this?

KG: In Europe, the basic rule under Article 4 of EU Regulation 1215/2012 is that defendants should be sued in the courts of their home jurisdiction, although there are certain exceptions and alternative grounds on which the court can take jurisdiction. For example (and usually of most relevance in IP disputes), in cases concerning tort, proceedings may be brought in the place where the harmful acts occurred or may occur (Article 7(3)). The advantage of suing defendants where they are domiciled in respect of the infringement of a Community trademark is that the claimant can seek a pan-European injunction – this would not be possible if the defendant were sued where the harm occurred. A claimant should bear this in mind when deciding in which jurisdiction to issue proceedings, particularly if the defendant lives abroad and the matter involves online infringement. There is also scope for a claimant to forum shop within the United Kingdom. I will come back to this later, but a claim can be brought in the High Court, the Intellectual Property Enterprise Court (IPEC) or the Small Claims Track within the IPEC. Each forum has its advantages, depending on the nature of the dispute.

MSP: In the United States, various differences in the federal circuit courts of appeal should be considered before choosing a jurisdiction. For example, some circuits vary on the degree to which they recognise ‘initial interest confusion’. The best practice is to consider your likely theories of liability and conduct a pre-filing assessment of the relevant jurisdictions.

AP: Forum shopping is not permitted in India and an action must be filed at the forum that has jurisdiction to entertain the suit as per the provisions of the trademark legislation or in accordance with the Code of Civil Procedure. In Chetak Construction Limited v Om Prakash (1998(4 SCC 577)), the Supreme Court of India expressly held that a litigant cannot be permitted to choose the forum and any attempt at forum shopping should be strongly discouraged. The general rule of jurisdiction stipulates that a suit is best filed where the defendant is based or where the cause of action arises. However, Section 134(2) of the Trademarks Act, 1999 provides an exception to this and gives an option for rights holders to file suit in a court in the jurisdiction where the rights holder is based, irrespective of where the defendant is based or where the cause of action arose.

AAK: In Malaysia, forum shopping within the court system is neither possible nor allowed.

What do you consider to be the main advantages of litigating in your jurisdiction?

Lim Eng Leong (LEL): One of the main advantages of litigation in Malaysia is that since 2007 we have had specialist IP courts with both civil and criminal jurisdiction within the court system. The initial plan was to establish 15 session courts and six high courts around the country. However, so far there is only one IP High Court in Kuala Lumpur and a few session courts, which hear counterfeit and piracy cases. Outside Kuala Lumpur, IP cases are heard by ordinary civil high courts. By virtue of building experience of IP disputes on a regular basis, the sitting judge of this dedicated IP court naturally becomes more adept at dealing with a wide range of IP disputes. As a result, the disposal of cases becomes more efficient and speedier, as compared to other civil cases.

Priya Anuragini (PA): The judicial authorities in India have also made concerted efforts to ensure that IP rights are adequately enforced and protected. High courts across the country grant interim injunctions in straightforward trademark infringement cases, mostly at the first hearing. This helps with the immediate enforcement of rights as soon as any violation comes to light, without the rights holder incurring large costs. Further damages are also routinely awarded in cases of trademark infringement and copyright piracy.

In recent times the Indian judiciary has enforced IP rights against anonymous defendants by granting John Doe-type orders. These allow for immediate action should any instance of infringement come to light, as they cover both alleged and potential infringers. The rights holder need only serve the infringer with a copy of the John Doe order, rather than having to seek interim relief every time that a new infringement comes to light. This allows the rights holder to institute injunctive action well in advance, to combat even the possibility of an infringement.

KG: The UK system also provides the parties with a comprehensive framework in which to investigate the disputed issues in depth and establish the facts. This is done through a number of stages as the case progresses – in particular, disclosure of documents and evidence from fact, and expert witnesses. Issues of infringement and validity can be dealt with at the same time in UK proceedings. Not only has this the potential to keep overall costs down, but it provides greater commercial certainty for the parties. IP cases tend to be heard by specialist judges, who provide detailed, well-reasoned judgments which are respected in other jurisdictions.

In the past, the substantial costs involved in UK litigation have deterred claimants from choosing the United Kingdom as a forum to resolve IP disputes. However, there is now the option to bring a claim in the IPEC, a specialist list of the High Court. The key benefit is that each stage of the proceedings is carefully managed by the court, which should result in substantial cost savings for the parties. In addition, any potential costs award is limited to an overall cap of £50,000. The IPEC also has a small claims track for claims up to a value of £10,000.

MSP: Several of the judges in the Federal District Court for the District of Massachusetts are inclined (not by rule, but by preference) to deny motions for preliminary injunctions and instead to set a very short schedule for discovery and trial on the merits. This process may or may not be an advantage, depending on the circumstances. It is useful to consider the assigned judge before filing a motion for preliminary injunction so that you can plan accordingly.

Turning to court strategies, to what degree is survey evidence accepted by the courts and what are the main considerations when evidence gathering?

PA: Survey evidence is recognised in India and is accepted by both the Trademark Registry and the courts. However, the admissibility of survey evidence depends solely on the discretion of judicial authorities. The Draft Manual for Trademark Practice and Procedure 2009 sets down guidelines that should be followed while adducing survey evidence. Among other things, it mandates that:

  • survey questions be well framed and asked in a general way;
  • the name of the trademark applicant not be disclosed while the survey is being conducted;
  • no leading questions be asked; and
  • the number of people invited to take part in the survey be disclosed.

AAK: Survey evidence is similarly admissible in Malaysian courts, provided that it complies with stringent admissibility rules. Such evidence may be persuasive, depending on the nature, methodology and objective of the survey. In order for the results of market surveys to be given credence in court, ample preparation is required to formulate proper and acceptable questions – a cross-section of the relevant public must be interviewed and the answers accurately recorded for tendering purposes. In certain instances, the court may require interviewees to attend court as witnesses, which will incur considerable expense and effort. If they do not attend, the court may treat the survey evidence as hearsay. The rights holder must consider whether this is worth doing because ultimately, whether the contended marks are confusing can be determined only by the court and not the survey interviewees.

MSP: Survey evidence is widely accepted in the United States and, absent fundamental errors in methodology, many criticisms may affect the weight of the survey, but not its admissibility. The key considerations are to query the correct population and to follow accepted methodologies, such as those set out in the Federal Judicial Centre’s Manual for Complex Litigation.

Vicky Butterworth (VB): Methodology is also key in the United Kingdom. Historically, the courts have been wary of survey evidence and its value. However, following Marks & Spencer v Interflora, we now have clear guidance on the admissibility of survey evidence after the Court of Appeal ruled that, even if survey evidence is technically admissible, it should be allowed only if the court is satisfied that it would be valuable and the likely utility of the evidence justifies the costs involved. The court in Enterprise Holdings v Europcar Group introduced an additional requirement – it is necessary to show a likelihood that the survey will be held valid at trial (this requirement needs to be established on the basis of documents alone and without the need for expert cross-examination). Therefore, some of the main considerations when evidence gathering are:

  • the need for early case management;
  • the scope and methodology of the survey;
  • the costs involved;
  • the importance of avoiding leading questions; and
  • the relevant period for the survey (depending on whether the survey goes to the issue of, say, distinctiveness, goodwill or reputation).

How influential is the evidence of expert witnesses and how should their use be managed?

VB: Expert evidence can be very helpful in instructing the court on those matters which it would otherwise be unaware of (eg, to explain the special features of a particular market and the behaviour of customers in that market or to explain the results of a survey), but it is admissible only with permission from the court. The difficulty in trademark and passing-off cases is that it is often hard to identify what is expert evidence as opposed to evidence from a factual witness on the circumstances of the trade (often referred to as trade evidence). Ultimately, the role that the evidence is to play in the proceedings will be an important element in characterising the evidence in question.

In recent years the courts have clamped down on issues in trademark cases which require any kind of expert evidence. Therefore, if expert evidence is admissible, it can be very influential – the judge is used to hearing from each side’s expert so can be on the views being expressed on each side. However, expert evidence needs to be managed carefully. The parties first need to decide whether it is necessary at all, bearing in mind the court’s approach to admitting expert evidence. If it is, it is important to be clear on the specific issues to be addressed by the expert. Once this has been established, it is crucial to obtain permission to include this evidence from the court at an early stage; otherwise, the evidence could later be open to challenge.

LEL: For IP issues requiring technical expertise, parties can present expert evidence to assist the court in understanding and deciding such issues. A credible expert witness with the relevant technical background can be extremely helpful, not only to the party that calls it but also in steering the judge to reach a proper decision (trials at first instance are heard by a single judge because the jury system in Malaysia has long since been abolished). In order to achieve this level of dependability and credibility on the stand, the witness must be properly and adequately prepared before trial. Since in most cases experts from both sides will be called and may be divided in opinion and approach, the judge will ultimately make the final decision.

Experts should be selected based not only on their expertise, but also on their ability to write and teach

MSP: In the United States, expert witnesses – properly used – can be very effective. Experts should be selected based not only on their expertise, but also on their ability to write and teach. An expert report needs to convey complex information in a form that is understandable and compelling. Likewise, the expert needs to have natural skill as a teacher. The fact finder needs not only to understand the expert’s testimony, but also to believe it.

For this reason, I personally prefer academics who are well respected for their teaching, as opposed to professional experts who may have the right expertise, but sometimes lack the ability to connect with their audience.

Zoya Nafis (ZN): Unlike in other jurisdictions, in India expert evidence is considered a weak type of evidence and the courts do not consider it conclusive. It is therefore not safe to rely on it without seeking independent and reliable corroboration. In cases involving intellectual property, expert evidence is usually adduced in patent matters – particularly those involving complex scientific and technical analysis – but even here corroboration is needed. In one recent judgment the Calcutta High Court ruled that a patent cannot be revoked merely on the basis of an expert opinion. The court went on to say that an expert opinion should be treated as a relevant fact only and that the product’s patentability can be assessed only after taking all other materials into account.

Many trademark owners attempt to enforce their rights based on the mere suspicion of infringement, but it is crucial to conduct a thorough investigation

In summary, what do you consider to be the key elements to building a successful case?

AAK: A key factor to building a successful case is concrete preparation before commencing a suit in court. This includes careful assessment of the case from all major angles and possibilities. Evidence must also be marshalled in the appropriate way to ensure that the objective of the litigation is achieved. Many trademark owners attempt to enforce their rights based on the mere suspicion of infringement, but it is crucial to conduct a thorough investigation to understand the infringer, the nature of its business, how it operates and the extent of its infringing activities. A case will stand a chance of success only if the rights holder or plaintiff perseveres with the process until the finish line.

MSP: I would agree that success is based largely on preparation – that is, knowing the facts and the law better than the other side. It is also crucial to understand the parties’ markets and products so that you can identify and articulate how they are either the same or distinct. Finally, a key factor that is often overlooked is taking care to assert reasonable and well-supported positions – many attorneys damage their credibility by overreaching.

KG: Careful planning and preparation are certainly essential. It is easy to get swept along in a dispute without stopping to consider the end goal. It is therefore vital to identify the key objectives in respect of the dispute upfront – in particular, what would count as a successful outcome. This will help to shape strategy going forward, with a view to achieving the desired result. As part of this process, a comprehensive cost-benefit analysis should be carried out to determine whether litigation is the appropriate way forward. It is also important to prepare a budget from the start in order to ensure that resources are used in the most effective and appropriate way in order to achieve a successful outcome.

All relevant information should be gathered together from the outset to ensure that the full picture is understood; this will enable a party to get an early grasp of the key issues and facts that will need to be addressed as the case progresses. Document retention policies should be reviewed as soon as a party is aware of a dispute, in order to ensure that all relevant documents are retained pending disclosure. In addition, potential witnesses (fact and expert) should be identified early on with a view to them providing evidence at the relevant time.

ZN: I would say that important prerequisites for building a successful trademarks case include establishing:

  • the reputation and goodwill of the mark among the relevant consumer groups (this helps even if the mark is registered);
  • long and continuous use of the mark; and
  • that the defendant’s mark is deceptively similar and creates confusion and deception among members of the public.

While these are the rudiments for building a successful trademark case, depending on the facts and circumstances of each individual case, other relevant elements can also be used.

What would you say are the most effective ways of controlling costs?

ZN: In trademark litigation, costs may be significantly curtailed by securing interim relief at the first hearing. Pursuant to this, the rights holder may resolve the dispute by entering into a settlement with the infringer which, after the injunction, is more likely to comply with the terms suggested by the rights holder. Court-directed mediation is another way to reduce the cost of proceedings, as is recordal of evidence through a court-appointed local commissioner.

AAK: Costs can also be largely controlled by proper management of another invaluable commodity: time. The longer the proceedings take, the higher the costs that will be incurred. Thus, timely, clear instructions and full disclosure of all material facts to the counsel will facilitate proper trial preparations and efficient management of the proceedings.

MSP: That is an important point. Litigation is, by its very nature, expensive and the most effective way to control the cost is to hire an attorney with extensive experience in the relevant area of law. Knowing what matters (and what does not) and applying hours accordingly is the best way to minimise cost.

VB: In the United Kingdom, an effective way to attempt to control costs is to bring the claim in the IPEC as opposed to the High Court. One of the key benefits to this forum is that it provides a streamlined procedure from the date of issue of the claim to trial on liability, resulting in potentially substantial cost savings. Disclosure and evidence are often more limited in scope and trial on liability will, in theory, take place six to nine months following issue of the claim and will be heard over one or possibly two days.

Regardless of the court chosen, the parties should seek to narrow the issues between them as early as possible, ideally at the case management stage. This should focus minds when considering the scope of disclosure and evidence, which should have a positive knock-on effect on costs. Parties should also focus their energies on the key issues of the claim, rather than becoming embroiled in lengthy correspondence and interim applications on peripheral issues. Finally, the parties should consider settlement discussions (either informally or by way of mediation) sooner rather than later – even if discussions do not yield a settlement, they may result in greater cooperation between the parties which could mean reduced costs going forward to trial.

If trademark law cannot help a brand owner to protect its brand, what other options are there?

LEL: Copyright law can be a possible alternative to trademark law. This is especially where logos and devices can be protected as copyrighted artistic work (drawings). Another possible option in Malaysia is to file a complaint and pursue an action under the criminal trade description laws.

PA: Brand owners can also take advantage of remedies under the law of unfair competition or initiate passing-off actions under common law if the mark is not registered in India and there is substantial copying of trade dress.

VB: Ultimately, there are a number of alternatives – a brand owner may be able to rely on unregistered trademark rights to protect its brand and, if the brand is used or referenced without permission, the brand owner may have a cause of action for passing off. If the brand uses logos, pictures and characters, for example, these could be protected by artistic copyright and/or registered design and design rights. In addition, text, phrases and slogans which are integral to the brand could be protected by literary copyright.

Brand owners can also take various practical steps to protect their brand online. They can obtain key domain names incorporating their brand name (and confusingly similar names). They should also consider having a presence on social media (eg, a Facebook account or Twitter handle for their brand). In addition, they can purchase keywords incorporating their brand name to ensure that their website appears high up in internet search results. These steps will not only help to prevent others from using the brand name in these ways, but also help to enhance the goodwill and reputation of the brand.

MSP: As in many jurisdictions, trademark and copyright laws in the United States may be complementary. For example, a logo can simultaneously be a trademark and, if sufficiently creative, a copyrighted work. Given the nature of the infringement, one or both areas of law may be applicable.

When confronted with a potential cross-border/international dispute, what are the key issues to consider when devising a litigation strategy?

KG: Pay attention to the litigation system in each relevant territory – for example, the stages involved, the length of time to trial and likely costs. This will help in devising a strategy that is sufficiently flexible and appropriate to work in each jurisdiction. That strategy should be put in place from the outset. Ensure that there is a good network of expert advisers in place across the relevant jurisdictions who will work effectively together as a team. They need to communicate regularly and to share ideas and key documentation where relevant. This will help to ensure that the agreed strategy is implemented correctly and avoid unnecessary duplication of work. This in turn should help in managing costs.

Review the likelihood of success in each jurisdiction, if there is a greater chance of success in a particular territory, consider commencing proceedings there first – a win in one territory could put pressure on the defendant to settle the dispute elsewhere.

If a pan-European injunction is sought, thought should be given as to how best to demonstrate that the injunction should not be limited to a specific geographical or linguistic area.

AP: International disputes with reference to the rights holder being an international player and the infringer an Indian business are generally dealt with in the same manner as between two Indian businesses. In cases where the rights holder has registered the mark in India, but is not using it there, the position becomes difficult as it opens the door for the defendant to seek cancellation of the registration on the grounds of non-use. However, if the mark has acquired reputation and goodwill in India by way of cross-border reputation, despite not being used in the country, it can still be enforced under the passing-off remedy. There are many cases where erstwhile importers in India have attempted to register or have acquired registrations of marks used by international manufacturers. In such circumstances it is advisable to file a cancellation action first, before initiating a court action to stop use of the mark by the importer. Cancellation actions rely on the grounds of bad faith and should be supported by documents which prove that the importer was fully aware of the manufacturer’s mark and adopted an identical mark in order to take advantage of the absence of the manufacturer from India.

MSP: Ultimately, the key is to have competent counsel in both jurisdictions who can mutually assess the case. Issues relating to jurisdiction, claims and timing may need to be determined before the alleged infringer is contacted. This is where it is helpful to use a firm that has strong relationships in numerous jurisdictions.

LEL: Cross-border or international disputes are difficult to enforce in a Malaysian court. While border measures are provided for in the Trademarks Act 1976, enforcement is rare and made prohibitive by onerous procedures.

The UK courts (particularly the IPEC) are very keen on ADR and encourage parties to consider using it

Finally, are there any other issues you would like to raise relating to litigation strategies?

KG: A number of alternative dispute resolution (ADR) mechanisms are available to parties to a dispute in the United Kingdom. The mechanism most commonly used in the context of IP disputes is mediation. Mediation is a voluntary, non-binding and confidential form of dispute resolution which is overseen by a trained mediator (a neutral third party). It allows the parties to explore creative and commercial ways to settle the dispute. The mediator does not decide the case on its merits, but is there to help bring the parties together and facilitate agreement between them. The UK courts (particularly the IPEC) are very keen on ADR and encourage parties to consider using it as an alternative means of resolving disputes – indeed, a party can be penalised in costs if it unreasonably refuses to engage in ADR. At the case management stage, the parties are often asked by the court if they have been advised about ADR, and in appropriate cases the courts have the power to adjourn a case for a specified period to encourage and enable them to use it. Parties to a dispute should bear this in mind and therefore always consider whether ADR would be an appropriate means for resolving the dispute.

MSP: An emerging venue for trademark litigation in the United States is the International Trade Commission (ITC). The ITC is authorised to adjudicate disputes under the federal Lanham Act and can issue orders prohibiting the import of infringing goods. The venue is limited in that you cannot be awarded monetary damages. However, the ability to exclude goods from being imported is a powerful enforcement tool. In addition, the ITC can issue exclusion orders for goods other than those of the named defendant. This makes it an attractive venue if it is challenging to identify foreign importers of goods. The ITC operates on an accelerated basis, so it can also be attractive if the client seeks a faster result than is typically available in traditional federal court litigation.

AP: As a final observation, I would add that in the current environment, we are seeing trademark infringements shifting to the Internet and this is posing a major challenge to rights holders, which cannot always find effective and efficient remedies under the current laws. Trademark law needs to better address infringements of trademarks on the Internet, whether by way of squatting, hyper-linking, meta tagging or otherwise. We are hopeful that, with time, the legal framework in India will develop effective and efficient remedies to tackle such infringements.

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Mark Puzella
Principal
puzella@fr.com

Mark Puzella is a principal and trial lawyer in the Boston office of Fish & Richardson, where he specialises in trademark, copyright and media litigation. He has spent his career helping to safeguard some of the most recognisable brands in the world, as well as assisting start-up and established technology companies to develop comprehensive strategies to avoid litigation where possible and to succeed in litigation when necessary. Mr Puzella is also highly skilled and experienced in conducting accelerated cases.

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Azlina Aisyah Khalid
Senior legal counsel
azlina@henrygoh.com

Azlina Aisyah Khalid has a wealth of experience in trademark strategy and prosecution work, following many years of practice in the local IP scene. In addition, she has assisted and provided pre-litigation advisory services for numerous clients looking to protect their IP rights. Ms Khalid currently holds the position of senior legal counsel at Henry Goh and often speaks at seminars, both in Malaysia and internationally.

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Lim Eng Leong
Legal counsel
engleong@henrygoh.com

Lim Eng Leong acts as a registered trademark agent, legal counsel and trademark manager at Henry Goh. His expertise includes devising and implementing trademark protection strategies, as well as managing trademark portfolios across various industries. Mr Lim is adept in trademark prosecution and opposition proceedings. Together with an external solicitor, he has coordinated successful enforcement and defence strategies for clients’ IP rights at all levels of the Malaysian court system, including negotiations for settlement and co-existence of rights.

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Abhai Pandey
Partner
abhai@lexorbis.com

Abhai Pandey has over 18 years’ experience in corporate, IP and technology, media and telecommunications law. He has worked on a broad range of transactional, advisory and contentious matters, and regularly advises on legal and regulatory issues concerning data protection, privacy, the Web 2.0 environment, outsourcing (information technology and business processes), mergers and acquisitions and joint ventures. Mr Pandey’s portfolio of cases includes data theft and complex IP matters in the context of the Internet.

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Priya Anuragini
Associate
priya@lexorbis.com

Priya Anuragini is an associate in the trademark team at LexOrbis. She has an LLM in business law from National Law School, Bangalore and writes extensively on IP rights issues. Ms Anuragini’s areas of specialism include non-conventional trademarks, the copyright regime in the digital world and standard-essential patents in the context of competition issues.

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Zoya Nafis
Associate
zoya@lexorbis.com

Zoya Nafis is an associate in the research, publications and programme team at LexOrbis. She earned her LLM in IP rights from NALSAR University of Law, Hyderabad. Ms Nafis writes for various publications on behalf of the firm, specialising in IP rights – particularly evolving issues on the subject.

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Kirsten Gilbert
Partner
kgilbert@marks-clerk.com

Kirsten Gilbert heads up Marks & Clerk Solicitor’s trademark and brand protection practice. She specialises in heavyweight trademark litigation and has over 16 years’ experience of advising in this area for household-name clients. Ms Gilbert has represented clients before all levels of the UK IP courts, as well as in proceedings before the European Court of Justice and the General Court of the European Union, the Office for Harmonisation in the Internal Market, the UK IP Office and the appointed person. She also has extensive experience of alternative dispute resolution procedures, including mediation and arbitration. Ms Gilbert has advised on a number of anti-counterfeiting strategies and has coordinated EU-wide border detention campaigns.

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Vicky Butterworth
Of counsel
vbutterworth@marks-clerk.com

Vicky Butterworth has a varied IP practice, with a particular focus on the management and enforcement of trademarks and brands. Her extensive experience in trademark dispute resolution makes her one of the key practitioners in the firm’s trademark and brand protection team. Ms Butterworth has considerable expertise in conducting trademark litigation in the United Kingdom – in the High Court, the IP Enterprise Court (IPEC) and the Court of Appeal. She has also acted in respect of a number of mediations and has advised on complex proceedings in relation to damages enquiries in both the High Court and IPEC.

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Issue 72