1 Aug

Best practice in litigation strategies: global perspectives

Trademark experts from around the world offer practical guidance on how to maximise the chances of litigation success in their jurisdiction.

Although litigation will often be considered the final option for a brand owner in the event of an infringement, sometimes it can prove difficult to avoid. In an expanding global marketplace, it is therefore crucial both to understand local conditions and to ensure that the right strategic approach is taken to maximise the chances of courtroom success.

In this roundtable, World Trademark Review (WTR) sat down with a panel of experts – Dominique Hussey and Jeilah Chan from Bennett Jones in Canada, Oliver Nilgen from Meissner Bolte in Germany and Alexandra Pelikh and Sergey Zuykov from Zuykov and partners in Russia – to gain litigation insights tailored to their own jurisdictions, as well as to identify the building blocks that should form the foundation of any successful legal action.

Can you provide a brief overview of the courts system in your jurisdiction as it relates to trademark actions (eg, are there specialist IP courts/venues)?

Dominique Hussey (DH): Canada has two separate court systems. First, there is the Federal Court of Canada, a court of federal jurisdiction that sits across Canada and issues rulings with national effect. Second, there are provincial/territorial superior courts, whose jurisdiction is limited to the individual provinces and territories of Canada. Canada does not have specialist IP courts. The subject-matter jurisdiction of the Federal Court is specific and conferred by the Federal Courts Act and other federal statutes, such as the Trademarks Act. By contrast, the provincial superior courts are courts of general jurisdiction.

It is worth noting, however, that the Federal Court of Canada and provincial superior courts have concurrent jurisdiction for most trademark disputes, including trademark infringement and passing off. Only the provincial superior courts have jurisdiction to hear a matter based on tortious activity, such as common-law passing off involving a business name, where no trademark is involved.

Oliver Nilgen (ON): In Germany, infringement claims can be brought to the civil courts by the trademark owner. The district courts are competent regardless of the amount in dispute; 21 specialised district courts can hear trademark infringement cases in Germany. A claim is possible wherever a trademark has been infringed or could likely be infringed. The most popular courts are those of Cologne, Dusseldorf, Frankfurt, Hamburg and Munich. There are no jury trials in Germany. Usually, the commercial divisions – established within the district courts – are competent. These chambers comprise one professional judge and two honorary judges who have professional experience in matters of business and trade. All members of the commercial division have the same voting rights.

However, the parties often implicitly agree to let the ordinary civil divisions decide the case – these are composed of one or three professional judges. In less complicated cases, the parties have the option to agree that a single judge can decide the dispute. Appeals filed before the higher regional courts are heard by three judges.

Sergey Zuykov (SZ): In Russia, trademark claims can be examined in different courts, depending on the composition of the parties. If a party is an individual, the claim must be considered by a court of general jurisdiction. However, where the plaintiff or the defendant is a legal entity or an individual with the status of an individual entrepreneur, cases are subject to examination by an arbitration court. The process itself is carried out in three instances. The court of first instance or the appellate instance examines the claim from the standpoint of rules of jurisdiction. The court of appeal in Russia is the Court of IP Rights, which is part of the system of arbitration courts. It also has jurisdiction over the following types of disputes:

  • challenges to decisions of the Russia Patent and Trademark Office (Rospatent) with regard to intellectual property;
  • challenges to decisions of the federal Anti-monopoly Authority with regard to the acquisition of exclusive rights as a means of individualising a legal entity, goods, works, services and enterprises being recognised as an act of unfair competition; and
  • the early termination of legal protection of a trademark due to non-use.

Since there is no appeal instance dedicated for such claims, such cases must be examined by at least three judges in the Court of IP Rights.

In terms of trademark infringement, what are the main causes of legal action?

ON: Any trademark infringement action can be based on an earlier German national trademark right (either registered or unregistered), an EU trademark, an international registration designating either Germany or the European Union, company names and other commercial designations or titles of works and domain names.

The specific procedural options are: preliminary injunction proceedings, main actions for infringements, declaratory judgment actions and invalidity and revocation proceedings. Preliminary injunction proceedings are the most efficient option for obtaining injunctive relief. German courts will grant an application for a preliminary injunction if the matter is urgent and the applicant can make a prima facie case for infringement. To qualify as ‘urgent’ the application should typically be filed no later than four weeks after the rights holder’s first notice of the potential infringement.

Main proceedings become necessary where the plaintiff seeks other remedies such as damages, the urgency period has expired, the defendant does not accept a preliminary injunction as the final resolution or the case is particularly complex. Meanwhile, a party accused of infringing the rights of another party can bring an action for a declaration of non-infringement. Such negative declaratory actions are subsidiary against infringement actions. Finally, invalidity and revocation proceedings can be brought for a number of reasons, such as non-use, conflict with a prior mark, a bad-faith application or lack of distinctiveness. Depending on the type of trademark and the alleged reason of invalidity, these proceedings must be initiated either before the Trademark Office or before the civil courts.

SZ: According to Article 1484(3) of the Russian Civil Code, “no one has the right to use, without the permission of the copyright holder, designations similar to its trademark in relation to goods for which the said trademark was registered or homogenous goods to individualise, if such usage creates the likelihood of confusion”. Where a rights holder has identified the use of a designation that is identical or confusingly similar to its registered trademark it may apply for the protection of its right. The rights holder can defend its rights before a court, the Anti-monopoly Authority and the police. Goods, provision of services and their respective promotion on the Internet have all been recognised as potential violations of a registered trademark. When preparing such a claim, it is necessary to collect relevant evidence to establish that the product was indeed placed on the market.

In addition, in our recent practice we have seen a surge of disputes involving the use of keywords that are similar to registered trademarks being used as online search terms. Another topic that has caused much debate is where trademarks are used as keywords (ie, where an advertisement is triggered by using a competitor’s trademark as a keyword).

Jeilah Chan (JC): There are three main causes of legal action available to an owner of a registered trademark: infringement resulting from the use of an identical mark for the same goods and services as those registered (Section 19); infringement resulting from the use of a confusingly similar mark or name (Section 20); and depreciation of goodwill in a registered trademark (Section 22).

In addition, common law rights accrue to owners of unregistered trademarks through use in Canada. Common law rights are limited to the geographic area where the trademark has been used. These rights alone can form the foundation of a claim known as passing off, a cause of action also provided for in the Trademarks Act.

Finally, the Trademarks Act also permits a plaintiff to sue for false and misleading statements that tend to discredit the business, goods or services of a competitor; and also descriptions of goods that are materially false and mislead the public as to their character, geographic origin or mode of manufacture.

At what stage should court action become the preferred option rather than other avenues (such as alternative dispute resolution (ADR))?

ON: Litigation actions are the preferred resolution mechanism in Germany, as the courts are rights holder friendly and proceedings are straightforward and cost efficient. In addition, German judges actively support settlement negotiations during trial. In cases involving two German-based companies, a regular court proceeding is, in most cases, the preferred litigation forum because it also carries a high degree of predictability. ADR proceedings are preferred in cross-border relationships where the parties want to avoid an unpopular jurisdiction or parallel proceedings in different countries. Arbitration and mediation proceedings are recognised as peaceful methods of dispute resolution, which protect prior business relationships and keep technical and commercial information confidential as the proceedings are – in contrast to regular court proceedings – not open to the public.

DH: From the client’s perspective, it is always preferable to resolve a dispute in the most expeditious and cost-effective manner as possible. Settlement discussions and ADR (including mediation) are important avenues to consider and potentially engage at the outset of any dispute. Indeed, the parties may be contractually bound to do so. If successful, the dispute can be resolved without the parties having to incur the expense and publicity of formal court proceedings.

The assessment as to when a formal court action should be commenced depends on the specific circumstances of each case, the parties involved and the relief sought by the brand owner. Some key questions to consider include the following:

  • Is immediate relief necessary to prevent irreparable harm? If so, starting a court action and seeking interlocutory injunctive relief may be the best course.
  • Are additional facts required to make out the case on infringement and damages? If so, commencing an action where full discovery is available may be desirable.
  • Is an injunction the ultimate goal and damages unnecessary? If so, an application (a summary legal proceeding) may be the most efficient procedure to pursue.
  • Is the dispute approaching a limitations deadline? If so, commence action immediately.

Parties can always revisit or engage settlement discussion, mediation and/or ADR processes after an action has commenced. The courts encourage narrowing of issues between the parties throughout the course of litigation and offer mediation services to facilitate this goal.

Alexandra Pelikh (AP): In some cases, sending a claim letter is an obligatory pre-trial measure, especially if the intention is to subsequently file a claim for damages in court. It is important to note that the statement of claim must be filed within one month of the date on which the letter of claim has been sent. An alternative method to resolve disputes without resorting to legal confrontation is mediation – the procedure of reconciling the parties through voluntary negotiations, monitored by a neutral third party (ie, the mediator). Such proceedings are governed by the Law on Alternative Dispute Resolution Procedures with an Intermediary. To summarise, taking a case to court can be seen as a way of influencing the offender when all other, more peaceful methods, have been exhausted.

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

ON: The general principle is that the court of the defendant’s domicile has jurisdiction in all disputes based on trademark law. Alternatively, the district courts have jurisdiction at the place where the infringer committed the infringement or the place where the damages resulting from the trademark infringement occurred. Therefore, if the alleged infringer is located in Germany and offers the disputed products for sale over the Internet, every German district court will have jurisdiction because the infringing websites are accessible throughout Germany. In this case, the plaintiff can choose in which district court to file its action. This is true at least with respect to German trademarks.

With regard to EU trademarks, the situation is more complicated. According to the German Supreme Court’s decision in Parfummarken (BGH, I ZR 164/16), infringement proceedings based on an EU trademark in cases of cross-border infringements before a German court require an overall assessment of the infringer’s acts in order to determine the original infringement rather than focusing on separate infringing acts.

SZ: The exclusive right to a trademark can be protected before a court, the Anti-monopoly Authority and the police. However, the choice of a particular method of protection depends on a number of factors, the nature of the dispute and the evidence presented by the plaintiff.

Most commonly, cases on the protection of exclusive rights to goods and over the Internet are examined in court. Claims must be filed at the location of the defendant. Currently, the Moscow region holds the most extensive practice in such disputes. In court, the trademark holder can file a claim for recovery of damages, payable by the offender if the case is successful.

Alternatively, rights holders can apply to the Anti-monopoly Authority – although in such cases the rights holder must prove not only the violation of the right but also the existence of competition in the market in the same region with the offender. Should the usage of a similar designation be recognised as an act of unfair competition, the violator might be issued with a fine, payable to the state. Also, in the event of the unlawful use of a trademark on a product, the rights holder has the right to appeal to the police for the protection of its exclusive right. Before initiating a dispute, a party must evaluate the risk of recovery of legal costs, as in Russia court costs are typically charged to the losing party.

JC: In Canada, a brand owner can choose between the Federal Court and the provincial superior courts, as both have concurrent jurisdiction for most trademark disputes. Between these two venues, the Federal Court continues to hear the majority of these cases – this popularity is driven by two strategic advantages: comprehensive remedies and national effect.

The Federal Court’s jurisdiction extends to all provinces and territories. This means that judgments issued by it are enforceable across Canada. An order of a provincial superior court, by contrast, is enforceable only in that province. Only the Federal Court has jurisdiction to invalidate and expunge trademarks. Orders of the Federal Court are made against the subject (ie, the trademark) and not just as between the parties.

The benefit of the Federal Court’s national jurisdiction is obvious in cases that involve infringing activities in more than one province. In these circumstances, a brand owner need only commence a single proceeding in the Federal Court, rather than multiple proceedings in all relevant provincial courts, to obtain injunctive and monetary relief against the infringer.

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

ON: Germany is an attractive jurisdiction because its courts have a reputation for expertise and efficiency and procedures are predictable to a certain extent. It is significantly less expensive to litigate in Germany in comparison to, for example, the United States or the United Kingdom.

The losing party must reimburse the winning party for all court fees paid as well as the statutory lawyers’ fees. In general, in trademark matters the losing party must also pay statutory fees for the patent attorney who was involved in the matter, along with any necessary expenditures, such as travel expenses and translation costs. The amount of statutory court and attorneys’ fees that can be recovered is limited by the Code of Lawyer’s Fees and the Code of Court Fees and depends on the so-called ‘value in dispute’, which is the estimated economic interest that the plaintiff has in pursuing the case. In addition, judgments issued by the court can be preliminarily enforced, even if they are not final and have not become legally binding yet by way of security (ie, by posting a bond).

DH: With a robust system of trademark enforcement for an aggrieved owner of registered and unregistered rights, Canada is an attractive venue for litigation. In addition, litigating in Canada may be more predictable and less costly for a brand owner than in other jurisdictions.

Further, there are no jury trials. Trademark disputes in Canada are heard before a judge alone, without a jury. Juries do not exist in the Federal Court, while juries in the provincial superior courts are typically confined to criminal matters or limited types of civil disputes (eg, libel and personal injury matters). The outcome of a trademark case may be more predictable when the trial is heard by a single, experienced judge and appeal rights may, as a result, be more robust.

Finally, in Canada, the rule of thumb is that the winning party is awarded costs, representing a portion of its legal fees and reasonable disbursements. The potential of having to pay the opposing party’s fees may discourage frivolous claims, counterclaims and defences.

AP: Russia has a fairly transparent regime, with a codified IP law. The courts have developed a unified approach to issues related to the acquisition and protection of exclusive rights to trademarks. Judicial practice is summarised, in particular, by the Supreme Court and the Court of IP Rights. In April 2019, a decision of the presidium of the Supreme Court, which reflects established approaches to the consideration of issues in the field of intellectual property, came into force.

One of the main advantages of litigating in Russia is the relative speed with which cases are considered. At first instance, for example, a trial can be completed in between four and six months. In addition, in many disputes preliminary injunctions can be imposed, preventing the movement of goods or the transfer of a domain name.

Turning to court strategies, to what degree is survey evidence accepted by the courts and what evidence gathering tips can you share?

JC: In Canada, survey evidence is no longer expected in trademark disputes and aggrieved brand owners need not, as a matter of course, expend extensive resources to file consumer survey evidence on the issue of confusion. The Supreme Court has stated that survey and expert evidence should be admitted sparingly and only when it is beyond the experience of the court to decide on issues of confusion. This means that a brand owner may now encounter fewer economic obstacles before pursuing infringers in Canada. Where survey evidence can truly assist the court, it is critical that the survey asks the relevant questions and that its methodology is sound and robust. The expert and its survey will likely be cross-examined at the trial.

Therefore, the added expense of a survey and its unknown results at the outset can sometimes deter brand owners from commencing litigation in meritorious cases. On the other hand, when the consumer targeted by the brand comes from a specific age group or a specialised area, surveys can be helpful to the decision maker.

ON: The parties to court proceedings in Germany must present their arguments in written form before the hearing takes place. Evidence in the form of documents, certificates, pictures or samples of the products is usually submitted along with the relevant papers. Evidence need not be notarised, but must show all relevant details, for instance, dates of publication.

Surveys are valid means of proof. They are particularly important when it comes to proving the reputation of a trademark and must comply with certain requirements in order to demonstrate reputation. Therefore, it is highly advisable to engage independent market research services to conduct such surveys in order to avoid objections. This is usually done by conducting surveys of a representative cross-section of the total population or of consumer groups recruited from it, or by investigating different circles of experts. The survey results are documented in written reports and extensive reports and have been accepted as evidence in Germany for decades.

AP: In Russia, survey evidence is accepted by the court.

Particular attention should be paid to the collection of evidence of infringement of exclusive rights in a trademark. Most violations take place on the Internet – on websites, in domain names and contextual advertising. Both the defendant and the method of proving the violation are determined depending on the method of use. When using the domain name itself, the domain name administrator may be held liable for the infringement. It can also be held liable for any violations that take place on the website along with the person who places the goods on the market via the website.

Acceptable forms of evidence include:

  • a certificate issued by the registrar or domain name administrator;
  • a notarised inspection record of the website (fact that it is offering goods for sale);
  • a notarised purchase of goods through the website (fact of sale);
  • documents obtained as a result of the purchase, which document who sold the goods and by what designation the product is marked (fact of sale either by the administrator or by another person); and
  • documents accompanying the goods, such as packaging, instructions, certificate indicating the manufacturer of the goods (fact of production of goods).

When a claim for compensation is filed, it is necessary to prove the area over which goods are distributed, the repeated introduction of circulation and the amount of infringing goods that have been sold. In order to prove the length of violation, evidence can be collected over a set period. As a rule, proving the length of the violation can be significant for the amount of compensation awarded.

As evidence, the courts will accept the report of a detective with an appropriate licence to conduct such investigations. Moreover, the court will accept expert opinions.

If a foreign manufacturer produces the goods, then import customs declarations can be viewed as a proof of import. As a rule, the importer and the retailer are different companies, so in order to use these declarations as evidence, it is necessary to prove the importer’s connection to the final violator. Declarations can be considered irrefutable proof when the goods are detained at the border and not yet released into circulation in Russia.

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

ON: In practice, the judges deciding the case are competent to assess the distinctiveness of a trademark or the likelihood of confusion. However, expert witnesses are an effective tool in order to provide reliable information on customer awareness, in particular in cases of non-traditional trademarks such as 3D trademarks, the reputation of a trademark and in order to assess the scope of protection of a trademark. The expert opinion will be presented to the court in written form. During the oral hearing, the judges and both parties can ask the expert to answer specific questions regarding their written opinion. Cross-examination – such as in the United States – does not exist in Germany.

AP: During the examination of trademark protection cases, the court does not appoint an examination and assesses whether degrees of similarity can cause confusion from the perspective of an average consumer. However, in difficult cases, where the similarity might not be obvious or when it is not confusingly similar but rather imitates the appearance of a product or its label, it is possible to conduct a public survey before filing a lawsuit. The latter would be considered as written evidence by the court.

DH: In Canada, as with any expert evidence, the evidence of expert witnesses in trademark cases may be influential if it assists the court on issues outside of its experience and the expert witness is credible. An aggrieved brand owner need not incur the expense of expert witnesses as a matter of course; only if truly helpful to the court.

Expert evidence may be tendered in trademark proceedings involving registrability issues (eg, opposition and expungement proceedings). Expert evidence may involve linguistic experts opining on the meaning of a trademark and whether it is generic or experts in a particular industry commenting on whether a mark/word is common to a trade (relevant to clear descriptiveness).

The assessment of trademark issues is technical and depends on prescribed relevant dates. When assessing the suitability of potential expert witnesses, it is important to ascertain that they had the relevant expertise as of the relevant date and that their evidence indeed assists the court.

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

ON: The trademark owner must ensure that all necessary evidence to support the claim is in place before starting the litigation action. In most cases, this requires conducting investigations and making test purchases in order to show the judges the accused products. Further, it is necessary to verify whether the alleged infringer exists and has a business address in order to serve the complaint. Any court procedure will be preceded by a warning letter in order to provide the court with a first response from the alleged infringer. Although sending a warning letter is not required by law, the courts like to see that one has been sent and how the alleged infringer responded. A warning letter is not necessary in exceptional circumstances, such as trade fairs or sequestrations.

SZ: The key point is to collect evidence. Irrefutable facts that are properly recorded are the cornerstone to success. Aside from this, it is also important to maintain respect for your opponent and be ready to settle the dispute in a peaceful manner.

JC: The key elements to building a successful case are as follows:

  • Collect all the facts – the good and the bad – and develop strategies to contextualise or neutralise the bad facts.
  • Carefully consider the relevant universe of consumers of the products or services associated with the trademark at issue, rigorously applying the appropriate legal tests and ensuring that there is compelling evidence to satisfy each prong.
  • Find the story – the human, relatable theme – that makes the case interesting, memorable and credible.
  • Strip away the surplus so that a deceptively simple, easy-to-understand case remains.
  • Know the case, the case law, the documents and the discovery transcript by heart.
  • Preparation, preparation, preparation!

What would you say are the most effective strategies for controlling costs?

ON: As already mentioned above, trademark litigation in Germany is very cost efficient. The costs can be controlled at any stage of the proceedings. However, in order to avoid unnecessary expense, an effective strategy must be developed before starting any action. In order to avoid a litigation action, most trademark disputes can be solved out of court by signing a cease and desist declaration after receiving a warning letter. During the litigation action, the judges also encourage the parties to try negotiating an amicable settlement. Approaching an alleged infringer and trying to find an amicable settlement is also possible at any time during the proceedings. This of course reduces legal fees, in particular court fees, as the judges do not have to issue a decision on the merits.

DH: In Canada, as with Germany, litigation is costly. The best strategy for controlling costs is to avoid litigation altogether by assessing risk before adopting and launching a new brand. However, as a plaintiff/brand owner, controlling costs to some extent depends on the level of cooperation of the opposing party.

Therefore, there are some strategies to consider. These include assessing the merits of the case at the outset to determine whether it is worth fighting or limiting. Further, it is important to engage in early settlement discussions or mediation to resolve the dispute before litigation heats up. Of course, asking your client to assist and participate actively in document and information gathering can be helpful too. It also goes without saying that it is best to avoid frivolous motions and appeals – that can be achieved by resolving procedural disputes without court assistance. Finally, it can be useful to request active case management from the court so that disputes can be resolved sensibly and efficiently.

SZ: Thorough preparation is the key. Planning your strategy in advance is of utmost importance, when going into a legal dispute. This includes assessing the various scenarios that can take place at the main stages of the case, identifying the possible needs for particular procedural actions that might arise and supportive evidence that might be required. Having a detailed outline enables you to understand the budget of the upcoming process – both in terms of fixed costs of each procedural act and necessary evidence.

With that being said, however, every process carries the possibility of unplanned actions, which may be initiated by your opponent or the court. For example, if the defendant fails to provide evidence in advance, this will lead to an adjournment of the court hearing. Similarly, should the defendant file petitions that have no procedural meaning but that are subject to an appeal if refused, this may cause additional delays in the process. It would be fair to say that in the vast majority of cases it is practically impossible to predict the procedural behaviour of the defendant.

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

JC: To maximise enforcement capabilities in Canada, a brand owner should always consider all available forms of IP protection in its portfolio building strategy. For example, the subject matter of some trademarks (eg, logos and 3D designs) may be entitled to other forms of IP protection such as copyright and industrial design protection.

Because trademark rights are jurisdictional, but branding is global, brand owners can fall victim to deliberate copying of international brands before the brand has been launched in Canada. In those cases, trademark law cannot help as Canada is a first-to-use jurisdiction. If the brand is a logo (ie, an artistic work), copyright protection may subsist in the design and an action for copyright infringement may be available to the brand owner. If the brand is a 3D design and is registered as an industrial design, an action for industrial design infringement would be available to the owner.

ON: Any claims for infringement can be based on, among other things, German national trademark rights, either registered or unregistered. However, a sign may receive protection as an unregistered trademark if it has acquired secondary meaning through its use among the relevant trade circles. However, the threshold for this is very high and applies only rarely. In addition, it is possible to base any infringement claims on copyrights, registered or unregistered design rights and unlawful acts according to the German unfair competition law. In particular, with regard to shapes, product packaging or other non-traditional trademarks such as patterns, these additional rights are highly relevant.

AP: Legal relations related to trademarks are governed by civil law, in particular the Civil Code, which provides for civil liability in the form of recovery of losses and recovery of damages. If it is impossible to protect the exclusive right to a trademark in court, the rights holder may apply to the Anti-monopoly Authority.

The Competition Law prohibits the use of similar designations or imitation of the appearance of existing products, their packaging, label, name, colour scheme or the overall style (along with mimicking the corporate identity, shop interiors or window displays), as well as other elements that individualise a competing economic entity and/or its product. Any of these actions are viewed as a form of unfair competition and are likely to result in fines and legal sanctions from the Anti-monopoly Authority. In addition, the Code of Administrative Violations provides administrative liability for certain offences.

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

ON: If infringing acts occur in domestic trade, a German trademark can be more easily enforced before the courts than an EU trademark. The owner of a German trademark can initiate court proceedings both at the place where the infringing act has been committed (place of action) and where the infringing act has an effect (place of effect). When litigating an EU trademark only the court of the member state in which the defendant is domiciled or in which the infringing act has been committed has jurisdiction.

Another advantage is that the validity of an EU trademark can be attacked in the same proceedings, by way of counterclaim, while German trademarks must be cancelled by initiating separate proceedings before the registration authority. Further, a national German trademark can only be cancelled based on absolute grounds if the request for cancellation is lodged within 10 years of the date of registration. After that period, the trademark enjoys grandfathering.

Lastly, the judges deciding the case are bound by the registration. Infringement and invalidity proceedings are separate proceedings. The defendant must initiate invalidity proceedings and may ask for a stay of the infringement proceedings until the invalidity proceedings have been finally decided.

DH: First of all, always be ready. Do not wait until the need for litigation to start preparing. Second, make sure that rights remain enforceable: continuously monitor, audit and track use in commerce of marquee brands in the portfolio and most importantly, document such use, to ensure the trademarks remain valid. This evidence is critical to assessing the strengths and weaknesses of a brand owner’s case against an infringer. As infringing activities require immediate attention, engaging in this analysis at the time infringement is detected is too late.

Third, it is obviously important to file for trademark protection. While use may provide common law rights, a trademark registration provides rights across Canada and is presumed valid. As brands are refreshed and new brands are launched, always remember to file for appropriate trademark protection. And do not stop there. Layer on other forms of IP protection and consult experienced IP counsel at the outset of a new brand launch to ensure that you are maximising IP protection from all angles. When it comes to IP protection, more is more.

Finally, prevent litigation. Always consult experienced IP counsel for advice on risk mitigation strategies.

AP: Disputes regarding the usage of protected trademarks in domain names are quite common in the Russia. Cease and desist letters can be directed to either the administrator – the person carrying out the illegal usage of a domain name containing a trademark – or the registrar/hosting provider, the person, who can stop such use.

Currently, the courts are still forming their practice in such disputes. One of the questions that requires clarification is whether the registrar/hosting provider serves just as an intermediary in this process or can actually be held liable for trademark infringement on a general basis. One view is that an intermediary should not be held accountable for the violation of the exclusive right to a trademark, since it is the administrator who chooses a domain name and purposely places a similar designation on its website – the intermediary only provides the opportunity for such behaviour.

However, an opposite view to this is that provisions on the liability of information intermediaries are based on the provisions of Article 1252(2)(1) of the Civil Code, which applies not only to the person who performs such actions or necessary preparations for them, but to other persons, who may prevent such actions. In this case, when filing such a claim, it may not be about bringing the domain registrar to justice, but about applying measures to protect IP rights.

Dominique Hussey


[email protected]

Jeilah Chan


[email protected]

Sergey Zuykov

Managing partner

[email protected]

Alexandra Pelikh

Head of legal department

[email protected]