No such thing as a typical case
WIPR: Why do clients typically hire IP investigators?
Clients usually come to us to obtain information they are unable to obtain themselves. Sometimes that information may be used simply as intelligence to help clients make informed business decisions. On other occasions, the information may be used in legal proceedings as evidence to assist a client’s case. Clients also employ us as an intermediary to preserve their anonymity, particularly when they wish to negotiate the purchase of an IP asset or file trademark applications or oppositions.
WIPR: Is the decision to engage an investigator usually a proactive or reactive step?
It can be either. For example, a client may engage us to research potentially conflicting trademarks or acquire an existing mark or domain before launching their own brand. Alternatively, they may ask us to determine the source of counterfeit products following the discovery of illicit goods in a particular market. Clients should use investigators as an integral part of their brand strategy, from conception to enforcement.
WIPR: What are the typical cases that IP investigators work on?
While there is no such thing as a typical case, the issues with which we deal can be broken down into three broad categories. The first is trademark use work, where we are asked to investigate the use of registered or unregistered marks around the world.
The second is IP asset acquisition, where we negotiate the acquisition of assets, typically domain names and trademarks, on behalf of clients. The third category is infringement investigations, which tend to be complex multi-jurisdictional enquiries into counterfeiting or grey market issues.
WIPR: What are the more unusual cases?
Almost every case has a unique aspect. At one extreme, we have been asked to research the technical specifications of armaments. At the other, we have played a sound on an MP3 player to people in certain venues to see if they recognise the sound as a trademark.
“Clients are becoming increasingly involved in IP issues in developing markets such as Eastern Europe, India, China and Vietnam. The need to obtain reliable information from those territories has increased exponentially in the last two or three years.”
We have bought drinks for sellers of counterfeit goods in Greece to win their trust and bought diamonds in Italy that were sold with counterfeit certificates of authenticity. In between, we may be negotiating co-existence agreements or buying Chinese trademarks. Every day brings unexpected challenges. We never know what’s going to come through the door.
WIPR: What trends have you seen emerge in the last decade?
Access to information has become far greater and clients now undertake much of the preliminary work that once would have been done by us. These days, they tend to hire investigators only for more complex cases or when they hit a brick wall.
Many people like to think of themselves as sleuths, but a little knowledge can be a dangerous thing. Where information is required to support key commercial decisions or evidence is needed to support legal proceedings, the enquiries should be undertaken by experienced investigators, who are less likely to miss key information or to alert targets to an investigation.
While access to information generally has become greater, steps have been taken to restrict the availability of certain types of information. There is a growing recognition of a right to privacy in more developed countries and there is now far greater focus on safeguarding data.
That can make legitimate investigations far more difficult. Take the simple case of tracing someone in the UK. It is no longer as straightforward as it was, because individuals can opt out of appearing on the publicly accessible version of the electoral roll. Furthermore, credit reference agencies have restricted third-party access to their data.
In another trend, clients are becoming increasingly involved in IP issues in developing markets such as Eastern Europe, India, China and Vietnam. The need to obtain reliable information from those territories has increased exponentially in the last two or three years. Investigative firms need professionals with language capabilities as well as a strong network of contacts in those countries to obtain reliable information quickly and cost-effectively.
Overall, the ability of clients to gather information themselves results in our investigations having to deal with much more complex issues. Consequently, we find ourselves facing the additional challenges of staying one step ahead not only of the criminals but also of our own clients.
Graham Robinson is managing director of Farncombe International. He can be contacted at: info@farncombeinternational.com
