INTA 2017: Building a Winning Strategy in Emerging Markets

Robert Doerfler (Kellogg School of Management, Northwestern University, USA) moderated the panel CM22  Trademark Litigation in Emerging Markets, where registrants heard from representatives of Brazil, India and Turkey.

India is receiving an abundance of attention, explained Ranjan Narula (RNA, IP Attorneys, India), adding that “businesses are looking for green fields to reap the benefits of their investments”.

Although India is a common law jurisdiction, and also has an unfair competition law like the United Kingdom, its system differs slightly, especially when it comes to trademarks.

In India, use in the country is not a pre-requisite to claim passing off. If the brand’s reputation has “spilled over” into the country, it can still claim passing off even without use in India.

Speaking about the efficiency of litigation in Brazil, Luiz Claudio Gare (Gare & Ortiz do Amaral – Advogados, Brazil), noted that litigation takes a long time in the country, with some cases taking ten years or more.

“Criminal litigation is not a deterrent measure,” said Mr. Garé while stating that the penalty in Brazil for counterfeiting (between one and three months of detention for importers/sellers and six months to one year for manufacturers) is too light.

But many courts are implementing digital procedures and reducing the number of appeals allowed, he said.

Turning to Turkey, Zeynep Seda Alhas (Gun + Partners, Turkey) emphasised a new IP law, Industrial Property Rights (IPR) Law (No. 6769), that entered into force in January this year.

“The law has made the IP system, which was already in compliance with European Union law, more practical and developed,” she said.

Brand owners should be aware that the purchase of infringing products isn’t always sufficient to obtain a search warrant.

“You would need some unchallengeable evidence of infringement,” she said, explaining that a notary must attend the purchase.

Both Mr. Narula and Mr Garé advised obtaining a settlement over pursuing further litigation.

“In almost 80 percent of cases, I would advise that once you have an injunction in place, go and settle the matter,” said Mr. Narula.

However, if a brand does decide to litigate in India, a new system has come into place which will hopefully speed up the system (as opposed to trials taking eight to ten years in the past), he concluded.