Photo by John Hill
Yesterday, I gave a guest lecture at California Western School of Law, thanks to an invitation from Prof. James Cooper. It was a deeply rewarding experience, which helped me understand why so many professors say they are the ones who learn from their students.
The topic of my lecture was comparative intellectual property law. As with pretty much any area of the law, the common law and civil law traditions diverge in their treatment of certain IP issues. For example, when assigning trademark rights, Anglo-American jurisdictions generally favor those who first use a trademark, while their continental counterparts give more weight to who first files an application. China has adopted the latter approach, and rather strictly, as we discussed in China’s Trademarks and the Real Life Meaning of First to File. See also China Trademark Theft. It’s Baaaaaack in a Big Way.
In my view, however, the more meaningful differences between legal systems are often to be found beyond the statutes and treatises. As I explained during today’s lecture, a country’s black-and-white law may look surprisingly like our own—but there might be vast differences in terms of its actual application.
This blog’s pages abound with Chinese examples of this reality, both in and out of the IP context. Sticking with IP, it may be clear as day that someone’s unauthorized use of your logo constitutes a violation of China’s Trademark Law. However, the law needs to be enforced by real people in law enforcement. People who may not care to venture out of their office on a cold Beijing day, or who take an unreasonably strict view of what constitutes a similar mark, or who have ten other things to do before they can get to your raid—too bad if that’s enough time for the counterfeiters to move their goods to a different warehouse.
In more extreme cases—and, to clarify, these are far from being China-only scenarios—you might have to contend with law enforcement officers who are wary of taking action against a local big man’s operation, or judges who perhaps even subconsciously want to favor China’s national champions. Even the issue of forced labor, a red-hot one these days, can have IPR ramifications. For example, in Forced Labor in China: Don’t Trust AND Do Verify, I described how my team stumbled upon a prison labor scheme while investigating allegations of unauthorized production by our client’s supplier.
Later that day, I typed up an email to my client that basically said: ‘I have bad news and bad news. Your products are likely being made in a prison—which by the way is the perfect place to crank out unauthorized goods since, well, you will never know and, even if you did, there’s zero risk of a law enforcement raid.’
In other words, in addition to the legal and ethical risks present if forced labor is used along your supply chain, you also have to worry about how that ecosystem can hinder your ability to protect your brand.
And then there is the Unexpected. One case study I shared during the lecture was based on a real matter I handled in Thailand. My client was a chocolatier, whom we’ll call Dan Harris (and just to clarify, the real Dan Harris had nothing to do with this client). As part of an overall brand protection strategy in Southeast Asia, I instructed local counsel to file applications for the mark DAN HARRIS in several countries, including Thailand.
Having conducted proper trademark searches in each country, I was surprised when our Thai application was denied on the basis that it was too similar to another mark. According to the Thai Trademark Office, our client’s mark was too like the mark DANS (apostrophe-less possessive), previously registered by a dairy company.
It is true that there was some tangential overlap between the goods for which we requested protection and those in Dans’ registration. However, to anyone with reasonable mastery of the English language, the difference between the two marks should have been obvious. But that’s the whole point! When you do business in a place like Thailand or China, the official who examines your trademark application could very well not master the English language. And frankly, we should expect similar results if a USPTO examiner had to compare two marks in Thai or Chinese.
One of the students asked an excellent question: Might we have obtained a better result if we had appealed? It’s likely. And to be honest, we never got to find out because the client lost its patience, said ลืมมันไปเถอะ and then decided to focus on other markets. But again, that’s the point. Perhaps our facts could have ended up as the foundation of a landmark decision on trademarks by the Thai Supreme Court. But our entrepreneur client had to make tough budget calls, and the legal fees of a crack Thai trademark lawyer did not make the cut, especially when applications were getting through without a hitch in places like Vietnam and Indonesia.
Expect the Unexpected. It’s one of the joys of being an international lawyer.