Case Studies


We have acted in many ground-breaking IP matters and have a fund of interesting stories to tell. Here are some very brief samples.
 
United Arab Emirates: To seize or not to seize... documents
Acting for one of our major clients, we convinced the Dubai Court of Urgent Matters to issue a conservatory measures order in broad language that allowed the Court Bailiff, enforcing the order, to seize documents related to or evidencing infringing activity.

This was a significant departure from previous orders that were specifically restricted to the confiscation of infringing goods only. We argued that the UAE has certain obligations relating to enforcement of IP rights under the TRIPs Agreement and that the TML provisions on conservatory orders should be interpreted in line with such obligations.

For further details: sholder@iprights.com.
 
United Kingdom: International arbitration
A client in the United States (US) sought advice on alleged breaches of a licence agreement with an arbitration clause providing for arbitration in the United Kingdom.
 
The dispute concerned the design of a military vehicle. We advised on termination of the licence, invoked the arbitration clause and commenced arbitration proceedings under the International Court of Arbitration of the International Chamber of Commerce.
 
The subject matter in dispute required obtaining US government approval for non US citizens to access and review technical defence information, compliance with international secrecy regulations and instructing a military vehicle expert to inspect and report on the design of a military vehicle. We attended several procedural hearings in London and developed an arbitration strategy which dealt with issues of adjournment, confidentiality and disclosure and led to successful settlement of the arbitration on confidential terms.

For more information, email kfong@iprights.com.

Philippines: Battling the generic trap
As English is widely used in the Philippines, many well-known marks often appear in advertising and often the mark may be incorrectly used as a descriptor or adjective, thereby diluting the distinctiveness of the valuable trade mark.
 
We developed a strategy for our client, a leading United States health care company, to address conditions that were putting its famous trade mark at risk of becoming generic. The strategy consists of three phases involving, as a first step, the creation of public awareness, to be followed by a market survey and ending with an enforcement program against continued mis-use.
 
During the one year program Rouse will be coordinating closely with the client's local distributor, customers and various agencies.
 
For further details: lyong@iprights.com.
 
United Arab Emirates: Arabic language considerations in opposition cases in UAE
We handled a successful opposition in the UAE which related to two quite different-looking English language brands. However, the opposition before the UAE Registrar succeeded on the basis of an argument that a likelihood of confusion existed between the two marks, particularly when they were transliterated into Arabic (as is common for English brands used in the Middle East). The marks were nearly identical when used in Arabic and Rouse emphasized the confusion that would occur if the marks in question were transliterated into Arabic and read or used by the average non-English speaking consumer.

This case also highlights the local language considerations that should be taken into account in most Rouse jurisdictions.

For further details: zsunna@iprights.com.
 
Philippines: We don't stop at conflicting marks
During a standard watch of marks published for opposition in the Philippines, we spotted a client's registered trade mark in the description of services covered by an application. Somehow the specification was allowed to pass even though it incorporated a registered trade mark.
 
We contacted the applicant and arranged for the immediate amendment of the specification of services based on the trade mark rights of our client. Our quick and effective response to the problem saved the client potential legal costs.
 
For further details: lyong@iprights.com.
 
China: Leading the fight against illegal music
The IFPI discovered that Yahoo! China was providing users with links to unauthorized material of IFPI members’. The users could arrange the downloading and online playing of the whole track directly through the links from the Yahoo! China website.
 
In 2007, 11 IFPI members brought the case to Beijing No.2 Intermediate People’s Court and a favorable judgment was handed down in April 2007. Yahoo! China appealed against this verdict but this was dismissed by the Beijing Higher Peoples Court on 20 December 2007.
 
Rouse and its associated local law firm, Lusheng Law Firm, successfully represented 11 sound recordings companies in a case against Yahoo! China. The case was awarded the top spot in the Beijing Higher People's Court annual top ten Civil Litigation Cases for 2007 and MIP's Global Award for the Asia-Pacific Copyright Case of the Year 2007.
 
The court held Yahoo! China liable for copyright infringement on the grounds that it “ought to know” of the infringement, but had failed to remove the infringing links. It had participated and assisted the third party websites to conduct their infringement. It was ordered to remove the links to all infringing material and pay compensation of RMB 212,600 (approx. US$30,800).

The judgment is a milestone in applying the law to protect the legitimate rights of copyright owners’ against widespread infringement in todays internet environment. This development in China is part of a growing worldwide trend of holding intermediaries liable in cases of this sort. That China has made such a bold and controversial move shows how far it has come in the field of IP protection in the last few years.

For more information, email azhang@iprights.com.
 
United Arab Emirates: Establishing well known mark status in an opposition case in the UAE
We successfully opposed a third party application in the UAE on the basis that a South African retail brand, although not in use or registered in the UAE, was a well known trade mark.

In particular, the opposition division gave weight to the sizeable South African ex-pat community in the UAE, as well as overspill reputation in the UAE through marketing and sports sponsorship under the brand and an extensive portfolio of trade marks in South Africa and elsewhere around the world.

The rejection of the opposed application was appealed by the applicant. In dismissing the appeal, the Dubai Court of First Instance and subsequently the Court of Appeal, ruled that the unregistered South African trade mark was a well-known mark regardless of its lack of use in the UAE. The Courts maintained the order for the refusal of the third party trade mark application in the UAE.
Rouse has subsequently obtained a UAE registration of the trade mark in question for its client.

For further details: belturk@iprights.com.
 
Philippines: Rationalising criminal actions
Our Manila office was asked to help a US apparel maker on whose behalf a number of criminal actions had been taken over a period of some years. The actions had stalled and the client was left paying hefty storage charges for seized goods.
 
We helped the client put a strategy in place and within eight months all outstanding cases had been resolved and the client released from its storage charge burden.

For more information, email nredfearn@iprights.com.
 
China: Criminal action against counterfeit drug manufacture & distribution ring
We orchestrated an important State Drug Administration action on behalf of a pharmaceutical client. The case involved four provinces of China and the seizure of counterfeit drugs valued at over RMB 500,000 (approx. US$62,500).
 
Three of the offenders were given a 10 year jail sentence, while others received a five - 9 year sentence. The case received the QBPC Best Case Award in 2005.

For more information, email azhang@iprights.com.
 
Hong Kong: Largest ever pharmaceutical raids
In 2003, we carried out a series of raids on behalf of a major pharmaceutical company. The raids, involving more than 30 separate targets across the entire Hong Kong SAR, were the largest ever undertaken in Hong Kong. We subsequently assisted in a criminal prosecution which resulted in a 16 month sentence for the distributor concerned, one of the longest sentences in Hong Kong IP enforcement history.

For more information, email nredfearn@iprights.com.
 
Global: The relationship was over a year old, but they had never met face to face ...
Following investigations carried out by our China and Hong Kong investigations teams, one of our UK investigators made contact with a China-based target selling pirated Microsoft software. The relationship continued for 12 months before our investigator travelled to China for a face to face meeting.
 
A truly trans-national investigation that achieved remarkable results.

For more information, email sadams@iprights.com.
 
Philippines: An eagle-eyed paralegal results in a trade mark being restored to its rightful owner
One of our eagle-eyed paralegals discovered a pending trade mark application that conflicted with one of our client's well-known marks. We promptly reported the discovery to our client and recommended an investigation which led, ultimately, to a satisfactory resolution without the need for litigation.

For more information, email lyong@iprights.com.

South East Asia: Enforcement programmes for major US copyright industry association
We assisted one of the major US copyright industry organisations with its enforcement activities in the South East Asia region, undertaking IP investigations and civil and criminal enforcement activity on its behalf, and advising it on IP strategy and the management of IP enforcement budgets. We also provided support for its government lobbying activities throughout the region.

For more information, email nredfearn@iprights.com.
 
China: Reducing the risks involved in buying Chinese companies
We acted for a US pharmaceutical company in relation to its acquisition of a Chinese veterinary company, reviewing its existing IP and the measures in place for its protection and identifying potential risks of IP leakage and infringement. We also made recommendations for increased future protection.

For more information, email jinling@iprights.com.

Asia Pacific: Managing an anti-counterfeiting programme for major US entertainment company
We advised on, set up, and now manage a merchandise/anti-counterfeiting programme in the Asia Pacific region for a major US entertainment company. This involves IP investigation and enforcement in multiple jurisdictions, using both Rouse offices and outside Counsel. The programme targets key enforcement problems and provides for a constant level of activity in the client's major markets. As well as its other benefits, it helps maintains official licensee confidence.

For more information, email nredfearn@iprights.com.