Maxim Ali has provided comments on protecting trademarks

Project SPARK has published an article which considered current issues of protecting trademarks. Maxim Ali, Senior Associate and IP/IT specialist at Maxima Legal, has provided his expert opinions and comments for the article.

Any unauthorised use of a trademark can lead to either the recovery of damages or a demand for compensation as defined by statute for the unlawful use of a trademark. Maxim Ali considers that the payment of damages a more ‘exotic’ way to recover losses: “In my practice, it is hard to recall one instance, when the recovery of damages was a more effective way to protect the interests of a rights holder”.

Before initiating any course of action to protect a trademark, it is first important to consider whether applying to court will be economically worthwhile and carefully prepare a strategy for the dispute. Maxim explained that: “It is necessary to compare the legal expenses (such as court fees, lawyers’ fees) with any compensation that the court may grant. It should also be borne in mind that legal expenses are awarded to the successful party but that the final amount awarded can be reduced by the court if it considers it to be disproportionately high (which courts often do).”

He notes that “the rights holder must always be aware of the possibility of being ‘counter-attacked’ by the breaching party and losing the rights protected by the trademark. It is necessary to collect and keep evidence of the use of the trademark in relation to each type of product or service.”

In addition, a competitor or ‘a patent troll’ can purchase ‘old’ trademarks, that are not of interests to its ‘owner’ but are similar to a degree to cause confusion with another’s trademark and which could be used to challenge other trademarks which have a later expiration date.

In respect of this, Maxim Ali recommends the following: “On one side, it means that the right holder must carefully monitor the fate of similar trademarks with an upcoming expiration date (including in order to renew or challenge them). On the other hand, the right holder must ensure the availability of a spare logo (for example, in the form of an image or slogan) that is more likely to withstand potential attacks from other companies and will ‘reserve’ for the right holder the maximum period of protection.”

For Maxim’s full comments on this topic and the article, please click here.