An IP Infringement Issue in China that was surprisingly fast and cheap to Resolve

Here's the exception that proves the rule. What's the rule? Here's the rule: The time and expense to complete any legal matter will exceed whatever is estimated.

In a prior life, among other things, I managed the intellectual property portfolio for a large, global technology and consulting company. Given our profile, we had quite a few instances of typosquatters and other unsavory types putting up websites with variations of our name and domain name. So, we used a commercial Internet monitoring service to keep an eye on this and we would take action to suppress those instances that seemed infringing, damaging or otherwise objectionable.

Our service identified the website of what appeared to be a small firm in a large city in China that not only held itself out as in same business as we were, but also operated under the same name and exact same logo. In other words, they completely misappropriated our identity and trademarks, which I guess in hindsight was rather flattering. Well, this was something we could not tolerate. We actually has significant operations in China and had to stamp this out.

As a cost-effective first step, I tried emailing the firm and people in question. Not surprisingly, I got no response and there website remained up. Same result when I asked my colleagues in China to do so. Then, fearing we were about to step into a bottomless moneypit, I chatted with our outside trademark counsel, a very large firm with offices in China. Our outside counsel suggested engaging what sounded to be the equivalent of a local private investigator to visit the target and speak with anyone there. This would entail a relatively modest fee for an international matter, which was in the low four figures.

Not having any real choice, we authorized this. Before too long, we got back a thorough report of what was going on. More important, the local investigator apparently notified the personnel there of our IP rights and concerns and even obtained a promise to cease and desist from using our name and marks. I was a little skeptical that this was going to be enough, especially with the well-known piracy issues in China.

Yet, indeed our problem was solved. The offending activity stopped and we moved on to the next offensive website linking our company to inappropriate services. I can honestly say that, even with all my experience working on cross-border matters, I was amazed how easy, inexpensive and quick it was to make this go away with a few phone calls and emails. I hope lightning will strike twice someday.

Jeremy A. Gibson & Associates, P.C. handles trademark, trade secret, domain name and other intellectual property matters such as the one discussed above. We are available to serve and meet with clients throughout the Chicago, Illinois area, including Arlington Heights, Buffalo Grove, Deerfield, Des Plaines, Evanston, Glenview, Highland Park, Hinsdale, Lake Forest, Libertyville, Mount Prospect, Naperville, Northbrook, Oak Brook, Palatine, Rolling Meadows, Schaumburg, Skokie, Oak Brook, Oak Park, Vernon Hills, Waukegan, Wheeling and Wilmette. Contact us anytime for a complimentary consultation with a Chicago business lawyer.