With platforms like Amazon, Taobao, Tmall, and Shopee facilitating easy access to foreign markets, and global advertising opportunities through platforms like Google, Instagram, and Facebook, trademark disputes have become more frequent.
You may find yourself needing to take action against counterfeit products, or conversely, receiving demand letters claiming trademark infringement. Platforms may handle intellectual property (IP) infringement complaints by requesting a statement or even removing your product listings. Although full-scale lawsuits are rare, temporary injunctions may still occur.
However, there’s no need to panic or immediately comply with demands. Overseas trademark disputes generally follow the same principles as domestic cases.
Effectively Use Demand Letters
Case 1: H Company
H Company, which imports and distributes household goods like cosmetics and dietary supplements, discovered a suspicious account on Instagram. The account used a name very similar to their brand and was marketing products with packaging and designs nearly identical to H Company’s. Further investigation revealed that the infringing company was based in Singapore and selling the products across Southeast Asia through Shopee.
Upon inquiry with Singapore’s trademark office, H Company found that the competitor had already filed a trademark application there. Fortunately, H Company had already registered trademarks in major countries, including Singapore.
To address the issue, H Company:
- Filed an opposition to the Singapore trademark application, claiming it was too similar to their registered trademark.
- Sent a cease and desist letter requesting the competitor withdraw the trademark application and stop using the trademark.
After initially denying any similarity, the competitor eventually agreed to withdraw their application and change the trademark after H Company presented evidence of imitation, such as website details and packaging comparisons.
This proactive approach prevented further product distribution damage and avoided the time and costs of prolonged litigation.
Negotiation Is Possible Even in Infringement Cases
Case 2: L Company
L Company received a demand letter from a British sports broadcasting company claiming that L’s YouTube account name and trademark were similar to theirs. The British company requested that L Company cancel their UK trademark registration and delete the account.
While the two companies operated in overlapping sports-related industries, L Company argued that:
- The trademarks were distinguishable overall.
- Their business was sponsorship and sports review content rather than broadcasting.
Following multiple exchanges, both companies agreed to coexist, with L Company limiting their content to sponsorship promotion and retaining their trademark and YouTube account without further costs.
Case 3: H Company (Nail Products)
H Company, a nail product manufacturer, received a demand letter from a Finnish company about trademark issues in Europe and Japan. However, H Company confidently demonstrated that their trademark was distinct. After sending a well-prepared response, the Finnish company did not pursue the matter further.
Handling IP Infringement Complaints on Platforms
Many online platforms have systems to handle intellectual property infringement complaints. Although procedures vary, platforms generally allow sellers to submit a defense statement.
Case 4: M Company
M Company, which sold sleep masks on Amazon, faced a complaint for allegedly infringing a U.S. design patent. Amazon immediately removed the product from its listings. After reviewing the design patent, M Company found that there were significant differences between the patented and their product, particularly in the mask’s structure.
M Company submitted an English defense statement, and Amazon reinstated the product listing.
Case 5: G Company
G Company, selling smartphone grips on Shopify, received a trademark complaint for using the term “popsocket” in product descriptions. The complainant argued that “popsocket” was a registered U.S. trademark.
G Company had assumed the term was generic. Fortunately, since their product carried a different brand name, they removed all references to “popsocket” from product descriptions, notified both the platform and the trademark holder, and successfully resolved the issue.
Key Takeaways for Overseas Trademark Disputes
Given the ease of global market entry, trademark disputes can arise anywhere. However, the core principles of trademark law are similar worldwide. Evaluate the legitimacy of the claims with an expert and respond calmly. If counterfeit products cause problems, don’t hesitate to take action, even against foreign companies. Proactively using demand letters, responses, and defense statements can often lead to efficient resolutions. While lawsuits or criminal complaints may sometimes be necessary, settling through communication is often preferable due to the complexity of overseas litigation.