Defensive strategy to avoid infringement claim: Our client planned to launch a new electric-powered motorcycle in Brazil. The mark selected for the new product was found to be in use by another BR company that sold batteries for electric scooters. With the imminent launch of its new product, the client was very concerned with the risk of a potential infringement claim. The client was also unhappy with the strategy proposed by previous TM counsel and reached out to Daniel Law for support.
TM counsel with litigation background: Our firm dissected the rules involving right of precedence in registration to the client and prepared a strategy that coordinated the launch of the new product with the time of filing for new trademark applications in the name of the company. We also provided recommendations for using the mark that would significantly reduce the risk of an infringement claim. This was done due to the firm’s combined background in prosecution and litigation.
Latest development: The client was able to proceed with a clear strategy to launch the product and avoid the threat of a trademark infringement claim. The client was very pleased and has requested assistance in other TM matters.
The significance, impact and/or outcome: This case is significant as it demonstrates the firm’s ability to provide cross prosecution-litigation strategies with a business perspective to the client. The team also provided coordinated counsel for both the client’s international and Brazilian team, which were simultaneously involved in the matter.