Not Black and White – Hogan Lovells Advises on Tackling the Global 'Gray Market'

Multinational companies are typically not doing enough to protect their valuable trademarks through enforcement, according to new research from leading global law firm Hogan Lovells.

Brand Benchmarking 2016 found that while most international brand owners invest significant time and money into registering trademarks, with 76% having registered trademarks in more than 75 countries, they are not being sufficiently active in protecting their brands through appropriate enforcement action.  60% take little or no action in dealing with gray market parallel imports – genuine products intended for sale elsewhere – despite the big negative impact (according to the International Trademark Association, billions of dollars in revenue is lost each year to gray market diversion). Furthermore, despite many countries having good customs seizure systems, 30% of brand owners do not record their trademarks with any customs authorities and only 13% do so in more than 10 countries.

Lloyd Parker, Asia Pacific and Middle East Head of IP, says this is because of difficulties multinationals encounter in navigating enforcement methods in different countries:

"Many multinationals are foregoing valuable brand protection opportunities simply because of difficulties navigating varying enforcement regimes worldwide.

"It seems brand owners are challenged by the question of how to take enforcement action to protect their brand's value from being stolen or damaged by infringers.

"It is important not to give up in despair, but to find the keys to ensuring you get the most out of each possible enforcement method in each country. Taking the right action at the right venue is possible providing you can clearly assess and understand the pros and cons of each procedure in each country."

The survey of 100 multinational brand owners found that over half (52%) cited difficulty of enforcement as their main reason for not taking action against grey market goods. Asian companies were less proactive than Western companies, with 71% taking little or no action.

Other key findings from the survey were:

-       95% use defensive filings

-       Germany stands out as the destination of choice for civil litigation, followed by the U.S.

-       Docketing is mostly handled in-house, but there 40% are considering increasing the amount of docketing they outsource

For a copy of our report or the full suite of our brand and trademark protection and enforcement guides, please visit:


Orla O'Donovan

Public Relations Senior Adviser

Direct: +44 20 7296 2815


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