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Complex IP Enforcement

A multifaceted endeavor that requires a holistic approach to address the challenges posed by IP infringement, counterfeiting, piracy, and unauthorized use of intellectual property.
  • Overview
  • How we can help
  • Our track record
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Beyond straightforward anti-counterfeiting and anti-piracy (where products/content and IP are identical) lies a complex multifaceted area of enforcement targeting a wider range of unauthorized misuses of intellectual property. Click the links below for more information:

How we can help.

Trade secrets enforcement

Commercial trade secrets are vital IP assets in the 21st century because confidential information grants a competitive edge. This protection goes beyond patents, encompassing valuable formulas, processes, customer lists, or algorithms kept closely guarded. To qualify, the information must be unknown to the public, hold commercial value, and have reasonable measures taken to keep it secret. Unlike patents, trade secrets offer indefinite protection as long as secrecy prevails. Companies utilize various tactics to safeguard them, from restricted access controls to non-disclosure agreements. While powerful, maintaining secrecy presents challenges. Leaks can be costly, and proving misappropriation requires evidence of both secrecy and unfair practices.

Rouse has experience dealing with a wide range of trade secret theft situations, from uncovering them through pretext inquiries to evidence-gathering techniques. For example, we investigated the theft of prerelease footwear from a client’s factory in Thailand. We have pursued criminal prosecutions against former staff and third parties. In one case a senior R&D manager was convicted of receiving bribes from suppliers so sentenced to jail and fined in China.

In addition, our supply chain integrity work designing, monitoring, and implementing trade secret protection systems for client’s subsidiaries around the world, is informed by our enforcement experience so provides better solutions.

Our multi-jurisdictional capabilities enable us to navigate the differences between civil law trade secrets rules and common law rules on confidential information.

When needed we work with our Disputes lawyers so civil claims can complement other types of enforcement.


Services misuse, brand interference, and trade name enforcement

Misuse of trademarks on services creates consumer confusion and devalues brands.  We have worked in many industries from IT to hospitality to financial services to help well-known services brands prevent third parties from free-riding on their reputations. Our experience covers signage, online and social media misuse, lookalike brands, misuse on both core and non-core services, and trade name misuse.  One case example was infringing branded fireworks sold at Chinese New Year; the authorities wouldn’t accept the IP complaint but pursued the unfair competition case.

Each forum for complaints varies by country, but where possible we seek to use lower-cost administrative and similar systems, for example, to remove infringing business names. Online we assert ISP liability unless the infringement is removed. In combination with our trademark teams, we have extensive experience presenting well-known mark evidence to authorities to remove conflicting trade names. We have even used alternative strategies such as educating company formation agents in one country not to allow their customers to copy famous brands in new company formations.


Design and patent enforcement

In many countries registered designs /design patents even certain types of patents (usually mechanical ones) can be enforced through administrative or criminal routes. The administrative route is commonly used in China; often designs are more widely copied by infringers who don’t want to risk trademark infringement actions, so only make design “knockoffs”.

For example, we have for many years run extensive design patent enforcement for a company making storage boxes, where many copycats infringed the designs. We conducted raids and a warning letter program and reduced the infringement scale to a minimum.  We undertook an extensive program against gaming controllers in Southern China; with one program involving simultaneous design patent raids against 13 targets. At the biannual Canton Fair, we often pursue actions against design patent infringers exhibiting; for one client against dozens of luggage and bags infringers.

Meanwhile, in South East Asia we ran programs for several motorcycle companies to enforce patents against copycat motorcycle parts. Experts' reports on patent infringements were obtained and presented to the criminal authorities so enforcement could be undertaken against the parts producers, thereby protecting the parts aftermarket from patent-infringing copies.  

One case started in the Philippines, for a Japanese electronics company; their patent infringement case in the Philippines failed, but there were no sales in China where the product was made. Through multiple visits and face-to-face business meetings with the factory, we managed to collect notarized evidence of patent infringement leading to infringement litigation in Fujian province China.


Lookalike infringing products cases (Passing Off and Unfair Competition)  

Many well-known products are copied by infringers without misusing the trademark. Such products are difficult to deal with in many markets. In common law markets civil passing-off proceedings must be brought; this is a core strength of our Disputes lawyers, an area where Rouse and its Network law firms have decades of experience. Our enforcement team frequently initiates such cases with investigative work to uncover the source and gather evidence for litigation.

In civil jurisdictions, there are many alternate enforcement options. We have brought administrative or criminal unfair competition cases in many countries from China to the Philippines to Thailand using our unique combination of investigative, Enforcement, and Dispute team skills.  For many years for one client we pursued unfair competition cases for lookalike foods based on copycat packaging and copied packaging elements.

A frequent requirement is the use of unique IP claims, sometimes in combination, for example, copying in packaging elements, nontraditional trademarks, and unfair competition. The toy and homewares industries are often areas where we have supported clients in action against product copycats.


Regulatory enforcement and illicit trade

Many clients operate in regulated environments. For clients in heavily regulated sectors like pharma, agrochem, and household chemicals, we frequently file regulatory complaints alongside or alternatively to IP claims. This enables the deployment of alternative government resources which in some countries are more effective, faster, or cheaper than the IP solution.  Sometimes the penalties are stronger.

Recognising that IP violation is part of a wider illicit trade industry allows us to focus on other Customs breaches, different types of crimes, and even tax evasion and consumer fraud alongside IP issues.

Certain types of IP violation, especially along tricky borders like the Chinese borders with Laos and Myanmar are interconnected with wider illicit trade, often extreme criminality and organised crime, so require extremely careful approaches.


Supply chain compromise, unauthorized supply, and grey or diverted goods  

IP owners may find goods leaking out of their supply chain. These are especially difficult to distinguish from counterfeits. Our experience in this goes back to the 1990s when we ran a major worldwide program to identify auto parts suppliers selling overruns.  Another case example involves a client’s latest product designs apparently leaking from its China factory into New Zealand. Extensive investigations uncovered a Chinese student and his friends selling the products to support their education, enabled by family members working in the client’s own supplier factory. A common modus operandi is for our enforcement team and Evidence gathering specialists to investigate and document the issue and create a dossier for the client to take to its internal supply team to deal with the issue of its supplier’s leaks.

We routinely advise on diverted and grey goods. While few countries prohibit these nowadays, there are some unique angles to prevent them in some markets. In other cases, we may need to investigate trade links, to trace the sources of the grey goods so clients can deal with the issue internally.

Naturally, this gives us unique insights into supply chain vulnerabilities, so we are regularly called in to conduct site audits, supply chain weakness studies, and supply chain compliance training programs.

Our track record.

Brand protection and enforcement strategies for an international toy manufacturer.​

Our work for this client began in 2017 with a series of consultancy projects essentially looking at copycat threats. We now handle work for them in China, the Philippines, Thailand, Vietnam, Indonesia, and the UAE.

Our client’s IP challenges are several, particularly as IP in toys is often is limited. Copyright in mass-produced articles is restricted in many countries and generally difficult to enforce. Design rights must be registered in every country to enforce (which is expensive). Unfair competition or passing off rights require very close copies and sometimes clear consumer confusion. Securing trade mark rights in 3d toys is difficult too as secondary meaning is hard to prove. ​

Over the years, many copycats especially in low-cost manufacturing centres such as China, have appeared. This kind of lookalike product copying is hard to protect using criminal and administrative systems. Many court systems outside of China do not provide good civil remedies against copycats since the legal costs of complex civil actions may not be covered by the damages awarded, and costs are often not awarded. The burden of proof is also higher in criminal cases, and we usually fight hard to win precedent cases. ​Online work against copycats is another challenge, particularly in non-trademark cases. We have to be assertive about infringements, engage with platforms, and potentially threaten them with legal action.

Complex evidence gathering to support PVR infringement litigation.

Our client is the world’s largest marketer of a particular fruit, selling in over 50 countries. We have supported this client for many years across a range of issues in China, including extensive, complex investigations to obtain evidence in support of plant variety rights and trade mark civil litigation, criminal action, and online enforcement.  The complex supply chain and local protectionism pose challenges in obtaining evidence for action at the optimal moment.  In one matter, we investigated an especially complex PVR case that involved seedings stolen from a third country and sold into Hubei, China.  Starting with basic information on the infringer, we conducted complex investigations that spanned two years (until the plant was fruited in the second year).  Despite the great difficulty outsiders faced in gaining access to the orchards, we were able to notarize and preserve evidence such that its DNA could be analysed (an extremely difficult process that required wearing gloves to avoid contaminating the fruit’s DNA).  This was all made even more challenging since the infringer was aware that a suspect in the third country was detained by the police and was therefore on guard.


Our Team

Nick Redfearn

Principal, Global Head of Enforcement


+62 811 870 2616

Sophia Hou

Principal and General Branch Office Manager at Lusheng Law Firm (Rouse's strategic partner)


+86 20 8595 5800

James Godefroy

Principal, Deputy Enforcement Head


+86 20 8595 5800

Josh Mandell

Principal, General Manager


+86 10 8632 4000

Adelaide Yu

Principal & Hong Kong General Manager

Hong Kong SAR

+852 2302 0832

Yana Tsygankova

Principal and Legal Consultant, MEA Enforcement Head


+971 4 3098000

Edmund Baranda

Managing Partner at Baranda & Associates, Principal and Country Manager of Philippines business


+63 2 403 1686

Chris Bailey

Head of UK & EU Enforcement


+86 21 3251 9966

Sophie Li

Senior Consultant


+86 10 8632 4000