In addition to a Trademark Watch service, it is important that the marketplace also be watched. This can be done by encouraging members of the trademark owner’s organization, including agents, employees, distributors and licensees, to keep a watchful eye on the market and to identify and report potential infringements.

Once a trademark owner determines that the trademark is being used by another party without authorization, it is necessary to consider action against such use. Depending upon the jurisdiction, such action may take the form of infringement proceedings, an action for unfair competition, or, in British law countries, an action for passing-off, which is a type of unfair competition.

Although most foreign countries have trademark laws that provide for injunctive relief and monetary damages in the case of trademark infringement, such laws are usually not as far-reaching as those in the United States.

The rights accorded a trademark registration may be far narrower than in the United States. The comments previously made with respect to widely varying standards used to determine similarity apply equally as well in the context of infringement and unfair competition situations.

Certain countries, particularly developed nations and those that have been the subject of intense lobbying by the United States, have adopted effective mechanisms for enforcement of trademark rights, but many others are hopelessly ineffectual, and often corrupt.

There are some countries whose penal laws provide criminal remedies against infringing acts and counterfeiting. These should be considered as an alternative to civil action, since they are conducted by the local authorities at great cost savings to the trademark owner. However, many times local law enforcement personnel may be reluctant to take action in connection with intellectual property matters, or worse yet, may be corrupt or sympathetic to potential defendants who sometimes receive prior warning concerning proposed anti-counterfeiting raids.

In addition to trademark infringement, many countries also provide an action for unfair competition, although the grounds may not be as flexible as in the United States, which has, not surprisingly, developed an enormous body of case law relating to acts of unfair competition. In most countries that follow British law, such as the United Kingdom, Ireland, Australia, New Zealand, Singapore, Hong Kong, and India, to name a few, there is no general cause of action for unfair competition. Rather, such countries have an action for passing-off, which is a restricted type of unfair competition. The elements of a case for passing-off, generally speaking, consist of a misrepresentation, made by a trader in the course of trade to his prospective customers or end users, that is calculated to injure the business or goodwill of another trader and that actually does or will do damage to the business or goodwill of the plaintiff. Although actions for passing-off may be effective in many circumstances, they are also quite complex and expensive proceedings when they are contested. It should also be noted that in many jurisdictions it is possible for the tribunal to issue an award of costs against the losing party for the prevailing party’s litigation costs. This often forces parties to consider carefully whether to bring an action with questionable merits merely as a bargaining chip, as is often done in the United States, since the eventual price of that chip can be quite high.

In certain countries, including the United States, it is also possible to deposit a local trademark registration with the local customs authorities, who will conduct spot checks of imported goods to make sure that the imported goods bearing the trademark are authorized. If unauthorized uses of a registered trademark are discovered, the products will be confiscated and the trademark owner will be notified, following which, within a short period of time, the trademark owner may bring action against the infringing goods. This can be a very effective tool in combating trademark counterfeiting and infringement. Although not all customs authorities are as proactive as in the United States, an increasing number, thanks to the requirements of the GATT-TRIPS, WTO, will offer some procedure whereby trademark owners may notify the customs authorities of shipments suspected of containing infringing material, pursuant to which the officials may seize the allegedly offending goods until a judge can decide the merits of the dispute.