Commercial trade secrets are vital IP assets in the 21^st 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.