Fact Gathering

During Disputes

Intellectual Property

Intellectual property drives innovation, business and economic growth.  Damage to IP, whether from theft, infringement, or human error, can threaten a company’s very survival. 

The Mintz Group Intellectual Property practice handles all manner of IP matters including trade mark use, counterfeiting, grey market trading, patent, copyright and design right issues, domain names and online infringements.

Mintz IP investigators are drawn from a variety of backgrounds including law, the pharmaceutical industry, the luxury goods sector, IT and information science. Our staff speaks a wide range of Western European languages as well as Russian, Japanese, Arabic and others. We have an established network of associates around the world.

In addition to law firms, patent and trade mark attorneys Mintz IP is also the approved service provider to some of the world’s largest brand-owning companies whose products are household names.

Intellectual Property Investigations: Protecting Your Brand

Trade mark use

We investigate the use of trade marks registered anywhere in the world; searching databases, conducting site visits, interviewing people discretely and making test purchases.

The evidence of whether and how a particular mark has been used within a relevant period is presented to our clients who may then challenge its validity or otherwise object to its use. Our services are often provided on a fixed-fee basis within an agreed timescale.

Anonymous acquisitions and proxy services

Trade marks or other IP rights owned by third parties are often of commercial interest to our clients. In such cases we assess the value of the rights to their owner and, if appropriate, we can negotiate the purchase of those rights on behalf of our client in order to achieve the most cost-effective outcome whilst preserving our client’s anonymity. We have acquired trade marks and other assets such as domain names that have become the foundation of some of the world’s best-known brands.

We also help clients conduct legal or administrative proceedings in ways that avoid disclosure of their identity and commercial interests to adverse parties.

Counterfeiting

Our investigations into counterfeiting range from fashion designs through fast moving consumer goods to automotive products and other branded merchandise in Europe, Asia and the Americas. Such investigations are often complex, involving test purchases of items through front companies followed by surveillance and liaison with relevant authorities in order to disrupt and, where possible, eliminate organised counterfeiting operations.

Online infringements

We are frequently asked to identify and investigate the operators of rogue websites, social media pages and spoofing / phishing email campaigns, often because the fraudsters are using our clients’ brands to lend legitimacy to their scams.  We use a variety of methodologies including deep web searches, technological and forensic techniques, test purchasing and covert approaches to draw out those responsible.

Intellectual Property Investigations: Assessing the Threat

Domain names

Mintz IP assists clients in identifying the registrants of domain names and establish their true interest. We will discover whether the registrant is a domain name speculator and can also negotiate the purchase of domain names on behalf of our clients.

Patents

We frequently assist clients by investigating infringements of patents and obtaining evidence to support or defend revocation actions.   We undertake technical research conducted by investigators who have the appropriate expertise. We also locate witnesses who have relevant historical knowledge.

Common law searches

Clients often ask us to determine whether there are any unregistered rights which might prevent them from adopting a particular mark, logo or design for a new product or service. Mintz IP undertakes research to identify the existence of such rights in any relevant jurisdictions and assess the level of risk they might present to a new brand.

Prior art research

We help clients defend claims of patent, copyright and design right infringement by identifying articles that were on the market in relevant jurisdictions before the priority date of the opponent’s rights. The work requires exacting research using specialist databases, reviewing dated trade literature in libraries and interviewing industry experts.

Trade secrets

We are often assigned to investigate the apparent theft of trade secrets by clients’ departed employees or other insiders. In one matter, for example, a computer company hired us after learning that a departing scientist had e-mailed some of its trade secrets to a professor in Japan before resigning to join a competitor. We found that the professor was employed by the competitor and that it was a subsidiary of a Japanese multinational—deep pockets for the lawsuit that our client subsequently brought.

Counterfeit and Grey Market Trading

We have traced all sorts of counterfeit and grey market products to their sources, almost invariably across borders, for rights holders in industries as diverse as apparel, pharmaceuticals, entertainment and machine parts. In one case, we gathered evidence for a rock’n’roll group’s lawyers that they used as the basis for cease-and-desist letters to dealers in bootleg CDs. We revisited one of these dealers after he received the lawyer’s letter, and the infringer obligingly told us: “We got a letter, so we had to move the bootlegs to the back room.” The press has reported on the Mintz Group training in-house company investigators in how to combat counterfeiting.

Royalties

We have helped artists get the facts behind surprising numbers that turned up in royalty audits. In one case, Fortune magazine reported: “Mintz was hired by the Beatles to find out if, as they suspected, Capitol Records had cheated them by secretly selling millions of albums. Using database and old newspaper stories to find people who had worked in the record business 30 years ago, Mintz found the widow of a wholesaler with an attic full of business records. After hours of sifting through boxes, Mintz discovered a check confirming the secret sales. Capitol settled the suit for a reported $80 million….”

Trade secrets

We are often assigned to investigate the apparent theft of trade secrets by clients’ departed employees or other insiders. In one matter, for example, a computer company hired us after learning that a departing scientist had e-mailed some of its trade secrets to a professor in Japan before resigning to join a competitor. We found that the professor was employed by the competitor and that it was a subsidiary of a Japanese multinational—deep pockets for the lawsuit that our client subsequently brought.

Counterfeit and Grey Market Trading

We have traced all sorts of counterfeit and grey market products to their sources, almost invariably across borders, for rights holders in industries as diverse as apparel, pharmaceuticals, entertainment and machine parts. In one case, we gathered evidence for a rock’n’roll group’s lawyers that they used as the basis for cease-and-desist letters to dealers in bootleg CDs. We revisited one of these dealers after he received the lawyer’s letter, and the infringer obligingly told us: “We got a letter, so we had to move the bootlegs to the back room.” The press has reported on the Mintz Group training in-house company investigators in how to combat counterfeiting.

Royalties

We have helped artists get the facts behind surprising numbers that turned up in royalty audits. In one case, Fortune magazine reported: “Mintz was hired by the Beatles to find out if, as they suspected, Capitol Records had cheated them by secretly selling millions of albums. Using database and old newspaper stories to find people who had worked in the record business 30 years ago, Mintz found the widow of a wholesaler with an attic full of business records. After hours of sifting through boxes, Mintz discovered a check confirming the secret sales. Capitol settled the suit for a reported $80 million….”

Talk to one of our specialists

Christopher Weil
co-CEO
Washington, D.C.
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Jack Mullan
Partner / Head of Asia
Singapore
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Vincent de Vos
Director
Worthing
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Rachel Barker
Managing Director and Practice Head of IP Practice
Worthing
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