Brain pains
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EditorialComment<br />
<strong>Brain</strong> <strong>pains</strong><br />
Editor: Mark Dugdale<br />
editor@ipprotheinternet.com<br />
Tel: +44 (0)203 750 6022<br />
Reporter: Tammy Facey<br />
tammyfacey@blackknightmedialtd.com<br />
Tel: +44 (0)203 750 6017<br />
Associate publisher: Carlos Northon<br />
carlosnorthon@ipprotheinternet.com<br />
Tel: +44 (0)203 750 6023<br />
Account manager: Malkeet Mullay<br />
malkeetmullay@ipprolifesciences.com<br />
Tel: +44 (0)203 750 6026<br />
Account manager: Kurtis Spencer<br />
Tel: +44 (0)203 750 6025<br />
Publisher: Justin Lawson<br />
justinlawson@ipprotheinternet.com<br />
Tel: +44 (0)203 750 6028<br />
Marketing executive: Amber Harty<br />
amberharty@blackknightmedialtd.com<br />
Tel: +44 (0)203 750 6020<br />
Designer: John Savage<br />
johnsavage@ipprotheinternet.com<br />
Tel: +44 (0)203 750 6021<br />
Office fax: +44 (0)20 8711 5985<br />
Published by Black Knight Media Ltd<br />
Provident House, 6-20 Burrell Row<br />
Beckenham, BR3 1AT, UK<br />
Company reg: 0719464<br />
Science and innovation are making incredible leaps forward, so much so that scientists from<br />
Ohio State University claim to have grown a nearly complete human brain—in a dish. The<br />
brain, which equals the maturity of a five-week old fetus, is the size of a pencil eraser. It has<br />
an identifiable structure and contains 99 percent of the genes present in the human fetal<br />
brain, according to its ‘growers’.<br />
The brain has a spinal cord, all of the major regions, multiple cell types, signaling circuitry,<br />
and even a retina. Rene Anand, professor of biological chemistry and pharmacology at Ohio<br />
State University, converted adult skin cells into pluripotent cells, which are immature stem<br />
cells that can be programmed to become any tissue in the body, to grow the brain.<br />
He said: “We’ve struggled for a long time trying to solve complex brain disease problems<br />
that cause tremendous pain and suffering. The power of this brain model bodes very well<br />
for human health because it gives us better and more relevant options to test and develop<br />
therapeutics other than rodents.”<br />
Scientists hope that the system will enable ethical, rapid and accurate testing of experimental<br />
drugs before the clinical trial stage, and advance studies of genetic and environmental<br />
causes of central nervous system disorders.<br />
Anand is yet to have his method peer reviewed because he has filed an invention disclosure<br />
with Ohio State University, so until it is scrutinised by other scientists, it’s unclear whether<br />
this is an actual breakthrough. But the possibilities are intriguing—in a decade that has<br />
brought us further expansion of the internet, the exploration of Pluto, driverless cars and<br />
solar-powered planes, we would be forgiven for thinking we’ve had our lot. But a scientist<br />
just grew a human brain—in a dish. Innovation is showing no signs of slowing down, and<br />
just like Anand’s method for growing a human brain, it needs protecting more than ever.<br />
With that in mind, we present this year’s IPPro The Annual. It covers intellectual property<br />
topics such as online brand protection, new gTLDs, and pharmaceutical research and<br />
development in detail, and provides a bird’s eye view of key jurisdictions around the world.<br />
As ever, we always welcome your feedback, so don’t hesitate to drop us a line.<br />
Mark Dugdale<br />
Editor<br />
Copyright © 2015 Black Knight Media Ltd.<br />
All rights reserved.<br />
3
Latin America is waiting<br />
AIPPI president Felipe Claro discusses<br />
issues the association has faced in the<br />
last 12 months, and what it plans to do<br />
during its annual congress in October<br />
2015 and beyond<br />
P8<br />
Give and take: enforcement’s<br />
unintended consequences<br />
Platform and brand owners can take an<br />
unexpected hit from social media site<br />
takedown disputes, say Susan O’Neill<br />
and Janie Thompson on behalf of INTA<br />
P16<br />
Backing the profession<br />
CIPA’s Lee Davies recaps what was a very productive 12 months for the institute<br />
P10<br />
Dealing with digital identity theft<br />
Nathalie Dreyfus of Dreyfus explains the<br />
importance of owning a trademark to<br />
protect a brand’s rights on the internet,<br />
and the various methods for doing so<br />
P20<br />
Top tips for TLDs<br />
Bart Mortelmans of bNamed.net offers<br />
advice for protecting trademarks online<br />
P28<br />
Growing into its own<br />
The new gTLD programme continues to develop and mature, according to Anthony<br />
Beltran of 101domain<br />
P24
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C<br />
M<br />
Y<br />
Deciding when to decide<br />
The lessons learned from the AIA<br />
aftershock prove that ongoing cooperation<br />
and partnership is the best way to achieve<br />
an organisation’s goals, says Matthew<br />
Sekac of Park IP Translations<br />
P34<br />
CM<br />
MY<br />
CY<br />
CMY<br />
K<br />
Perfecting patents<br />
Experts discuss how best to translate a<br />
patent, and what to look for in a partner<br />
P38<br />
One fell loophole:<br />
protecting clinical data<br />
There are evident loopholes in Mexican<br />
legislation regarding IP rights and clinical<br />
data protection framed in the scope<br />
of sanitary regulatory affairs. Soledad<br />
Betanzos-Lara of Goodrich, Riquelme y<br />
Asociados reports<br />
P56<br />
As queasy as 1, 2, 3<br />
Obtaining supplementary protection certificates<br />
in Poland is not as simple as do re mi, says<br />
Magdalena Tagowska of Patpol<br />
P52<br />
Innovation game:<br />
a new series<br />
Where are the next innovations<br />
going to come from? Experts take<br />
a look<br />
P46<br />
When only a wrecking ball will do<br />
The digital space can be a free-for-all for phony operators, so how do you catch the<br />
fake-happy counterfeiters? Experts from WebTMS and bNamed.net share how to limit<br />
the damage caused by online infringers<br />
P30<br />
The Kit Kat case:<br />
a break between the law and commercial reality?<br />
Experts from Christodoulos G. Vassiliades & Co. LLC examine the ways in which Europe<br />
and the UK have recently approached shape trademarks<br />
P58<br />
OAPI: effective<br />
trademark protection<br />
Vanessa Halle of Nico Halle & Co Law<br />
Firm offers some useful tips for brands<br />
protecting and enforcing their trademark<br />
rights in Africa<br />
P62<br />
Closing borders to fakers<br />
and pirates<br />
Amaka Okafor of Stillwaters Law outlines<br />
the importance of an effective border<br />
control regime to fighting counterfeiting<br />
and piracy<br />
P64<br />
Game-changing decisions on<br />
trademarks continue<br />
The Turkish Constitution and trademark<br />
law are at odds, but the courts are<br />
making attempts to clear up the disputes,<br />
says Oktay Simsek of Destek Patent<br />
P68<br />
Service providers<br />
A selection of providers in intellectual property<br />
P73
AIPPI president Felipe Claro discusses issues the association has<br />
faced in the last 12 months, and what it plans to do during its annual<br />
congress in October 2015 and beyond. Tammy Facey reports<br />
What has taken place over the past 12 months for<br />
the AIPPI? What have your members been focusing<br />
on in terms of intellectual property?<br />
We have been following the trademark changes in Europe through<br />
the trademark package initiative and have been participating in<br />
patent harmonisation studies in different jurisdictions.<br />
We are closely following the plain packaging debate before the<br />
World Trade Organization (WTO), where AIPPI (the International<br />
Association for the Protection of Intellectual Property) will deliver a<br />
presentation on IP as a trade resource during the public forum in<br />
Geneva at the end of September 2015. As WTO director Fernando<br />
Azevêdo said: “Trade should provide a seat for everyone at the table”.<br />
AIPPI also recently participated in a multi-jurisdictional copyright<br />
book project that will be available soon.<br />
Our observer status before Office for Harmonization in the Internal<br />
Market (OHIM) has been both demanding and rewarding, and we<br />
plan to return to Alicante in the future.
Given that your next congress is in Brazil, what can we<br />
expect on the agenda for your Latin American members?<br />
AIPPI is a global association that covers more than 120 jurisdictions.<br />
Our national groups, committees and individual members produce<br />
about 100 proposals for consideration in a given year. From those<br />
we identify four key topics that span the breadth of IP issues that<br />
are highly relevant for the IP community. These topics are chosen<br />
for detailed analysis and debate, leading to AIPPI resolutions. We<br />
also select a diverse range of topical panel sessions for our annual<br />
educational programme.<br />
This year, at our congress in Rio between 10 and 14 October 2015,<br />
we will debate trade secrets, free riding (trademarks), copyright<br />
exceptions and inventorship of multinational inventions. We are<br />
also taking into account several topics of interest proposed by the<br />
Brazilian group, so our panels will include sessions on plant variety<br />
protection and green technology. No one wants to be on the outside<br />
of green technology and climate change issues. Even the Pope is<br />
interested in climate change.<br />
How do you filter the proposals, to only end up with<br />
four IP issues?<br />
The first point is that in any given year there will always be more than<br />
four IP issues that AIPPI feels need to be addressed. As mentioned,<br />
the four issues selected annually form the basis of AIPPI’s resolutions.<br />
The power of these resolutions is that they represent the consensus<br />
view of AIPPI, having been studied by the national and regional<br />
groups, debated by experts and passed by vote at the executive<br />
committee. So the selection process is important.<br />
Topics of relevance to the IP issues facing the world today are proposed.<br />
Our programme committee meets to analyse all proposals and shortlists<br />
them for consideration by the reporter general team and ultimately<br />
approval by the bureau. This rigorous process ensures that relevant<br />
and diverse topics are selected for AIPPI’s resolutions. Similar rigour is<br />
applied to the selection of topics for the educational programme run at<br />
every congress, ensuring a balance of matters of global interest as well<br />
as topics of special interest for the region where the congress is held. We<br />
hope that this year we will attract more Latin American attendees keen to<br />
address IP issues they have in the region.<br />
We see that there is not much innovation protection in this part of<br />
America: only 2.5 percent of all patent applications come from Latin<br />
America. This number should rise in the future. We need to create<br />
more awareness of how to protect new technologies. Latin American<br />
people are innovating, but are not always ready or knowledgeable<br />
on how to protect their innovations. This needs to change.<br />
At the same time, there is a kind of anti-IP sentiment, especially<br />
among young people, who ask: “why should I pay for this?” This is<br />
particularly true in the virtual environment, because sometimes IP is<br />
reduced to just vibrations that travel through the air (books, games,<br />
apps, music, pictures, and movies). Even money is transformed into<br />
a fingerprint scan. So they ask: “Why it is so easy to get a file, but<br />
at the same time I am restricted from using it?”<br />
Would education practices raise awareness of IP<br />
and help Latin America become more innovative?<br />
Absolutely. IP awareness programmes are most welcome in the Latin<br />
America region. This should be done at all levels: schools, children,<br />
commerce, judiciary, and so on. Today, we no longer have local<br />
markets in the old sense. Even the smallest markets are affected<br />
by global IP rules and principles. In many cases the customer is the<br />
smartphone that dictates to its holder how and what to buy.<br />
How well positioned are IP systems in Latin America<br />
to encourage innovation in the life sciences?<br />
Culturally, innovation protection is a bit slow in Latin America. Only<br />
during the last few years are innovators realising they can protect<br />
their inventions with a patent or other means of protection. Typically,<br />
the order was to create and publish and do nothing. Innovators are<br />
now realising they can create, protect and then publish.<br />
Efforts are being made in this vein with universities taking the lead<br />
in developing innovation centres, shaping IP policies and spreading<br />
the message to create and protect. It is happening now and it will<br />
create an impact in the near future.<br />
I am optimistic about this. Latin American governments are<br />
also offering tax incentives for start-ups, so it would have<br />
a positive effect, even if it means there is more to comply<br />
with. IPPro<br />
“<br />
There is a kind of anti-IP sentiment, especially among young<br />
people, who ask: ‘why should I pay for this?’ This is particularly true<br />
in the virtual environment<br />
”<br />
Felipe Claro, President, AIPPI
CIPA<br />
Backing the profession<br />
CIPA’s Lee Davies recaps what was a very productive 12 months for the institute<br />
The 12 months over 2014 and 2015 were the first in the Chartered<br />
Institute of Patent Attorneys’s (CIPA) history that the positions of<br />
president and vice president have both been held by women. While a<br />
mark of progress today, we hope that in the near future, the same will<br />
be completely unremarkable.<br />
Also remarkable this year has been CIPA’s lobbying efforts. We have<br />
lobbied at home and abroad on critical issues such as the drafting<br />
and implementation of the Intellectual Property Bill, the unitary patent<br />
and the Unified Patent Court (UPC) and the consequences for UK<br />
PLC of a patent litigation system that was potentially damaging to the<br />
UK profession and the UK’s business interests.<br />
We also built on our relationships with other key stakeholders such<br />
as the IP minister, Baroness Neville-Rolfe, the UK IP Office (IPO) and<br />
the EU Commission. The IP minister delivered the keynote speech<br />
at the CIPA Congress, spoke alongside our president at a policy<br />
roundtable on cyber crime and was guest speaker at the inaugural<br />
meeting of a CIPA initiative to make the IP professions more inclusive<br />
and accessible to all, regardless of background.<br />
Ahead of the UK General Election, we produced our first ever<br />
manifesto, An Economy of Ideas. Through our manifesto, we implored<br />
10<br />
all political parties to see the IP system as not only a mechanism<br />
for protecting innovation, but also a significant means through which<br />
businesses maximise the return on investment.<br />
Months later, we continue to lobby the government to maintain the<br />
virtuous circle through which investment in new ideas is protected,<br />
leading to profits that can be reinvested in new and exciting projects.<br />
To accompany the manifesto and further illustrate the virtuous IP<br />
circle, we produced an animated video, also called An Economy of<br />
Ideas, which we launched on World IP Day (the video can be viewed<br />
on our website on YouTube).<br />
Significant attention has also been paid to the internal workings of<br />
CIPA. Andrea Brewster, 2013 and 2014 vice president and newly<br />
elected president for 2014 and 2015, embarked on a meet-themembers<br />
campaign. Brewster visits CIPA members in their own<br />
offices around the UK, to find out how best CIPA can serve them.<br />
In the same vein, our officers were set the challenge of describing<br />
the unique benefits of being a member of CIPA in three to five<br />
words. And when dealing with patent attorneys, three to five words<br />
can only translate into four words! “Status, Influence, Learning and<br />
Community” (SILC) formed the core of our three-year strategic plan.
Intellectual Property<br />
in an Innovative World
CIPA<br />
These four SILC headings have helped CIPA to align and prioritise its<br />
activities with a clear focus on what the institute should be doing for<br />
the people it represents. We have already made significant strides in<br />
delivering its objectives.<br />
Internal changes throughout the past year have reflected the foremost<br />
importance of serving members as well as possible. The Informals<br />
(the trainee arm of CIPA) felt isolated and unsupported. We have<br />
brought it closer. Now a formal CIPA committee, it has access to all<br />
of the institute’s support mechanisms, but the trainee attorneys also<br />
retain independence to decide their own programmes and set their<br />
own budget.<br />
Similarly, IP administrators, so vital to CIPA’s work, also sat on the<br />
fringes of the institute, either as associates with few clear membership<br />
benefits, or not joining at all. A new committee has been set up to look<br />
after their interests, its aims being to provide them with a voice at<br />
CIPA, professional recognition and influence, and a clearer career<br />
development pathway. A review and update of the existing—widely<br />
respected—patent administrators’ course, and the introduction of<br />
advanced training modules, is being overseen by the new committee.<br />
compliance with Privy Council requirements for the format of byelaws<br />
for chartered bodies.<br />
The last 12 months have also been a busy year for CIPA’s many<br />
committees. An internal governance committee has been established<br />
to ensure that the institute has in place robust governance<br />
procedures and leads on all finance, employment and general legal<br />
matters. A new education and professional standards committee<br />
has also been set up, and is providing CIPA with additional focus on<br />
educational matters.<br />
It is tasked with developing a long overdue set of professional<br />
standards detailing the skills and knowledge required for a twentyfirst<br />
century patent attorney, out of which CIPA is building a vibrant<br />
education programme.<br />
The joint business practice committee spent much of its time<br />
focusing on the impact of IPReg’s new client account requirements<br />
on patent and trademark firms. It also spent considerable energy<br />
lobbying against IPReg’s determination that the Money Laundering<br />
Regulations 2007 apply to patent attorneys.<br />
“<br />
CIPA sought to be as constructive as possible,<br />
however, the committee fears that the Nagoya Protocol<br />
has the capacity to cause severe difficulties for both<br />
academic and industrial researchers<br />
”<br />
Lee Davies, Chief executive, CIPA<br />
Following the successful introduction of a course covering formalities<br />
skills, CIPA has set up the IP administrators group (IPAG), membership<br />
of which is open to all members of CIPA who have an interest in IP<br />
administration. IPAG runs CPD qualification lectures and holds social<br />
events. It also publishes a newsletter, The PAN, which is produced<br />
each month.<br />
Embracing better technology is also all part and parcel of the ‘improved<br />
service’ CIPA model. We have introduced live web broadcasts from<br />
the CIPA Hall and venues around the country to bring high quality<br />
debate and information to a wider audience of our members and the<br />
outside world.<br />
It wasn’t just CIPA’s technology that required modernisation. CIPA’s<br />
bye-laws were unfit for purpose and needed substantial updating.<br />
As a professional body incorporated by Royal Charter, the bye-laws<br />
describe how CIPA is governed, structured and organised to deliver<br />
the objects set out in the charter.<br />
A resurgent trademark committee provided detailed comments<br />
to Office for Harmonization in the Internal Market in response to<br />
its strategic plan consultation. The committee conducted a survey<br />
of the CIPA membership to gain a better understanding of what<br />
support members who work in the trademark environment want<br />
from the institute. Some 457 members responded to the survey, a<br />
20 percent response rate. The committee discussed the results and<br />
was encouraged that support from CIPA on trademark issues is still<br />
wanted by the membership.<br />
The life sciences committee turned its attention to the European<br />
regulation to enforce the Nagoya Protocol, providing a consultation<br />
response which was well received by the Department of Food and<br />
Rural Affairs. The institute sought to be as constructive as possible,<br />
however, the committee fears that the Nagoya Protocol has the<br />
capacity to cause severe difficulties for both academic and industrial<br />
researchers. CIPA also published a position paper on the subject,<br />
which was well received by government and other major stakeholders.<br />
A working group was set up to consider possible amendments in<br />
greater detail and to prepare a draft set of bye-laws for discussion.<br />
After consulting members, the revised bye-laws will then be<br />
finalised after having been checked by specialist counsel for<br />
12<br />
This year, the patents committee has had one big item to consider—<br />
the unitary patent and UPC. Here there is great crossover with one<br />
of CIPA’s busiest committees, the litigation committee. When the UK<br />
IPO issued a technical review and called for evidence concerning
CIPA<br />
secondary legislation to implement the Unitary Patent Regulation<br />
and UPC Agreement, a joint working group of the two committees<br />
prepared CIPA’s response.<br />
The design and copyright committee led the institute’s work on<br />
examining the consequences of criminal sanctions for design<br />
infringement appearing in the IP Bill. The committee was central in<br />
determining CIPA’s lobbying position as we met with Lord Younger,<br />
Lord Clement-Jones and Lord Stevenson to set out our concerns.<br />
The international liaison committee has also had a very busy year.<br />
Members attended a reception hosted by Institute of Trade Mark<br />
Attorneys at the British Consulate-General in Hong Kong during<br />
International Trademark Association Annual Meeting, to which<br />
members of the All-China Patent Attorney Association (ACPAA)<br />
were also invited. A delegation visited Montreal in June 2014 at the<br />
invitation of the Intellectual Property Institute of Canada (IPIC,) to<br />
take part in discussions with IPIC council and to give a CPD seminar<br />
to IPIC members.<br />
In September 2014, a delegation from the ACPAA was welcomed by<br />
CIPA in Oxford, where they were treated to dinner at the Malmaison<br />
Hotel (formerly a prison!), followed the next day by a meeting with<br />
committee members and a CPD seminar, both held in beautiful<br />
autumnal surroundings at Worcester College.<br />
Members also welcomed several different groups from China to<br />
London, including: a group of judges from Yunnan Province, a group<br />
from Anhui Provincial IP Office, representatives of the Work Safety<br />
Department of the China National Space Administration in September,<br />
representatives of the China IP Society in October, and a group from<br />
the Department of Science and Technology and other technologybased<br />
institutions in Guangxi Zhuang Autonomous Region.<br />
Members of the committee met members of the Japan Patent<br />
Attorneys Association during the Asian Patent Attorneys Association<br />
(APAA) Congress in Toronto. CIPA members attending the APAA’s<br />
meeting hosted a reception in Malaysia for members of the Institute<br />
of Patent and Trade Mark Attorneys of Australia and were invited to<br />
a lunch with members of the Taiwan Patent Attorneys Association.<br />
CIPA’s charitable work also continued throughout 2014 and 2015. We<br />
co-founded Professions Week with several other leading professional<br />
bodies, helping young people to get the very best careers information,<br />
advice and guidance. Battle of the Bands made a welcome return to<br />
the CIPA social calendar. Hosted by Radio 1 DJ Scott Mills, the event<br />
saw patent attorneys perform their very best numbers in the aid of<br />
Generating Genius, which helps young people from disadvantaged<br />
backgrounds realise their potential by pursuing science, technology,<br />
engineering and mathematics subjects.<br />
CIPA is determined to continue to transform itself into a modern<br />
organisation that, as well as providing first-class services to its<br />
members, amplifies its external voice and educates business and the<br />
wider world on the importance of protecting IP.<br />
With a new website due to go live later in 2015, a major public<br />
event planned in partnership with the Science Museum and other<br />
developments in the pipeline, the coming year will only see CIPA<br />
growing in status and influence. IPPro<br />
14
Stillwaters Law Firm<br />
ADDRESS & CONTACT DETAILS<br />
2nd Floor 11, Awolowo Road, Ikoyi<br />
P. O. Box 56161, Ikoyi 101008, Lagos, Nigeria<br />
Tel: +234 (0) 1 454 7179, +234 (0) 1 460 5471<br />
Mobile: +234 (0) 803 324 8860<br />
Fax: +234 (0) 1 460 5470<br />
Email: info@stillwaterslaw.com<br />
www.stillwaterslaw.com<br />
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,<br />
corporate and commercial, taxation and litigation. The firm operates from the commercial cities of<br />
Lagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.<br />
Professionalism, flexibility and innovation are the hallmark of our practice. We value professional<br />
excellence, outstanding result and realize they both require creativity and hard work. We strive to gain<br />
every legal advantage for our clients while upholding the principles behind the practice of law. Over<br />
the years, we have acquired considerable experience and an enviable reputation for rendering quality<br />
legal services in our areas of specialization.<br />
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,<br />
private companies, financial institutions, government institutions, industrial medium size businesses<br />
and individuals. Our practice is adequately equipped and well positioned to meet the challenges of<br />
legal practice in an ever-changing technological age.<br />
People . Integrity . Service<br />
• Trademarks Patents Designs<br />
• Copyright Anti-counterfeiting<br />
• Border Enforcement Measures Domains<br />
• Data Protection IP Litigation<br />
• IP Due Diligence Annuities<br />
• Transfer of Technology Piracy<br />
• Licensing Distributorship Franchising<br />
• Customs Related Assistance<br />
• Registrations Renewals Assignments
INTA<br />
Give and take:<br />
enforcement’s unintended consequences<br />
Platform and brand owners can take an unexpected hit from social<br />
media site takedown disputes, say Susan O’Neill and Janie Thompson<br />
By now, social media takedown policies are no secret to most brand<br />
owners as they are an often-used tool for a trademark or copyright<br />
holder to request the removal of infringing content such as trademark<br />
misuses, posts, videos, images, handles, or other pages from social<br />
media platforms. Recent litigation, however, suggests that platform<br />
and brand owners should exercise caution in initiating takedown<br />
procedures as plaintiffs are now naming both in lawsuits, alleging<br />
unwarranted takedowns.<br />
Social media platforms have been accused of failing to follow their<br />
own policies and procedures and taking down content without cause.<br />
16<br />
In Barshack v Twitter (6 May 2013), for example, the Barshacks filed<br />
suit in the US District Court for the District of Idaho against Twitter after<br />
the Barshack handle “@SunValley” was revoked and given to the other<br />
defendant, Sun Valley Company.<br />
The Barshacks alleged that Twitter did not follow its own takedown<br />
policy because it did not give them an opportunity to defend<br />
themselves or clear up any misunderstandings before revoking the<br />
handle. Consequently, the Barshacks sued Twitter for breach of<br />
contract and breach of the covenant of good faith and fair dealing,<br />
and sought an order to return their Twitter handle, an injunction
INTA<br />
“<br />
The Barshacks alleged that Twitter did not<br />
follow its own takedown policy because it did not give<br />
them an opportunity to defend themselves or clear up<br />
any misunderstandings before revoking the handle<br />
”<br />
Susan O’Neill, Internet committee member and partner, INTA and Hanson Bridgett LLP<br />
prohibiting Sun Valley Company from using it, as well as attorneys’<br />
fees, costs, and other expenses.<br />
Fortunately for platform owners, the court granted Twitter’s motion to<br />
dismiss on 19 September 2013, holding the breach of contract claim<br />
could not be sustained under the express language of Twitter’s service<br />
terms and “the implied covenant [of good faith and fair dealing] cannot<br />
be used to imply a contractual obligation that conflicts with the express<br />
terms of the contract”.<br />
Similar allegations against a social media platform were raised in<br />
Complexions v Complexions Day Spa and Wellness Center and<br />
Facebook (18 February 2011).<br />
In that case, plaintiff Complexions filed suit against Facebook in the<br />
District Court for the Northern District of New York because Facebook<br />
took down Complexions’s business page after Complexions Day Spa<br />
and Wellness Center sent a takedown notice.<br />
Among other claims, Complexions sought injunctive relief to restore its<br />
Facebook page, and alleged that the Facebook page was a valuable<br />
asset to its business and its loss resulted in sales and marketing<br />
potential losses that could not be fully remedied by money damages.<br />
The court, however, never reached the merits of the case, because<br />
Complexions voluntarily dismissed the action with prejudice.<br />
In both Barshack and Complexions, the brand owners that filed the<br />
takedown complaints at issue were also named as defendants and<br />
several other lawsuits have similarly been filed against brand owners<br />
that requested takedowns.<br />
In Elizabeth Ordonez v Icon Sky Holdings (30 August 2011), for<br />
example, the District Court for the Southern District of Florida granted<br />
damages and injunctive relief to dancer and choreographer Ordonez<br />
after Icon pursued unwarranted takedown requests.<br />
Ordonez, who used the stage name Elizabeth Sky, claimed that Icon<br />
committed acts of tortious interference with contractual relationships<br />
between herself and social media sites by making misleading<br />
complaints of trademark infringement over her use of the stage name<br />
Elizabeth Sky and related social media profiles.<br />
Additionally, Ordonez claimed that Icon engaged in deceptive and<br />
unfair trade practices by sending messages misrepresenting that she<br />
was committing fraud and by taking over her social media profiles and<br />
Twitter handle. After Icon failed to appear in the case, the court entered<br />
judgement in favour of Ordonez.<br />
The court held that she had contractual relationships with the social<br />
media sites based on the “terms of use” and Icon interfered with<br />
those relationships by making complaints that resulted in Ordonez’s<br />
accounts getting cancelled. Ultimately, the court granted injunctive<br />
relief, $81,000 in damages, and attorneys’ fees and costs.<br />
Failing to investigate before requesting a takedown may pose an<br />
additional risk for brand owners. In Kim v Coach, the plaintiffs, who<br />
were selling Coach merchandise on eBay, filed a class action in the<br />
District Court for the Western District of Washington against Coach<br />
for failing to perform a reasonable investigation to determine if<br />
products advertised on eBay were in fact counterfeit before initiating<br />
the takedown process. According to the plaintiffs, Coach’s complaints<br />
“<br />
Brand owners should consider how<br />
best to deliver their message to the alleged infringer,<br />
particularly if the individual is a fan or<br />
supporter of the brand<br />
”<br />
17<br />
Janie Thompson, Associate, Hanson Bridgett LLP
INTA<br />
led to their ads being removed from eBay and their accounts being<br />
disabled. The plaintiffs further alleged that Coach sent letters to them<br />
claiming that they were infringing Coach’s trademarks and demanding<br />
payment to settle the issue.<br />
Based on these alleged facts, the plaintiffs filed claims for violations<br />
of the Washington Consumer Protection Act, misrepresentation of<br />
trademark infringement, defamation, and tortious interference with a<br />
business expectancy.<br />
Coach filed a counterclaim against the plaintiff’s attorneys for<br />
defamation, and the parties ultimately stipulated to dismissal of the<br />
case with prejudice.<br />
Brand owners may also be accused of bullying after initiating a takedown<br />
request or other litigation, as was the case in CrossFit v Alvies (22<br />
January 2014). Plaintiff CrossFit filed a trademark infringement suit<br />
in the District Court for the Northern District of California alleging that<br />
defendant Jenni Alvies infringed its trademark through her use of a<br />
blog at crossfitmamas.blogspot.com and her use of a ‘CrossFit Mamas’<br />
Facebook page. Alvies accused CrossFit of being a cyberbully and<br />
counterclaimed for declaratory judgment of non-infringement, as well<br />
as unfair competition and false advertising.<br />
One of the allegations stated that CrossFit improperly invoked the Digital<br />
Millennium Copyright Act in its takedown notice to Facebook because<br />
Crossfit’s claims were based on trademark rights and not copyright.<br />
When CrossFit filed a motion to dismiss and argued that they similarly<br />
would have succeeded in a trademark takedown request, the court<br />
declined to “hypothesise about what Facebook would or would not<br />
have done if it had received a trademark takedown notice regarding<br />
Alvies’s Facebook page”.<br />
The court further declined to determine in a motion to dismiss that<br />
Alvies’s Facebook page constituted infringement. Alvies’s other<br />
claims were dismissed with leave to amend. Ultimately, the parties<br />
settled and stipulated to a final judgement.<br />
In light of this recent litigation, social media platforms may be more<br />
cautious in implementing their removal policies. Similarly, brand<br />
owners may be more cautious when evaluating an infringement<br />
accusation before requesting takedowns. In addition, brand owners<br />
may want to be more creative in approaching the issue, especially in<br />
less clear-cut cases.<br />
For example, brand owners should consider how best to deliver their<br />
message to the alleged infringer, particularly if the individual is a fan<br />
or supporter of the brand. In some cases, it may be helpful to see<br />
what can be done through direct communication with the individual or<br />
on a business-to-business level.<br />
Hopefully, with creativity and open dialogue, brand owners can<br />
resolve any issues in a way that works for all of the parties involved—<br />
without any unwanted litigation. IPPro<br />
18
Just as in the real world, distinctive signs have a major economic value<br />
on the internet. These signs are subject to numerous infringements on<br />
the web due to this economic value.<br />
Historically, on Web 1.0, infringements essentially related to domain<br />
names. Cybersquatting is one such example. This involves a third<br />
party, acting in bad faith, taking undue advantage of the “first-come,<br />
first-served’ principle, on which the registration of domain names is<br />
based, in order to register trademarks on which they have no right, with<br />
the intention of then reselling them to the actual trademark owners.<br />
Furthermore, on 26 June 2008, the Internet Corporation for<br />
Assigned Names and Numbers (ICANN) confirmed its decision<br />
to give to the public the possibility of creating new gTLDs. The<br />
opening up of new generic extensions involves high economic<br />
stakes. However, it also leads to an increase in cybersquatting<br />
risks. Fortunately, trademark ownership constitutes an effective<br />
tool to protect one’s rights on the internet.<br />
Trademarks and extrajudiciary resolution for<br />
disputes relating to domain names<br />
With the creation of the Google AdWords advertising programme in<br />
the 2000s, a new type of trademark infringement developed on the<br />
internet. This programme gave rise to significant disputes due to<br />
certain websites using the trademarks of third parties as keywords to<br />
direct internet users to their webpages. With the emergence of Web<br />
2.0, today, the infringement of trademark rights can also be seen on<br />
social networks.<br />
20<br />
Extrajudiciary dispute resolution mechanisms are alternative methods<br />
for settling disputes available to trademark owners. Such alternative<br />
methods offer a number of advantages as they are transnational,<br />
quick, relatively cheap and are entirely conducted online.<br />
The most commonly used alternative resolution procedure is the<br />
Uniform Dispute Resolution Policy (UDRP). This procedure is only
TrademarksOnline<br />
open to gTLDs, as well as to some country code TLDs. According to<br />
Paragraph 4 of the UDRP, the procedure is only available for disputes<br />
on the following conditions: (i) the domain name in dispute must be<br />
identical or confusingly similar to a trademark in which the complainant<br />
has rights; (ii) the third party must not have any right or legitimate<br />
interest in respect of the domain name; and (iii) the third party must be<br />
of bad faith.<br />
Being a rightful trademark owner is important as the UDRP procedure<br />
is only open to trademark owners. In this light, in a 2006 decision<br />
involving Geopack, the complainant invoked as the basis for the<br />
UDRP procedure its trade name Geopack and domain name geopackindustries.com,<br />
of which the respondent was aware.<br />
The complaint was dismissed because the complainant was unable to<br />
show that it was the rightful trademark owner.<br />
While the UDRP policy provides that the complainant must be the<br />
rightful trademark owner, it is however silent on what trademark<br />
ownership means. Must the trademark be registered? It has been held<br />
in several decisions that complainants do not have the obligation under<br />
the UDRP policy to base their complaints on a registered trademark.<br />
Complainants can therefore rely on trademarks that require no<br />
registration formalities, such as common law trademarks.<br />
To ensure equal treatment, according to case law, all complainants<br />
can rely on a common law trademark. The complainant must then<br />
show that the mark is connected to goods or services, ie, it fulfils its<br />
essential function of indicating the origin of the goods or services. In<br />
the 2000 Julia Roberts v Russell Boyd case, as well as that of Brad Pitt<br />
v Mircea Roibu in 2010, it was held that even though the trademark is<br />
not registered, a personality right can confer rights on a common law<br />
trademark due to sufficient connection with the complainants.<br />
To complement the UDRP procedure, ICANN set up the Uniform<br />
Rapid Suspension (URS) procedure in order to enhance the<br />
protection of rights with the advent of new gTLDs. This procedure<br />
adopts the same conditions as the UDRP procedure, but it is quicker<br />
and relatively cheaper.<br />
The URS procedure was set up to quickly assist rightful owners<br />
in cases of flagrant infringements. Indeed, URS complaints are<br />
much shorter than UDRP complaints (URS complaints are limited<br />
to 500 words while UDRP complaints are limited to 5,000 words).<br />
However, this procedure does not allow for the transfer or removal<br />
of the domain name but it only allows its suspension for the<br />
period of one year. Once again, the procedure is only available to<br />
trademark owners.<br />
The use of alternative dispute resolution methods does not in any<br />
way prevent trademark owners from going through the classical<br />
judicial route in order to protect their rights on the internet.<br />
Trademarks and Trademark Clearinghouse<br />
In light of the infringement risks brought on by the creation of new<br />
gTLDs, and in order to protect trademark owners, on 26 March 2013,<br />
ICANN set up the Trademark Clearinghouse (TMCH). The TMCH is a<br />
database of trademarks filed by their owners. Filing a trademark in the<br />
TMCH has two major benefits.<br />
Firstly, it allows the pre-registration of the trademark with the new<br />
gTLDs for a specific period, called sunrise. Indeed, when launching a<br />
new extension, the registry of the extension must provide a minimum<br />
period of 30 days during which a trademark owner that filed the<br />
trademark with the TCMH gets first priority to register a domain name<br />
bearing this extension.<br />
Secondly, once the sunrise period has elapsed, registering a trademark<br />
in the TMCH allows the trademark owner to be notified about third<br />
party attempts to register a domain name linked to the trademark.<br />
This notification service is called the Trademark Claims Service. The<br />
notification then allows the trademark owner to take action against<br />
the registration of the domain name through the URS and effectively<br />
protect its rights on the internet.<br />
It is necessary to show trademark ownership in order to have access<br />
to this system. The TMCH only accepts registered trademarks, courtvalidated<br />
trademarks and trademarks protected by applicable statutes<br />
and treaties. As such, unregistered trademarks, including common law<br />
trademarks, meet the eligibility requirements of the TMCH.<br />
Trademarks and Google AdWords advertising<br />
Trademark ownership can also come in very handy to protect one’s<br />
rights in case of infringements through fraudulent use of a distinctive<br />
sign as a keyword for referencing with Google ads. Since the Google<br />
AdWords case before the European Court of Justice on 23 March<br />
“<br />
It is necessary to show trademark ownership<br />
in order to have access to this system. The TMCH only<br />
accepts registered trademarks, court-validated trademarks<br />
and trademarks protectedby applicable statutes and treaties<br />
”<br />
Nathalie Dreyfus, Trademark attorney, Dreyfus<br />
21
TrademarksOnline<br />
2010, it is now established case law that Google cannot be held liable<br />
for trademark infringements as long as its role is only that of a passive<br />
technical service provider. However, trademark owners can sue the<br />
advertiser if it is impossible or difficult to distinguish the advertisements<br />
from the natural results, which creates a risk of confusion for the<br />
internet user.<br />
In this light, in a case dated 29 November 2011, the French Court of<br />
Cassation held the advertiser liable. The case centred on the issue of the<br />
reservation by a competitor of the trademarks ‘Heden’, ‘Max-In-Power’<br />
and ‘PCA France as keywords in order to redirect, via a sponsored<br />
link, towards websites reselling electronic products marketed under<br />
another trademark. It was impossible or difficult for the internet user to<br />
know whether the products covered by the advertisement came from<br />
the owner of the trademarks used as keywords or from an economically<br />
affiliated company. It was consequently held that there was indeed<br />
a risk of confusion and a fortiori, an infringement of the purpose of<br />
indicating the origin of the trademark.<br />
However, the main advantage of trademark owners in protecting their<br />
rights against an infringement resulting from Google AdWords does<br />
not lie with the courts but rather, in the online mechanism set up by<br />
Google. Indeed, trademark owners can notify any infringement of their<br />
rights to Google by filling out a trademark complaint form.<br />
If the advertiser has no legitimate right, Google will remove the<br />
fraudulently used trademark as a keyword from the Google Adwords<br />
referencing system. In this way, the trademark owner benefits from<br />
a quick, simple and free mechanism to protect itself against such<br />
infringements on trademark rights.<br />
Trademarks and social networks<br />
Lastly, being a trademark owner is essential in order to protect oneself<br />
in case of infringements on social networks. As these platforms<br />
now serve as vital tools for professionals, the usernames on social<br />
networks have acquired an economic value and so are often subject to<br />
infringement. While each social network has its own operating method<br />
and its own characteristics, they are all based on registration followed<br />
by the allocation of a user account. The username is allocated to the<br />
first person who requests it. With the reservation of a username being<br />
free, usurpation is easy.<br />
It is possible for a username to be unavailable for the legitimate<br />
trademark owner because it was unduly registered by a third party. This<br />
practice consisting of registering a username on which a third party<br />
has rights is generally termed as ‘username squatting’. Fortunately,<br />
social networks generally provide an online notification mechanism in<br />
case of trademark infringement.<br />
Article 1(a) of the Facebook Pages Terms states: “A page for a brand,<br />
entity, or public figure may be administered only by an authorised<br />
representative of that brand, entity or public figure.” In case of noncompliance<br />
with those terms and in particular in the case of username<br />
squatting, an online mechanism allows the trademark owner to report an<br />
infringement. In case of infringement, Facebook will cancel the username.<br />
To conclude, with the significant development of the internet, it is vital<br />
for brands to protect their digital identities. To this end, it is clear from<br />
the above that trademarks are an essential tool that can prove to be<br />
very effective against various types of infringements. IPPro<br />
22
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Growing into its own<br />
The New gTLD programme continues to develop and mature,<br />
says Anthony Beltran of 101domain<br />
It has been well publicised that the domain name industry, and the<br />
Internet Corporation for Assigned Names and Numbers (ICANN)<br />
specifically, has missed the mark in the first year of its much lauded<br />
new gTLD programme. ICANN, the US-based organisation whose<br />
responsibility includes developing policy and ensuring the operational<br />
success of the global internet, estimated in early 2014 that its new<br />
gTLD programme would generate 33 million new domain registrations in<br />
extensions such as .guru, .club, .realtor, .nyc and more. ICANN revised<br />
its estimates downward a year later to 15 million names.<br />
Where did we land? Six million names or so—not impressive by<br />
any measurement.<br />
As an executive of a domain name registrar that has invested heavily<br />
in the new gTLD programme, I am of course going to be optimistic in<br />
my opinion of the success and long-term viability of the new gTLD<br />
programme. My job is to market the value of domain names and to<br />
promote and sell these names to customers around the world. But the<br />
fact is, the industry has a long way to go until new gTLDs become a<br />
fixture on the internet landscape. I’m going to break down some of the<br />
areas in which the industry has fallen short, and the changes I see<br />
happening today, which will help new gTLDs elevate to success.<br />
Public awareness<br />
It took six years of industry policymaking from 2008 to 2014 until the<br />
first new gTLDs under this programme were launched. The process<br />
was arduous and involved many stakeholders and many trying times<br />
of debate and negotiation. Once the green light was given, new<br />
gTLD applicants quickly shifted their attention to getting their registry
agreements signed and their extensions launched. It seemed that<br />
actually marketing these hundreds of new products was an afterthought<br />
at first. Back then, the attitude of many of the new gTLD applicants<br />
was that if they put their TLD out, there was so much pent-up demand<br />
that people would buy them by the hundreds of thousands.<br />
Looking back, this was certainly not the case. What we saw was the<br />
launch of the first groups of new gTLDs with lukewarm results. It became<br />
quickly apparent that the only purchasers of these newly available,<br />
‘highly demanded’ domain names were domain investors and to some<br />
extent brand and trademark holders, if only from a defensive registration<br />
position. This lukewarm response continued throughout 2014 with the<br />
release of hundreds of new domain extensions, albeit with a few bright<br />
spots, such as the great effort put forth by the .club registry, whose<br />
volume of active registrations has reached nearly 300,000.<br />
What happened? New gTLD registries pushed these new domain<br />
names through registrars, relying on them to advertise and market all<br />
of these new products through their normal channels. Once customers<br />
saw these new names, they would buy, right? The flaw in this reasoning<br />
was that registrars were primarily faced with the enormous burden of<br />
simply launching this onslaught of new domain names. Launch process<br />
were highly complex and filled with brand new legal, technical and policy<br />
processes. We didn’t see much active advertising or marketing through<br />
registrar channels as they were busy just keeping up.<br />
To put things in proper perspective, the domain industry has seen 21<br />
gTLDs launched since the internet was created 30 years ago. In 2014,<br />
it saw 300 new gTLDs launched. At the time of writing, the total has<br />
increased to more than 600.<br />
Today, we are seeing registries approach their product launches in a<br />
much different way. Strategy has shifted from relying on the registrar<br />
channel to advertise and market all of these new products, to registries<br />
actively promoting and driving customers through the registrar channel.<br />
Registries are becoming much more aggressive in reaching their target<br />
audiences in new and creative ways. Let’s take these as examples:<br />
.Bank: at nearly $1,000 per year for a domain name, the .bank registry<br />
has successfully worked with the American Bankers Association (ABA)<br />
to generate a few thousand registrations. The registry generated<br />
interest in, and positioned the value of, the .bank extension across the<br />
banking industry, directing sales to accredited registrars. .Bank is a<br />
unique TLD because it has very specific requirements geared towards
NewgTLDs<br />
banking institutions and security. I expect to see this TLD build a very<br />
nice and widely used space for itself over time.<br />
.Sucks: if you have anything to do with intellectual property, you know<br />
what this TLD is about. There has been a lot of controversy around<br />
.sucks and the registry has led some pretty high-profile marketing<br />
campaigns online and offline, making waves along the way. Whatever<br />
your thoughts on .sucks, you cannot deny that it did a good job in<br />
elevating the visibility of the TLD and the new gTLD programme in<br />
general. Brand owners should pay attention to this one.<br />
.Votel.voto: this TLD is an interesting one managed by the registry<br />
Afilias, operator of .info, .pro, and many more TLDs. The registry has<br />
managed to build key partnerships within political communities as<br />
well as sign up various US states to use their TLDs (for example,<br />
arizona.vote and alabama.vote) in high profile political awareness<br />
campaigns. With presidential elections starting to gain momentum in<br />
the US, political parties are starting to oil up their marketing machines.<br />
Using short, memorable domain names fit extremely well in these very<br />
public efforts.<br />
.Law: Mind + Machines, the registry behind the .law extension, recently<br />
announced a partnership with ALM Media, a leading international legal<br />
media company. As part of the partnership, ALM will roll out more<br />
than 100 domain names with the .law ending across its existing web<br />
properties and new product lines. It will also be marketing the .law TLD<br />
throughout its channels to raise awareness in the industry. The TLD is<br />
restricted to credentialed legal practitioners to provide a trusted space<br />
for the legal community to connect with its clients.<br />
Brand participation<br />
To this point, we have not seen a lot of participation from .brand new<br />
gTLD applicants. This has been by design for many of the 600 or so<br />
companies that applied for their own TLDs. Early on, ICANN granted an<br />
extension until 29 July 2015 for .brand applicants to sign their registry<br />
agreements, which has delayed .brand adoption and has allowed<br />
brands to defer costs and any decision making on their .brand new gTLD<br />
strategies. Many brands have been using a wait-and-see approach to<br />
determine what their next steps would be based on industry feedback<br />
and public adoption of new domain names in general.<br />
Now that the deadline is here, brands are being forced to make<br />
decisions. Once registry agreements are signed, operating costs start<br />
accruing for their TLDs. I expect to see much more activity in the .brand<br />
sector of the new gTLD programme through the rest of 2015. When we<br />
see larger consumer brands roll out their own domain extensions, new<br />
gTLDs will certainly start making their way into the mainstream.<br />
The best is yet to come<br />
We are approaching nearly 400 new gTLDs available to the general<br />
public, at the time of writing. More than half of these launches have<br />
secured fewer than 5,000 registrations. Just over 100 have secured<br />
more than 10,000 registrations. Some of the top TLDs in terms of<br />
registration volume, such as .xyz, .science, .party, and .top, have been<br />
sold for nothing, or next to nothing, and have generated very little<br />
usage. Many others, such as .link, .click, and .property, have been<br />
registered by the registries themselves so they don’t really count. This<br />
is not an indicator of the overall success of the new gTLD programme.<br />
As planned by ICANN, the domain extensions that have been widely<br />
anticipated, as well as many restricted TLDs that are sure to find their<br />
place in various industries across the globe, have yet to be released.<br />
TLDs such as .web, .shop, .music, .film and .app will be rolling out<br />
soon. You can bet that the companies that end up winning and<br />
operating these domain extensions have big plans to push them into<br />
the public mainstream.<br />
Launches to watch in the near future include regulated extensions<br />
such as .insurance and .film, which have the potential of gathering<br />
wide-ranging support in their respective industries. These regulated<br />
TLDs have the ability to reach consumers on a mass scale for specific<br />
purposes, which is what is needed to create a healthy and thriving<br />
domain space.<br />
In summary, we are still very much in the early stages of the ambitious<br />
new gTLD programme. The new gTLD programme continues to<br />
develop and gain momentum and has a long way to go to reach full<br />
maturity. Technology moves fast. Whether you are an IP practitioner<br />
or brand owner, it is still important that you stay informed about the<br />
developments in the space so that you may advise your clients or your<br />
stakeholders properly without being left behind. IPPro<br />
“<br />
Whatever your thoughts on .sucks,<br />
you cannot deny that it did a good job in elevating<br />
the visibility of the TLD and the new gTLD programme<br />
in general. Brand owners should pay attention to this one<br />
”<br />
Anthony Beltran, COO/CFO, 101domain<br />
26
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Bart Mortelmans of bNamed.net offers advice for protecting trademarks online
DomainNames<br />
Managing a domain name registration programme is an unenviable task.<br />
Hundreds of extensions exist in various guises—country-codes, generics<br />
and the old bastions of the internet, including .com—and knowing which<br />
way to point your brand, or how to prioritise trademarks, can easily keep<br />
you up at night.<br />
Luckily, there are number of tips and tricks that you can learn that will<br />
make any registration programme easier to manage.<br />
First of all, plan extensively. There are many partners out there that will<br />
assist with registrations, but they do not know your products, markets<br />
or customers like you do, so put some thought into where you want<br />
to register your trademarks. It’s also worth remembering that, with the<br />
advent of new gTLDs, there are just too many extensions to make it<br />
possible to protect your trademarks across the board. In the past, many<br />
of our clients would register their trademarks in every TLD and countrycode<br />
TLD, but that is no longer a cost-effective solution but for a handful<br />
of trademark owners.<br />
spammer, who warns of a similar registration in an extension nobody<br />
has ever heard of via email. Do not be fooled by these—trademark<br />
owners don’t need registrations in these extensions, which are often<br />
very remote and sparingly used country code TLDs. Of course, as a<br />
trademark owner, you might be interested in launching in that particular<br />
market in the future, but in that case, close the spam email and seek out<br />
legitimate agents or registrars. The internet is full of phonies purporting<br />
to offer domain name registration services.<br />
If you notice that someone has actually registered your trademark<br />
under an extension that you do not care about, you should address<br />
this to them and let them know that they should not be doing it. A<br />
standard letter via registered mail will suffice. These instances are not<br />
worth an investment in dispute resolution. The minimum, a cease and<br />
desist letter, is all that is required, because registrations in extensions<br />
that no one uses should not keep you up at night. These domains are<br />
often dropped when they the time comes for them to be renewed, so<br />
you’ll be able to secure them anyway.<br />
The most important extensions will be the ones where your customers<br />
expect to find your brand. Many internet users, especially outside of the<br />
A more proactive course of action would be to block domain names.<br />
Donuts, the owner of almost 200 new gTLDs, offers the Domains<br />
“<br />
A common pest of trademark owners is the spammer, who<br />
warns of a similar registration in an extension nobody has ever<br />
heard of via email. Do not be fooled by these<br />
”<br />
Bart Mortelmans, Managing director and founder, bNamed.net<br />
US, expect a trademark to be available in the country code TLD that<br />
corresponds to his or her location. A Spanish internet user might expect<br />
to see the website hosted on a .es domain. You should prioritise your<br />
registrations that way—where you have customers, have a domain<br />
name, because representation wherever you are present is vital.<br />
Protected Marks List (DPML), which allows a single trademark to be<br />
blocked from registration across dozens of extensions, for a reasonably<br />
low fee. The DPML is particularly attractive if you want to employ a<br />
broad strategy, otherwise you should stick to the extensions that are<br />
important to your brand.<br />
Equally important is use. We encourage clients to make sure they<br />
use these domain names. Of course, a trademark owner can park a<br />
domain, but why not put them to better use? If your main website is<br />
under the .com banner, it makes sense to redirect your .fr domain to<br />
your .com address, because a lot of French internet users will expect<br />
to be able to access your website through their local, and most familiar,<br />
country code TLD.<br />
Any registration programme becomes more complicated when new<br />
gTLDs are added to the mix. Today, extensions are no longer limited<br />
to country or memorable generic. Domains are available in hundreds<br />
of extensions, many of them market-specific. The trick is to pick new<br />
gTLDs that correspond to the markets in which you are active, much<br />
in the same way as country code TLDs. For example, it makes sense<br />
to register a domain in .bike if that is your main business, whereas a<br />
building company would not benefit from a .bike registration.<br />
Domain name enforcement<br />
Managing a domain name enforcement programme is as daunting<br />
as proactive registrations. A common pest of trademark owners is the<br />
29<br />
Finally, make sure that you are the actual owner of the domain name.<br />
Often, particularly with small businesses, the wrong person registers<br />
the domain name and the actual owner is not listed in Whois. Make<br />
sure that does not happen. We have seen many cases where a domain<br />
name is held for ransom when there is a dispute over invoices and<br />
payments between the web designer and the business, for example.<br />
Even though not directly related to the domain name, it can be used<br />
as a bargaining chip.<br />
When all is said and done, the most important trick is really the most<br />
obvious—check the availability of the domain name. You must not<br />
wait for your counsel to check whether a trademark is available before<br />
launching a new product or in a new market, for example.<br />
Our website has a search function that allows anyone to search for<br />
domain names across TLDs—it’s that simple. Also, don’t be worried if the<br />
.com is not available. A lot of .com domain names are reserved for sale.<br />
That might not be ideal, having to pay extra money for that online real<br />
estate, but if you are going to go ahead with a product launch, then it<br />
might be worth the extra expense. IPPro
When only a wrecking ball will do<br />
The digital space can be a free-for-all for phony operators, so how do<br />
you catch the fake-happy counterfeiters? Experts from WebTMS and<br />
bNamed.net share how to limit the damage caused by online infringers
Bart Mortelmans<br />
Managing director and founder<br />
bNamed.net<br />
Nick March<br />
IP business development manager<br />
WebTMS<br />
Fakes are available online in increasingly large<br />
numbers—who is producing these goods, and how<br />
are they doing it on such a scale?<br />
Nick March: Fakes appearing in the marketplace is not a new<br />
problem. We’ve all seen market traders selling their fake shirts,<br />
jeans and designer handbags and more.This has happened for<br />
years on a smaller scale in the UK, and in much larger scales<br />
abroad, in countries such as Thailand, with a large concentration<br />
of fakes coming from Asia, in particular China.<br />
With the huge increase in the number of people across the globe<br />
getting connected to the internet, it’s no surprise that this has<br />
bought fake consumer goods to the masses.<br />
Organised crime syndicates are often behind the large-scale<br />
production and distribution of fake items. For them it is a means of<br />
creating large sums of money to be re-invested into illegal money<br />
making avenues, to grow their illicit empires. A large majority of<br />
fakes also originate from China, where labour is cheap and it is<br />
not uncommon for the authorities to look the other way.<br />
The internet plays a huge part in enabling these gangs to achieve<br />
such a wide reach, with auction sites, social media and private<br />
advert websites being top of the list. It’s not that these sites condone<br />
this behaviour, it’s simply such a large undertaking to effectively<br />
manage and track, although most well established websites have a<br />
protocol in place for reporting offending products, which hopefully<br />
leads to them being withdrawn from their respective marketplace.<br />
Counterfeiting is a global problem, particularly for<br />
international brands—how can legal counsel tackle<br />
fakes produced abroad?<br />
March: Depending on the budget available, there are a number<br />
of steps that can be taken to increase damage limitation that are<br />
beyond trademark, design and patent registration, which would be<br />
the foundation of your intellectual property protection. Some of the<br />
additional steps that can be taken are:<br />
• Customs recordals: lodge customs recordals with the local<br />
authorities. If you’re concerned that fakes are making their<br />
way into a particular jurisdiction, you could check to see if that<br />
particular country has a customs recordal system in place.<br />
This usually involves the formality of filling out forms that<br />
state which products you would like them to look out for (be<br />
it the design, brand name or both) and in some instances,<br />
the actual trademark protection you have in place related to<br />
these brands that you would like them to monitor. With the<br />
formality lodged with customs officials, you will increase the<br />
likelihood of fake products being questioned by officials, who<br />
will contact you to check the authenticity of the product.<br />
• Private investigations: there are many companies that<br />
specialise in the niche area of private investigations relating<br />
to IP and you should use one based locally to the problem.
TrademarkProtection<br />
Depending on your budget, they can provide different levels of<br />
data, including simply whether fakes exist, where are the fakes<br />
made and the name of the producer. At the higher end, they<br />
can also be quite cunning in their techniques and enquire about<br />
potential orders so you can gauge the size of the operation.<br />
Other information that can be acquired is how long the operation<br />
has been running and if there are any affiliated companies,<br />
which in all probability are also manufacturing fake products.<br />
• Watching service providers: most of the well-known<br />
companies in this arena have already expanded their services<br />
and branched out into this area, which in itself is rather telling<br />
that a large problem exists in the first place. The services<br />
offered tend to range from company to company but in essence<br />
they will be able to perform a health check of your brand<br />
online, ie, how many sites were found selling your product, list<br />
all the sites and products, and so on. They can also continue<br />
to monitor the presence of new fake products appearing in<br />
any online marketplaces. As well as these channels, they<br />
can also check for and monitor new domain names coming<br />
into existence that are clearly infringing on the actual brand<br />
owner’s rights. If domain names registered to counterfeit<br />
manufacturers or indeed anyone else who is not the rightful<br />
owner are found, the domain names are reported to the<br />
brand owner. The brand owner will then have an opportunity<br />
to object via various dispute resolution systems currently in<br />
place. These were setup in order to help the rightful owners of<br />
trademarks take ownership of their related domain names and<br />
to ensure there are no other companies with similar domain<br />
names trying to pass themselves off as legitimate.<br />
How does online enforcement differ to offline<br />
enforcement, and how should brands tweak their<br />
strategies to suit each?<br />
March: When discussing tangible products, the source or origin<br />
of all counterfeits/fakes begins offline, ie, the manufacturing of<br />
the product has to exist for there to be something to pass off as<br />
something else.<br />
So in essence, the root of the problem has to be extinguished at<br />
source using people on the ground to physically see the problem,<br />
report on the problem, and hopefully be part of a team to secure<br />
the closure of the illicit locations that are producing large amounts<br />
of fakes.<br />
The online element is really just another avenue for the counterfeit<br />
products to be exploited. As mentioned, this can be monitored<br />
and managed to some degree of effectiveness, however, without<br />
eradicating the source, it’s highly likely that new fake sites trying to<br />
pass themselves off as legitimate will continue to reappear.<br />
Rogue domain name registrars have been pinpointed<br />
as a problem. What do they have to do before selling<br />
a domain? What can brands do?<br />
large amount of attempts with different cards before a payment is<br />
successful. If a couple of such ‘warning’ boxes are ticked, we will<br />
not simply process the request automatically but first carry out a<br />
manual verification.<br />
This means that a very small number of legitimate registrations are<br />
slightly delayed, but almost all registrations going through manual<br />
verification turn out to be clear attempts to a phishing website online.<br />
Next to that, there is not much a registrar can do before selling<br />
a domain name, but there is also lot that can be done afterwards<br />
and this is the difference between a trustworthy registrar and a<br />
rogue registrar.<br />
Because with most registrars, the registration process is fully<br />
automated, there is no easy way to verify trademark infringements<br />
up front. But if a registrar is known to instantly disable domain<br />
names that turn out to be phishing or spammers, then that registrar<br />
will be of no use to those criminals as the websites registered via<br />
such a registrar aren’t active long enough to actually use them.<br />
How should brands choose which domain names to<br />
register or block?<br />
Mortelmans: There is one golden rule: protect your brand under<br />
the country code TLDs where your clients are located.<br />
Since the introduction of the new gTLDs, for most brands it’s no<br />
longer possible to simply protect their names under every single<br />
TLD. Next to no more than a handful of large brands, such as<br />
Apple and Google, no-one is doing that any longer.<br />
If you’re selling bikes, for example, you’ll probably want your name<br />
under .bike, but you probably don’t want it under .dental.<br />
And then there are a large number of new gTLDs in between that,<br />
which only the brand holder can decide are important or not.<br />
What are the must-haves for any protection strategy?<br />
March: Brands must first establish the elements that require<br />
protection. They then need to set a realistic budget depending<br />
on the size and value of these elements, and prioritise their<br />
importance geographically.<br />
Brands can then set up tools to monitor their trademarks. They<br />
must also routinely re-asses in order to maintain their focus on<br />
what’s important.<br />
Mortelmans: Make sure you have a trusted partner for your<br />
domain name registrations that you can contact. You’ll know<br />
which regions and markets are important for your brand, but your<br />
registrar should be able to assist you with informing you about<br />
which extensions are important for that region or market.<br />
Bart Mortelmans: While it is not easy to catch criminal registration<br />
requests before they are activated in the automated registration<br />
process, we as a registrar have been able to successfully block most<br />
requests with some simple verifications. It mostly comes down to<br />
spotting strange behaviour in the order and payment process. That<br />
can be stuff such as the country from where the order is placed<br />
not corresponding with the country of the credit card, or seeing a<br />
32<br />
Pick a registrar that offers you all possibilities but doesn’t try to sell<br />
you domain names you don’t need.<br />
Make sure that the domain names you end up registering are<br />
registered in your name and try to put them to actual use. If<br />
you have the domain name, at least have it forwarded to your<br />
website. IPPro
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Deciding when to decide<br />
The lessons learned from the AIA aftershock prove that ongoing<br />
cooperation and partnership is the best way to achieve an<br />
organisation’s goals, says Matthew Sekac of Park IP Translations<br />
As predicted, the first half of 2015 saw many in the patent industry<br />
preparing for a historic spike in US-originating patent applications<br />
that were due for Patent Cooperation Treaty (PCT) national phase<br />
entry on or near 15 September 2015.<br />
This was the consequence of an industry-wide rush to get new<br />
applications on file before the rule changes in the America Invents<br />
Act (AIA) went into effect on 16 March 2013. In early 2014, Park<br />
34<br />
IP Translations began sharing and preparing for this phenomenon<br />
and its potential impact on the volumes of translation requests,<br />
which we entitled The AIA’s Foreign Filing Aftershock.<br />
The forecast received widespread attention across the industry,<br />
including patent practitioners, trade publications and other<br />
professional service providers. These historic circumstances<br />
introduced a potential risk for patent applicants and language
PatentTranslations<br />
“<br />
Planning in advance provides the opportunity to build in a<br />
comfortable buffer of time to ensure that unforeseen circumstances<br />
do not have damaging consequences. Extra lead-time makes it<br />
possible to implement a process with multiple checks that reduce risk<br />
”<br />
Matthew Sekac, Senior director of strategy, Park IP Translations, a Welocalize company<br />
service providers around the world. Any provider that did not start<br />
to prepare well in advance would create unnecessary risk and<br />
potential financial losses for patent owners and legal practitioners.<br />
The campaign to educate the market and clients started in 2014,<br />
however, it stands to have a lasting impact on the patent and patent<br />
translation industries. The bar has been set on how legal professionals<br />
and language service providers must work together to ensure that<br />
source of risk are identified early, requirements are understood, and<br />
potential roadblocks or challenges are communicated and prepared<br />
for well in advance. Constant communication, open feedback and<br />
trusted partner values do matter and can avert hazardous outcomes.<br />
Findings based on experience<br />
Direct customer experiences and business intelligence obtained<br />
throughout the spike provided an enormous amount of valuable<br />
data about how our clients work and what their processes look like<br />
for making foreign filing decisions.<br />
We were surprised at how widely approaches varied for both law<br />
firms and corporations. Some were rigidly organised, timely and<br />
efficient in their approach, while others were ad hoc, inconsistent<br />
and usually last-minute.<br />
What we also found, less surprisingly, was that while the first<br />
group of clients was readily able to take action and make<br />
adjustments, the second group, while receptive to the information<br />
and in agreement with our conclusions, struggled to alter or<br />
accelerate internal practices.<br />
For example, in a discussion with a patent paralegal at a large patent<br />
filing organisation, there was natural agreement that the best course<br />
was to act quickly. Unfortunately, they also expressed scepticism<br />
that anything could be done to get filing decisions sooner.<br />
The sentiment was that it made perfect sense to start early and<br />
they appreciated the guidance and education, but it’s just too hard<br />
to change the way things normally get done.<br />
35<br />
In a 2015 survey, Park IP Translations asked a large sample of<br />
patent professionals how much lead time they normally had to work<br />
with when doing a foreign filing. More than half of respondents<br />
reported that foreign filing decisions were made and instructions<br />
sent less than 30 days before the applicable deadline for any given<br />
application. A very small minority, only 2 percent of respondents,<br />
reported they had 90 days or more of lead time.<br />
An analysis of data on Park IP’s filing translation projects<br />
corroborates these findings. The data reveals that most patent<br />
professionals are instructed less than 30 days before the applicable<br />
filing deadline, and at least for our casework, roughly one third are<br />
instructed less than two weeks in advance.<br />
Preparing for the inevitable<br />
Understanding the circumstances under which patent professionals<br />
operate is critical for patent service providers. Experience and data<br />
on timing and deadline requirements must be part of the basis for<br />
developing sustainable and effective service offerings that cater to<br />
the needs of the client.<br />
When it comes to foreign patent filings, there is some cushion built<br />
into the system. It is helpful that most PCT countries have grace<br />
periods available for submitting translated applications after the<br />
initial filing deadline. For many organisations, utilisation of these<br />
extensions has become routine practice.<br />
When additional time is not available, scale from service providers<br />
is critical. As an example, Park IP Translations has the flexible<br />
capacity and the process expertise to organise and deploy large<br />
teams of resources capable of executing very large volumes in<br />
very short timetables.<br />
Scaling capability is essential for helping clients out of some tight<br />
spots. Park IP Translations has been able to deliver translated<br />
materials under extremely challenging conditions for filing around<br />
the world because of a robust, scalable operational infrastructure<br />
and extensive experience managing rush projects. Sometimes this
PatentTranslations<br />
requires imagination and will, as in one particular engagement<br />
where the final product was hand delivered to a patent professional<br />
about to board a plane bound for another continent, with a filing<br />
deadline mere hours after the flight’s scheduled landing.<br />
These situations are not unmanageable, but they are also not<br />
ideal. Once filing decisions are made, the process of foreign filing<br />
a patent application requires the contribution of multiple parties.<br />
The client initiates and oversees the process, often with the help<br />
of outside counsel or another service provider, and executes the<br />
required documentation. Translators prepare required translations.<br />
Then patent agents prepare the filing documents and submit them<br />
to the patent office with the support of their own staff.<br />
Almost everyone with a role to play in that filing process will be<br />
used to doing their part under pressure—and often routinely.<br />
That’s just how business gets done in many cases. Unfortunately,<br />
this also creates risk. Deadline pressure simply constrains the<br />
ability of all parties to perform their role with maximum care, and<br />
frequently generates additional expense.<br />
It negates the possibility of building in buffers of time to<br />
accommodate unforeseen circumstances. However adept we<br />
have all become at managing these unplanned circumstances,<br />
these conditions simply increase the likelihood of mistakes. And<br />
in this business, even small mistakes can be very costly.<br />
Plan ahead to get ahead<br />
There are any number of reasons why organisations start the foreign<br />
filing process close to the deadline. Foreign filing decisions often<br />
have significant budgetary impact, especially for organisations<br />
such as small biotechnology companies that might need to go out<br />
and raise more than $100,000 just to apply for patent protection in<br />
a half dozen foreign countries.<br />
from some structural advantage. It should be noted that they come<br />
from organisations both big and small across a diverse array of<br />
industry sectors. Their real source of success is the series of<br />
proactive initiatives they have undertaken to improve internal<br />
procedures for managing their foreign patent filings.<br />
Decide now, wait later<br />
It’s as simple as it is daunting. Organisations that act in advance<br />
are predominantly the organisations that choose to act in<br />
advance—and then follow through. Make no mistake, they benefit<br />
from it. These organisations don’t rack-up late filing charges and<br />
they avoid fees for expedited services.<br />
By starting the conversation early, they can gather information<br />
from service providers and other partners to inform their budget<br />
impact assessments.<br />
Planning in advance provides the opportunity to build in a comfortable<br />
buffer of time to ensure that unforeseen circumstances do not have<br />
damaging consequences. Extra lead-time makes it possible to<br />
implement a process with multiple checks that reduce risk.<br />
These are also the organisations that have the easiest time<br />
avoiding risk from sudden spikes in volume requirements, whether<br />
the source is internal or exogenous. The lessons learned from the<br />
AIA aftershock prove that ongoing cooperation and partnership is<br />
the best way for all to achieve their respective goals—on time and<br />
in all languages. IPPro<br />
Understanding the costs is part one of the planning process. The<br />
precise expenses over time may not be clear to decision makers,<br />
which can complicate the cost-benefit analysis and obstruct efforts<br />
to assess the relative priority of applications within a limited budget.<br />
These decisions also frequently require the participation of multiple<br />
stakeholders from different departments, or they might depend on<br />
the results of an incomplete study or other ongoing research.<br />
In many cases, the biggest reason is simply institutional inertia.<br />
Information collected by Park IP Translations in preparing clients<br />
for the AIA spike in 2015 suggests that frequently the only barrier to<br />
starting the foreign filing process early is the ‘get started’ meeting.<br />
At many organisations, the meeting does not usually happen until a<br />
month before the filing deadlines, and not for any particular reason.<br />
Most of the filing decisions are actually pretty straightforward. As<br />
one department head recently suggested: “The filing decisions<br />
on most of our applications that are already made, they’re just in<br />
peoples’ heads.” And the process cannot get started until what is<br />
‘in peoples’ heads’ is formally discussed and put on paper.<br />
Why is it normal to wait until the last 30 days? The most common<br />
response from the groups we have talked to is simply that “they<br />
have always done it this way”. There are many patent professionals<br />
that are almost unfailingly diligent about instructing new foreign<br />
filings well ahead of the applicable deadlines. Perhaps they benefit<br />
36
VOTED<br />
No. 1<br />
You can access WebTMS anywhere you have an Internet connection and on any device,<br />
e.g. Laptop, Macbook, PC, Apple Mac, Tablet, Smartphone (all brands).<br />
The whole team is dedicated to the WebTMS software only, anyone who picks up the phone will<br />
be able to help. Unlimited technical support via telephone and email is part of the service.<br />
WebTMS is very intuitive and user friendly without sacrificing power or functionality.<br />
The WebTMS team have been creating, developing and supporting the WebTMS software for 17<br />
years, including data migration and conversion.
Perfecting patents<br />
Experts discuss how best to translate a patent, and what to look for in a partner
Translations101<br />
Caroline Chenique<br />
Group business development director<br />
RWS Group<br />
Matthew Sekac<br />
Senior director<br />
Park IP Translations<br />
Maria Nilova<br />
Managing partner<br />
Patentica LLP<br />
Ina Bjerre Larsen<br />
Partner<br />
Zacco<br />
Sergey Sokolov<br />
Key translation specialist<br />
Patentica LLP<br />
Mark Dugdale<br />
Editor<br />
IPPro The Internet and Life Sciences<br />
What is the demand like for patent translations compared<br />
to a decade ago?<br />
Caroline Chenique: The number of patent applications has increased<br />
over the last decade and with it the number of international filings<br />
requiring translations. Looking at European patent applications<br />
between 2005 and 2014, numbers have increased by 18 percent,<br />
climbing from 128,665 in 2005 to 151,981 in 2014. The figures<br />
from the World Intellectual Property Organization (WIPO) show an<br />
even more dramatic increase with Patent Cooperation Treaty (PCT)<br />
national phase entries in the world shooting up by 93 percent from<br />
292,800 in 2003 to 565,500 in 2013.<br />
Today, the demand for translations remains strong. The number<br />
of US and European filings in Asia has increased vastly in<br />
the last 10 years, coupled with the soaring number of patent<br />
applications coming out of China. RWS Group has been active in<br />
China and Japan for many years with large teams of translators,<br />
checkers, project managers and business developers based<br />
in our Tokyo and Beijing offices catering for both foreign and<br />
domestic clients.<br />
But it is not only the numbers of patents being filed that is affecting<br />
demand, but also patent legislation. The America Invents Act (AIA)<br />
gave patent owners much to consider. The switch from first-toinvent<br />
to first-to-to file in March of 2013 is still a challenge felt by<br />
applicants as they rethink how to approach their filing strategies.<br />
At the moment, there is a spike in the demand for translations due<br />
to the very large number of cases filed before the AIA came into<br />
force and that are due to enter the PCT national phase. We are well<br />
equipped to deal with this increase, but obviously the earlier our<br />
clients place their orders the better.<br />
In Europe, upcoming changes associated with the unitary patent<br />
is the main topic concerning professionals. Once the agreement is<br />
officially implemented, a significant change in how to file throughout<br />
Europe will be felt. That said, we don’t anticipate such an immediate<br />
effect on translation demand as the London Agreement had in 2008,<br />
where in certain countries translation requirements were minimised<br />
or waived.<br />
39<br />
Maria Nilova: Based on our practice, demand for patent translations<br />
has grown exponentially. Nowadays, many companies, from small<br />
start-ups to multinational corporations, are becoming extremely<br />
concerned about cost efficiency while wanting high quality services,<br />
in particular for patent translations. Traditionally, an applicant keen<br />
to obtain patent protection in a foreign country would fully delegate<br />
all prosecution, including preparing a patent translation, to a local<br />
patent agent. While no-one doubts the quality of this approach,<br />
it is well known how expensive this could be, especially in cases<br />
of multi-country national entries, which are common not only for<br />
multinational businesses but also emerging and promising new<br />
technologies. In all of these cases, it is of primary importance to<br />
provide high quality, affordable patent translations. That is why in<br />
roughly 30 percent of cases, applicants opt for a translation agency<br />
rather than a patent firm.<br />
Matthew Sekac: Demand has grown considerably since 2005.<br />
Trends in demand for patent translations are driven predominantly<br />
by trends in international patent filings, and the trend over the past<br />
decade has been consistent growth. For example, statistics available<br />
from WIPO indicate that PCT national phase entries in non-English<br />
speaking jurisdictions grew by nearly 50 percent between 2005 and<br />
2013 (the most recent year for which data is available).<br />
The data suggests an increasingly global economy with international<br />
organisations focused on developing and protecting their IP on an<br />
increasingly broad scale, with developing economies playing an<br />
increasingly important role in global IP strategies. Between 2005<br />
and 2013, national phase filings in lower and upper middle-income<br />
countries grew by 80 percent. Filings grew by 59 percent in Asian<br />
countries and 57 percent in Latin America and the Caribbean. Trends<br />
such as these are major contributors to the growth in demand for<br />
patent translations.<br />
Another important trend in the market has involved an increasing<br />
level of attention being paid to patent translations, by Western<br />
patent practitioners in particular. Historically, translation fell within<br />
the (nearly) exclusive domain of foreign patent agents. This is an<br />
unavoidable peripheral expense—a single, off-the-radar line-item<br />
buried in a sea of invoices, which was just been part of the cost of
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doing business. More and more organisations are now taking a hard<br />
look at line-items such as translation and realising how dramatically<br />
they can add up to growing expenses.<br />
Beyond cost analysis, the internet makes it possible to build a global<br />
network of qualified resources that were once accessible only to<br />
local patent firms in each country. This creates an opportunity for<br />
global organisations to consolidate their translation needs through<br />
dedicated service providers with centralised operations, legal<br />
expertise and uniform quality assurance systems. The result is<br />
improved international patent quality and reduced cost of ownership.<br />
very sophisticated business niche in the coming years due to<br />
growing demand in professional patent translations. Unfortunately,<br />
there are few, if any, educational facilities for patent translation in<br />
Russia to teach the confluence of jurisprudence, linguistics, and a<br />
relevant applied science.<br />
Sekac: From a macro viewpoint, the talent pool in this area appears<br />
mostly adequate to accommodate demand. Generally speaking, the<br />
work is getting done. One important feature of this market niche is<br />
that the aggregate supply of patent translator man-hours is not as<br />
fixed as in other areas.<br />
Ina Bjerre Larsen: The overall volume of straightforward patent<br />
prosecution translations (such as application texts for national<br />
filing) has definitely decreased compared to a decade ago—and<br />
probably will in the future, too, due to the unitary patent and general<br />
harmonisation. However, since the market for IP translation services<br />
has changed immensely, the demand for IP-related translations<br />
continues to be high. this relates to IP litigation, opposition, and<br />
mergers and acquisitions and other transactional translations that<br />
originate in our clients’ respective business environments, including<br />
domain names and trademarks.<br />
What is the talent pool like in this area? Are more<br />
bodies needed?<br />
Sergey Sokolov: The market for patent translation in Russia and the<br />
Commonwealth of Independent States countries, including Ukraine,<br />
is immense. Based on our experience, workable high quality patent<br />
translations come from patent firms. General practice translation<br />
agencies in our region, even well renowned ones, generally cannot<br />
satisfactorily cope with patent translation, especially in languages<br />
other than English.<br />
Our translations are hand-made through a three-stage process,<br />
therefore developing a ripe product. We presume other patent firms<br />
follow the same routine. We suppose that translation agencies<br />
specialising in patent translations would create an excellent and<br />
40<br />
To accurately render the complex technical material contained in<br />
patent applications, translators must have an advanced level of<br />
competency in their field. They need to be experts. Much of the<br />
work in other translation industry segments is done by professionals<br />
who are translators by trade. Many of the best patent translators are<br />
also researchers, technicians, technical or scientific consultants for<br />
patent firms, or work as patent examiners or even patent agents.<br />
The result is a certain flexibility in the overall supply that can help<br />
absorb fluctuations in demand.<br />
I should emphasise that while many patent translators do not<br />
dedicate their entire work day to translation, they are no less<br />
capable as a result. On the contrary, active professional activity<br />
within their field serves to strengthen, reinforce and maintain their<br />
ability to absorb and engage the material they translate.<br />
There is a trade-off. Skilled patent translators sometimes resist the<br />
use of technology or updated methodologies that require an initial<br />
investment of time to learn. If the worldwide pool of patent translators<br />
has any notable shortcoming, it would be defined as a certain<br />
reluctance to modernise. For patent translation organisations,<br />
technology will be increasingly important to quality and capacity<br />
management as demand continues to grow. This includes an<br />
evolving suite of CAT (computer-aided translation) tools, workflow<br />
management systems, and other productivity-enhancing technology<br />
that requires utilisation by translators to achieve its potential.
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Translations101<br />
We have made great progress on this front through proactive<br />
engagement, support, and well-funded training initiatives. We are<br />
prepared, equipped and excited about the future.<br />
Larsen: Given the Zacco patent translation team’s history—we<br />
actually grew after the London Agreement in Denmark/Sweden<br />
and gained valuable experience in handling the same situation<br />
in Norway, while others downscaled their translation businesses<br />
considerably, or shut them down altogether. We are fortunate that,<br />
today, we employ the best IP translator pool in Scandinavia with a<br />
huge amount of combined experience and skill.<br />
They are a highly adaptive and resilient team and they work<br />
extremely efficiently with state-of-the-art tools. The resilience of<br />
the Zacco translators to changes in the IP services market enables<br />
us to cover current needs quite well—even to the extent that, in<br />
principle, we deliver from day-to-day or even on the same day for<br />
validation translations.<br />
However, our business develops constantly—due to changes in the<br />
IP environment, but also due to changes in the businesses whose IP<br />
Zacco handles, so new talent is generally always in demand here.<br />
Chenique: We’re always on the lookout for new translators and there<br />
are frequently opportunities to join our in-house team as well as to<br />
become one of our freelance staff.<br />
We are quite unique in the patent translation business with a large<br />
team of translators based in our offices, in addition to a network of<br />
freelancers backed by our team of in-house linguists who are tasked<br />
with the word for word checking of translations. We certainly think<br />
that more patent translators and checkers are needed, but it’s tough<br />
to recruit the people who meet our exacting standards.<br />
Linguistic competency: a basic requirement for any type of translation.<br />
Patent translators must have advanced competency in at least two<br />
languages, and should only work into their native language.<br />
Technical competency: in order to completely and accurately<br />
render the meaning and intent of a patent application in another<br />
language, it requires expertise in the technical field of the invention.<br />
The best patent translators often have additional experience working<br />
as lab technicians, researchers, engineers, patent attorneys, agents<br />
or patent examiners.<br />
Patent-specific competency: translators also require a firm grasp<br />
of the complex and nuanced language used by patent practitioners.<br />
Patent applications are extremely demanding legal instruments that<br />
are structured carefully in light of a specific set of rules and conventions<br />
governing the legal impact of particular terms and formulations.<br />
It’s not sufficient to know the language and know the technology.<br />
Patent translators must also understand the nuanced language of<br />
patent law to accurately and completely render their source text.<br />
Larsen: First and foremost, the perfect patent translator must be<br />
acutely aware of his/her responsibilities as to the maintenance and<br />
safeguarding the IP rights of any Zacco client.<br />
This means that, apart from the obvious master’s degree in business<br />
languages, he/she must know IP well enough to provide exactly what<br />
the Zacco client needs at any point in time, be it translations for litigation,<br />
In China, for example, we’ve put a programme in place to work<br />
very closely with several local universities. We take on interns<br />
who receive onsite training and who, if they are successful, go<br />
on to join our team. It’s proving a very effective way to recruit<br />
and train our staff in China and to meet the high demand for<br />
translations into Chinese.<br />
What skills must the perfect patent translator possess?<br />
Sekac: Patent translators are human beings, so none will ever be<br />
perfect. The best patent translators make the fewest mistakes. They<br />
also have the skills, credentials and specialised expertise necessary<br />
to avoid the worst kind of mistakes. For patents, these are mistakes<br />
that materially affect patentability, the scope of coverage, or the<br />
viability of enforcement.<br />
These errors are usually the result of a translator’s failure to fully<br />
grasp the nature of the technology or the application’s carefully<br />
structured language.<br />
The most successful patent translators have years of experience.<br />
We normally require at least six years of experience translating<br />
patents within a particular technical field. They are proficient users<br />
of an array of scientific information resources, such as technical<br />
dictionaries and glossaries.<br />
“The law is reason unaffected by desire.”<br />
patents<br />
trademarks<br />
designs<br />
domains<br />
life sciences<br />
unfair competition<br />
data protection<br />
www.germus.hu<br />
They should possess three distinct layers of advanced competency,<br />
which are critical to accurately translating patent language:<br />
42
Translations101<br />
filing, or for information only, and he/she must always be acutely aware of<br />
reliability in delivery and quality.<br />
The application of a linguistic mindset in combination with business<br />
awareness is absolutely imperative to providing quality and creating<br />
value in an IP environment.<br />
Nilova: First and foremost, a technical background in at least one of<br />
the professional areas, such as mechanics, electronics, chemistry,<br />
pharmaceuticals and biotechnology.<br />
Secondly, a translator needs industry- or scientific-experience, as well as<br />
any practice that provides a general understanding of the professional<br />
language and its usage. Every professional area has its own jargon.<br />
Thirdly, a profound knowledge of patent terminology is needed, as<br />
is a good understanding of the general structure of both a patent<br />
application and legislative regulations in different countries, as well<br />
as patent language nuances.<br />
Chenique: The perfect patent translator is quite a rare bird as he or she<br />
must be a subject specialist, with a degree in engineering or in science<br />
in order to be able to understand and translate the technologies that our<br />
clients cover in chemistry and life sciences, electrical, electronics and<br />
physics, mechanical and engineering.<br />
In addition to their technical qualifications, our translators also<br />
obviously have to be linguists capable of translating a foreign<br />
language into their mother tongue.<br />
Trim: 92(W) x 120mm (H)<br />
The third prerequisite is to be able to translate the source text as<br />
drafted, to comply with the specificities of patent language, and most<br />
importantly, to translate without either broadening or narrowing the<br />
scope of the patent.<br />
Ultimately, though our translators are a key part of a team of<br />
professionals who ensure that our clients receive only the highest<br />
quality, we have the following systems in place to ensure quality:<br />
ISO 9001-certified procedures with proofing of all translations by<br />
a checker; project managers troubleshooting for any potentially<br />
unclear terms in the source text; and ensuring compliance of<br />
translations with the specifications of local patent attorney firms and<br />
the national patent offices.<br />
The quality of a translation can make or break a patent<br />
application—but how are you keeping costs down<br />
without compromising on quality?<br />
Sokolov: Our experience shows this can be achieved through our<br />
three-stage process. Firstly, by employing highly educated exindustry<br />
professionals with a profound knowledge of the profession,<br />
keeping in mind today’s inventions deal with cutting edge<br />
technologies. They do the primary translation.<br />
Secondly, by training professional patent agents having very good<br />
native language skills and possessing good knowledge of patent<br />
terminology. They do the proofreading of the primary translations.<br />
Thirdly, by having a patent attorney review the claims. As a result,<br />
we differentiate between industry knowledge and patent skills,<br />
combining them and taking the best of both worlds.<br />
Less work would definitely mean compromised quality. We realise<br />
that compromised quality cannot be permanently sold as a firstrate<br />
product. When under pressure we focus on vital parts of an<br />
application to still provide the best possible solution within the<br />
constrained budget or restricted timeframe.<br />
Larsen: Obviously, this aspect became increasingly important<br />
during the recent financial crisis—everybody was affected by this.<br />
Translation is now a commodity and it is consequently subject to<br />
fierce competition.<br />
However, it is imperative to keep in mind that the quality of a<br />
translation can make or break an IP right. It goes without saying<br />
that we cannot compromise on quality and delivery, but at Zacco<br />
we apply an overall very cost-conscious mindset that allows us to<br />
operate quite well in our segment, which is not a discount segment<br />
as we truly believe in the value created by our unique IP product<br />
and our unique IP competences.<br />
An example of this is that we find it very important to also give full<br />
attention to the source text and to report on anything that seems<br />
amiss—a service that is included in our translation fee and which<br />
will, obviously, save money in the long run. IP competence and<br />
translation skills combined may greatly reduce the costly fuss that<br />
might otherwise occur.<br />
43<br />
We also do our utmost to ensure that Zacco clients get exactly<br />
the product they request—to allocate the correct resources staffwise<br />
and time-wise. A translation order is always analysed before<br />
embarking on the job, to identify the intended IP use and what
Translations101<br />
resources are needed to reflect the value of the translation to<br />
our client and to safeguard the scope of its rights. If in doubt, we<br />
ask. Finally, Zacco’s internal handling and administration is at a<br />
minimum, since the Zacco team can deliver within all combinations<br />
of the official European patent and Scandinavian languages.<br />
Chenique: Having our own team of translators in combination<br />
with a network of tried and trusted freelancers who receive high<br />
volumes of work from RWS has been instrumental in ensuring we<br />
not only offer the highest quality, but also are cost-effective.Our inhouse<br />
tools and systems also boost productivity and quality. RWS<br />
Group’s own patent database, PatBase, for example, ensures<br />
that our translators use the most appropriate terminology for a<br />
particular applicant or field.<br />
In addition, streamlined work flows, centralised project management<br />
and leading edge translation technology are all factors that enable<br />
us to provide the top quality for which RWS Group is renowned, as<br />
well as competitive pricing. Our clients face relentless pressure on<br />
their costs and we have to constantly find new ways of guaranteeing<br />
quality and delivering additional economies.<br />
The end-to-end solution that we now offer for foreign filing, thanks<br />
to our acquisition of inovia, the world’s number one filing platform<br />
for PCT national phase entries, is an example. Together with inovia<br />
we bring our clients the best in patent translation combined with the<br />
best in filing, and all for a great price that is difficult to beat.<br />
Sekac: Scale is one of the straightforward ways to keep costs<br />
down without compromising quality. At Park IP Translations, we<br />
have been very successful at leveraging our growth to build a lean<br />
and robust production infrastructure. We have established strong<br />
relationships with capable and reliable partners, affording us<br />
dedicated and flexible capacity with room to grow further. We<br />
have also negotiated competitive buy rates that reflect our<br />
volume without putting our partners in a compromising position.<br />
Ultimately, keeping costs down without compromising on quality<br />
means prioritising quality. Volume gives you leverage over your<br />
suppliers. They will go a long way to avoid losing your business, if<br />
they depend on it. We have found that the best partnerships are truly<br />
partnerships—mutually beneficial relationships that can be counted<br />
on to serve their purpose.<br />
Technology is also key, such as translation memory (TM). When<br />
used effectively, TMs can significantly boost translator productivity<br />
and generate escalating cost savings as the database of translated<br />
material is built up over time.<br />
Patents don’t offer the biggest opportunity for leveraging previously<br />
translated material, however, it does help in some cost savings. TMs<br />
can also improve quality by streamlining terminology management<br />
and improving the consistency of translated language.<br />
Technology drives every facet of our process. We have a talented<br />
team of full-time developers that allows us to really empower<br />
imagination. We have developed cutting-edge tools for measuring<br />
productivity, managing quality, forecasting, interacting with clientside<br />
users and systems, and automating production workflows.<br />
These tools make our services smarter, with lower costs, at higher<br />
quality levels, and with data to back it up. IPPro<br />
44
J. Varbanov & Partners<br />
European and Bulgarian Patent & Trademark Attorneys<br />
One of the oldest and leading IP companies in Bulgaria<br />
Professional, cost effective services and quality advices<br />
Areas of practice:<br />
*IP Protection<br />
*IP Enforcement<br />
*Anti-counterfeiting<br />
*Litigations<br />
*Domain name registrations<br />
*IP watches<br />
PO Box 1152, BG-1000 Sofia, Bulgaria<br />
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria<br />
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,<br />
e-mail: jvp@jvpatents.com<br />
www.jvpatents.com
BigInterview<br />
Bob Stembridge<br />
Senior analyst<br />
Thomson Reuters IP & Science<br />
Lawrence Liberti<br />
Executive director, Centre for<br />
Innovation in Regulatory Science<br />
Thomson Reuters<br />
Dr Kirk Gallagher<br />
Partner<br />
D Young & Co<br />
Mark Dugdale<br />
Editor<br />
IPPro The Internet and Life Sciences<br />
Who will be developing the next new drugs and therapies,<br />
and in what areas will these innovations happen?<br />
Bob Stembridge: We do have quantitative ways of showing which new<br />
drugs and therapies will be making a big impact on the market. Our<br />
recent 2015 Drugs to Watch report highlights 11 potential blockbuster<br />
drugs that we forecast to earn more than $1 billion by 2019. It’s set to<br />
be a massive year with eight more blockbuster drugs expected than in<br />
2014. It’s leading some commentators to raise the question of whether<br />
we are seeing a renaissance in big pharma.<br />
According to the figures from earlier in 2015, drugs predicted to pass the<br />
$3 billion mark with 2019 sales forecasts include: Bristol-Myers Squibb<br />
and Ono Pharmaceutical’s melanoma drug Opdivo (nivolumab) at $5.68<br />
billion; Regeneron Pharmaceuticals and Sanofi’s Praluent (alirocumab)<br />
for hypercholesterolemia at $4.41 billion; and Novartis’s Entresto (LCZ-<br />
696) for chronic heart failure at $3.73 billion.<br />
In terms of innovative areas, new advances are happening in<br />
immuno-oncology, a rapidly evolving field for drug development.<br />
The aforementioned Entresto from Novartis represents a first-inclass<br />
heart failure drug that has recently received Food and Drug<br />
Administration (FDA) approval. Other trends include innovation in<br />
treating cholesterol and the entry of more convenient all-oral regimes<br />
for hepatitis C virus.<br />
Simultaneous to all this is the rise of biosimilars. Although it is not an<br />
exact copy, a biosimilar is highly similar to an approved biologic and<br />
is developed on a designated biosimilar regulatory path. While the<br />
world’s first official biosimilar was approved by the EU back in 2006,<br />
it has taken up until March 2015 for a biosimilar to receive regulatory<br />
approval in the US.<br />
There are many players innovating in this area, with Pfizer, Eli Lilly,<br />
GlaxoSmithKline, Amgen, Biogen Idec, Merck and Sanofi among<br />
those entering the biosimilar space. A few are doing it on their own,<br />
some are partnering, and others are investing in joint ventures or<br />
biosimilar developers. They see biosimilars as a new revenue stream<br />
to help offset losses for blockbuster drugs and biologics that recently<br />
have come off patent.<br />
Kirk Gallagher: For some time now, big pharmaceutical companies have<br />
been increasingly looking to smaller biotechs, start-ups and academic<br />
departments to provide innovation in the life sciences. The smaller<br />
organisations are often better positioned to undertake highly specialised,<br />
higher risk research that may prove disruptive in a particular field.<br />
However, they are less well financed and remain reliant on the larger,<br />
more established pharma companies to fund the later stages of drug<br />
development and clinical trials. This dynamic environment has resulted<br />
in an increasing number of collaborations and licensing deals, with many<br />
acquisitions taking place around particularly promising technologies.<br />
Hot areas for innovation at the moment include immune-based therapies,<br />
where the body’s own immune system is harnessed to fight diseases<br />
such as cancer (immuno-oncology) and which may prove to be curative<br />
for previously intractable fatal or chronic diseases.<br />
In addition, gene therapy is beginning to fulfil its promise despite<br />
significant early setbacks that many thought would completely undermine<br />
the field. Gene therapy is a powerful therapeutic approach that enables,<br />
for example, the editing or deletion of defective genes in an organism, or<br />
the introduction of new genes to provide a targeted effect. High-profile<br />
recent developments include the restoration of vision in patients with<br />
previously incurable hereditary diseases.<br />
Cell-based therapies, such as stem cell therapy and autologous cell<br />
therapy, are also becoming more prevalent. Autologous approaches are<br />
advantageous, because a patient’s own cells are removed, treated and<br />
then transplanted back, which avoids the risk of provoking an immune<br />
response. Notably, these cell-based methods often draw heavily on gene<br />
therapy approaches and may find utility in treating neurodegenerative<br />
diseases such as Parkinson’s, or spinal cord injury.<br />
Significant breakthroughs have also been made in gene editing<br />
techniques, which further increase the power of gene therapy as a whole.<br />
Using new editing technologies, DNA may be precisely inserted, replaced<br />
or removed from a genome using artificially engineered nucleases such<br />
as transcription activator-like effector nucleases (TALENs) and the<br />
CRISPR/Cas system. These approaches show promise for the treatment<br />
of diseases such as HIV and sickle cell disease, and prevention of<br />
mitochondrial disease by destroying mutant mitochondria.<br />
Another advantage is that biosimilars are offered at lower prices than<br />
the original. Remsima, an infliximab biosimilar, is famously almost 70<br />
percent cheaper in Norway. Reduced pricing means that biosimilars can<br />
be available to more patients than the original, expensive biologics ever<br />
could and is a great benefit to healthcare providers in many countries<br />
that are under ever-increasing financial strain.<br />
47<br />
How well positioned are IP systems around the world<br />
to encourage innovation in these areas?<br />
Stembridge: Pharmaceutical research has always been a costly and<br />
risky business. A Tufts Center for the Study of Drug Development<br />
report, issued in November 2014, indicates that after discovery and
development of a drug, it now often takes more than a decade to gain<br />
marketing approval at an estimated cost of over $2.5 million. But that<br />
is but a fraction of the overall average cost of getting a drug from labtop<br />
to patient at an eye-watering estimated $359 million, according to<br />
the California Biomedical Research Association. Add to this that only 10<br />
percent of candidates make it to human testing, and only one in five of<br />
these are ever approved for human usage, and the business risk is clear.<br />
Global intellectual property systems are designed to address this risk by<br />
enabling sufficient protection to provide opportunity to realise suitable<br />
returns over the lifetime of the protection before drugs come off patent<br />
and generic competition ensues.<br />
As in all areas of the law, this is a difficult balance to achieve and in<br />
practice has led to some imperfections, which are in a continual process<br />
of review and adjustment to correct each swing of the pendulum.<br />
Conventional IP systems provide for patent protection of 20 years from<br />
the date of filing. Given that the total time for development and approval<br />
of a new drug is now somewhere north of 12 to 15 years, there is scant<br />
time to left realise realistic returns on investment.<br />
In recognition of this, various systems exist globally to compensate<br />
for regulatory delay and provide additional protection after expiry of<br />
the patent. In Europe, this is known as a supplementary protection<br />
certificate (SPC). An SPC normally has a maximum lifetime of five years,<br />
but that can be extended to five-and-a-half years in certain specific<br />
circumstances. SPC protection is available in all EU countries, although<br />
there is no Europe-wide registration system and application has to be<br />
made in each individual country.<br />
Equivalent systems are also available in the US (patent term restoration,<br />
providing from one to five years), Japan (five years), South Korea (up<br />
to five years) and other countries. Notably, patent term extensions for<br />
regulatory delay are not available in China and much of South America<br />
(Chile being the exception).<br />
In the area of genetic medicine, there was a period during which<br />
protection for specific genes from the human genome was available<br />
in the US, but this has effectively now been reversed by the 2013 US<br />
Supreme Court ruling in the Molecular Pathology Association v Myriad<br />
Genetics case that human genes cannot be patented.<br />
IP systems around the world continue to evolve to ensure the balance<br />
between incentivising and rewarding innovation and providing costeffective<br />
treatments for diseases globally is maintained.<br />
Gallagher: The European Patent Office (EPO) has a well-developed<br />
and relatively positive approach to innovation in these fields. As a result,<br />
it is generally possible to obtain useful patent protection covering these<br />
highly innovative technologies in Europe. Controversy does remain,<br />
however, particularly in fields that are seen by some as interfering with<br />
the fundamental mechanisms of life. Developments in jurisprudence are<br />
continually working towards balancing support of the industry, and the<br />
associated worldwide health benefits that this may bring, with potential<br />
moral and ethical concerns.<br />
A prime example relates to the patenting of stem cells. Current EPO<br />
guidelines follow the approach of the Court of Justice of the European<br />
Union (CJEU) in the Brüstle case: to be patentable in Europe, a stem<br />
cell invention should not be directed to a human embryo, nor should<br />
the subject matter of the patent have required the prior destruction of a<br />
48<br />
BigInterview<br />
human embryo at any time in the past. However, inventions relating to<br />
adult stem cells or human induced pluripotent stem cells (where adult<br />
cells are ‘reprogrammed’ to take on pluripotent capabilities so they can<br />
be used as a source of stem cells for therapeutic use) are still patentable.<br />
A more recent decision from the CJEU has clarified that parthenotes<br />
(activated unfertilised oocytes that may be used for the production of<br />
human stem cell lines) are not excluded from patentability. Although a<br />
parthenote is capable of developing into a blastocyst-like structure, it<br />
cannot develop into a human being because it lacks paternal DNA, and<br />
is therefore not considered to be a “human embryo” under European<br />
law. This decision has been welcomed by those working in the field as<br />
providing clarity on the patentability of certain stem cell types and may<br />
extend the scope of patentability in the field of stem cell research.<br />
Although not without fault, European patent practice is generally<br />
supportive of developments in the life sciences and provides reasonable<br />
certainty to applicants.<br />
In stark contrast, the US patent system is currently going through a very<br />
challenging period for life sciences applicants in the wake of the Myriad<br />
and Mayo Supreme Court decisions.<br />
The Myriad decision (June 2013), which concerned the patenting of<br />
human genes, is particularly relevant. In Myriad, the Supreme Court<br />
held that human genomic DNA is not patent eligible, because the<br />
same gene occurs in nature. However, non-naturally occurring cDNA<br />
sequences were held to be patent-eligible matter. The US Patent and<br />
Trade Office’s (USPTO) interpretation of this decision went further than<br />
this seemingly narrow finding, with the office issuing a set of guidelines<br />
in March 2014 that truly changed the fundamentals of what is patentable<br />
in the biotechnology field.<br />
The guidelines essentially excluded from patentability any naturallyoccurring<br />
substance, regardless of its isolation, purification or utility,<br />
unless it was “significantly different” to what was found in nature. After<br />
receiving a great deal of criticism, the USPTO issued revised guidance<br />
in January 2015, which somewhat reversed its position, and provides a<br />
more lenient test for patent eligibility.<br />
The new USPTO guidance first asks whether a claim is “markedly<br />
different” from a natural product. Under this test, a difference based on<br />
function, or a chemical, physical or biological property can lead to patent<br />
eligibility. Even if a claim fails this test, it may still be patent eligible if,<br />
under a second test, the claimed subject matter provides “significantly<br />
more” than a naturally occurring product. From the specific examples<br />
given in the guidance, it is clear that “significantly more” will be assessed<br />
more leniently than the approach stipulated in the previous guidance.<br />
Further guidance has just been issued (July 2015) that will hopefully<br />
provide further clarity. However, there is a still a great deal of uncertainty<br />
as to how best to obtain US patent protection for innovation in the<br />
biotechnology field, and applicants are facing serious difficulties in<br />
the prosecution of currently pending cases. This can only be seen as<br />
detrimental to technologies with the potential to revolutionise healthcare.<br />
Patent practice is developing quickly in China. However, there is<br />
generally a high burden set for life sciences applicants in providing data<br />
in patent applications at the filing stage. The Chinese patent office often<br />
requires granted claims to be limited to the reported working examples<br />
and as a consequence it can be difficult to achieve a commercially useful<br />
scope of protection based on early data. With reference to the state of
the industry discussed above, this can prove particularly problematic for<br />
small biotechs and academic applicants who may file early and in very<br />
new technologies with the aim of securing investment. Some success<br />
can be achieved by providing later data to support broader claims,<br />
however, this is an area where a more open-minded support of earlystage<br />
innovation would be beneficial.<br />
How can regulations be strengthened/relaxed to<br />
encourage innovation in new drugs and therapies?<br />
Lawrence Liberti: Timely access to safe and effective new medicines of<br />
societal value is a goal of medicine developers, regulators and payers.<br />
More flexible regulatory approaches, prompted by the need to accelerate<br />
reviews of novel HIV therapies in the 1980s, have been formalised<br />
in many jurisdictions, providing options to accelerate the regulatory<br />
review process, particularly in response to unmet medical needs. These<br />
streamlined yet robust pathways form an important part of accelerating<br />
pharmaceutical innovation.<br />
We characterise these priority and accelerated approaches as<br />
facilitated regulatory pathways (FRPs), ie, those designed to facilitate<br />
the availability, review and/or approval of medicines where there is an<br />
unmet medical need by providing alternatives to standard regulatory<br />
review routes. FRPs are increasingly commonly used in the US (for<br />
example, breakthrough therapy designation, or accelerated approvals)<br />
and growing in Japan and to some extent Europe.<br />
In this manner, drug development is expedited, and in best cases, patient<br />
access to medicines. Most recently, in the US, the 21st Century Cures<br />
Act has been designed to provide for a variety of procedures to stimulate<br />
innovation, tied in part to expedited access to important new medicines.<br />
Initiatives to investigate adaptive licensing schemes are being piloted by<br />
the European Medicines Agency (EMA) and others to characterise best<br />
practices in expediting patient access to medicines.<br />
FRPs may increase the communication and level of commitment<br />
between the developer and the agency, can give a larger role to effects<br />
on surrogate end points, and may move some of the burden of evidence<br />
generation from the pre- to the post-authorisation phase. Effective use<br />
of these modalities can improve the efficiency of the innovative medicine<br />
development process.<br />
We reviewed approvals of new active substances (NASs) by the FDA,<br />
EMA, and Japanese Pharmaceuticals and Medical Devices Agency<br />
(PMDA) between 2005 and 2014 in order to evaluate companies’ use<br />
of the different FRPs available and the role they play in expediting<br />
the approval of new medicines. Data for 825 NAS approvals between<br />
2005 and 2014 were collected from the public domain. The number of<br />
NASs approved was 281, 242 and 302 for the FDA, EMA and PMDA,<br />
respectively. Priority reviews made up 47, 7 and 28 percent of the NASs<br />
approved by the FDA, EMA and PMDA.<br />
Comparing priority with standard review approval speed, FDA priority<br />
reviews were faster (243 days) compared to the standard (456 days)<br />
in 2014. EMA priority reviews were faster (264 versus 432 days), as<br />
were PMDA priority reviews (275 versus 359 days). Therefore, in<br />
2014, the median approval times for priority reviews were very similar<br />
across the agencies.<br />
Over the last decade FRPs have played an important role, particularly at<br />
the FDA and PMDA in accelerating the approval of innovative medicines,<br />
thereby enabling treatments for diseases to be made available to<br />
50<br />
BigInterview<br />
patients in a timely manner, including orphan diseases, where little or no<br />
effective treatment options exist. The continued refinement of FRPs will<br />
contribute to innovative ways of accelerating the development of safe<br />
and effective medicines.<br />
Gallagher: As previously discussed, smaller life sciences businesses<br />
are increasingly relied on as the ‘engine houses’ of innovation.<br />
The emergence of governments that want to build science/tech hubs<br />
should be encouraged, and innovation can be strengthened by increasing<br />
tax breaks and funding opportunities for innovative businesses.<br />
The provision of improved financial support will allow small life sciences<br />
businesses to survive longer on their own before needing to find a<br />
commercial partner.<br />
This will provide vital time for the companies to develop their ideas to<br />
a sufficient extent to convince potential investors. With the increasing<br />
complexity of many modern therapeutics, more time is often vital to<br />
optimise technologies to a satisfactory level.<br />
In addition, governments and regulatory bodies need to continue to<br />
keep up with the fast pace of developments in the life sciences field. The<br />
technologies under development show vast potential, but at the same<br />
time are highly complex and may present significant safety, moral and<br />
ethical issues. Mis-regulation may result in the premature implementation<br />
of developments with adverse consequences, which may erode public<br />
trust. These complexities should not be avoided, but need to be tackled<br />
promptly and decisively.<br />
By way of example, cell-based therapies present many regulatory<br />
challenges. Despite a rich pipeline of autologous cell therapies in<br />
clinical development, to date few have made it onto the market.<br />
This may partly be because the technology faces substantial regulatory<br />
challenges. Cell therapies are highly complex products and accordingly<br />
it is difficult to assure quality and apply the same requirements as<br />
applied to a typical biologic.<br />
Furthermore, the risk of the therapies is more akin to surgeries, such as<br />
transplantations, than to a typical drug. New regulatory frameworks are<br />
urgently needed to support and ensure safety in these areas.<br />
Although not strictly regulatory, improved education of academics and<br />
small businesses in the importance of their IP would also be desirable.<br />
For example, although many academics are often keen to publish<br />
ground-breaking results as quickly as possible, if patent filings are not<br />
made in time these publications will likely jeopardise patent protection.<br />
As a result, new technologies may be neglected because investors will<br />
likely not wish to back them if others can later freely enter the market<br />
without undertaking any of the costly development work. Grace periods<br />
of a limited time frame are provided in some countries that provide a<br />
safety net against such damaging disclosures by inventors.<br />
However, these provisions are not uniform worldwide and are notably<br />
absent in Europe. Although discussions are taking place regarding the<br />
introduction of a grace period in Europe, no agreement has currently<br />
been reached. Progress in harmonising the application of grace periods<br />
would provide welcome certainty to applicants and reduce the loss<br />
of rights caused by the assumption of this safety net being available<br />
everywhere. IPPro
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PolandSPCs<br />
The pharmaceutical industry is a very important element of Polish<br />
economy. In 2013, the Polish pharmaceutical market was placed<br />
as the sixth among the largest markets in Europe with the annual<br />
turnover amounting to approximately €4.4 billion (IMS Health<br />
2013). Poland has also been named as one of the ‘pharmerging’<br />
markets, which by 2017 is expected to exhibit significantly higher<br />
growth rate than mature markets, such as the US, Japan, France,<br />
Germany and Spain (IMS Pharmerging White Paper, 2013), even<br />
though the pharmaceutical market value, per capita, did not<br />
exceed €115 in 2013.<br />
This economic importance of the pharmaceutical sector has also<br />
been reflected in intellectual property rights prosecution and<br />
their enforcement in Poland. Patent term extension has become<br />
one of the most important aspects of IP right protection for<br />
pharmaceuticals in Poland.<br />
Patent protection guarantees 20 years of market exclusivity for a<br />
medicinal product, covered by a patent, starting from the filing date<br />
of the patent application. The only way to extend patent protection<br />
52<br />
for a medicinal product is to apply for the grant of a supplementary<br />
protection certificate (SPC).<br />
The idea of patent term extension is relatively new in the Polish<br />
patent law system. The SPC is a protection right granted in all<br />
EU member states, including Poland, for medicinal and plant<br />
protection products based on the following EU regulations:<br />
• Regulation (EC) No 469/2009 of the European Parliament<br />
and of the Council of 6 May 2009 concerning the SPC for<br />
medicinal products, which has replaced Council Regulation<br />
(EEC) No 1768/92; and<br />
• Regulation (EC) No 1610/96 of the European Parliament and<br />
of the Council of 23 July 1996 concerning the creation of an<br />
SPC for plant protection products.<br />
This specific form of protection was also implemented in the Act<br />
of 30 June 2000 on Industrial Property Law (Journal of Laws, No<br />
119, item 1117, 2003 with later amendments) in 2002 and became<br />
a part of the Polish legal system after Poland’s accession to the<br />
EU in 2004.
PolandSPCs<br />
The SPC was introduced for medicinal and plant protection<br />
products due to the fact that the length of time of effective patent<br />
protection for these products is shorter, since they cannot be<br />
introduced into the market directly. These products can only<br />
be sold after a marketing authorisation is obtained. In order to<br />
obtain such a regulatory approval, time-consuming studies and<br />
long administrative procedures are required. These procedures<br />
significantly limit the duration of the monopoly resulting from the<br />
patent protection alone. Therefore, the SPC aims to compensate<br />
the patent owner for the lost time of patent protection.<br />
The introduction of the SPC has increased IP protection of medicinal<br />
products by awarding additional protection, which begins after patent<br />
expiry. This extra protection lasts up to five years. The protection for<br />
medicinal products resulting from the SPC can be extended even<br />
further for an additional six months (ie, paediatric extension of the<br />
SPC), however, only if specific requirements indicated in Regulation<br />
No 469/2009 and related to paediatric clinical trials are fulfilled.<br />
Many interpretational issues regarding the SPC requirements<br />
defined in Regulation No 469/2009 has been raised by different<br />
courts and authorities in EU member states. These issues resulted<br />
in abundant judgements of the Court of Justice of the EU (CJEU),<br />
whose aim has been to clarify the requirements for SPC grant and<br />
ensure their uniform application throughout the EU. Although the<br />
CJEU judgements have, in general, settled many questionable<br />
issues, they have often raised further questions regarding the<br />
53<br />
SPC and its grant conditions. This demonstrates that matters<br />
concerning the SPC are not always very straight forward and<br />
require additional explanation to accommodate new types of<br />
medications that have been recently developed.<br />
A lot of different questions are raised at the national level during<br />
the prosecution of the SPC applications by the national authorities.<br />
The Patent Office of Republic of Poland (PORP), which is the<br />
competent industrial property office for the examination of SPC<br />
applications, as well as SPC paediatric extension applications,<br />
in Poland, has developed quite an overzealous substantive<br />
examination procedure.<br />
One of the most problematic issues in Poland is the requirement of<br />
protection of the product, ie, the protection of the active ingredient of<br />
the medicinal product, by a patent in force. Of course, many aspects of<br />
this problem have already been addressed in judgements of the CJEU.<br />
However, the PORP still, somehow, manages to find new obstacles<br />
relating the scope of patent protection and thus the SPC itself.<br />
For example, in one of the recent cases, an SPC application was<br />
rejected because the basic patent, ie, the patent selected as the<br />
basis for the SPC application, referred to a chemical compound<br />
as such (without making a reference to any physical form of<br />
the compound of the invention), whereas the first marketing<br />
authorisation referred to a specific physical form of that very<br />
chemical compound.
PolandSPCs<br />
In particular, the summary of product characteristics (SmPC), a<br />
legal document approved as part of the marketing authorisation<br />
of every medicinal product, which contains information for health<br />
professionals on how to use the medicinal product safely and<br />
effectively, mentioned a specific crystalline form of the compound<br />
covered by the basic patent. Since the specification of the<br />
basic patent did not comprise any information with respect to<br />
that crystalline form of the compound of the invention, the SPC<br />
application was rejected.<br />
For the assessment of the SPC requirements, the PORP did not<br />
consider the fact that the basic patent conveyed protection for<br />
the active ingredient in any form, since it contained a product<br />
claim for the new chemical entity. However, the case has not been<br />
yet finally resolved, as an appeal has been lodged against this<br />
rejecting decision.<br />
Another issue that arises from time to time during examination of<br />
SPC applications before the PORP is the issue of the first marketing<br />
authorisation. According to current practice, the SPC application<br />
can be rejected if a similar medicinal product is already on the<br />
market, even though the PORP is unable to present the marketing<br />
authorisation for the product it juxtaposes as allegedly similar and<br />
already placed on the market.<br />
The SPC application can also be rejected if the product comprises<br />
a combination of active ingredients (A+B), and an earlier marketing<br />
authorisation for one of the products was obtained (A) with the<br />
SmPC indicating that it is possible to use this product (A) in a<br />
combination therapy with the other product (B). In this case, the<br />
PORP has indicated that a mere fact that a combination therapy<br />
is mentioned in the SmPC of an earlier marketing authoriation is<br />
enough to question the marketing authorisation for the product<br />
comprising both active ingredients A and B. However, this decision<br />
of the PORP was reversed by the Regional Administrative Court.<br />
In general, during SPC examination the PORP seems to examine<br />
criteria that do not correspond to those named in Regulation No<br />
469/2009. The PORP often refers to patentability criteria, such as<br />
sufficient support and obviousness, which should not be examined<br />
at all during prosecution of an SPC application.<br />
The problems also arise during examination of the request for<br />
paediatric extension of the SPC. Frequently, the PORP reexamines<br />
validity of the already granted SPC before it makes a<br />
decision with respect to paediatric extension. In one of the cases, a<br />
request for paediatric extension was rejected, because, according<br />
to the examiner, the SPC did not meet the transitional provisions<br />
governing the SPC grant. The PORP did not take into consideration<br />
the fact that in order to raise such an objection, the SPC should be<br />
invalidated, whereas the paediatric extension should be granted<br />
since all of the requirements for such an extension were fulfilled.<br />
Another significant problem is the requirement for too much<br />
documentation when the paediatric extension is to be granted,<br />
based on a mutual recognition procedure instead of a central<br />
EU procedure. The PORP requires copies of all marketing<br />
authorisations from all member states, including the SmPC.<br />
Moreover, the PORP can raise an objection with respect to a<br />
national marketing authorisation, if the PORP suspects that it is<br />
not the current marketing authorisation. At the same time, the<br />
PORP is not familiar with the practice of local authorities that issue<br />
the marketing authorisations in every EU member state.<br />
It is also very difficult to convince the PORP’s examiner that<br />
in the mutual recognition procedure, the statement indicating<br />
compliance with an agreed completed paediatric investigation plan<br />
will not necessarily be issued by the European Medicines Agency.<br />
Therefore, obtaining an SPC extension is much easier based on<br />
the marketing authorisation granted in the centralised procedure.<br />
Finally, it needs to be emphasised that the practice developed<br />
by the PORP with respect to SPCs has also influenced the<br />
examination of patent applications. Nowadays, the PORP very<br />
often refers to the judgements of the CJEU related to SPCs<br />
while examining the patentability of pharmaceutical inventions.<br />
Moreover, the PORP also often refers to the preamble of the<br />
SPC regulation, wherein it is indicated that all the interests at<br />
stake, including those of public health, in a sector as complex<br />
and sensitive as the pharmaceutical sector, should be taken into<br />
account. This argument is very often used to restrict the scope of<br />
protection of pharmaceutical patents.<br />
Therefore, in addition to the problematic issue that result from the<br />
SPC regulation itself, in Poland we have to deal with additional<br />
problems that are very surprising and don’t result from ambiguity<br />
these regulations, but rather from the PORP’s viewpoint that it is an<br />
authority responsible for keeping the balance between the interests<br />
of all parties, including public health and the pharmaceutical sector.<br />
However, it should be underlined that this alleged responsibility<br />
does not result from any regulations and so makes SPC and patent<br />
prosecution in Poland quite challenging. IPPro<br />
“<br />
During SPC examination the PORP seems to examine criteria<br />
that do not correspond to those named in Regulation No 469/2009.<br />
The PORP often refers to patentability criteria, such as sufficient<br />
support and obviousness, which should not be examined at all<br />
”<br />
Magdalena Tagowska, Patent attorney, Patpol<br />
54
MexicoData<br />
One fell loophole: protecting clinical data<br />
There are evident loopholes in Mexican legislation regarding IP rights<br />
and clinical data protection framed in the scope of sanitary regulatory<br />
affairs. Soledad Betanzos-Lara of Goodrich, Riquelme y Asociados reports<br />
“So, here I am. A brand new drug molecule, thoroughly researched<br />
and developed, for more than 10 years. Many monetary expenses<br />
and time investment have been put together to push me forward.<br />
I have been thoroughly clinical-trialled and proven to be safe and<br />
effective and a bunch of clinical-related data has been generated<br />
in the process. I have been named ‘the innovator’.”<br />
“Naturally, now is the time to market me, in order to reach the<br />
target patient population that I was developed for, and so, help<br />
to improve people’s health. But hang-on: before this happens, I<br />
need to go through strict sanitary regulatory approvals, qualify for<br />
intellectual property protection, and somehow secure the clinical<br />
data generated.”<br />
“Only that one thing concerns me. I’ve heard that at some point,<br />
others will try to supersede my identity with the aim of also<br />
improving people’s health, but at a lower cost than mine. And<br />
that maybe, for being approved, they will be authorised to use my<br />
clinical data. I know they call themselves ‘generics’.”<br />
“What is then out there that will secure IP and sanitary protection<br />
for me, while guarding my clinical data for the longest possible<br />
time before the entry of these generics?”<br />
This stream of consciousness, pondered by a new and innovative<br />
drug molecule—if indeed this was possible—probably depicts the<br />
fears that all innovative pharmaceutical companies have. So, how<br />
do jurisdictions protect both an innovator’s IP rights and clinical<br />
data, and maintain a sanitary regulation intelligibly linked with<br />
these, while still providing affordable and high-quality medications<br />
for the population?<br />
This is not an easy question to answer and the approaches can<br />
be diverse. The regulatory frameworks needed for intertwining<br />
IP rights, clinical data protection, sanitary regulatory affairs and<br />
access to medicines, do not exist everywhere in the world.<br />
Mexico has achieved much in this respect, although some areas of<br />
opportunity are still to be covered. IP rights protection, enabled by<br />
56<br />
the Mexican Institute of Industrial Property (Instituto Mexicano de<br />
la Propiedad Industrial, IMPI), is linked to the sanitary regulatory<br />
affairs of the Federal Commission for Protection against Sanitary<br />
Risk (Comisión Federal para la Protección contra Riesgos<br />
Sanitarios, COFEPRIS), via the so-called Linkage Gazette: a<br />
biannual publication from IMPI in which patents in-force covering<br />
allopathic medicines, second-medical uses, and formulations<br />
thereof, are disclosed.<br />
Seeking IP protection for a new molecule via patenting is standard<br />
in Mexico, as long as the patentability requirements set out by<br />
IMPI are met. Via this procedure, the innovator will benefit from<br />
20 years of protection for the active ingredient, during which, no<br />
other party can exploit the same molecule for any given purpose,<br />
being this a second medical use, a pharmaceutical composition,<br />
or a process.<br />
Simultaneously (but not always), the innovator may apply for a<br />
marketing authorisation for its drug, through the local sanitary<br />
authority. In Mexico, if the application is successful, a renewable<br />
five-year marketing authorisation for the drug will be issued.<br />
In this context, under the current Mexican legislation, a generic<br />
company may apply to COFEPRIS for a marketing authorisation<br />
for a product that falls within the scope of a patent listed in IMPI’s<br />
Linkage Gazette, within three years (for allopathic drugs and up to<br />
eight years for biocomparables) prior to the expiration date of the<br />
corresponding Mexican patent, according to the Bolar exception. It<br />
is worth noting that the marketing authorisation will not be issued<br />
by COFEPRIS until the Mexican patent in question expires.<br />
Curiously enough, the timeframes for both procedures do<br />
not always match. The timeframe for obtaining a marketing<br />
authorisation normally lasts between three to six months and<br />
up to one year, whereas a patent application will normally take<br />
longer, approximately four years, on average. Therefore, there is<br />
a mismatch between the time that the innovator can benefit from<br />
having an active ingredient monopoly and the time during which it<br />
can generate revenue from the monopoly.
MexicoData<br />
“<br />
These guidelines were drafted with the<br />
intention to be in line with the minimum time term set<br />
by NAFTA and advise that a marketing authorisation<br />
holder will have a five-year exclusive right<br />
So far, so good. However, since 2008, the Mexican regulation was<br />
amended to include a requirement for the approval of generic drugs<br />
before COFEPRIS on the sole basis of interchangeability tests.<br />
That is, generic companies may obtain marketing authorisation<br />
for a generic product by merely providing dissolution profiles or<br />
bioavailability studies.<br />
As the reader might infer, this intrinsically means that a generic<br />
product applicant indirectly benefits from the safety and efficacy<br />
studies already carried out by the innovator, which, in part, might<br />
explain why generic products are almost always cheaper than their<br />
innovator counterparts.<br />
These facts uncover a clear disconnect between IP rights, sanitary<br />
regulatory affairs, and clinical data protection, not in the sense that<br />
there is a breakage in the confidentiality of clinical data, but in the<br />
lack of observance to international related treaties to which Mexico<br />
is bound.<br />
Considering that the Mexican Constitution positions a hierarchy<br />
of international treaties approved by the Mexican Senate over<br />
Federal Laws, clinical data protection in Mexico should in theory<br />
be strictly subject to either of the following two legal international<br />
dispositions: the North American Free Trade Agreement (NAFTA)<br />
and Trade-Related Aspects of IP Rights (TRIPS) Agreement.<br />
Indeed, these are back by further local legislation, including the<br />
Mexican IP Law, Mexican Health Law, Mexican Health Products<br />
Regulations, and the Mexican General Health Law Regulations for<br />
Health Researching.<br />
On the one hand, while the Mexican IP Law establishes that<br />
undisclosed information in an application for marketing authorisation<br />
shall be regarded as a trade secret, it also states that information<br />
submitted in order to obtain an authorisation to produce or market<br />
chemical products shall be protected according to the international<br />
treaties to which Mexico is a signatory.<br />
On the other hand, as part of these two treaties, a minimum fiveyear<br />
term of indirect reliance on data protection/exclusivity would<br />
be expected to circumvent prejudicial commercial use of the<br />
confidential information made available by the innovator to the<br />
local sanitary regulatory authority, COFEPRIS.<br />
However, there are no provisions in any of the local Mexican<br />
regulations containing a ‘non-reliance’ period as established in<br />
international treaties such as NAFTA and TRIPS. This means that<br />
during a data exclusivity period, the innovator’s pre-clinical and<br />
clinical trials data should not be referenced in the regulatory filings<br />
57<br />
”<br />
of another company (typically a generic company) for the same<br />
drug substance.<br />
Soledad Betanzos-Lara, Lawyer, Goodrich, Riquelme y Asociados<br />
This period, according to Article 1711 of NAFTA, shall begin from<br />
the date on which the marketing authorisation is granted to the<br />
requesting party. NAFTA’s wording is subject to interpretation<br />
as regards to a reliance on the product safety and efficacy data<br />
contained in the dossier, because Section 6 of Article 1711 reads:<br />
“Each party shall provide that for data subject to Paragraph 5 that<br />
are submitted to the party after the date of entry into force of this<br />
agreement, no person other than the person that submitted them<br />
may, without the latter’s permission, rely on such data in support<br />
of an application for product approval during a reasonable period<br />
of time after their submission.<br />
For this purpose, a reasonable period shall normally mean no less<br />
than five years from the date on which the party granted approval<br />
to the person that produced the data for approval to market its<br />
product, taking account of the nature of the data and the person’s<br />
efforts and expenditures in producing them. Subject to this<br />
provision, there shall be no limitation on any party to implement<br />
abbreviated approval procedures for such products on the basis of<br />
bioequivalence and bioavailability studies.”<br />
In an attempt to provide for this missing link, in 2012, COFEPRIS<br />
published on its website a memorandum providing guidelines<br />
for observing the absent regulatory data package exclusivity<br />
agreement. These guidelines were drafted with the intention to be<br />
in line with the minimum time term set by NAFTA and advise that<br />
a marketing authorisation holder will have a five-year exclusive<br />
right, during which its clinical-related information cannot benefit<br />
or be used to support a third-party application for registration of<br />
a generic drug. Nevertheless, generic companies are invited to<br />
provide their own standard clinical trials to obtain the corresponding<br />
marketing authorisation if they so wish.<br />
Theoretically, this sounds very promising. Practically, not<br />
much has been achieved: not a single relevant case in Mexico<br />
entreating international data protection treaties has been filed<br />
as of today.<br />
Mexico has accomplished enormous advances in this respect,<br />
although there are still some evident loopholes in the Mexican<br />
legislation regarding IP rights and clinical data protection framed in<br />
the scope of sanitary regulatory affairs. Considering the imminent<br />
global tendency towards stronger and harmonised IP protection,<br />
Mexico will have to make its legislation fit. IPPro
a break between the law and commercial reality?<br />
Experts from Christodoulos G. Vassiliades & Co. LLC examine the ways in<br />
which Europe and the UK have recently approached shape trademarks
Cadbury’s opposition to the decision of the UK Intellectual Property<br />
Office (IPO) to accept the registration of Kit Kat’s shape as a<br />
trademark was seen, by many, as the cherry on top of a war without<br />
a herald, especially following the opposition by Nestlé of Cadbury’s<br />
application to register its Dairy Milk colour, purple, back in 2014.<br />
But following a series of decisions, beginning with the one from the<br />
UK IPO and leading up to a referral by Justice Richard Arnold to<br />
the Court of Justice of the EU (CJEU), it seems that this is more<br />
than a mere feud between chocolate giants. The courts seem be<br />
making a bold statement about registering shapes as trademarks,<br />
thereby clarifying that although the same criteria apply, the extent<br />
of their application differs. This is in line with a more general trend<br />
towards giving applicants of shape trademarks a “harder time”<br />
when applying for such registrations.<br />
Indeed, it can be argued that the decisions reached so far were<br />
taken (as far as distinctiveness is concerned) because of Nestlé’s<br />
inability to present palpable evidence that the Kit Kat’s shape<br />
(without the word mark) has been sufficiently branded, advertised<br />
and recognised among the relevant public.<br />
Nonetheless, it seems that the landmark principle that this case<br />
establishes is the extension of Article 3(1)(e)(ii), specifically the<br />
term ‘technical result’, beyond the function of the goods to the<br />
manner in which they are manufactured.<br />
On 8 July 2010, Nestlé submitted an application to the UK IPO<br />
for the registration of its four-finger shape as a trademark. The<br />
application, which was only considered on absolute grounds, was<br />
accepted ex-officio.<br />
Cadbury opposed the decision of the UK IPO by arguing the<br />
following, which may be divided into two main grounds:<br />
• Ground one: Article 3 (1) (b), (c) and (d) of the Directive<br />
2008/95/EC; and a lack of acquired distinctiveness as per<br />
Article 3(3).<br />
• Ground two: Article 3(1)(e)(i); and/or Article 3(1) (e) (ii).<br />
Both parties presented expert evidence in support of their<br />
arguments. Seemingly, the most contributive of these experts<br />
were: the senior project engineer for Cadbury, Mark Robertson,<br />
and Philip Malivoire for Nestlé, who was responsible for the two<br />
surveys conducted in 2007 and 2012, respectively, on behalf<br />
of Nestlé.<br />
Robertson said there are two main means of producing<br />
confectionary: enrobing and moulding. He rejected enrobing as<br />
a means of achieving Kit Kat’s shape on the basis that it “does<br />
not provide a sufficiently strong base or attachments between the<br />
individual fingers”.<br />
He then proceeded to explain that the release of chocolate moulded<br />
products required sloping sides with minimum angle of 8 to 10<br />
degrees (Kit Kat having a 14 degrees angle). He also explained<br />
that the grooves indicated to the consumer where to break the<br />
bars. It was, nonetheless, submitted on cross-examination that the<br />
initial concept of a new product is produced by the marketing team.<br />
Robertson was found by the IPO as a credible and honest witness,<br />
with the latter adding considerable substance to his submissions.<br />
59<br />
ShapeMarks<br />
The fact that almost the entire shape of Kit Kat was explained<br />
in simple technical terms was a blow on Kit Kat’s case, at least<br />
in relation to the second ground. As far as the first ground is<br />
concerned, the blow came from Nestlé itself.<br />
Malivoire conducted two surveys for Nestlé; one in 2007 and the<br />
other in 2012. The first survey was found as non-compliant with<br />
the criteria set out by the court in recognising such surveys. The<br />
most important factor for non-compliance was the high degree<br />
of speculation in which the person answering the question<br />
embarked upon.<br />
The second survey was accepted as evidence. It showed at least<br />
half of the respondents recognised Kit Kat’s shape.<br />
However, neither this nor the fact that Nestlé heavily invested in<br />
promoting the product, assisted Nestlé’s case, and justifiably so.<br />
“<br />
The ground<br />
of acquired distinctiveness<br />
suffered a big blow, which<br />
Nestlé could have avoided<br />
in commercial terms,<br />
if the commercialisation<br />
and the branding and<br />
marketing strategy<br />
for Kit Kat was more<br />
consistent throughout<br />
the years and more<br />
in line with their ultimate<br />
purpose, namely that of the<br />
registration of Kit Kat as a<br />
shape mark<br />
”<br />
Christodoulos Vassiliades, Managing partner, Christodoulos G. Vassiliades & Co. LLC
ShapeMarks<br />
Especially as far as Kit Kat’s branding is concerned (in relation to<br />
the four-finger shape), the same could not be proved in numbers.<br />
Nestlé was only able to provide that between the years of 1996 and<br />
2007, it spent between £3 and £11 million per annum promoting<br />
the Kit Kat product in the UK alone—most of which was directed<br />
toward the four-finger version.<br />
However, presented with the relevant evidence, the examiner could<br />
not identify the shape mark that was the subject of the application.<br />
Further, between 2008 and 2010, Nestlé spent between £850,000<br />
and £4.4 million in promoting the products, again without being<br />
able to determine the percentage of that expenditure dedicated<br />
in the promotion of the shape in question (2010 being the year in<br />
which Nestlé applied for registration of the shape trademark).<br />
Although it remained indisputable that the market share of Kit Kat<br />
was between 1 and 2 percent of the chocolate market during that<br />
period (a percentage, which, if taken in context, is considerably<br />
high), the ground of acquired distinctiveness suffered a big blow,<br />
which Nestlé could have avoided in commercial terms, if the<br />
commercialisation and the branding and marketing strategy for Kit<br />
Kat was more consistent throughout the years and more in line with<br />
their ultimate purpose, namely that of the registration of Kit Kat as<br />
a shape mark.<br />
Justice Arnold, although clearly in favour of the decision of the<br />
UK IPO, seemed eager to clarify three main questions, which he<br />
referred to the CJEU:<br />
• In order to establish that a trademark has acquired a distinctive<br />
character following the use that had been made of it within<br />
the meaning of Article 3(3) of the directive, is it sufficient<br />
for the applicant for registration to prove that at the relevant<br />
date, a significant proportion of the relevant class of persons<br />
recognise the mark and associate it with the applicant’s goods<br />
in the sense that, if they were to be asked who marketed the<br />
goods bearing that mark, they would identify the applicant; or<br />
must the applicant provide that a significant proportion of the<br />
relevant class of persons rely upon the mark (as opposed to<br />
any other trademarks that may also be present) as indicating<br />
the origin of the goods?<br />
• Where a shape consists of three essential features, one of<br />
which results from the nature of the goods themselves and<br />
two of which are necessary to obtain a technical result, is<br />
registration of that shape as a trademark precluded by Article<br />
3(1)(e)(i) and/or (ii) of the directive?<br />
• Should Article 3(1)(e)(ii) of the directive be interpreted as<br />
precluding registration of shapes that are necessary to obtain<br />
a technical result with regard to the manner in which the<br />
goods are manufactured as opposed to the manner in which<br />
the goods function?<br />
The UK IPO based its decision on the strict letter of the law,<br />
therefore deciding that Kit Kat’s shape could not be registered due<br />
to both grounds: the first, because acquired distinctiveness could<br />
not be proved; and the second, because the shape of Kit Kat was<br />
dictated by the natural shape of the goods and by the technical<br />
results it produced (although the registration for the shape mark in<br />
relation to cakes and pastries was accepted).<br />
60<br />
As with the previous decisions on this matter the advocate<br />
general’s opinion on the first question was clear: “The function of<br />
a trademark is an essential element of its distinctive character.”<br />
Therefore, it is not enough to associate a shape mark with another<br />
trademark of the same trade origin. The shape mark needs to be<br />
able to function as a trademark, ie, lead the consumer straight to
ShapeMarks<br />
the trade origin and not to another trademark (in this case, to the<br />
word mark Kit Kat).<br />
This, as the very essence of trademark law, seems to have been<br />
applied in a very firm manner. The advocate general’s application<br />
of this principle to combined trademarks and to trademarks existing<br />
in conjunction with other trademarks was stated as follows:<br />
trademarks that are used in combination or in conjunction with<br />
other trademarks—and have acquired distinctiveness as a result—<br />
may be individually registered, provided that they are capable<br />
of functioning as a trademark (individually), ie, are capable of<br />
distinguishing the goods of one undertaking from those of another<br />
and therefore used as a batch of origin (which was essentially a<br />
reinstatement of advocate general Juliane Kokott’s opinion in<br />
Nestlé (C-353/03)). After all, the decision does not deviate from the<br />
common standard practices, namely that despite the many functions<br />
of a trademark, the only function that is officially recognised is the<br />
denotation of origin. Nonetheless, in a commercial context applied<br />
specifically to the merits of this case, one could argue differently.<br />
The overall impression drawn by the decisions mentioned above<br />
is that the shape mark was or could easily be associated with<br />
Kit Kat, albeit not directly with Nestlé. However, for a chocolate<br />
giant such as Nestlé, which holds 1 to 2 percent of the chocolate<br />
market in the UK, the association of Kit Kat with Nestlé, and as<br />
a result, the shape mark with Nestlé, cannot be but a simple<br />
mathematical equation.<br />
In light of the above, one would wonder whether the strict<br />
application of the letter of the law was intentional or due to a<br />
number of contributing factors: the first being the lack of supporting<br />
evidence in relation to distinctiveness, and the second, the need to<br />
make sure that shapes are limited to design protection (which, after<br />
all, is only limited to 25 years of protection).<br />
If the first ground is taken in isolation, and considering the bold<br />
example of the Coca-Cola bottle, one could argue that commercial<br />
considerations do step in, or are at least considered along with<br />
legal as well as policy considerations in finding distinctiveness<br />
(provided that such commercial considerations are well supported,<br />
which was not the case here). But if this case is perceived in its real<br />
context, Article 3(1) (e)(i) and (ii) seem to have been the main factors<br />
used to determine the outcome.<br />
The advocate general here found that two grounds, namely shapes<br />
dictated by the nature of the goods and shapes that are necessary<br />
to obtain a technical result, cannot be applied cumulatively,<br />
although they can be applied separately to the same mark.<br />
As far as the nature of the goods is concerned, the advocate general<br />
clarified that Article 3(1)(e)(ii) is not and should not be limited to the Lego<br />
(C-48/09) and Philips v Remington cases (C-299/99).<br />
Rather, the interpretation approach adopted was purposive<br />
rather than literal meaning that the public interest behind this<br />
provision dictates that a technical result could result from both:<br />
the function of the goods as well as the manner in which these are<br />
manufactured. So long as any one of these is applied, the shape<br />
mark should not be registered.<br />
As a result of the application of both grounds:<br />
• The basic rectangular slab was held to fall within Article<br />
3(1(e)(i);<br />
• The presence of breaking grooves was held to fall within<br />
Article 3(1)(e)(ii);<br />
• An angle of more than 8 to 10 degrees fell within Article 3(1)<br />
(e)(i) and the depth of the same within Article 3(1)(e)(ii); and<br />
• The number of breaking grooves and fingers was held as<br />
been determined by the desired portion size.<br />
Therefore, in contrast to the acquired distinctiveness ground,<br />
the first ground serves as an important public interest function.<br />
It prohibits the protection of technical solutions or functional<br />
characteristics, which would and should normally be protected<br />
under patents or designs, and for whatever reason they<br />
cannot, from being protected as trademarks (exclusively and<br />
permanently). Further, it provides a ‘fair trade’ defence to<br />
competitors in the sense that it protects competitors from being<br />
deprived of technical solutions that the consumer may seek or<br />
demand to see in their products.<br />
Admittedly, the opinion of the advocate general was expected<br />
and, as with the rest of the decisions on this matter, is well<br />
supported. Now it remains to be seen whether or not the CJEU<br />
will follow the leads of the preceding judgements, although it is<br />
highly unlikely that the EU’s highest court or the national court<br />
will rule to the contrary. IPPro<br />
“<br />
It provides a ‘fair trade’ defence to<br />
competitors in the sense that it protects them from<br />
being deprived of technical solutions that the consumer<br />
may seek or demand to see in their products<br />
”<br />
Ourania Vrondou, Advocate and head of intellectual property department,<br />
Christodoulos G. Vassiliades & Co. LLC<br />
61
AfricaTrademarks<br />
OAPI: effective trademark protection<br />
Vanessa Halle of Nico Halle & Co Law Firm offers some useful tips<br />
for brands protecting and enforcing their trademark rights in Africa<br />
With the marked increase in trademark registrations at the African<br />
Intellectual Property Organization (commonly known by its French<br />
acronym OAPI), one can assume that most brand owners are<br />
aware of the importance of protecting their trademarks.<br />
OAPI is an organisation comprised of 17 member states: Benin,<br />
Burkina Faso, Cameroon, the Central African Republic, Chad,<br />
Comoros Islands, Congo Brazzaville, Cote d’Ivoire, Equatorial<br />
Guinea, Gabon, Guinea Bissau, Guinea Conakry, Mali, Mauritania,<br />
Niger, Senegal, and Togo.<br />
An application filed at OAPI is protected in all 17 member states.<br />
Once filed at OAPI, a brand owner has the exclusive right to exploit<br />
its trademark, as well as prevent third parties from making use of<br />
identical or similar trademarks for similar goods or services without<br />
authorisation. The maintenance and protection of a trademark can<br />
take multiple forms.<br />
Renewals and related procedures<br />
The main form of maintaining a trademark is by renewal. A<br />
trademark is valid for 10 years from the filing date, and is preserved<br />
indefinitely through successive renewals done every 10 years.<br />
When the trademark is not renewed within the 10-year deadline, it<br />
can be renewed within a six-month grace period.<br />
If this six-month period elapses and the trademark has still not been<br />
renewed as a result of circumstances beyond the control of the<br />
brand owner, there is a final opportunity to restore the trademark,<br />
62<br />
through a process known as ‘restoration’. This procedure must be<br />
brought within six months of the grace period elapsing, and no<br />
later than two years of the renewal date.<br />
As per Article 21(6) of Annex 3 of the Revised Bangui Agreement<br />
(RBA), where a mark has not been renewed, it can only be registered<br />
for the benefit of a third party in respect of identical or similar goods<br />
or services when three years from the renewal date have elapsed.<br />
However, note Article 25(4) of Annex 3 of the RBA, which further<br />
states that third parties that start to use the mark after it has not<br />
been renewed will have the right to continue doing so.<br />
With these two seemingly paradoxical articles, brand owners are<br />
encouraged to renew their trademarks within the deadline, rather<br />
than delay and renew during the grace period or via restoration.<br />
This is because allowing the trademark to lapse creates loopholes<br />
for infringers to exploit, as they have the option to simply use the<br />
trademark, rather than register.<br />
Opposition actions<br />
Upon registration of a trademark, it is published in the OAPI<br />
official bulletin. An opposition action must be brought within six<br />
months of this date. This option allows a brand owner to oppose<br />
the registration of a mark that is similar or identical to its own and<br />
relates to the same goods or services, where such a similarity is<br />
liable to mislead or confuse the public.
AfricaTrademarks<br />
Any brand owner wishing to effectively protect its trademark<br />
using this route should retain a reliable and professional watch<br />
service to monitor the registry and inform on any similar and or<br />
identical trademarks.<br />
This could be seen by some as an average means of protection<br />
at OAPI because it does not reject trademarks on grounds of<br />
similarity—an interested party must oppose the trademark.<br />
Furthermore, an applicant can commence commercialisation of a<br />
trademark immediately upon filing at OAPI.<br />
When the timeframe from filing, registration, and eventual<br />
publication is taken into account, a period of at least two years<br />
can be envisaged. Also, during an opposition proceeding, the<br />
applicant of the allegedly infringing trademark has the right to<br />
continue exploitation until a decision is issued by OAPI cancelling<br />
the disputed trademark.<br />
In order for an infringement seizure to be effective, brand owners<br />
are advised to seize at the port of entry, ie, before the articles are<br />
disseminated into the market.<br />
Once the infringing products are circulated further in the territory<br />
or sent to other member states, it becomes more complicated<br />
and costly to monitor and bring infringement actions in several<br />
member states.<br />
It is therefore important to deal with these matters in a timely and<br />
prompt manner, as well as retain a reliable and diligent lawyer in<br />
the relevant member state to guide and assist during the seizure<br />
proceedings. IPPro<br />
It could be validly argued that the allegedly infringing party will<br />
have had at least two years to exploit the disputed trademark, to<br />
the detriment of the brand owner.<br />
Cancellation action<br />
Cancellation actions can be brought before the civil court, when a<br />
registered mark has not been used on the territory of at least one<br />
OAPI member state for an uninterrupted period of five years.<br />
One important aspect of the OAPI system is that use of a brand in<br />
at least one OAPI member state satisfies the requirement of use.<br />
Brand owners are therefore not compelled to exploit their brands in<br />
all the 17 member states.<br />
The burden of proof regarding use of a mark rests with the owner<br />
of a mark, and use by another person shall be recognised as use,<br />
subject to endorsement by the owner. Note that for use by another<br />
party to be enforceable in OAPI, it has to be recorded in the special<br />
register of marks.<br />
Invalidity action<br />
Invalidity actions are brought before the civil courts at the request<br />
either of the Office of Public Prosecution, or any interested party.<br />
The grounds for bringing this action are the same as that required<br />
for an opposition action (before OAPI). The only difference seems<br />
to be the absence of the requirement to bring the action within six<br />
months of the publication date in the OAPI official bulletin. The<br />
presumption of lengthy trials before the civil courts of the member<br />
states sometimes deters brand owners from using this route.<br />
It is therefore advised that in order to avoid going through the<br />
courts, brand owners should use a professional monitoring service<br />
to reliably and promptly inform them when a similar or identical<br />
trademark is published, so that an action can be brought before<br />
OAPI (as an opposition action), which though lengthy is relatively<br />
faster than court.<br />
Infringement action<br />
Infringement proceedings are brought by the brand owner before<br />
the civil courts and judged as summary proceedings. Note that for<br />
infringement seizure, security is always required of foreigners.<br />
63<br />
“<br />
One important<br />
aspect of the OAPI system<br />
is that use of a brand in<br />
at least one OAPI<br />
member state satisfies the<br />
requirement of use.<br />
Brand owners are<br />
therefore not compelled<br />
to exploit their<br />
brands in all the 17<br />
member states<br />
”<br />
Vanessa Halle, Director, intellectual property, Nico Halle & Co Law Firm
NigeriaPerspective<br />
Closing borders to fakers and pirates<br />
Amaka Okafor of Stillwaters Law outlines the importance of an<br />
effective border control regime to fighting counterfeiting and piracy<br />
Counterfeiting and piracy are presently acknowledged as great global<br />
threats to creativity. Counterfeiting is the act of unlawfully imitating<br />
or reproducing items/works protected by the law of trademarks,<br />
patents, or copyright, while portraying them as originals. This is<br />
usually represented in goods illegally bearing registered/wellknown<br />
trademarks. Piracy, on the other hand, is the unauthorised<br />
reproduction and distribution of such protected items/works without<br />
necessarily representing them as original. This is more common in<br />
copyrighted works, for example, the reproduction and sale of books<br />
or CDs containing video recordings.<br />
64<br />
Nigeria, like many other states, has various laws and regulatory<br />
measures against counterfeiting. Nevertheless, this illegal trade<br />
has not only grown over the years but has metamorphosed into a<br />
formidable, sophisticated, and largely ignored sector. For instance in<br />
Nigeria, pirated items are presently being sold openly on the streets.<br />
The International Federation of Phonographic Industry (IFPI), upon<br />
research conducted in 10 individual music markets including the UK,<br />
Germany, and the US, reported that approximately 20 billion songs<br />
were illegally downloaded in 2005. On 19 and 21 March 2015, it
NigeriaPerspective<br />
Due to the transnational nature of counterfeiting, one of the most<br />
effective ways to control it is to employ an effective border control<br />
measure to prevent the importation and circulation of these counterfeits.<br />
Enforcement of IP at Nigeria’s international borders is undertaken by<br />
several regulatory bodies which include: the National Agency for Food<br />
and Drug Administration and Control (NAFDAC), Nigerian Customs<br />
Service (NCS), Standards Organization of Nigeria and the Nigerian<br />
Copyright Commission. These bodies are governed by various national<br />
and international laws/treaties and they include: the Customs and Excise<br />
Management (Disposal of Goods) Act (CEMA); the Trade Related<br />
Aspects of IP Agreement popularly referred as the TRIPS Agreement;<br />
and the Paris Convention for the Protection of Industrial Property.<br />
The TRIPS Agreement<br />
The TRIPS Agreement was established primarily to address the<br />
insufficiency of the international IP enforcement regime. A significant<br />
innovation of this agreement is the introduction of border measures.<br />
The agreement allowed genuine manufacturers or right holders,<br />
reasonably suspecting the importation or exportation of pirated/<br />
counterfeited versions of their works, to make applications to the<br />
appropriate authorities (administrative or judicial) for the seizure of<br />
such counterfeits at borders by customs officials.<br />
Nigerian Customs Service and other agencies<br />
Customs is principally the ‘gatekeeper’ of every nation. Being the<br />
agency in charge of all goods entering, transiting and leaving the country<br />
through the international borders, its role in combating smuggling, and<br />
more specifically, counterfeiting, can never be overemphasised.<br />
was recorded that US Customs and Border Protection (CBP) officers<br />
seized more than $430,000 of counterfeit perfumes at the Champlain<br />
Port of Entry and $65,200 dollars in fake $100 bills coming from<br />
Ecuador at John F. Kennedy International Airport. More recently, on<br />
17 July 2015, it was reported that CBP officers seized more than<br />
1,100 pieces of fake designer jewellry valued at approximately<br />
$562,729 (manufacturer’s suggested retail price) at the port of<br />
Louisville, Kentucky. The Business Action to Stop Counterfeiting and<br />
Piracy (BASCAP) has estimated the value of these illegal trades to<br />
be globally worth $1.7 trillion.<br />
It is therefore incontrovertible that counterfeiting is a global issue.<br />
However, what is worrisome is that Nigeria has become a dumping<br />
ground for counterfeit goods and a safe haven for perpetrators of<br />
this vice, a situation that can largely be attributed to the lack of<br />
sensitisation and weakness of the Nigerian intellectual property<br />
enforcement regime.<br />
65<br />
In discharging this function the Nigerian Customs Service (NCS) has<br />
an enforcement, investigation, inspection, and intelligence department,<br />
which, among others, organises all anti-smuggling measures at<br />
international borders. It should be noted that irrespective of the NCS’s<br />
corroboration with various agencies in this regard (as will be examined<br />
shortly), the service performs the lead role.<br />
The NCS sets out various guidelines to assist in implementing its mandate.<br />
In 2010, the Presidential Task Force for 100% Inspection was established<br />
to prevent the importation of contraband goods and ensure the complete<br />
inspection of all consignments selected for physical examination. It<br />
involves a strategy where inspections are intensified on consignments<br />
with more tendencies to default, than on every shipment.<br />
The NCS has additionally established an independent unit, the Customs<br />
Intelligence Unit (CIU), with trained officials who are responsible for<br />
obtaining and gathering information necessary to combat counterfeiting<br />
and piracy.<br />
A very significant development is the NCS’s partnership with other<br />
federal agencies such as the Standards Organization of Nigeria (SON),<br />
National Agency for Food and Drugs Administration and Control<br />
(NAFDAC), National Drug Law Enforcement Agency (NDLEA) and<br />
Nigeria Copyright Commission (NCC), in carrying out joint inspection<br />
of cargo at borders.<br />
For instance, it was reported in 2012 that with the combined efforts<br />
of the NCC and NCS, 13 containers stacked with pirated items were<br />
confiscated at different seaports in Nigeria. Similarly in January 2015,<br />
it was reported that more than 19 containers, containing counterfeit
NigeriaPerspective<br />
pharmaceutical and medical products, worth more than N 270 million<br />
($13.5 million) were impounded at the Apapa Ports in Lagos, Nigeria,<br />
by NAFDAC officials along with the NCS.<br />
Challenges in the border control regime<br />
The various strategies employed to prevent the importation of<br />
counterfeits seem insufficient in light of the prevailing circumstances.<br />
Some of the key challenges encountered in the enforcement of these<br />
measures are worthy of mention.<br />
instance, at the just concluded World IP Day seminar (April 2015)<br />
sponsored and widely publicised by the IP Committee of the Section<br />
of Business Law branch of the Nigerian Bar Association, where<br />
information and knowledge about IP protection is shared, only a few<br />
rights holders were present<br />
The fight against counterfeiting is largely multifaceted with border<br />
control being just one arm. Still, it is more effective to seize a<br />
consignment of counterfeit or pirated goods at borders or in transit<br />
than after circulation of the goods in the market. Providing a successful<br />
“<br />
An improved coordinated border management scheme<br />
is highly recommended between the relevant agencies to<br />
improve communication and facilitate more efficient risk<br />
management procedures<br />
”<br />
Amaka Okafor, Associate, Stillwaters Law<br />
Low integrity among the staff of most of the key agencies involved in<br />
this process is one of the greatest challenges faced in the enforcement<br />
of border measures. Integrity is not only limited to bribery and corruption<br />
but also includes the inefficacy of the services provided. This has<br />
resulted in the loss of public trust, non-compliance by stakeholders,<br />
unnecessary obstacles in the supposedly normal processes, loss of<br />
trade and investment, consequential revenue loss, and much more.<br />
The NCS also presently operates under the CEMA, which is<br />
largely outdated and fails to provide adequate legal frameworks<br />
for the discharge of its functions. There is no legal basis for the<br />
implementation of major international agreements to which Nigeria<br />
is a signatory. Unlike Nigeria, states such as Australia, Canada, New<br />
Zealand, South Korea, Switzerland, Turkey, South Africa, Indonesia<br />
and the US have included similar provisions in their substantive IP<br />
laws and/or have enacted special laws, too. The Canadian Combating<br />
Counterfeit Products Act and the South African Counterfeit Goods Act<br />
are a few examples in this regard.<br />
As a result, modern techniques and enforcement procedures such as<br />
the TRIPS Agreement provisions on border measures, which have<br />
gained tremendous success internationally, have not been effectively<br />
implemented in Nigeria.<br />
The collaboration of the NCS with other federal agencies is unarguably<br />
very beneficial for the purpose. However, this strategy has been heavily<br />
criticised for amounting to a needless duplication of process, resulting in<br />
unnecessary delays and a reduction in the efficiency of these agencies.<br />
The ignorance and/or unwillingness of rights holders to enforce their<br />
IP and explore available remedies are also part of the problem. For<br />
66<br />
border control system would go a long way to curbing counterfeiting<br />
and piracy as the large number of counterfeits currently being flooded<br />
into the country would be contained.<br />
To achieve this, the gaps in the present border control regime must<br />
be addressed. There is an eminent need for: an overhaul of the<br />
current NCS legislation; an improvement in the funding and training<br />
of the relevant agencies and their officers; provision of regulatory<br />
and supervisory measures to checkmate corruption and integrity<br />
issues; the creation of massive public awareness campaigns on the<br />
dangers of piracy and counterfeiting, the existence of IPRs as well<br />
as the remedies and enforcement measures available; adequate<br />
sensitisation of stakeholders such as the officers of the relevant<br />
agencies; and the adoption of the single window system, which<br />
requires customers to deal with a single agency at customs rather<br />
than different agencies, to curb unnecessary delays.<br />
In the alternative, an improved coordinated border management scheme<br />
is highly recommended between the relevant agencies to improve<br />
communication and facilitate more efficient risk management procedures.<br />
The importance of coordination of border control measures in this regard<br />
can never be overemphasised. Nevertheless, this strategy is more likely<br />
to succeed if it goes beyond federal agencies to include other relevant<br />
stakeholders such as manufacturers, right holders, exporters, importers,<br />
carriers, and so on.<br />
Such coordination, if achieved, will go a long way to addressing most<br />
of the hiccups encountered in the present regime and ultimately<br />
strengthening Nigeria’s stance in combating counterfeiting and the<br />
importation of pirated materials. IPPro
PROTECTING GREAT IDEAS<br />
AROUND THE WORLD<br />
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www.zacco.com
TurkishTrademarks<br />
Game-changing decisions on trademarks continue<br />
The Turkish Constitution and trademark law are at odds, but the courts are<br />
making attempts to clear up the disputes, says Oktay Simsek of Destek Patent<br />
The Constitutional Court has recently cancelled two important<br />
provisions of Trademark Decree Law No 556, which was issued in<br />
1995 and governs trademarks in Turkey, because terms prescribed<br />
in two of its articles violate the property rights of the individuals.<br />
The recent decisions of the Constitutional Court (2015/49 and<br />
2015/46), which were issued in May 2015, in respect of freedom of<br />
conscience and religion, property rights and freedom of expression<br />
issues, are quite resounding and have a direct and substantive<br />
impact on the lives of individuals and society. Intellectual<br />
and industrial property rights have been also affected by the<br />
Constitutional Court’s approach.<br />
The first case is related to assignment matters. In Turkey, it was<br />
previously not possible for rights holders to assign one trademark<br />
while keeping other identical or confusingly similar trademarks.<br />
The Turkish Patent Institute would invite the assignor to assign<br />
its other identical or confusingly similar trademarks within two<br />
months to make it possible to record the assignment in the<br />
trademark registry.<br />
That is based on the principle of single ownership of a trademark<br />
in Turkish practice. Essentially, it was not possible to for two<br />
68<br />
identical or confusingly similar trademarks to be recorded in the<br />
registry under different owners. According to Article 16(5) of the<br />
Trademark Decree Law No 556: “While a registered trademark<br />
being transferred, if the same holder holds another identical<br />
or confusingly similar trademark registration for identical or<br />
confusingly similar goods and services such, as to mislead the<br />
public, those trademarks should be also transferred.”<br />
The first case was brought by the Ankara Third Court of Intellectual<br />
and Industrial Property Rights on the following observations:<br />
• Property rights and basic rights and freedoms cannot be<br />
the subject of decree laws in the Turkish Constitution, and<br />
this is a matter for trademark rights, which are a kind of<br />
property right.<br />
• The limits of Article 16(5) are not clear, objective or<br />
equally applicable.<br />
• The article has a function surpassing its aim (ratio logic) since<br />
it grants large power to Turkish Patent Institute on a relative<br />
matter, namely deciding on the similarities of the goods and<br />
services, which means an interference with the rights for the<br />
freedom of contract.<br />
• The article is in conflict with basic rights and freedoms and the<br />
free market economy, since the state authority is overruled on
TurkishTrademarks<br />
the decision to whom a trademark will be granted or assigned.<br />
• The subject matter is not prescribed in the contemporary<br />
trademark law and EU Trademark Directive, a reference<br />
source for the present decree law while it was being drafted,<br />
do not comprise a limitation of this kind.<br />
• The currently applied single ownership principle in the<br />
trademark law is not in compliance with the modern trademark<br />
system and it remains ‘archaic’ since the registrability or<br />
assignability of a trademark is conferred on the public authority<br />
rather than on the trademark owner.<br />
This cancellation has opened a path for right holders to assign their<br />
rights for one or some of their trademarks while keeping others<br />
under their ownership.<br />
In Turkish trademark practice, a letter of consent, co-existence<br />
agreement or any other authorisation, is not allowed for registering<br />
an identical or confusingly similar trademark due to the single<br />
ownership principle. This hinges on Article 7(1)(b) of the same<br />
decree law, ie, any identical or confusingly similar trademark is<br />
not allowed for any identical or confusingly similar goods by the<br />
Turkish Patent Institute at the first instance of examination.<br />
The cancellation of Article 16(5) has made it possible to overcome<br />
provisional refusals by way of the ‘assign and assign-back strategy’.<br />
In other words, the party affected by the provisional refusal can,<br />
for awhile, have the rights of the trademarks indicated as grounds<br />
for refusal based on the agreement and assign them back after<br />
registering its own trademark.<br />
In another case, the Constitutional Court has cancelled Paragraph<br />
1(i) of Article 7, which covers absolute grounds for refusal.<br />
Article 7(1)(i) states that a well-known mark within the meaning of<br />
Article 6 of the Paris Convention, unless authorised by its owner,<br />
are not allowed to be registered.<br />
Based on this, the Turkish Patent Institute would refuse applications<br />
for well-known marks from third parties.<br />
The case was brought to the agenda of the Constitution Court by the<br />
Ankara Third Court of Intellectual and Industrial Property Rights with a<br />
cancellation request with the following remarks:<br />
• Property rights and basic rights and freedoms cannot be the<br />
subject of decree laws in the Turkish Constitution and this is a<br />
matter for trademark rights, which are a kind of the property rights.<br />
• The article has a function surpassing its aim (ratio logic) since<br />
it grants large power to Turkish Patent Institute on a relative<br />
matter, namely deciding on the similarities of the goods and<br />
services, which means an interference with the rights for the<br />
freedom of contract.<br />
• Any examination under Article 7(1)(i) would be performed on<br />
the basis of the subjective view of the examiner in charge. A<br />
subjective approach cannot be accepted for absolute grounds<br />
and the matters are a subject of Article 8, where the relative<br />
grounds are considered after publication and in view of the<br />
observations and evidence provided by the parties.<br />
• Any ex-officio refusal under Article 7(1)(i) would damage the<br />
essence of the rights, exceed the limits, and restrict individual<br />
rights and freedoms in a democratic state.<br />
The Constitutional Court has discussed the matter, deciding that<br />
Article 7(1)(i) should be cancelled due to the fact that decree laws<br />
cannot restrict property rights according to the constitution.<br />
The Turkish Patent Institute has not applied Article 7(1)(i) in too<br />
many of its decisions until now. In any case, the Turkish Patent<br />
Institute will not refuse well-known trademarks on absolute<br />
grounds any longer.<br />
Well-known trademark holders should be more attentive about<br />
monitoring identical or confusingly similar trademarks to have a<br />
chance of filing oppositions within three months after publication.<br />
The cancellations of the provisions of the two articles in question<br />
have also started a debate on the destiny of Article 7(1)(b),<br />
which has been criticised for its subjective and obsolete nature<br />
in view of the requirements of the modern commercial life and<br />
freedom of contracts.<br />
Taking into account that the Constitutional Court has cancelled<br />
other articles of the decree law in the past, it appears that more<br />
articles will be under attack for cancellation in the near future.<br />
While the new draft trademark law has been pending in parliament<br />
since 2009, these recent rulings show how necessary it is to<br />
introduce it without further delay, so that uncertainties plaguing<br />
trademark matters can be clarified. IPPro<br />
“<br />
Well-known trademark holders<br />
should be more attentive about monitoring identical or<br />
confusingly similar trademarks to have a chance of<br />
filing oppositions within three months after publication<br />
”<br />
Oktay Simsek, Head of foreign affairs department, Destek Patent<br />
69
An interview with Hugo T Berkemeyer<br />
What is your firm’s background?<br />
Since its foundation in 1951, Berkemeyer Attorneys and<br />
Counselors from Paraguay has provided expert legal services to<br />
clients at an international and local level, gaining a global reputation for<br />
quality, expertise and professionalism. Our firm provides legal advice on<br />
virtually all areas of law.<br />
Our practice also comprises intellectual property: trademarks,<br />
patents, the life sciences, copyright protection, utility models,<br />
industrial models and designs, domain names, franchising,<br />
enforcement, unfair competition and civil law, IP litigation, and<br />
sanitary registrations.<br />
At Berkemeyer Attorneys and Counselors we pride ourselves<br />
on our ability to meet clients’ needs directly, providing<br />
professional and practical advice of the highest quality,<br />
employing teamwork and collaboration to render the services<br />
in a thorough yet timely manner.<br />
How long have you been using the Patricia® software?<br />
We implemented the Patricia® software in 2011.<br />
Which software did you use before and how does<br />
it compare?<br />
Patricia® replaced our in-house system which helps us in the daily<br />
work due to the functionalities that allow us to do way more than<br />
just docketing.<br />
One of the main messages about how Patricia® differs from typical<br />
‘docketing’ systems is how it is so much more than just docketing.<br />
Patricia® is a full practice management solution. Which other<br />
areas of your practice, in addition to docketing, does Patricia®<br />
help you with?<br />
As one of the largest and most prestigious law<br />
firms in South America, what number of active<br />
cases do you currently have in in your IP practice?<br />
Over 3,000 cases.<br />
What advice would you give to other large IP firms<br />
considering change?<br />
Regarding advice for other companies, Patricia® is recommended<br />
and useful for the daily internal work, especially related to the<br />
control of the processes.<br />
In what way is Patricia® fundamental to ensuring/<br />
assisting your ongoing business success and<br />
how is it capable of helping you to monitor and<br />
improve levels of service to clients?<br />
Patricia® helps us to perform better administration of the cases<br />
which leads to a better control of the processes, including the due<br />
dates of trademark and patent maintenance payments. It helps us<br />
to provide faster and efficient answers to our clients.<br />
Although a growing company, Patrix has been eager<br />
to ensure that we always remain approachable at<br />
all levels. How do you find interacting with the<br />
Patrix team, from support up to the owner level?<br />
The team always provide a fast response to any inquiries from<br />
our users, which is very important when they have any issues<br />
to resolve.<br />
If you could give us one sentence which<br />
encapsulates your understanding of Patrix and<br />
Patricia® and what it does for your business,<br />
what would it be?<br />
Patricia® replaced an in-house developed system which<br />
covered the basic needs regarding patents and trademarks. Its<br />
functionalities allowed us to improve and expand the offered<br />
services to our clients, and to improve the internal process as well.<br />
It enhanced the control of the processes step by step in attention<br />
to due dates, costs, invoicing, related documents, etc. and overall<br />
the ease of the system to follow.<br />
Good! Patricia® has become a very useful tool in the daily<br />
improvement of our work. It supports us in the control and<br />
optimisation of our available resources.<br />
Would you swap Patricia® for any other IP<br />
software?<br />
We would not swap Patrix/Patricia® for any other IP software.
Extended DMS<br />
When your needs for document management<br />
surpasses the functions featured in the standard<br />
Patricia® document tab, we are happy to offer you<br />
the Patricia® Extended DMS. Efficient document<br />
management made accessible.<br />
Focus<br />
Think of all the hours spent looking for the right documents.<br />
Now think about all the time you could save if search ing for information<br />
was swifter and handling your docu ments was more<br />
efficient. Discover the potential of Patricia® Extended DMS.<br />
Sophisticated search<br />
Patricia® Extended DMS features a full-text search function that<br />
allows you to search for content within each document – or<br />
across the entire case document tree. Scanned PDF images can<br />
be transformed into text, and added to the search index. This<br />
means you’re also able to find scanned PDF documents by searching<br />
for text they contain.<br />
powerful preview<br />
Bringing traditional case management into the digital world, the<br />
preview function lets you flick through documents and view their<br />
content – just like browsing through a physical case file. A quick<br />
and intuitive way of finding and reviewing case documents.<br />
Versioning<br />
Not only does this feature allow you to track previous versions of<br />
documents without needing to access backup systems, it also<br />
lets you see the difference between versions. Documents can include<br />
a history of which user edited the document and on what<br />
date.<br />
Work where you want to<br />
Offline Work Mode lets you work on case documents outside the<br />
office. You can synchronize a case document folder before leaving<br />
the office, and work on the documents while you’re away.<br />
Then, when your laptop next connects to the office network,<br />
the Patricia® Extended DMS automatically synchronizes any local<br />
changes as a new version of the document to the server.<br />
>> Find your document fast, see what it contains and compare it<br />
to other versions. Take complete control of your case documents<br />
with Patricia® Extended DMS.
Black Knight Media<br />
www.blackknightmedialtd.com<br />
Tired of keeping these turning on your own?<br />
So are we<br />
To find out more about IPPro Connects, contact: carlosnorthon@ipprotheinternet.com
FirmProfiles<br />
Company description<br />
101domain, Inc<br />
Tel: +1 760 444 8674<br />
corporate@101domain.co<br />
www.101domain.co<br />
101domain is the trusted provider of corporate domain and brand protection services for many of the<br />
world’s leading organisations.<br />
With a broad service suite of management and detection solutions, domain strategy creation and acquisition<br />
experience, 101domain has succeeded in fortifying, securing, and expanding brand owners’ online<br />
presence for over 10 years.<br />
For corporations, navigating and managing the challenges of brand abuse and misuse on the internet can<br />
be a full-time effort. Trust 101domain to provide world-class support and expert guidance in minimising<br />
both the time and investment required to protect your online assets.<br />
73
FirmProfiles<br />
Company description<br />
bNamed.net<br />
Tel: +44 203 393 4858<br />
info@bnamed.net<br />
www.bNamed.net<br />
At bNamed.net, we feel that protecting your brand online shouldn’t cost you an arm and a leg. We<br />
offer a fusion between a normal domain registrar and a high-profile online brand protection service.<br />
Contrary to most brand protection services, we have normal end-user registration fees, but offer high-end<br />
professional support. We prefer a personal approach, so brand protection clients most often have their<br />
own account manager with us, but due to our clear focus on domain names, all our staff members have<br />
a thorough understanding of all of the ins and outs of domain name registrations.<br />
Founded in 1999, we have 16 years of experience in domain name registrations and we know the domain<br />
name market inside out. We offer every possible extension, and those that are otherwise hard to obtain.<br />
Next to every-day domain name registrations, we also offer advice on online brand protection and<br />
assist with purchasing a domain name or with gaining control over a domain name that’s infringing<br />
your trademark. When needed, we partner with a outside intellectual property firms to manage dispute<br />
resolution cases or other legal actions, but we can successfully solve most cases without having to<br />
involve expensive lawyers, which keeps your costs low.<br />
We assist with centralising and optimising domain name portfolios. Due to our experience and many local<br />
contacts, we can bypass local presence requirements in almost all countries with such strict registration<br />
conditions, making otherwise impossible registrations possible. And we know all of ins and outs of<br />
the different transfer procedures. If a transfer is stuck because the losing registrar, for example, isn’t<br />
cooperating, most often there are other ways of getting the transfer done.<br />
Company description<br />
Christodoulos G. Vassiliades & Co. LLC<br />
Tel: +357 22 55 66 77<br />
cgv@vasslaw.net<br />
www.vasslaw.com<br />
Christodoulos G. Vassiliades & Co. LLC is one of the leading law firms in Cyprus with expertise in<br />
corporate law, commercial law, trusts, mergers and acquisitions, and intellectual property law. Beyond the<br />
legal services offered, our firm also provides a full range of corporate administration and trust services.<br />
We are committed to professionalism and excellence in everything we do. We fully appreciate the<br />
diversity of legal and commercial needs clients have and are able to offer high standards of personalised<br />
advice in order to meet all our clients’ needs.<br />
The firm’s zeal towards innovation led to the founding of its IP department in 2008. Acknowledging the<br />
pivotal importance of protecting IP rights, we have established a team of enthusiastic IP experts, ready<br />
to assist with any type of right.<br />
Our key specialisations include community trademark services such as registration, renewals and<br />
oppositions, as well as international trademark services, namely registrations via the Madrid system.<br />
We pride ourselves in our effectiveness, efficiency and organisation, while recognising the need of our<br />
clients to remain ahead of important deadlines and obligations that constantly arise when maintaining<br />
IP rights.<br />
Our firm’s success in IP is to a great extent attributed to its circle of associates who share our passion for<br />
excellence, accuracy and promptness. This allows us to rely on and refer to them any matter requiring<br />
local counselling and representation. As a result, our firm may assist in any IP matter, not only confined<br />
within Cyprus and Europe but internationally as well.<br />
74
FirmProfiles<br />
Company description<br />
D Young & Co<br />
Tel: +44 (0)20 7269 8550<br />
mail@dyoung.com<br />
www.dyoung.com<br />
D Young & Co’s life sciences team is one of the leading intellectual property practices in Europe. Clients<br />
choose D Young & Co for IP services confident in the knowledge, experience and dedication that has<br />
characterised our work throughout our firm’s history.<br />
A depth of experience in all technical disciplines<br />
Attorneys in the life sciences team are highly qualified in a wide range of academic and technological fields,<br />
including biotechnology, chemistry, immunology, molecular biology, antibody technology, diagnostics,<br />
personalised medicine, stem cell technology, vaccines, food chemistry, optics, medical technology and<br />
pharmaceuticals. Many of our attorneys have practical experience working in academic environments, in<br />
the UK and European Patent Offices, and as in-house counsel for major companies. Our attorneys are<br />
able to use this experience to deliver strategic advice to clients, when and where it is required. A firm that<br />
is at the leading edge for patent prosecution.<br />
We are especially proud of our extensive experience before the EPO opposition division and technical<br />
boards of appeal. We regularly handle important and valuable contentious matters both for patentee<br />
and opponent, particularly in the fields of biotechnology, pharmaceuticals and petrochemicals. Clients<br />
value our commercial approach in guiding them through increasingly technical and complex regulation to<br />
ensure their IP rights are protected.<br />
A client base that is diverse and international<br />
D Young & Co has an enviable track record of working with academic and research institutions and<br />
spin outs, all of which have been at the forefront of innovation and life-changing discoveries. As well as<br />
servicing clients from all over the UK, we directly advise pharmaceutical, chemical and biotechnology<br />
companies across continental Europe, the US and Japan.<br />
A record that speaks for itself<br />
We are proud of the fact that D Young & Co is one of the very few IP firms to be ranked ‘top tier’ by all the<br />
independent major UK legal directories. These rankings are based on independent client feedback and<br />
this is what really counts.<br />
Company description<br />
Dennemeyer & Associates<br />
Tel: +352 27 6115 100<br />
info@dennemeyer-law.com<br />
www.dennemeyer.com<br />
Dennemeyer & Associates is the premier resource for global intellectual property law services—worldwide.<br />
For more than 50 years, Dennemeyer & Associates has been providing the full range of legal services<br />
relating to the core of your intellectual property management: your intellectual assets. Our lawyers offer<br />
world-class expertise in the following areas of IP law: patents, trademarks, designs, copyrights, domain<br />
names, IP contracts, licensing and recordals.<br />
Working in unison with Dennemeyer Group, a leading IP service provider, we offer a worldwide single point of<br />
contact for the full range of IP services, from legal services to comprehensive outsourcing solutions like portfolio<br />
services, cutting-edge software solutions, IP consulting, temporary staffing or full outsourcing of entire departments.<br />
Our main services include:<br />
Prosecution: searching, drafting applications (patents, utility models, designs, trademarks), monitoring third<br />
party applications, patent mapping, freedom-to-operate studies, filings, replies to office actions, translations,<br />
oppositions and appeals, European patent validations, grant and registration procedures, recordals, oral<br />
proceedings, intellectual property docketing, foreign filing and a web-based platform for PCT nationalisation,<br />
European patent validations and translations.<br />
Litigation: nullity actions, cancellation proceedings, court actions, counterfeits and cross-border action.<br />
Licensing law: licence contracts, coexistence agreements, copyrights.<br />
We have offices in seven countries: Luxembourg, Germany, the US, Japan, Poland, Romania and<br />
Australia. We have established a worldwide network of highly experienced professionals enabling us to<br />
cover almost all jurisdictions of the world in terms of prosecution and contentious work. We offer complete<br />
cost transparency and efficiency because we file and prosecute directly with many national patent and<br />
trademark offices.<br />
Our experts are qualified to work for you in the following technical and scientific fields, among many others:<br />
biochemistry, chemistry, pharmaceuticals, electrical engineering, electronics, mechanical engineering, IT and<br />
telecommunications. Whatever your industry, we are able to provide support in all technical areas and we<br />
continue to expand our service offerings, adapting to customers’ needs and providing cost-efficient solutions.<br />
75
FirmProfiles<br />
Company description<br />
Destek Patent<br />
Tel: +90 224 270 6600<br />
global@destekpatent.com.tr<br />
www.destekpatent.com<br />
Destek Patent has been a major force in intellectual property management and protection in Turkey, and<br />
has been providing a full range of IP services, including patents, trademarks, domain names, industrial<br />
designs and licensing, for both Turkish and overseas clients since 1983.<br />
The firm is a member of LES, AIPPI, INTA, MARQUES, PTMG, GRUR, EPI, VPP and TOBB.<br />
We understand clients’ needs and expectations on expert counselling, fast response, clear<br />
communication and cost effective quality IP services, an independent indicator of which is our high<br />
clients’ satisfaction rate.<br />
Company description<br />
Dreyfus & associés<br />
Tel: +33 1 4470 0704<br />
contact@dreyfus.fr<br />
www.dreyfus.fr<br />
Founded in 2004 by Nathalie Dreyfus, Dreyfus quickly became one of the top intellectual property law<br />
firms in France. The Dreyfus team is well equipped to assist companies with particular expertise in IP/<br />
IT matters in France, the EU and worldwide.<br />
In an increasingly complex economic and legal environment, it has become imperative to efficiently<br />
protect, enhance and defend the essential assets of a company. The Dreyfus purpose is to support its<br />
clients with all the flexibility and reactivity that its structure allows, while offering the most up-to-date<br />
skill-sets, especially regarding international issues in the field of new technologies.<br />
When confronting problems, Dreyfus assists its clients in decision-making processes concerning the<br />
management and valorisation of their IP titles in the business realm and on the internet.<br />
With a worldwide network, Dreyfus will represent companies in arbitration centres and courts all over<br />
the world in disputes concerning trademarks, designs, patents, copyright, domain names, new gTLDs,<br />
social networks, Google AdWords and IT.<br />
Advising major traditional industrial actors as well as small and medium-sized firms impacted by the<br />
rise of e-commerce and the increasing use of trademarks on the web, Dreyfus has mastered all the<br />
issues related to the online presence of companies.<br />
In addition, Dreyfus has established the Dreyfus IPweb internet platform, an intuitive and interactive<br />
tool. This platform aims to consolidate and summarise all the information available to Dreyfus clients.<br />
The firm’s expertise, investment and creativity ensure optimal management of trademarks and domain<br />
name portfolios. Dreyfus is probably the most advanced French firm in the area of the management<br />
and protection of IP rights.<br />
76
FirmProfiles<br />
Company description<br />
Goodrich, Riquelme y Asociados<br />
Tel: +52 55 5533 0040<br />
mailcentral@goodrichriquelme.com<br />
www.goodrichriquelme.com<br />
With more than 75 years of experience, Goodrich, Riquelme y Asociados has a long tradition of standing<br />
alongside its clients when helping them make their business objectives a reality. By means of a cross<br />
practice among service areas and industry teams, our carefully trained lawyers achieve an innovative<br />
approach towards the rendering of contemporary legal services tailored to the demanding business<br />
community worldwide.<br />
We pride ourselves in knowing what drives key industry sectors and are able to provide on a daily basis,<br />
the best creative and cost-effective business solutions beforehand. Our clients are medium-size, as well<br />
as leading global companies of numerous nationalities and economic sectors.<br />
Company description<br />
Gorodissky & Partners<br />
Tel: +7 495 937 6116 / 6109<br />
pat@gorodissky.ru<br />
www.gorodissky.com<br />
Gorodissky & Partners, the leading Russian intellectual property law firm, provides a full range of<br />
intellectual property services, including prosecution and enforcement of IP rights. It has the largest IP<br />
practice in Russia and among top 10 in Europe.<br />
The firm’s main office is in Moscow, and it has branch offices in St. Petersburg, N. Novgorod, Krasnodar,<br />
Samara, Ekaterinburg, Perm, Kazan (all in Russia), Technopark Sarov and Kiev (Ukraine).<br />
The firm provides clients and associates with professional and cost-effective services in wide variety<br />
of practice areas: patenting, inventions and utility models, trademarks, service marks and appellations<br />
of origin, industrial designs, plant varieties, copyright, technology transfer and licensing, IP valuation,<br />
litigation, domain names, and due-diligence, as well as patent searches, notarial services, translation of<br />
patent and scientific-technical documents.<br />
Gorodissky & Partners’s lawyers and patent/trademark professionals have significant experience<br />
in litigating IP matters before the civil courts and in arbitration proceedings. They have successfully<br />
represented foreign and domestic clients in a number of landmark cases related to the infringement of<br />
patent and trademark owners’ rights in Russia and abroad.<br />
Many of the firm’s lawyers and patent/trademark attorneys are post-graduates with advanced technical<br />
and legal degrees. They regularly attend IP courses and work with foreign law firms worldwide, they<br />
are frequent speakers at international IP conferences, and also authors of many publications in IP<br />
professional magazines.<br />
Gorodissky & Partners has an extensive national and worldwide experience in IP issues, including those<br />
arising in the post-Soviet territory (the Commonwealth of Independent States countries and Baltic states).<br />
The firm is responsible for around half of the foreign patent applications and one third of the trademark<br />
applications filed in Russia every year. The clients of Gorodissky & Partners range from major domestic,<br />
foreign and international companies to small and medium-sized businesses.<br />
77
FirmProfiles<br />
Company description<br />
IPzen<br />
Tel: +33 1 84 17 45 32<br />
contact@ipzen.com<br />
www.ipzen.com<br />
IPzen is a new intellectual property and management software. Designed by trademark attorneys for<br />
trademark attorneys, it is a modern web-based tool. It is cloud-hosted and available as a software-as-aservice<br />
solution. It will allow you to securely access your data from anywhere only by using a browser. IPzen<br />
includes all the features required by trademark attorneys—and even more. It is a modular system available<br />
in both enterprise and law firm editions, as well as a service in a shared environment.<br />
IPzen is an internet platform that aims at consolidating and summarising all information that IP law firms<br />
or organisations use to process. As a modular system, IPzen is also comprised of a docketing system,<br />
trademark management software, domain name management software, a diary to track deadlines and a<br />
monitoring module consolidating the entire trademark monitoring results.<br />
The Law Firm Edition includes specific features to control information published to clients and therefore<br />
guarantees confidentiality. Information may be published for client allowing users to access their data<br />
online and to save time on reporting. IPzen enables records traceability and instructions received by<br />
email and/or directly via the platform. Rights management is particularly fine-tuned, especially in limiting<br />
users’ access to certain folders or trademarks.<br />
IPzen services<br />
Harbor Technologies offers outsourcing services for the monitoring and management of intellectual property<br />
rights. These services are possible through the IPzen Ssoftware, which enables our clients to easily access<br />
their data and focus on legal matters rather than on the administrative tasks of portfolio management.<br />
Company description<br />
Julian Varbanov & Partners<br />
J. Varbanov & partners<br />
Tel: +359 2 986 5125<br />
jvp@jvpatents.com<br />
www.jvpatents.com<br />
J. Varbanov & partners is one of the oldest and leading intellectual property firms in Bulgaria. We provide<br />
professional and cost-effective services and quality advices on all aspects of industrial property matters<br />
for the territory of Bulgaria as well as for the EU.<br />
Our team is dealing with establishment, protection and enforcement of industrial property rights derived<br />
from patents, trademarks, and industrial designs, including validation of European patents in Bulgaria.<br />
Our staff is made up of Bulgarian and European patent, trademark and design attorneys with great<br />
experience. We do filings and representations before the Bulgarian Patent Office, OHIM, WIPO and EPI<br />
We represent clients before custom authorities in connection with the application of boarder measures<br />
and all kinds of anti-counterfeiting activities. We are members of INTA, ECTA, EPI, UNION of European<br />
Practitioners in Industrial Property, AIPPI and PTMG.<br />
78
FirmProfiles<br />
Company description<br />
Nico Halle & Co. Law Firm<br />
Tel: +237 33 42 64 79<br />
hallelaw@hallelaw.com<br />
www.hallelaw.com<br />
Founded by its senior managing partner, Nico Halle in 1986, Nico Halle & Co. Law Firm is bilingual<br />
(English and French), and one of the oldest intellectual property firms licensed by the African Intellectual<br />
Property Organization (OAPI) to provide IP services in Africa. In order to provide integrated, cross-border<br />
services to meet our clients’ domestic, regional and global needs, our firm works in partnership with other<br />
renowned law firms in several countries across the globe.<br />
Noted for our diligent, expeditious, ethical, and professional services, and with a prolific and committed<br />
team of over a dozen IP attorneys and professionals, we provide comprehensive premium IP protection<br />
services in patents, trademarks, industrial designs, utility models, domain names, unfair competition, and<br />
plant varieties, as well as coordinating multi-jurisdictional disputes in parallel proceedings.<br />
Our main services for Patents, trademarks, utility models and industrial designs include:<br />
Acquisition and maintenance: searches, registration applications, translations, grant and registration<br />
procedures, recordations, and renewals and annuity.<br />
Litigation: drafting and oral submissions for restorations, oppositions and claim to ownership actions,<br />
nullity actions, cancellation proceedings, appeals, counterfeits, and cross-border actions.<br />
We represent a diverse clientele that is made up of the biggest and leading brands in industries including,<br />
but not limited, to biotechnology, pharmaceuticals, mechanical and electrical engineering, apparel<br />
and allied corporations, fashion accessories, liquor, food and beverages, consumer goods, banks<br />
and accounting, computer software, telecommunication, electronics, cosmetics, telecommunications,<br />
telemarketing, entertainment, and media.<br />
Company description<br />
Park IP Translations, a Welocalize company<br />
Tel: +1 212 581 8870 7722<br />
info@parkip.com<br />
www.parkip.com<br />
Park IP Translations, a Welocalize company, provides translation, litigation and filing solutions for patent<br />
and legal professionals. We protect our clients’ most valued assets and global brands in nearly every<br />
jurisdiction in the world. We provide complete translation services in more than 157 languages and filingready<br />
documentation for more than 60 countries. We are a leader in patent prosecution and validation,<br />
litigation language services, patent translations and filing.<br />
We also provide general legal services for all types of corporate and legal documents. Park IP has 13<br />
global locations in the US, Europe and Asia. Park IP delivers the highest quality translation as a result of<br />
our ISO 9001:2008 certification.<br />
Park IP Translations, a Welocalize company, is a world leader in expert legal translation and foreign filing<br />
language services. Welocalize, founded in 1997, offers innovative translation and localisation solutions.<br />
Translating nearly one billion words a year, Welocalize and Park IP Translations provide specialised<br />
services to thousands of multinational corporations and global law firms.<br />
According to Common Sense Advisory, Welocalize is the fourth largest language service provider in the<br />
US and ninth largest in the world.<br />
79
FirmProfiles<br />
Company description<br />
Patrix<br />
Tel: +46 31 50 7760 / +1 703 879 4860<br />
mail@patrix.com<br />
www.patrix.com<br />
Patricia is widely regarded as the most user friendly, powerful and versatile intellectual property management<br />
software available today.<br />
From the CEO through to the support staff, the Patrix team has extensive previous IP experience having<br />
each worked in the corporate and/or practice areas of IP. You can therefore be sure that they fully understand<br />
your requirements at every level.<br />
Patricia is an enterprise-wide solution that provides you with swift and secure access to your case data<br />
and automatic tracking of IP lifecycles, including laws/regulations, standard forms, time and cost registration,<br />
invoicing, customisable reports, document creation, document management, and powerful batch<br />
processing functionality. Patricia is designed to easily accommodate and harmonise your best practice<br />
and procedures including collaboration both inside and outside of your organisation.<br />
Created by IP professionals for IP professionals, Patricia is a fully customisable IP management system<br />
uniquely delivered on Windows and web platforms or a combination of both.<br />
Company description<br />
Pointer Brand Protection<br />
Tel: +31 20 30 319 35<br />
enquiries@pointerbp.nl<br />
www.pointerbp.com<br />
Pointer Brand Protection offers a full online brand protecting solution. Our monitoring and enforcement<br />
anti-piracy software covers social media, online marketplaces, domains, web shops and download<br />
platforms. With our advanced and customised filters, we detect, prioritise and act against counterfeits<br />
and other brand abuses.<br />
Innovation within our company is one of our key successes. We protect brand owners better by<br />
implementing the newest technologies, methods and legislations. We do this not only with our software<br />
development, internal processes and projects, but also by knowing what new platforms and tools<br />
counterfeiters are using.<br />
Our strategy is to collect all online sales and content and prioritise the biggest infringers. Our dedicated<br />
brand protection analysts take immediate action against infringements from our customised brand<br />
protection dashboard. With an investigative perspective, we protect brands better online.<br />
80
FirmProfiles<br />
Company description<br />
RWS Group and innovia<br />
www.rws.com<br />
www.inovia.com<br />
RWS and inovia are the world’s leading experts in intellectual property translations and foreign patent<br />
filing. For more than 70 years combined, we have led the industry and helped more than 10,000 clients<br />
protect their IP and enforce their IP rights around the world.<br />
• Ensure top quality;<br />
• Cut costs and save resources; and<br />
• Simplify and streamline.<br />
Company description<br />
Stillwaters Law Firm<br />
Tel: +234 1 454 7179<br />
info@stillwaterslaw.com<br />
www.stillwaterslaw.com<br />
Stillwaters is a leading law firm in Nigeria that specialises in intellectual property, technology transfer,<br />
distributorship or franchising, licensing, boarder enforcement measures, customs-related assistance,<br />
regulatory compliance, litigation, company and commercial law, and tax. The firm operates from the<br />
commercial cities of Lagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Duala in<br />
Cameroon.<br />
Professionalism, flexibility and innovation are the hallmarks of our practice. We value professional<br />
excellence, outstanding results and realise they both require creativity and hard work. We strive to gain<br />
every legal advantage for our clients while upholding the principles behind the practice of law. Over the<br />
years, we have acquired considerable experience and an enviable reputation for rendering quality legal<br />
services in our areas of specialisation.<br />
Practice representative clients include more than 660 foreign multinationals, publicly quoted companies,<br />
financial institutions, industries, small- and medium-size businesses and private entrepreneurs. Our<br />
practice is adequately equipped and well positioned to meet the challenges of legal practice in an everchanging<br />
technological age.<br />
81
FirmProfiles<br />
Company description<br />
WebTMS Ltd<br />
Tel: + 44 118 958 2002<br />
sales@ippo.com<br />
www.webtms.com<br />
WebTMS Limited and Intellectual Property Online have been providing and developing trademark<br />
management systems since 1997 and have regularly appeared at the top of independent user surveys<br />
of trademark management software. Additionally, we have over 500 unique clients globally, based on all<br />
continents using our flagship product: WebTMS.<br />
WebTMS is a comprehensive trademark management suite that builds on record keeping and<br />
docketing to support efficient trademark management with modules for every type of IP. As well as our<br />
award winning WebTMS software, the team are also renowned for their excellent customer support,<br />
expertly managed migration/conversion projects, and industry knowledge. We also listen to our clients’<br />
feedback about our software to continually develop and progress the software to constantly meet<br />
clients’ expectations and needs.<br />
WebTMS offers software subscriptions, hosted systems, and installed systems, so you can choose the<br />
best solution for managing your trademarks and related IP data. Our software is used by brand owners<br />
(including many companies from the top 100 most valuable brands), law firms (including a number of the<br />
largest international law firms), and trademark attorneys (from all around the globe). However, we have a<br />
solution for everyone regardless of your portfolio size. Some clients have under 100 records, others have<br />
in excess of 300,000 records. We also cater for everything in-between.<br />
WebTMS is ISO 9001:2008 certified and a member of ITMA, INTA, MARQUES, NDA, and PTMG.<br />
Get in touch today for your free demo account and/or presentation.<br />
Black Knight Media<br />
www.blackknightmedialtd.com<br />
Tired of using one of these?<br />
So are we<br />
To find out more about IPPro Connects, contact: carlosnorthon@ipprotheinternet.com<br />
HP IPPro connect ADvert.indd 1 29/09/2015 16:05<br />
82
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