Global IP Matrix - Issue 1

www.gipmatrix.com 

1

CONTENTS 

Page 6 

Transshipment of goods in Malaysia constitutes 

infringing use of a registered trademark. 

Clara C.F.Yip, of MarQonsult IP - Malysia 

Page 9 

The law on ‘grey’ market goods. 

Lisa Lovell, CEO of Brand Enforcement UK - South 

Shields UK 

Page 12 

It’s all in the mapping 

Gabriela Bobben, Partner at Eproint - Costa Rica 

Page 16 

Untangle domain name management 

Bart Mortelmans, general manager of bNamed.net - 

Belgium 

Page 21 

Injunction questioned and waived 

Vladimir Biriulin, Partner at Gorodissky & Partners - 

Russia 

We are extremely delighted that you have 

picked up a copy of our new publication “The 

Global IP Matrix”. Thank You. 

We are confident that you will enjoy our first 

issue, as we are confident you will enjoy the 

issues that follow. Great care has been taken 

to not limit our topics to just one niche area 

of intellectual property, this ensures we have 

something interesting for everyone that works 

in the area of IP. 

Page 24 

Renewed patent litigation tips 

Irina Ozolina, Senior Partner at A.Zalesov & Partrners 

- Russia 

Page 28 

The art of patent busting 

Dean Parry, Technical Director at Patent Seekers Ltd – 

Wales, UK 

Page 32 

Patents in the up and coming technology world 

Doris Spielthenner, General Manager at Practice Insight 

– Munich, Germany 

Page 38 

Why you should make your IP registration with ARIPO 

Susan Mwiti, Documentations and communications 

officer at ARIPO, Zimbabwe 

The Global IP Matrix magazine has a generic 

outlook on IP as a whole and gives you, the IP 

Lawyer and IP business owners a platform to 

educate the global IP community on the raw, 

uncut, undiluted, educational editorial content 

from ground level with expert local knowledge, 

by IP experts in this vast field internationally. 

Our publication is heavily overseen by some 

of the worlds most respected IP law firms, 

to give you, the reader confidence that we 

are producing the right content to keep you 

wanting more. 

If you are interested in keeping up to date with 

IP news from experts in this field (You the IP 

lawyers and IP business owners) then please 

be sure to join our mailing list, for the latest 

news and updates. 

Carlos Northon CEO & Founder 

Northon’s Media PR & Marketing Ltd 

Carlos Northon 

CEO & Founder Northon’s Media PR & Marketing LTD 

carlos@northonsprmarketing.com 

Elvin Hassan 

Copywriter & Editor 

Global IP Matrix 

Info@northonsprmarketing.com 

Craig Barber 

Head of design 

Global IP Matrix 

info@northonsprmarketing.com 

EDITORIAL BOARD OF DIRECTORS 

Gabriela Bodden 

Partner at Eproint 

Global IP Matrix editorial board director 

Afamefuna Francis Nwokedi 

Principle counsel & 

Group head Stillwaters 

Global IP Matrix editorial board director 

2 www.gipmatrix.com www.gipmatrix.com 

3

The ECTA Conference will deal with the latest developments in 

Trade Mark, Copyright and Design law, and will offer optimal 

networking opportunities with friends and colleagues. 

www.ecta.eu 


5

TRANSSHIPMENT OF GOODS IN MALAYSIA CONSTITUTES 

INFRINGING USE OF A 

REGISTERED MARK! 

‘Clara C.F.Yip, 

MarQonsult IP’ 

discusses a recently 

reported case 

A recently reported case of Philip Morris Brand 

Sarl v Goodness for Import & Export & Ors 

[2018] 7 MLJ 350 (High Court, Kuala Lumpur) 

affirms the position that the owner of goods 

bearing an infringing trademark, which have 

never left a Free Trade Zone in Malaysia (i.e. 

the goods have never been put on the local 

market), may still be held liable for trademark 

infringement under Section 38(1)(a) of the 

Trade Marks Act 1976 (“TMA”). 

In this case, the 1st defendant shipped 12 

containers of goods from Vietnam to Egypt 

with transshipment in Malaysia. While the 

goods were at Klang Port, the Royal Malaysian 

Customs Department (RMCD) seized 10 out 

of these 12 containers due to a false customs 

declaration that said containers contained 

‘Omani Marble’ cigarettes when in fact these 

contained MALIMBO brand cigarettes. 

Following this seizure, the Plaintiff filed an 

action against the defendants for infringement 

of their MARLBORO trademarks on the basis 

of 13 of their 28 registrations in Class 34 in 

Malaysia, and for passing-off MALIMBO 

cigarettes as MARLBORO cigarettes. 

The learned Judge referred to the case of 

Tohtonku Sdn Bhd v Superace (M) Sdn 

Bhd [1992] 2 MLJ 63 at p 65, in reiterating 

that for a Plaintiff to succeed in a trademark 

infringement action, the Plaintiff has to prove 

that all 5 elements of infringement under 

Section 38(1)(a) have been fulfilled, namely 

that: 

a) The defendant is neither the registered 

proprietor nor the registered user of the 

trademark; 

b) The defendant used a mark identical 

with or so nearly resembling the plaintiff ’s 

registered trademarks as is likely to deceive 

or cause confusion; 

c) The defendant was using the offending 

mark in the course of trade; 

d) The defendant was using the offending 

mark in relation to goods or services within 

the scope of the registration; and 

e) The defendant used the offending mark in 

such a manner as to render the use likely to 

be taken either as being used as a 

trademark or as importing a reference 

to the registered user or to their goods or 

services. 

Clara C.F.Yip, Founder of MarQonsult IP 

www.marqonsult.com 

Confusingly similar 

trademarks 

On the question of whether the trademark 

MALIMBO and the 13 MALBORO trademarks 

are confusingly similar, the learned Judge had 

no difficulty deciding in the affirmative on 

account that the trademark MALIMBO had 

incorporated the essential features (namely, 

roof devices, roof line device and roof device 

variations) of the 13 MALBORO trademarks, 

and used the same red, white and black colors. 

In addition, both words are structurally 

identical with the same syllables of ‘MA’ and 

‘O’ and both marks shared similar positioning 

of words, arrangement and get-up, thereby 

giving a similar overall impression. 

Defendant argues goods were 

not imported into & sold in 

Malaysia 

A critical issue was whether the 1st defendant’s 

transshipment of 10 containers of MALIMBO 

cigarettes was tantamount to “use in Malaysia” 

and whether such use could be considered as 

use “in the course of trade”. The 1st defendant 

argued that this was not the case since the 

MALIMBO cigarettes were NOT imported 

into and sold in Malaysia, the goods having 

been kept in said containers and the containers 

having remained in a Free Trade Zone up 

until the time of seizure. To support their 

contention, the 1st defendant had relied on 

amongst others, other provisions in Part IVA 

of the TMA dealing exclusively with Border 

Measures which defined the meaning of ‘goods 

in transit’ and which exempted ‘goods in 

transit’ from seizure. 

The learned Judge disagreed and held that: 

firstly, the Border Measures provisions could 

not be used to interpret the word ‘use’ in 

Section 38(1) since those provisions apply only 

to Part IVA of the TMA. Instead ‘use’ had to 

be interpreted by reference to Sections 3(2)(a) 

and (b) of the TMA as in the case of Doretti 

Resources Sdn Bhd v Filters Marketing Sdn 

Bhd & Ors [2017] MLJU 836 wherein the 

Court had considered the following 4 ways in 

which a mark may be ‘used’ in the course of 

trade: 

1) The mark is represented in print or visual 

form [in s.3(2)(a)TMA] 

2) The mark is used ‘upon’ goods [s.3(2)(b) 

TMA] 

3) The mark is used ‘in physical’ relation to 

goods [s.3(2)(b) TMA] 

4) The mark is used in ‘other relation to’ goods 

[s.3(2)(b) TMA] 

There was clearly ‘use’ of the trademark 

MALIMBO as it is represented in ‘print or 

visual form’ on the MALIMBO cigarettes 

within the meaning of Section 3(2)(a) and it 

is used ‘upon’ MALIMBO cigarettes in the 10 

containers, per Section 3(2)(b). 

Secondly, the ‘use’ of the trademark 

MALIMBO ‘upon’ MALIMBO cigarettes 

in the 10 containers is in fact in Malaysian 

territory. In arriving at this conclusion, the 

learned Judge referred to and clarified Section 

4 of the Free Zones Act 1990 (“FZA”) which 

provided that subject to the FZA and other 

prohibition by law, goods or services may, inter 

alia, be brought into or provided in a Free Zone 

without payment of any duty or tax. Drawing 

parallels from an earlier High Court decision 

in Philip Morris Products SA v Ong Kien Hoe 

& Ors [2009] 4 MLJ 727, however, the learned 

Judge held that Section 4 does not mean that 

the Free Zone is a law-less zone, nor that the 

10 containers were not actually in Malaysian 

territory. The laws of Malaysia including the 

TMA and the tort of passing-off would still 

apply in the Free Zone and the Enforcement 

Agencies continue to hold jurisdiction over 

and in these zones. 

Thirdly, on whether the trademark MALIMBO 

had been used “in the course of trade”, the 

TMA defines this phrase only in relation to 

the provision of services but not in relation to 

goods. The learned Judge thus provided the 

following examples where the mark is deemed 

to have been used in the course of trade, 

namely: 

(i) using the design for branding purposes 

irrespective of whether any manufacture 

or sale of goods has occurred [Mesuma 

Sports Sdn Bhd v Majlis Sukan Negara 

[2015] 2 MLJ 176 (Court of Appeal)]; 

(ii) using the mark in respect of a business 

conducted for profit, or a business of a 

specified nature, or a transaction with 

a person for a thing [Mesuma Sports 

[2015] 6 MLJ 465 (Federal Court)]; 

(iii) any dealing with the goods up to the 

time of the ultimate sale or delivery to 

consumers [Sony Corporation v Olivine 

Manufacturing Pte Ltd [1993] AIPR 

186]; 

Based on aforesaid examples, the transshipment 

of the 10 containers of the MALIMBO 

cigarettes constituted a use in “the course of 

trade”. Additionally, the substantial quantity of 

the cigarettes indicated that the 1st defendant 

had intended to use the mark for the purpose 

of trade. As all the remaining elements have 

clearly been fulfilled, the transshipment was 

held to have infringed the 13 MARLBORO 

trademarks under Section 38(1)(a). 

‘Passing-off ’ 

With regard to passing-off, the 1st defendant 

was found to have passed off the MALIMBO 

cigarettes in the 10 containers as MARLBORO 

cigarettes based on the 3 tests of passing off 

laid down in the House of Lords decisions in 

Erven Warnink [1979] AC 731 and in Reckitt 

& Colman Products Ltd v Borden Inc & Ors 

[1990] 1 All ER 873, viz: 

(a) That the plaintiff is the owner of the 

goodwill and reputation in and to the 

MARLBORO get up and trade name; 

(b) That the 1st defendant has 

misrepresented to the public that the 

MALIMBO cigarettes were the plaintiff ’s 

cigarettes, and the misrepresentation was 

made in the course of trade (pursuant 

to aforesaid case-law definitions) to 

prospective or ultimate consumers of 

cigarettes supplied by the 1st defendant; 

and 

(c) That the plaintiff has proven that it 

has suffered or was likely to suffer 

damage by reason of the 1st defendant’s 

misrepresentation, amongst others due 

to the fact that MALIMBO cigarettes 

and MARLBORO cigarettes are in direct 

competition with one another. Hence, 

the Plaintiff ’s loss of sales will be more 

readily inferred. 

Noteworthy Conclusion! 

It is noteworthy that the High Court did not 

need to consider Section 71(1) of the Act 

in interpreting the meaning of use “in the 

course of trade”. Pursuant to this provision, 

an application in Malaysia of a trademark for 

goods meant for export from Malaysia would 

constitute use of the trademark in Malaysia. 

However, in the case of Lim Yew Sing v 

Hummel International Sports & Leisure A/S 

[1996] 3 MLJ 7 the Court of Appeal held that 

for the purpose of determining confusion in 

the minds of the Malaysian public, such use 

of the trademark in Malaysia i.e. as an export 

brand could not be factually equated to the 

use of the trademark in the course of trade in 

Malaysia because the Malaysian consumers 

never saw these goods. 

The same principle could have applied in 

relation to transshipment of goods since these 

goods have not entered the course of trade. In 

applying the binding Federal Court decision 

in Mesuma Sports on the definition of “in the 

course of trade” the High Court has concurred 

that the term “in the course of trade” extends 

beyond the manufacture of goods in Malaysia, 

the import of goods into Malaysia, the offer 

to sell and the sale of goods in Malaysia, and 

the marketing, promotion or advertisement of 

goods in Malaysia. 


7

Since Grey became 

Black and White 

Lisa Lovell, CEO of Brand Enforcement UK 

www.brandenforcement.co.uk 

Lisa Lovell, CEO of Brand 

Enforcement UK, delves into 

the law on ‘grey’ market goods. 

In August 2017, The Supreme Court ruled that 

it is a criminal offence to put ‘grey’ market 

goods on the market, just as it is for counterfeit 

goods. As most of us know, grey or ‘parallel’ 

goods, refer to the trade of a commodity 

through distribution channels that are legal, 

but which are unintended by the original 

manufacturer or trade mark owner. 

Before we look at the impact of the decision 

some eight months on from this key decision, 

along with our predictions, let’s remind 

ourselves of the facts of the case and the law 

which the Justices scrutinised. 

In a joint appeal from three criminal cases 

of R v M, R v C and R v T [2017] UKSC 58, 

the Court considered section 92 of the Trade 

Marks Act 1994. 

The Law 

A criminal offence is committed under s92(1) 

(b) if with a view to gain for himself or with 

intent to cause loss to another, and without the 

consent of the trade mark owner, he sells, offers 

or exposes for sale goods which bear, or the 

packaging of which bears, a sign identical to a 

registered trade mark. Section 92 is a remedy 

separate from those available for infringement 

of the monopoly civil rights that the trade 

mark owners have. 

The Facts 

The defendants were bulk importers and 

sellers of goods bearing top fashion brands’ 

marks, manufactured outside the EU. The 

goods were legitimately manufactured with the 

marks owners’ permission, but as is the typical 

definition of ‘grey’ imports or goods, these 

were in excess of the number permitted by the 

marks owners, or they were ‘seconds’ or rejects. 

The defendants asked the Court to distinguish 

grey goods from counterfeit goods. They also 

argued that the criminal sanction should 

only apply when a mark had been used in 

manufacture without the owner’s permission, 

unlike here, as all they had done was import 

and sell the goods without permission. 

8 www.gipmatrix.com 


9

Evidence 

Whatever kind of enforcement a brand owner 

is seeking to obtain, it all turns on the evidence. 

For any criminal or civil case to stand, the 

evidence must be collated correctly. Any 

physical evidence obtained must be presented 

to the court in the correct manner, along with 

the relevant continuity and expert witness 

statements. A well evidenced case will make 

the prosecution of any civil or criminal matter 

easier and will assist in convincing a defendant 

to plead guilty in criminal cases or settle in 

civil cases. 

With this in mind, ideally brand owners 

should also seek to show a pattern of behaviour 

which is more difficult for a defendant to 

“explain away”. In light of this Judgment trade 

mark owners should review the agreements 

they have in place with their authorised 

manufacturers to ensure that they deal with 

the issue of grey market” items by having strict 

controls over production and explicitly stating 

that such goods are not authorised, must not be 

sold by the factories and are to be returned to 

the brand owner or they should be de-branded 

and destroyed. 

*BEUK provide a Worldwide Test Purchase 

Service covering all evidential needs. See 

www.brandenforcement.co.uk 

for further information. 

The Forecast 

We forecast that brands will continue with 

their civil enforcement strategies largely the 

same as before. However, perhaps reference in 

the Cease and Desist letter that under current 

UK law the infringer is ‘committing a criminal 

offence’ may be a good point to note. 

The Future 

It’s too early to say what the longer term 

impact of the decision is, but our clients are 

pleased with the effect of the ruling and brand 

owners now have this additional weapon to 

apply some further leverage to dealers in their 

goods on the grey market. We anticipate that 

grey goods will be pursued just as vigorously, 

or even more than before. The message is 

simple; dealing in grey goods is now as illegal 

as dealing in counterfeit goods. It’s as clear as 

black and white. 

The next question 

is; once the UK 

leaves the EU, will 

we revert to the law 

of International 

Exhaustion? 

The Decision 

The Justices disagreed unanimously, rejecting 

those arguments, saying that it would be 

‘strained and unnatural’ not to extend Section 

92(1)(b) to dealing in grey goods. They took 

this view because s92(1)(b) concerns situations 

where goods, bearing a registered trade mark, 

are sold without the owner’s consent, not 

just where a registered trade mark is applied 

without their permission. 

This clarification to the law was of course good 

news to trade mark owners since they now 

have an additional tool for enforcing their 

legitimate rights. 

The Impact 

Since the decision in August 2017, we have 

seen that essentially; not much has changed, 

especially with regard to the powers of UK 

Border Force which the ruling does not apply 

to. Furthermore, since the ruling, albeit UK 

Trading Standards could in effect enforce 

grey imports in the same way as traditional 

counterfeits, the likelihood (and the reality) 

is that, without additional manpower or 

resources, they are still as under-manned, 

under-resourced and have more pressing 

priorities than before. 

The most successful form of action for 

brand owners in such circumstances is 

civil enforcement, which is often more 

advantageous than criminal enforcement for a 

number of reasons; 

Criminal Enforcement 

- It is unlikely the brand will obtain the 

assistance of UK law enforcement and therefore 

it will be unlikely a criminal prosecution will 

be brought on behalf of the brand owner; 

- In successful private criminal prosecutions, 

the infringers will receive a criminal conviction 

but it may be difficult for brand owners to know 

whether the conviction is being or should be 

enforced; 

- The standard of proof for a criminal action is 

higher than it is for civil (beyond all reasonable 

doubt v balance of probabilities); 

- The brand may have to pay out before being 

refunded by Central Funds and if the case fails 

will be liable for the cost of the trial. 

Civil Enforcement 

- Infringers will obtain an injunction against 

them which can be easily enforced by the 

brand; 

- The standard of proof for a civil action is lower 

than it is for criminal (beyond all reasonable 

doubt v balance of probabilities); 

- The Directors of the company can be sued as 

well as the company itself; 

- Costs and damages will be awarded to the 

brand which will reduce the brand owner’s 

financial liability; 

- Any funds received from civil enforcement 

can provide the monetary means for further 

action. 


11

IT´S ALL IN 

THE MAPPING 

‘Gabriela Bodden 

of Eproint 

explains the 

issues faced by IP 

Practitioners in 

the Caribbean’ 

The IP world faces challenges and the 

operation of IP infringers is perfected 

each day! Anti-counterfeiting is 

precisely one of the main obstacles IP 

rights owners and practitioners face in 

Latin America and the Caribbean. 

What makes the 

challenges faced, 

different to other 

regions? 

Generally the Caribbean is classified as a 

´developing region´ with a unique cultural 

diversity, idiosyncrasy and a magnificent 

geographical location. It is precisely the history 

of its people, in addition to the above factors, 

that make IP discussions such a sensitive 

matter within this region of the world. 

The challenges the Caribbean faces are very 

different from those faced by other regions 

around the world; however, the solution to 

Gabriela Bodden, Partner at Eproint 

www.eproint.com 

this lies in the adoption of equal or similar 

remedies as those applicable in advanced 

nations. 

Consumers worldwide have become more 

sophisticated, demanding and are willing to pay 

a higher price for distinctive and specialised 

products and services. The Caribbean people 

have acquired a taste for excellence and this 

in turn provides an important market for 

international companies wishing to expand to 

the region. 

Over 70% of companies’ assets are intangible 

making IP rights holders focus on this shift 

and in the protection of their IP rights in the 

Caribbean. 


13

Legislation in the 

Caribbean 

Legislation is not uniform in the Caribbean, and 

the Caricom has not focused on creating such, 

therefore each country is slowly developing 

their legislation, in some, it is taking longer 

than anticipated, in others although modern, 

it is still not up to international standards. 

Sadly, the concept of ´modern IP legislation´ 

is inexistent in numerous Caribbean islands 

and therefore the difference in legislation is 

palpable from one jurisdiction to another. 

Islands like Jamaica, Trinidad, Dominican 

Republic, Cuba, Barbados and St. Lucia in 

the past years have enacted new trade mark 

legislation and this is definitely an attraction 

to foreign investment and in the promotion 

of the registration of trademark rights. In 

contrast, Guyana is today applying the United 

Kingdom Copyright Act of 1956 and since 

2003 the Copyright Bill has not been enacted. 

Unfortunately in 2013 (thirteen years later) 

Facing the odds 

Proper protection of IP rights implies a 

difference between the failure and success of 

a company. IP has become such an important 

topic that rights holders are fully aware of 

the implications of not having proper legal 

representation and this in hand with the influx 

of the laws in the Caribbean demands proper 

care. 

Proper continuous training of the Registry 

personnel, who must deliver the service 

promised within the legislation, is also 

of importance. Sadly, there is still much 

needed training and this is where the hiring 

of knowledgeable professionals is vital 

(professionals with Masters Degrees in 

Intellectual Property, with years of expertise, 

directly in synch with the IP world and that 

are capable of understanding the IP process as 

such is vital). 

Enforcement of laws & 

training for Customs 

officials 

The enforcement of laws is a major issue, as 

Customs personnel require adequate training. 

Training is suggested within Government but 

also on the part of IP rights holders in order 

to grant customs officials the knowledge 

to empower them in the recognition and 

differentiation of counterfeit goods from their 

original and authentic counterparts. 

It is also important to note that parallel 

imports are not illegal in most islands; 

therefore, exclusive distributors are faced with 

a problematic situation out of which they 

find it difficult to recover. This is where IP 

rights holders must focus and visit Customs 

in different islands and train them as to what 

their original goods must look like, sharpening 

their knowledge of the products and keeping a 

watchful eye against counterfeiting. 

DOMAINS 

the 2003 Copyright Bill is still not enacted and 

by the time it is, it will also be outdated. This 

goes hand in hand with adequate trademark 

protection as many trademarks are also 

protected via copyright. 

The Cayman Islands for instance has recently 

enacted brand new trademark legislation and 

no longer provides for the filing of trademarks 

based on registrations successfully completed 

in the United Kingdom. This too is the case of 

Antigua and BVI. 

Although modern laws are not the norm in 

the Caribbean it is clear that more and more 

islands are recognising the importance of 

affording adequate protection to IP rights and 

eventually promoting the enacting of similar 

legislation in other islands. 

In tandem, with proper training of the 

IPO personnel, adequate and updated IP 

legislation, proper Customs Authorities border 

protection (aimed to prevent the importation 

of counterfeit goods) and the possibility of 

Customs trademark proprietor database 

registrations (that will enable Customs to 

ascertain the contact details of trademark 

rights holders or representatives in a particular 

territory), I also strongly suggest the creation 

of a specialised Intellectual Property Tribunal 

in major jurisdictions where the volume of 

cases justifies it. Such a judicial body would in 

theory directly resolve on IP related matters. 

Planned Mapping as a 

solution 

Most IP rights holders certainly know the 

countries of origin of counterfeit goods. 

Planned mapping (as to the origin of such 

goods) can be made in advance if coordinated 

with Customs authorities in the country of 

origin in a way that the goods are ´´tracked´ 

throughout their entire route and finally 

intercepted upon arrival to the destination 

country. Such actions should also motivate 

legislators to enact modern laws with 

severe penal and monetary consequences 

for infringers, because counterfeiting is a 

crime that originates in the mapping route of 

counterfeited goods. 


15

Untangle domain 

name management 

As you are probably already 

aware, simply registering 

your trademark is not 

enough to protect it online. 

Bart Mortelmans (general 

manager of bNamed. 

net) discussed with us the 

importance of domain name 

registrations to protect your 

online intellectual property. 

He also tells us about what 

can be done to get the 

maximum out of this. 

He has a clear vision on this: “We have seen 

domain names become more and more 

important over the last decades, turning 

into an unignorable part of the protection of 

Intellectual Property. Our mission is to provide 

the level of support you would be accustomed 

to regarding IP-protection, but at domain 

name level pricing.” 

One of the problems you will certainly be 

confronted with while protecting your IP 

online is to decide where to protect and 

where not. Bart: “A couple of years ago, many 

of our clients requested their trademark to 

be registered under every single domain 

name extension. At that time, that meant all 

country code extensions and just a few generic 

extensions like .com, .net and .org. Since the 

launch of the so called ‘new gTLD’s’, that is no 

longer feasible.” 

Country Code 

extensions 

It is not always necessary to register all country 

code extensions; however, country code 

extensions still play a very important role. 

People can be chauvinistic regarding domain 

names. The Singaporese assume a domain 

name will end in .sg, the Germans assume 

.de and the Portugese .pt. In practice, when 

Bart Mortelmans, General Manager of Bnamed 

www.bnamed.net 

someone doesn’t know the exact address of a 

website, they will first try to find the website 

under their own country code. It is therefore 

important to target your customers and 

take into account your main market and the 

country code extension. 

So the first thing to do is to protect your brand 

under the extensions of the countries you’re 

doing business with, or to which you expect 

to expand in the future. If you’re active on the 

British, Spanish and German market, register 

your brand as a .co.uk, .es and .de domain 

name. But if your only focus is the Japanese 

and Taiwanese market, then those European 

country codes will not be relevant for you and 

you should first of all make sure you have your 

primary market covered. For example; are 

you considering expanding your business to 

South America? Then do make sure to already 

register your brand under the most important 

South American extensions. 

gTLD’s as an 

alternative 

So country codes remain important but the so 

called ‘new gTLD’s’ can offer a nice alternative. 

These ‘new gTLD’s’ such as .shop, .hosting, 

.computer, .london, .paris, .berlin, .bank, 

.insurance,... were launched a few years ago 

and most have been completely enrolled. 

Bart: “We must also be honest that most 

gTLD’s have only limited popularity. As said 

a .de works best for Germany, but if you are 

headquartered in Berlin a domain name under 

.berlin can be a nice added extra. The same 

goes for .london, .paris, .brussels, .nyc,... Other 

new gTLDs have found their way to the general 

public. The .shop domain is a good example 

of this. The next, possibly popular gTLD that 

is being launched is .app. There is already 

a healthy amount of interest for this, but of 

course it always remains to be seen. 

According to Bart the ‘new gTLD’s’ can also be a 

way to show your core business. If you’re a bank 

or insurance company a .bank or .insurance 

domain name is a nice extra. It’s immediately 

clear what services you’re offering. Moreover 

before you can register your name under .bank 

or .insurance, you need to run through a whole 

registration process so if you register your 

name under those extensions, it also shows 

you’re trustworthy. Obviously bNamed can 

help and assist you every step of the way.” 

Protect yourself, 

are you sure you are 

secure? 

Protecting your IP online is important but are 

you sure your protection itself is secure? 

This can be done via centralising your domain 

names with an independent registrar. The 

relationship with a web designer can sometimes 

blur or you may receive a better offer from 

another webhoster. If your domain names are 

managed by an independent party you can 

switch quickly and you can even combine 

different providers for different services, like 

webhosting and e-mail. You’ll never have to 

worry that your precious intellectual property 

(for that’s what domain names are) is taken 

hostage because of a dispute regarding an 

invoice for that web design that never got off 

the ground. 

Centralising domain 

names 

In many companies domain names are 

currently registered here and there. This 

easily causes things to go wrong. If you miss 

a renewal deadline, your domain name can go 

offline or can even be lost completely. In many 

cases it’s also not clear who has control over the 

domain name and who has the correct login 

information when an update is needed. As 

seen, way too often, names are even registered 

in the name of a branch, a local reseller who 

now no longer exists or even an ex-employee. 

The centralisation of the domain names 

solves those problems and is also financially 

interesting, because grouping more names, of 

course, also means a bigger discount. 

Name Server 

diversification 

Another way to protect yourself and make sure 

your domain names keep functioning is name 

server diversification. 

Bart: “The name servers are the basis of 

your domain name. If they don’t function, 

nothing does. In the past some major internet 

companies, such as Twitter and Spotify, went 

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cloud name servers of Google. If you wish you 

can also add special anti-DDoS name servers. 


17

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19

“Herbicide 

goes bananas” 

Vladimir Biriulin, Partner at Gorodissky & Partners 

www.gorodissky.com 

‘Vladimir Biriulin, Partner at 

Gorodissky & Partners’ discusses 

a complicated & lengthy case 

PATENTS 

Injunction questioned 

and waived 

From the very start, this case of infringement 

followed a very ordinary route: a patent for 

a herbicide was infringed while the infringer 

retaliated by trying to cancel the patent because 

it allegedly did not comply with patentability 

criteria. 

Simultaneously, the patent owner fell out with 

one of his former colleagues who had sued 

him and sought injunction for the patent. 

The injunction was granted and in turn it 

became a major obstacle in examining the 

patent cancellation case. The case went to 

IP court during which it was explained that 

an injunction should not come in the way of 

examination of the patentability of a patent. 

As a result, a number of claims were excluded 

from the patent and the infringement was not 

proved. 

This was a multifaceted case involving several 

persons and several courts dragging on from 

2015. The conflict started after the court action 

which was initiated by JSC August, owner of 

patent No 2488999 for infringement of its 

patent for a herbicidal composition (Status 

Grand) and a method of fighting weeds 

(Case No A40-189533/2014). The court suit 

was filed to the Moscow Commercial Court 

against Zemlyakoff Ltd and sought to forbid 

the respondent to produce and market the 

herbicide and also stop the procedure of state 

registration of that herbicide. 

Chamber 

of Patent 

Disputes 

examines 

appeal! 

As it often happens, the respondent retaliated 

by filing an appeal to the patent office seeking 

to cancel the patent because it did not 

comply with the patentability requirement 

‘inventive level’. In its statement of defense 

the patent owner, fearing that his patent 

would be cancelled submitted an amended 

set of claims; drastically narrowing the scope 

of the claims. According to the appellant 

(Zemlyakoff), the amended claims halted 

grounds from under the infringement claims, 

which should have led to renunciation of the 

court claims against Zemlyakoff, the alleged 

infringer. Coincidentally and unrelated to 

the above, before the appeal was examined 



21

y the Chamber of Patent Disputes, the 

representative (physical person) of the patent 

owner (JSC August) sued him for non payment 

of remuneration for rendered services in a 

district court far away from Moscow where 

the infringement case was pending. Within 

the framework of that remuneration court 

case a certain amount of money was claimed, 

as well as a preliminary injunction forbidding 

the patent office to take any action in respect of 

the patent; this was granted on July 20, 2016. 

The parties in the conflict also had earlier 

signed a security agreement in respect of the 

patent. However the owner of the patent did 

not register the agreement so it did not come 

into effect. 

The respondent in the infringement case 

(Zemlyakoff) appealed the ruling of the 

district court regarding injunctive relief in the 

appeal court and managed to obtain a ruling 

overriding the ruling of the district court. 

The appellant (Zemlyakoff) asked the patent 

office to resume consideration of the appeal 

concerning cancellation of the patent. However 

this did not save the situation, the patent office 

did not start examination of the appeal all the 

same because neither the law nor regulations 

limit the time span during which the appeals 

should be examined by the Chamber of Patent 

Disputes. 

Plaintiff argues that 

case wasn’t examined 

for long enough! 

As a result of that, the patent office suspended 

examination of the patent cancellation 

case and of amendments to the patent 

claims. Furthermore, the respondent in the 

infringement case (Zemlyakoff) sued the 

patent office (the Chamber of Patent Disputes 

is subordinate to it) in the IP court for its 

reluctance to consider the patent cancellation 

case. Zemlyakoff (the plaintiff in this case) 

argued that the patent office did not examine 

the patent cancellation case for a long enough 

time (about two years) and thus violated his 

rights and lawful interests. The patent office 

pointed out in its statement of defense that 

the ruling on injunction had been issued by 

court and it forbade the patent office to take 

any action in respect of the patent including 

examine cancellation of same. It also ignored 

the ruling of the appeal court cancelling the 

injunction. The representative of the patent 

owner who had previously rendered services to 

the patent owner wanted to be engaged in the IP 

court procedure as a third person, however the 

IP court turned down the petition, explaining 

that the conflict concerned observance by the 

patent office of the administrative procedure 

which relates to the examination of appeals 

and was not a case related to the cancellation 

of the patent. 

The IP Courts take 

time limit into 

consideration 

The IP court pointed out during the hearing 

that indeed, the hearing had been scheduled 

for October 2015 and since then was put off 

multiple times, some of these times on request 

of the patent owner. The IP court recognized 

that in accordance with the provisions of the 

Code of Procedure, interested persons might 

apply to court and demand cancellation of 

unlawful decisions and actions taken by the 

patent office. The IP court referred to the 

legal position of the Constitutional Court (No 

448-0 of March 10, 2016) according to which 

excessive or indefinite terms of examination 

of conflicts lead to instability of legal relations 

and can create uncertainty. The court rightfully 

noted that the absence of time limits set by 

law in the administrative proceedings may 

endow the patent office with unlimited powers 

to decide when a dispute will be considered, 

which is inadmissible by virtue of Article 46 of 

the Russian Constitution and the Convention 

on Human Rights. The Constitutional Court 

pointed out in its ruling that other courts had 

already pointed out on a number of occasions 

that legal regulation was not adequate in that 

respect and that performance of functions 

of the patent office were not satisfactory. 

Following on from that, the time limit was 

taken into consideration; consideration of an 

administrative case should be determined even 

before an appropriate regulation is adopted. 

Non-consideration of the dispute within 

reasonable time signifies unlawful failure of 

the patent office to act. The reasonable term 

of consideration of a case should be evaluated 

in each particular case from the point of view 

of the workload of the patent office and other 

objective circumstances. At the time, the 

appeal in question had been considered for two 

years already. The patent office did not refer to 

its workload but stated that an injunction had 

been imposed on the patent forbidding the 

patent office to take any action in respect of the 

patent, including examination of the appeal an 

taking a decision on the appeal. 

“Injunction 

construed too 

broadly” says the IP 

Court 

The IP court confirmed that there was 

an injunction imposed on the patent 

but Zemlyakoff Ltd appealed the 

injunction in the appeal court and 

the injunction was cancelled. As 

has been mentioned above the 

injunction was imposed at the 

request of the representative 

of the patent owner who did 

not pay her and with whom 

there was a signed (but not 

registered) security interest 

agreement in respect of the 

patent. The appeal court 

noted that the court action, 

initiated by the representative 

of the patent owner was of proprietary 

nature (non-payment of remuneration) 

and that application of injunctive relief 

could not guarantee fulfilment of monetary 

obligation by the patent owner. Besides, the 

ban to take any action with regard to the 

patent violates the rights of Zemlyakoff Ltd. In 

fact, the ban to examine the appeal against the 

patent is an additional injunctive measure 

and it does not match the purpose of 

application of injunctive measures. 

Hence, the court came to the conclusion 


that the patent office construed the injunction 

too broadly. As a result, the IP court obliged 

the patent office to examine the appeal against 

the grant of the patent within a reasonable 

time period and herewith, the court set the 

term of three months to examine the appeal 

and report to the court. 

Appellant tries to kill 

the patent completely! 

In pursuance of the IP court judgment, 

the patent office (the Chamber of Patent 

Disputes) examined the appeal in October 

2017. It stated that there were eight claims 

in the patent. Inventive level was questioned 

by the appellant. The appellant provided 32 

sources of information (patents, publications 

in magazines, catalogues, even the USSR 

inventor’s certificates) to prove that the 

invention lacks inventive level. The Chamber 

of Patent Disputes stated that the invention 

according to Claim 1 may be considered 

as evident on the basis of combination of 

information from a number of sources. Similar 

conclusions were made in respect of some of 

the other claims. All in all, there were more 

than twenty pages of detailed analysis of the 

patent claims and anticipating documents; 

this led to the Chamber of Patent Disputes 

also concluding that some of the claims of 

the invention lacked novelty. The patent 

owner tried to acquit himself but failed. He 

was compelled to submit amended version of 

claims, which satisfied patentability criteria. 

The appellant submitted additions to the 

appeal trying to kill the patent completely, 

however the Chamber of Patent Disputes 

preserved the patent with the amended claims. 

So, the patent was recognized invalid in part 

and a new patent was issued. The appellant 

was satisfied because the new claims ruled out 

recognition of infringement on his part. 

Finally this very long 

conflict was brought 

to an end! 


23

RUSSIA: 

renewed patent litigation tips 

Irina Ozolina, Senior 

Partner at A.Zalesov & 

Partrners, talks about 

renewed patent litigation tips 

in Russia and outlines why 

you should choose Russian 

Courts. 

Why choose Russian 

courts & what to 

consider 

Multinational companies more and more often 

choose Russian courts to resolve IP disputes. 

Here are some statistics: in 2017 the IP 

Court as a cassation instance considered 

840 infringement cases, 160 of them - with 

participation of foreigners; 45 of all the 

infringement cases were patent infringement 

disputes. 

Patent litigation in Russian is fast, 

comparatively inexpensive and quite effective. 

But there are important particulars to know 

before starting a patent litigation in Russia. 

First - bifurcated system: infringement and 

invalidation grounds are considered separately. 

Tips 

Still, judges hear reasonable references to prior 

art, file prosecution, history argumentation and 

position of parties in invalidation procedure. 

Second - bad faith behaviour of a patent 

owner is put on the judges’ table when judges 

consider patent infringement cases; although 

courts have never been known to refuse 

in patent suits just because patent owners 

behaved improperly, recent court decisions 

highlight this issue more often as an additional 

consideration to other motives of refusal. 

Third - courts’ requirements to a claim’s 

wording are more formal. Common practice 

is now to refuse in a claim aiming to destroy 

infringing goods, if there is no evidence, which 

goods should be destroyed, where they are and 

who is the owner. 

Fourth – nobody tried non-infringement suits 

to come to the Intellectual Property Court, but 

in the first instance they are normally refused. 

Last but not the least - compulsory license 

claims are intensively discussed, however they 

have not come into practice yet. The first case 

dates back to 2012 (case No А40-83104/11), 

now at least one claim for compulsory license 

is pending, but stable court practice is to be 

waited for. 

Other tips also should not be omitted in patent 

strategy. 

Patent Litigation 

Irina Ozolina, Senior Partner at A.Zalesov & Partrners 

www.azalesov.com 

Obligatory warning 

letter 

In July 2017 an obligatory pretrial procedure 

was finally set up in case: 

- both parties are legal entities or individual 

entrepreneurs; 

- the dispute is under jurisdiction of 

arbitration courts; 

- patent owner claims for monetary 

compensation or damages. 

If the counterparty refused to satisfy claims 

amicably or did not respond within 30 

days after the letter was sent out, the patent 

owner could go to court. 

Practice differs, what 

exactly should such a 

letter comprise 

Ruling of the Intellectual Property Court (as 

of July 10th, 2017, А41-63873/2016) agreed 

with courts of previous instances, that a 

suit should strictly stay within the amount 

initially indicated in a warning letter. In 

another Ruling, (as of August 30th, 2017, A36- 

4979/2017), the court said that there is no good 

reason to require from a plaintiff to exactly 

know the amount of the claim in advance. 

The warning letter should point out an 

infringement; comprise reference to possibility 

of compensation, suggestion to settle the case 

and warning that otherwise the sender is going 

to court. 

Collecting evidence - 

to keep the balance 

Russia does not have any disclosure. It is not 

an omission, it is a principal position: no data 

should be easily provided to a competitor 

unless required by courts. How to prepare a 

case then? 

Collecting evidence needs ultimate creativity. 

Documents and information may be requested 

by an advocate. In the Russian legal system 

till now (although it’s going to change in the 

near future) any person can represent others 

before the courts, with some exceptions. Still, 

only advocates have some privileges, and the 

privilege to request evidence and information 

is one of them. 

To compensate for lack of disclosure, the 

courts are open to demand evidence from third 

parties. Till recently courts demanded evidence 

mostly from customs, but hesitated to demand 

evidence from other governmental bodies. In 

2016 courts started demanding documents 

from the registration dossier in the Ministry 

of Health (cases А41-22640/2016, А41- 

12918/16, А40-197005/16). When demanding 

evidence from third parties, courts have to 

keep the balance between data protection 

rules and patent owner rights. Due to clause 

6 article 10 of the Law «On Commercial 

Secret», commercial secret regime cannot 

be used against protection of other parties’ 

rights. Additionally, procedural law contains 

enough mechanisms to ensure, that sensitive 

information of defendants is not disclosed: a 

party can file a motion for closing hearings, 

as it is done by the defendant in the case А40- 

197005/16. Such attitude relies on position of 

the Constitutional Court as of March 27, 1996 

No 8-П, as of November 11, 2002 No 293-O, 

and Plenum of Supreme Arbitration Court as 

of October 8, 2012 No 61. 

Preliminary 

injunctions - 

are they real? 

Theoretically preliminary injunctions are 

available due to part 2 article 1252 of the 

Civil Code and article 90 of the Arbitration 

Procedural Code, in case of failure to impose 

them, it can result in significant losses to the 

patent owner or irreparable harm or in the case 

of not applying such measures, this can make 

the future final court act unenforceable. 

To prevent causing irreparable harm to the 

plaintiff, the Plenum of the former Supreme 

Arbitration Court (Ruling as of October 12, 

2006 No 55) says, PI should be targeted to 

keep status quo between the parties. Specific 

PI should be proportional to the claims 

and should ensure the claims. Due to these 

requirements preliminary injunctions in 

patent cases are in fact not applied by courts. 

Here are a number of illustrative cases, 

when courts refused to suspend supplies of 

presumably infringing pharmaceuticals under 

governmental contracts: cases N А41-1841/11 

Novartis vs. F-Synthez, А40-30124/15 Pfizer 

vs. Pharmasynthez, А40-114689/12-5-1062 

Novartis vs. F-Synthez. Such suspension, due 

to the courts, doesn’t help to keep status quo 

between the parties, since the patent owner 

may always require reinstatement of damages, 

if it appears that the patent was infringed. At 

the same time not fulfilling the obligations 

under the contract can put the business 

reputation of the defendant under threat and 

this is much more difficult to restore. 

A threat of 

infringement? 

Article 1252 of the Civil Code says that a claim 

can be filed against actions creating a threat of 

infringement. This rule was not applied for a 

long time, because basically the Russian law 

does not know civil liability for preparations 

to infringements. A couple of years ago 

the concept of a suit against the threat of 

infringement was renewed for professional 

discussion due to the revival of the concept 

of the so called «preventive suits», initially 

dating back to eighties. In 2012, the Federal 

Programme «Development of the court 

system» suggested to develop the concept of 

preventive suits and gave rise to a discussion; 

whether a claim against actions creating a 

threat of infringement can be considered 

as a preventive suit? Since preparations to 

patent infringements can be easily traced in 

the pharma field; where information about 

marketing authorisation and price registration 

is publicly available, the concept was tried 

recently in some pharma cases: for example, 

cases А41-46966/15, А41-85807/2016, and 

А40-170151/17. It is interesting that the 

court accepted such construction of claims 

(to prohibit actions creating a threat of 

infringement) and satisfied them only in the 

second case, though in the last case another 

court in similar circumstances considered this 

construction as unacceptable and refused the 

claims. By the time this article is published 

the last two cases should come through the 

Intellectual Property Court as a cassation 

instance, which should say its respective 

opinion, whether this concept is going to 

survive or not. 

In-court patent 

examination - a 

«queen of evidence» 

Due to the procedural law all evidence has 

the same force. Still, in practice an in-court 

examination became a «queen of evidence» in 

patent disputes. 

Particular feature of patent disputes in Russia: 

parties can provide opinions of different 

experts, but they are not treated as «expert 

opinion» in a procedural sense. A truly expert 

opinion is one which is made by an expert 

nominated by the court. The parties suggest 

different candidates, list their credentials, 

suggest questions, put money to the deposit 

of the court, and after that a judge decides 

which expert should be nominated and which 

questions should be asked. An expert should 

be independent from any of the parties, so 

his opinion is paid for by the court for money 

previously paid on the deposit, and it should 

be very carefully observed, that the expert used 

has never provided any payable services to any 

of the parties or their representatives. Judges, 

who really want to go into case particulars, 

nominate a commission of experts: normally 

one from each party. Actually, this is the best 

way to ensure impartiality and compliance 

to adversarial principle, which are the basics 

of the Russian procedural law in economical 

disputes. 

Monetary 

compensation 

The patentee can claim for damages (and prove 

their exact amount) or monetary compensation 

(without proving exact amount). Monetary 

compensation can be a lump sum (from EURO 

140 to EURO 70 000) or a double reasonable 

royalty rate. In practice the courts are not too 

generous to satisfy monetary claims in large 

scales. 

Ultimately, there are many other tips and 

factors to take into consideration when 

starting a patent litigation case in Russia; a 

short overview cannot cover them all. What is 

important is that Russia is a huge market with 

a large capacity; therefore it is very lucrative for 

both patentees and their competitors. At the 

same time patent litigation in this jurisdiction 

has in recent years become very professional 

and therefore much more predictable and 

is now a proper and balanced tool in the 

competition struggle. 


25

2018 AIPPI World Congress – Cancun 

September 23 - 26, 2018 

Cancun has so much to offer, from its incredible local cuisine to the natural beauty of 

its beaches. It boasts well-preserved archeological history and world-class infrastructure, 

along with five-star accommodation and amenities. AIPPI offers you the chance to experience 

all this and more at the World Congress from September 23 to 26, 2018. Take advantage 

of the Early Bird rate by June 12 to secure a reduced registration rate. We look 

forward to joining you where sky meets earth! 

The programme boasts a vast range of topics covering the entire field of intellectual property: 

PANEL SESSIONS 

Pharma Day 

• Access to medicines – what’s fair? 

• The endgame: patent term extensions and SCPs 

• Biosimilar litigation – dissimilar considerations? 

• Big Data and Big Pharma 

Trademarks/copyright 

• Personality rights – it’s all about me ©® 

Trademarks 

• Use it or lose it – genuine use of trademarks 

• Surveying the field – a gold standard for survey evidence 

General 

• Free Trade Agreements – drivers of IP policy? 

• Briefing: hot topics in IP 

• Artificial Intelligence – the real IP issues 

• Alternatives for enforcement: criminal and administrative proceedings 

Patent 

• Standard essential patents – maximising value before enforcement 

• A means to an end – the doctrine of equivalents 

• Harvesting innovation in agriculture – patents and more 

• Out of term – provisional and post term enforcement 

Copyright 

• A balancing act – copyright versus other rights 

• Linking into the digital era 

LUNCH SESSIONS 

Lunch Session 1 

• Trademarks, morality and “The Band Who Must Not Be Named” 


• Briefing: recent developments in IP5 cooperation 


• Blockchain and cryptocurrencies – all you need to know 

PLENARY SESSIONS 

• Conflicting patent applications 

• Partial designs 

• Registrability of 3D trademarks 

• Joint liability for IP infringement 

More information on www.aippi.org 


27

The Art of 

Patent Busting 

Specialist global search services for patent attorneys, 

universities, technology companies and SME’s 

Dean Parry (Technical Director) Patent Seekers Ltd 

www.patentseekers.com 

“Thousands of patents get 

granted every year, but this 

doesn’t mean that they all 

should have been.” 

Mr Dean Parry – Technical Director 

at Patent Seekers Ltd for the last 14 

years, having been involved in more 

than 14,000 searches, for international 

patent attorneys both in private 

practice, in-house and for major blue 

chip companies, discusses the best 

approach for breaking patents: 

So, what is all this 

patent business 

about? 

Well, a patent in simple terms is an agreement 

between governments and inventors (or their 

employer). Governments agree to allow 

an inventor a monopoly over an invention 

(for up to 20 years) in exchange for the full 

disclosure of the invention in the form of a 

patent application. The scale of the monopoly 

is defined by the claims of the patent. If the 

patent is given the all clear (granted) by patent 

offices, then its owner can licence the invention 

or prevent others from manufacturing and 

selling it in the countries concerned. 

at least reduce its monopoly (if this will allow 

the infringement action to be dropped). 

Not all patents are 

valid 

“Thousands of patents get granted every year, 

but this doesn’t mean that they all should have 

been.” There are many reasons for this: 

1) For a patent to be granted, the invention 

defined in the claims must be new and 

not be obvious to a person skilled in the 

technical field. This assessment is made 

on a “worldwide” basis. It’s impossible to 

check all published data to ascertain this. 

2) Patent examiners may have expertise and 

excellent search tools to search worldwide 

patent and non-patent sources, but they 

often have heavy workloads, given the 

increasing number of patent applications 

each year, and so may have a very limited 

time to carry out their searches. 

3) Patent examiners primarily tend to search 

patents, topping up their searching with 

non-patent information. This can leave 

a gap in the coverage, as there may be a 

lot of potentially relevant information in 

technical papers, competitor advertising, 

video demos, etc. 

4) Patents can be wrongly classified, meaning 

that although the patent examiner is 

searching in the correct patent classes 

there may still be relevant patents that are 

missed. 

5) Poorly translated patent information can 

easily be overlooked. 

6) The quality of searching can vary from 

one patent examiner to the next and from 

one patent office to the next. 

Search experts will consider the above in 

determining the most effective strategy to use 

to attempt to break a patent. The approach 

should always be to avoid re-running previous 

searches carried out during the prosecution of 

the patent (and possibly its family members), 

and instead carry out a more focussed search 

and/or look in more depth and consider where 

better results may be classified. 

Where to start when 

checking? 

The best place to start is to identify if the patent 

we are trying to break (known as the “patent in 

suit”) has been attacked before and see why the 

action failed. This may provide information 

on the “new and inventive” element that needs 

to be found to break the patent in suit. If the 

Patentability/Novelty Search 

Infringement/FTO/Clearance 

Invalidity/Patent Busting 

State of the Art 

Patent Mapping/Landscapes 

Patent Monitoring 

Patent Status 

Competitor Analysis 

To prevent third parties form manufacturing 

and selling an invention a patent infringement 

action can be brought about. These are often 

seen in the press where one company is 

challenging another through the courts, for 

example the ongoing legal fight between Apple 

and Samsung over patent infringement relating 

to their smart phone technologies. This kind 

of action can result in damages of millions of 

dollars. 

This brings us on nicely to the world of patent 

busting and why it is needed. When a company 

is threatened with patent infringement, the 

first course of action should be to question the 

validity of the patent being used against them, 

to see if the patent can be broken (revoked) or 

Tel: +44 (0)1633 816601 

Email: mail@patentseekers.com 

www.patentseekers.com 


29

patent hasn’t been attacked before then check 

if there are family members which have been, 

(patents tend to be in families covering more 

than one country). 

Also check any correspondence between patent 

examiners and the applicant issued during 

the examination of the patent in suit from 

application to grant. This can give valuable 

insight into the patent examiner’s view on 

what made the invention new and sufficiently 

inventive for a patent to be granted in the first 

place, and which would need to be found to 

break the patent. 

In some instances, it is also possible to look 

at the search carried out by patent examiners 

to see if there is anything obvious that was 

missed, e.g. potentially relevant patent classes 

that were not covered for some reason. 

Another important check would be to find out 

if the patent in suit is entitled to its priority date 

as there can be instances where the priority 

date is not valid, in which case the filing date 

would be the date from which the patent was 

valid. 

Next consider which of the claims of the patent 

in suit appear to relate to the product you are 

manufacturing and/or selling, as these will be 

the ones that you most likely need to break. 

Once the above checks have been made the 

next step is to put together a search strategy. 

Developing a search 

strategy 

Patent searching: 

A patent search strategy is based around trying 

to put together keywords and patent classes 

which would most likely find earlier patents 

and published patent applications (or “prior 

art”) disclosing information that can be used 

to challenge the novelty and/or inventiveness 

of the patent in suit. 

Keywords and patent classes can be identified 

by looking at the wording and classes for the 

patent in suit and by checking these on its 

forward and backward citations (patent in suit 

cited against other patents and patents cited 

against the patent in suit, respectively). 

It’s important to use keywords across various 

languages, in particular English, French and 

German. 

There are various free and commercial patent 

databases available to carry out the search. 

Many commercial databases now include 

machine translations (some good, some bad) 

for prior art that was originally published in 

Chinese, Japanese, etc. 

Non-Patent searching: 

There should always be consideration for 

non-patent prior art. This may take the form 

of searching scientific papers/journals and 

looking for products on sale, video demos etc, 

depending on the invention covered by the 

patent in suit. The big factors to consider for 

non-patent prior art is that it must be what 

is known as “enabling disclosure” – there 

must be enough information to carry out the 

invention – and you must be able to determine 

the “date of publication”, as it must be proven to 

have been published before the effective filing 

date of the patent in suit, otherwise it may be 

unusable. 

Bringing it all 

together 

Once the search is finished, if you have 

found new prior art that discloses all the 

technical features of the patent in suit, i.e. it 

is “novelty destroying”, there is a good chance 

of breaking the patent, or at least limiting 

its claims. However, even without novelty 

destroying prior art, the patent in suit may still 

be vulnerable to an attack on the basis that is 

not sufficiently inventive. When challenging 

inventiveness, it is possible to combine two or 

more prior art documents together if they are 

in the same or neighbouring technical fields. 

The argument is normally that it would have 

been obvious to the skilled person to combine 

the documents to arrive at the invention in the 

patent in-suit without any inventive activity. 

It’s important to check all family members of 

patents cited on the patent in suit, in case they 

can be combined with the results of the search 

to form inventive step arguments. Likewise, 

check the citations on any good results found 

during the search as these can lead to even 

better results. 

Also, check the assignee and inventors on any 

good results found to see if they have filed any 

other patents that may be closer. 

Novelty destroying prior art will always be the 

strongest attack because it is seen as absolute 

(either the invention was new, or it wasn’t). On 

the other hand, inventive step arguments can 

be subjective (was it obvious to combine prior 

inventions or not…?) 

To conclude; 

Companies need to be aware of the power of 

patent busting because not only can it be used 

to effectively defend against an infringement 

action, it can also be used to end a monopoly 

that prevents a company from entering a 

market or even to help to determine the 

strength/value of your own patents. 

When considering carrying out a patent busting 

search, it’s important to use a specialist to check 

prior prosecutions and statutory searches and 

examinations to determine the scope of the 

search, the appropriate sources to search and 

the best strategy to maximise the chances of 

finding key prior art. This process is improved 

by maintaining good communication between 

the searcher and the attorney, with input from 

the end client to agree the best way forward. 


31

Haptic Feedback – 

making digital more physical 

Ms Doris Spielthenner, General Manager, Practice Insight 

www.practiceinsight.io 

Immersion Corp’s 

Patents 

Coming back to the licensing agreement 

between Immersion Corp and Bosch, the 

origins of their licensing deal can be seen 

through the citation connections between 

Bosch’s and Immersion Corp’s patents. Using 

Citation Eagle, in 2015-16 we can see three 

patent applications from Bosch citing four 

patents assigned to Immersion Corp. These 

three patent applications were for ‘Control and 

Regulation Device’, ‘Layer Arrangement and 

Input / Output Device’, and ‘Touch screen with 

a haptic detectable orientation element and the 

method of manufacturing the same’. 

i - Citation connections between Immersion 

Corp and Bosch. Source: Citation Eagle 

I t 

appears, though, that Bosch is not the only 

automotive player interested in Immersion 

Corp’s technology. The citation connections 

between Immersion Corp’s patents and patents 

from other automotive players sheds light on 

which other automotive players are interested 

in Immersion Corp’s patents. 

ii - Forward Citations for Immersion Corp’s 

patents for past 3 years. Source: Citation Eagle 

These automotive companies include Audi, 

Honda Motor, Harman International and 

Continental Automotive, all of whom have 

patents citing Immersion Corp’s patents. 

Harman International though, have the 

highest amount of citation connections that 

cover all Haptic related technologies e.g Haptic 

notification systems, Haptic audio delivery 

mechanism etc. 

Given that the technology can be used in so 

many other areas – ideally any application 

with a touch interface – the citing companies 

for Immersion Corp’s patents are also varied in 

terms of industries. 

1. Smartphone & Mobile Devices – Apple, 

Microsoft, Sony, Koninklijke Philips, 

Samsung, Motorola, Panasonic, and LG 

Electronics 

2. Medical and Healthcare Devices 

– Ethicon, Alliqua Biomedical, and 

Intuitive Surgical Operations 

3. Appliances – BOE Technology and 

Electrolux 

4. Virtual Reality and Gaming (Display 

& Audio) – Oculus, SonicSensory, and 

SubPac 

5. Semiconductors – Intel 

6. Retail – Walmart Stores 

Ms Doris Spielthenner, 

General Manager of Practice 

Insight talks about patents 

in the up and coming 

technology world. 

Haptic feedback, 

explained… 

Last month, Immersion Corp, a US based 

Technology Company that develops touch 

feedback technology for mobile, virtual reality, 

wearable and gaming applications entered into 

a multi-year license agreement with Robert 

Bosch GmbH. The license agreement provides 

Bosch with access to its patented haptic and 

touch feedback technology for automotive 

applications. Anyone who follows Bosch’s 

R&D would understand their interest in haptic 

interfaces, i.e. interfaces with a haptic (pressure 

or touch) feedback for touch screens. In the 

last few years, Bosch has used this technology 

in their product ‘neoSense’. They have also 

showcased their new developments at various 

trade events stating that this is their vision 

of how touch screen interfaces should be in 

cars. They are also stating how important it 

is to make the touch screen experience as 

unobtrusive for drivers as possible. 

A few years back, there were many different 

visions for how the automobile of the future 

would be. Slowly but steadily, these visions 

seem to be converging to autonomous and 

electric, with some variations in electric such 

as hybrid, fuel cell, still being pursued. Overall 

it seems that the common agreement is that 

the cars of the future will be autonomous. One 

other vision that has quickly become visible 

in many cars now is a digital control system 

interface. Cars have already begun to be built 

with control interfaces similar to tablets and 

smartphones rather than an interface of analog 

controls. 

However, a shortcoming of the traditional 

touch screens is the lack of touch confirmation 

that humans are used to. For example, with 

an analog control, your fingers get a sensory 

confirmation of a button being pressed or a 

dial being turned, whereas with traditional 

touch screens work quite differently. However, 

Haptic touch screens have been built to give 

the user a physical confirmation of an action 

being performed on the touch screen. This is 

a feature that Bosch has been focussing on for 

sometime. 

i - Citation connections between Immersion Corp and Bosch. Source: Citation Eagle 

ii - Forward Citations for Immersion Corp’s patents for past 3 years. Source: Citation Eagle 


33

PATENTS | TRADEMARKS | COPYRIGHTS | TRADE SECRETS 

With Immersion Corp’s many citations and 

the interest from other companies, you can 

be sure that the company is actively filing and 

monetizing patents (Immersion Corp has been 

in the news for quite a few times because of 

their infringement lawsuits against Apple, 

Fitbit, and others). Immersion Corp is a great 

example of a company that a law firm would 

want to work with due to their patent activities. 

Given the application potential of their 

innovation and its future demand, this should 

bring with it the opportunity to upsell licensing 

deals and increase the monetization of their 

patents. 

Their US representation is comparatively much 

more competitive with three firms fighting for 

the top spot, while their Korean representation 

shows than more than 96% of their work is 

handled by a single law firm. 

Filing Analytics shows that ‘Law Firm B’ 

handles the most of Immersion Corp’s EP 

work. When we drill down to see the US case 

flow exchange ‘Law Firm B’, we see that there 

are three US Law firms working mostly with 

‘Law Firm B’. 

From these three US law firms, ‘Law Firm 2’ 

and ‘Law Firm 3’ are the top two law firms that 

are representing Immersion Corp in the US. 

It is quite probable that Law Firm B is the end 

clients ‘Immersion Corp‘, preferred choice for 

their EP representation. 

This as an example shows that a detailed 

analysis of the case flow exchange, such 

dependencies and preferences can be clearly 

seen when doing a thorough competitive 

analysis for a company like Immersion Corp. 

46th 

Annual Meeting 

23-25 September 2018 | Hyatt Regency Hotel | chicago, il 

How to target 

a company like 

Immersion Corp 

To target a company like Immersion Corp, it is 

important to know which law firms you would 

be competing against and where you might 

have lesser competition. 

As a first step, it’s interesting to see how the case 

flows for a company which is being handled. 

You can also see in which jurisdictions a 

company is more likely to work with new law 

firms, and in which jurisdictions a specific law 

firm is doing the majority of their patent work. 

For example in Filing Analytics, we can see 

that the EP representation for Immersion Corp 

is mostly done by a German law firm, but that 

they also use a few other law firms. 

iv - International exchange for ‘Law Firm B’ (EP-US). Source: Filing Analytics 

ADVOCATING EFFECTIVE IP RIGHTS | #IPOAM18 

REGISTRATION OPENING JUNE 2018 AT WWW.IPO.ORG/AM2018 

iii- EP patent application representation for Immersion Corp. Source: Filing Analytics 

JOIN YOUR IP COLLEAGUES AT THIS PREMIER EVENT 

To start your competitive 

or citation analysis, visit 

filinganalytics.io 

or citationeagle.com 

The IPO Annual Meeting offers a mix of educational programs led by 

distinguished presenters, as well as committee meetings, exhibit hall, 

34 

and networking functions. 

FOLLOW US! 

www.gipmatrix.com www.gipmatrix.com 

35

The firm was founded by Joseph Antoine Onambele, 

30 years ago, he was later joined by Mary Concilia 

Anchang. As Founding and managing 

partners they have through their dedication and 

hard work built an international bilingual and bi-jurial 

Full service law firm, based in Yaoundé Cameroon. 

OAA law is proud to be the first Bilingual Law firm in the 

Country practicing in both, Civil Law and Common Law jurisdictions. 

A full-service corporate law firm, OAA law 

serves clients in a diverse range of industries, and has 

over the years grown to include coverage of the CEMAC 

region and globally. Due to her broad based corporate capabilities, 

she represents and assists clients in matters that 

include intellectual property filings and litigation, mergers 

and acquisitions, telecommunication, mining, real estate, 

finance, corporate Law, project finance and joint ventures 

in infrastructure. OAA Law delivers high quality and highly 

efficient services to its clients. OAA Law is a pioneer Law 

firm in Intellectual Property, Corporate Law and Mining Law 

in the Region 

The firms practice over the years has grown to include coverage 

of the CEMAC region and globally. Senior partner 

Joseph Antoine Onambele is the past president of the Cameroon 

National committee of The International Chamber 

of Commerce.(ICC) 

Mary Concilia Anchang is the pioneer IP lawyer in the 

OAPI region. She is also the pioneer t African female court 

member of the International Court of Arbitration, ICC Paris. 

She represented her country, Cameroon in this capacity 

from 2006-2010. She is the current founding chair of the 

African Chamber of Trade & Commerce. (ACC) 

OAA Law offers experienced and well travelled attorneys. 

Their maturity in legal services has been achieved through 

innovation, resilience, research and hard work for clients 

across the globe. 

Address: Opposite United States & Saudie Arabia Embassies Rosa 

Park Avenue-Golf Ntougnou 

P.O Box 662 Yaounde-Cameroon. 

Tel: +237 222 209 776 / +237 677 581 551 

Email: oaalawpartners2@gmail.com / info@oaalaw.cm 

website. : www.oaalaw.cm, 

Our Partners 

The African Chamber of Trade & Commerce (ACC) is an African 

based initiative, headquartered in Yaounde-Cameroon, created to 

facilitate trade between Africa and her partners around the globe. 

ACC provides a platform to visionaries, institutions and investors 

within the continent and the Diaspora to better utilize and exploit 

Africa’s unqualified socio-cultural and economic potential for 

Africa's development and emergence. Our goal is to meet the challenges 

exposed to the world by globalization. Today doing business 

requires bringing together people from different backgrounds for a 

more diversified and dynamic business culture and environment. 

« ACC is an innovative private sector business vector, working 

through a Federated Network of activities, wherein ; stakeholders, 

businesses and institutions trading and investing across Africa are 

able to make conscious business decisions based on where, how 

and when to undertake competitive business opportunities around 

the world, relying on unequivocal information » 

ACC works with Commissions : Intellectual Property (IPR & Business 

partnerships, Diapora and ICT, Finance and Investment, International 

Trade, Commerce, Energy and Environment, Maritime 

Security and Trade, Communication, Culture and Ecotourisme, 

Education and Welfare, Agriculture, 

The ACC platform seeks to consolidate existing and new businesses 

through reliable and federated networks to promote inclusive 

investment opportunities and competiveness for startups and 

SME’s to guarantee that, the UN Sustainable Development Goals 

(SDGs) for Africa are met, considering that Structural adjustment 

economic and financial reforms remain a threat to the region’s 

economic emergence. 

ACC works with financial institutions to enhance efforts to seek 

funding and build sustainable platforms for financial integration and 

autonomy of SME businesses, faced with credit and funding difficulties. 

ACC proposes an experience sharing encounter with major local 

players and financial international financial institutions other partners 

capable of funding businesses. The purpose is to encourage 

starts-ups and others on how to be resistant and resilient in their 

business endeavors, irrespective of inherent difficulties. ACC believes 

good governance practices oblige and lead to good results 

in all fields, in the spirit of strengthening public-private partnerships 

and facilitating the success of North-South entrepreneurship for 

increase productivity and competiveness for SME’s. 

ACC’s partners and members: Chambers of Commerce, 

Businesses, Law firms, NGO’s, Institutions… 

Adress : The African Chamber of Trade & Commerce (ACC) 

P.O Box 35040, Bastos Yaounde-Cameroon. 

Tel: +237 695 228 348 / +237 677 581 551 / + 242 640 074. 

International contact : Washington DC Telephone. : +202 460 074 

Website : www.africanchamber-abo.org, 

Email : africanchambernetwork@gmail.com, info@africanchamber-abo.org 

facebook. : africanchambernetwork 


37

IP ARIPO 

African Regional Intellectual 

Property Organization 

ARIPO 

explains WHY? 

Susan Mwiti, Documentations and Communications Officer at ARIPO 

www.aripo.org 

‘Susan Mwiti, 

Documentations and 

Communications Officer’ 

at ARIPO explains why 

you should make your IP 

registration with them. 

Why you should make 

your Trademark 

application with 

ARIPO 

Throughout the world, an efficient 

and equitable Intellectual Property 

system is a powerful tool for economic 

development and social and cultural 

wellbeing as it rewards creativity 

and human endeavour by providing 

an environment for creativity and 

invention to flourish, to the benefit of 

national economies and individuals 

alike. 

At the African Regional Intellectual Property 

Organization (ARIPO), awareness creation on 

IP in Africa has been one of its key activities in 

line with its Value and Growth Transformation 

Strategic Plan running from 2016 to 2020. 

According to the ARIPO Director General, Mr. 

Fernando dos Santos, ARIPO’s current vision 

is to be pan-African and the leading IP hub in 

Africa. He says, 

Having grown from humble beginnings from 

its birth in 1976, ARIPO has matured into an 

IP giant today. “ARIPO adopted the current 

vision to foster creativity and innovation for 

economic growth and development on the 

continent.”Membership to ARIPO is open 

to all African states who are members of the 

African Union or the United Nations Economic 

Commission for Africa (ECA). Currently, 

ARIPO has 19 Member States being; Botswana, 

The Gambia, Ghana, Kenya, Lesotho, Liberia, 

Malawi, Mozambique, Namibia, Rwanda, São 

Tomé and Príncipe, Sierra Leone, Somalia, 

Sudan, Swaziland, Tanzania, Uganda, Zambia 

and Zimbabwe. 

The firm was founded by Joseph Antoine Onambele, 

The 

30 

firm 

years 

was 

ago, 

founded 

he was 

by 

later 

Joseph 

joined 

Antoine 

by Mary 

Onambele, 

Concilia 

30 

Anchang. 

years ago, 

As 

he 

Founding 

was later 

and 

joined 

managing 

by Mary Concilia 

Anchang. 

partners 

As 

they 

Founding 

have through 

and managing 

their dedication and 

partners 

hard work 

they 

built 

have 

an 

through 

international 

their 

bilingual 

dedication 

and 

and 

bi-jurial 

hard 

Full 

work 

service 

built 

law 

an 

firm, 

international 

based in 

bilingual 

Yaoundé 

and 

Cameroon. 

bi-jurial 

Full service law firm, based in Yaoundé Cameroon. 

OAA law is proud to be the first Bilingual Law firm in the 

OAA 

Country 

law is 

practicing 

proud to 

in 

be 

both, 

the 

Civil 

first Bilingual 

Law and Common 

Law firm in 

Law 

the 

jurisdictions. 

Country practicing 

A full-service 

in both, Civil 

corporate 

Law and 

law 

Common 

firm, OAA 

Law jurisdictions. 

law 

serves clients 

A full-service 

in a diverse 

corporate 

range of 

law 

industries, 

firm, OAA 

and 

law 

has 

serves 

over the 

clients 

years 

in 

grown 

a diverse 

to include 

range 

coverage 

of industries, 

of the 

and 

CEMAC 

has 

over 

region 

the 

and 

years 

globally. 

grown 

Due 

to include 

to her 

coverage 

broad based 

of the 

corporate 

CEMAC 

capabilities, 

region and globally. 

she represents 

Due to 

and 

her 

assists 

broad based 

clients 

corporate 

in matters 

capabilities, 

that 

include intellectual 

she represents 

property 

and assists 

filings 

clients 

and litigation, 

in matters 

mergers 

that 

include 

and acquisitions, 

intellectual property 

telecommunication, 

filings and litigation, 

mining, real 

mergers 

estate, 

and 

finance, 

acquisitions, 

corporate 

telecommunication, 

Law, project finance 

mining, 

and joint 

real 

ventures 

estate, 

finance, 

in infrastructure. 

corporate 

OAA 

Law, 

Law 

project 

delivers 

finance 

high 

and 

quality 

joint ventures 

and highly 

in 

efficient 

infrastructure. 

services 

OAA 

to its 

Law 

clients. 

delivers 

OAA 

high 

Law 

quality 

is a pioneer 

and highly 

Law 

efficient 

firm in Intellectual 

services to 

Property, 

its clients. 

Corporate 

OAA Law 

Law 

is a 

and 

pioneer 

Mining 

Law 

Law 

firm 

in the 

in Intellectual 

Region 

Property, Corporate Law and Mining Law 

in 

The 

the 

firms 

Region 

practice over the years has grown to include coverage 

The firms 

of 

practice 

the CEMAC 

over the 

region 

years 

and 

has 

globally. 

grown to 

Senior 

include 

partner 

coverage 

Joseph 

of 

Antoine 

the CEMAC 

Onambele 

region 

is 

and 

the 

globally. 

past president 

Senior 

of 

partner 

the Cameroon 

Joseph Antoine 

National 

Onambele 

committee 

is the 

of The 

past 

International 

president of 

Chamber 

the Cameroon 

of Commerce.(ICC) 

National committee of The International Chamber 

of 

Mary 

Commerce.(ICC) 

Concilia Anchang is the pioneer IP lawyer in the 

Mary 

OAPI 

Concilia 

region. She 

Anchang 

is also 

is 

the 

the 

pioneer 

pioneer 

t African 

IP lawyer 

female 

in 

court 

the 

OAPI 

member 

region. 

of the 

She 

International 

is also the pioneer 

Court of 

t African 

Arbitration, 

female 

ICC 

court 

Paris. 

member 

She represented 

of the International 

her country, 

Court 

Cameroon 

of Arbitration, 

in this 

ICC 

capacity 

Paris. 

She 

from 

represented 

2006-2010. 

her 

She 

country, 

is the current 

Cameroon 

founding 

in this 

chair 

capacity 

of the 

from 

African 

2006-2010. 

Chamber 

She 

of Trade 

is the 

& 

current 

Commerce. 

founding 

(ACC) 

chair of the 

African 

OAA Law 

Chamber 

offers 

of 

experienced 

Trade & Commerce. 

and well travelled 

(ACC) 

attorneys. 

OAA 

Their 

Law 

maturity 

offers 

in 

experienced 

legal services 

and 

has 

well 

been 

travelled 

achieved 

attorneys. 

through 

Their 

innovation, 

maturity 

resilience, 

in legal services 

research 

has 

and 

been 

hard 

achieved 

work for 

through 

clients 

innovation, 

across the 

resilience, 

globe. 

research and hard work for clients 

across the globe. 

Address: Opposite United States & Saudie Arabia Embassies Rosa 

Address: Park Avenue-Golf Opposite United Ntougnou States & Saudie Arabia Embassies Rosa 

Park P.O Avenue-Golf Box 662 Yaounde-Cameroon. 

Ntougnou 

P.O Tel: Box +237 662222 Yaounde-Cameroon. 

209 776 / +237 677 581 551 

Tel: Email: +237 oaalawpartners2@gmail.com 222 209 776 / +237 677 581 551 / info@oaalaw.cm 

Email: website. oaalawpartners2@gmail.com : www.oaalaw.cm, / info@oaalaw.cm 

website. : www.oaalaw.cm, 

Our Partners 

Our Partners 

The African Chamber of Trade & Commerce (ACC) is an African 

The based African initiative, Chamber headquartered of Trade & in Commerce Yaounde-Cameroon, (ACC) is an created Africanto 

based facilitate initiative, trade headquartered between Africa in and Yaounde-Cameroon, her partners around created the globe. to 

facilitate ACC provides trade between a platform Africa to visionaries, and her partners institutions around and the investors globe. 

ACC within provides the continent a platform and to the visionaries, Diaspora institutions to better utilize and and investors exploit 

within Africa’s the continent unqualified and socio-cultural the Diaspora and to better economic utilize and potential exploit for 

Africa’s Africa's unqualified development socio-cultural and emergence. and Our economic goal is to potential meet the challenges 

development exposed to the and world emergence. by globalization. Our goal Today is to meet doing the business chal- 

for 

Africa's 

lenges requires exposed bringing to the together world by people globalization. from different Today backgrounds doing business for a 

requires more diversified bringing together and dynamic people business from different culture backgrounds and environment. for a 

more diversified and dynamic business culture and environment. 

« ACC is an innovative private sector business vector, working 

« through ACC is an a Federated innovative Network private of sector activities, business wherein vector, ; stakeholders, working 

through businesses a Federated and institutions Network trading of activities, and investing wherein across ; stakeholders, Africa are 

businesses able to make and conscious institutions business trading and decisions investing based across on where, Africa are how 

able and to when make to conscious undertake business competitive decisions business based opportunities on where, around how 

and the when world, to relying undertake on unequivocal competitive business information opportunities » around 

the ACC world, works relying with on Commissions unequivocal : information Intellectual » Property (IPR & Business 

works partnerships, with Commissions Diapora and : Intellectual ICT, Finance Property and Investment, (IPR & Busi-Innesternational 

partnerships, Trade, Diapora Commerce, and ICT, Energy Finance and Environment, and Investment, Maritime In- 

ACC 

ternational Security Trade, and Trade, Commerce, Communication, Energy and Culture Environment, and Ecotourisme, Maritime 

Security Education and and Trade, Welfare, Communication, Agriculture, Culture and Ecotourisme, 

Education The ACC and platform Welfare, seeks Agriculture, to consolidate existing and new businesses 

ACC through platform reliable seeks and to consolidate federated networks existing to and promote new busi- 

inclu- 

The 

nesses sive investment through reliable opportunities and federated and competiveness networks to promote for startups inclusive 

SME’s investment to guarantee opportunities that, the and UN competiveness Sustainable Development for startups Goals and 

and 

SME’s (SDGs) to guarantee for Africa are that, met, the considering UN Sustainable that Development Structural adjustment Goals 

(SDGs) economic for Africa and financial are met, reforms considering remain that a threat Structural to the adjustment region’s 

economic economic and emergence. financial reforms remain a threat to the region’s 

economic emergence. 

ACC works with financial institutions to enhance efforts to seek 

ACC funding works and with build financial sustainable institutions platforms to for enhance financial efforts integration to seek and 

funding autonomy and build of SME sustainable businesses, platforms faced for with financial credit and integration funding and difficulties. 

of SME businesses, faced with credit and funding diffi- 

autonomy 

culties. 

ACC proposes an experience sharing encounter with major local 

ACC players proposes and financial experience international sharing financial encounter institutions with major other local partners 

capable and financial of funding international businesses. financial The purpose institutions is to other encourage part- 

players 

ners starts-ups capable and of funding others businesses. on how to be The resistant purpose and is resilient to encourage in their 

starts-ups business and endeavors, others on irrespective how to be of resistant inherent and difficulties. resilient in ACC their believes 

good endeavors, governance irrespective practices of oblige inherent and difficulties. lead to good ACC results be- 

business 

lieves in all good fields, governance in the spirit of practices strengthening oblige public-private and lead to good partnerships results 

in and all fields, facilitating in the the spirit success of strengthening of North-South public-private entrepreneurship partnerships for 

and increase facilitating productivity the success and competiveness of North-South entrepreneurship for SME’s. for 

increase productivity and competiveness for SME’s. 

ACC’s partners and members: Chambers of Commerce, 

ACC’s Businesses, partners Law and firms, members: NGO’s, Chambers Institutions… of Commerce, 

Businesses, Law firms, NGO’s, Institutions… 

Adress : The African Chamber of Trade & Commerce (ACC) 

Adress P.O Box : The 35040, African Bastos Chamber Yaounde-Cameroon. 

of Trade & Commerce (ACC) 

P.O Tel: Box +237 35040, 695 Bastos 228 348 Yaounde-Cameroon. 

/ +237 677 581 551 / + 242 640 074. 

Tel: International +237 695 228 contact 348 / +237 : Washington 677 581 DC 551 Telephone. / + 242 640 : 074. +202 460 074 

International Website : www.africanchamber-abo.org, 

contact : Washington DC Telephone. : +202 460 074 

Website Email : africanchambernetwork@gmail.com, www.africanchamber-abo.org, info@africanchamber-abo.org 

Email facebook. : africanchambernetwork@gmail.com, : info@africanchamber-abo.org 

facebook. : africanchambernetwork 


39

Creating incentives 

to solve problems 

innovatively 

ARIPO has been key to protecting Africa’s 

intellectual property rights through patents, 

trademarks, utility models, industrial designs, 

traditional knowledge and expressions 

of folklore and is endeavoring to protect 

copyrights, plant varieties and geographical 

indications in the same manner as well as 

contributing towards the shaping of the African 

and global intellectual property landscape. In 

fact, when you apply for registration/grant of 

a trademark, patent, utility model or industrial 

design with ARIPO you have a choice of all or 

some contracting states to a protocol in a single 

registration. 

According to the ARIPO Director General, 

Fernando dos Santos, “The IP system creates 

incentives for people who come out with 

innovative ideas to solve problems facing 

society.” It does so by protecting their rights 

so that they are not robbed of the products of 

their minds. 

Thus, efficient IP systems have become even 

more critical today, as “the world has shifted 

to the knowledge economy of which IP is the 

main driving force,” says Mr. Dos Santos. 

Filing trademarks 

with ARIPO 

The Banjul Protocol, adopted in 1993, entrusts 

ARIPO with the function of registration of 

marks and administration of such registered 

marks on behalf of the contracting states 

in accordance with the provisions of this 

protocol. Ten states are currently party to the 

protocol and these are Botswana, Lesotho, 

Liberia, Malawi, Namibia, São Tomé and 

Príncipe, Swaziland, Tanzania, Uganda and 

Zimbabwe. In addition, strong intentions by 

two member states to be party to the system 

have been shown recently. 

The ARIPO route for 

the registration of 

marks is very easy! 

It has become even smoother with the use 

of new technology especially the availability 

of the ARIPO e-services of online filing. The 

online services allow applicants, attorneys, 

agents and other users to conduct their ARIPO 

business electronically in a secure state of 

the art environment. This facility allows for 

online filing of IP files, online payment of fees, 

sending and receiving notifications and general 

tracking of filed applications. Currently on 

average, 60% of the applications are now being 

filed online. By filing online, one also gets a 

20% discount on the application fee. It is also 

easier to process the applications internally. 

Since December 2015 ARIPO has made its 

published Trademarks information available 

on the TMView platform and in April 2018, 

ARIPO was integrated to the TMClass that 

offers users the opportunity to search and 

translate goods and services to and from many 

languages available. 

ARIPO has developed a pilot database with 

more than 350,000 Trademarks from ARIPO 

and its member states which include; Botswana, 

Gambia, Ghana, Kenya, Malawi, Mozambique, 

Namibia, Rwanda, Tanzania, Uganda, Zambia 

and Zimbabwe. The objective is to create a 

centralized database for its published IP titles 

and those of its Member States. 

Enforceability of 

ARIPO Registrations 

As to the enforceability of ARIPO 

registrations, it is important to note that, many 

of the Contracting States are adopting new 

legislations on Trademarks and, importantly, 

they are formally domesticating the Banjul 

Protocol on marks in the framework of ARIPO. 

The most recent is Malawi that dedicated a 

schedule in its new Act on the procedures 

applicable to ARIPO registrations. There 

are also other contracting States that do not 

even need to formally domesticate the Banjul 

Protocol or any other international treaty they 

ratify or accede to simply because of their legal 

tradition that recognizes any international 

treaty duly ratified as part of the legal arsenal. 

This is the case for Namibia and São Tomé and 

Príncipe. 

There are also countries that, though not yet 

contracting parties to the Banjul Protocol, 

have already enacted provisions in their 

domestic laws that pave way to the immediate 

implementation of the Banjul Protocol if these 

countries became party. This is the case of 

Kenya and Mozambique. 

Additional services 

ARIPO also offers other services to promote 

the use of the IP system by its Member States 

and Africa as a whole. ARIPO carries out 

substantive examination of patent applications, 

grants patents, registers trademarks, industrial 

designs and utility models and administers the 

same on behalf of the Member States. 


The office also conducts several search services 

for the public (in most instances for free to 

citizens of the member states). Some of these 

are; state-of-the-art searches, novelty searches, 

validity searches, bibliographic searches, 

infringement (Freedom to Operate) searches, 

patent family searches, copy searches, as well 

as trademark searches. 

Supporting training 

& helping to build the 

future 

As part of its mandate, ARIPO also trains staff 

of industrial property offices from its member 

states in proper administration and processing 

of intellectual property under the ARIPO 

treaties. The Organization also assists member 

states nationals and institutions to acquire and 

utilise foreign appropriate technologies and 

encouraging indigenous inventors to utilise 

available patent information and technologies 

to start their small business enterprises. 

ARIPO has also been creating a critical 

mass of IP experts on the continent, in 

partnership with the World Intellectual 

Property Organisation (WIPO) and the Africa 

University in Mutare, Zimbabwe. Together 

with these partners, ARIPO has supported 

a Masters in Intellectual Property (MIP) 

programme at the Africa University, which 

has so far produced 252 graduates drawn from 

over 25 African countries. In furtherance of 

the programme, ARIPO, in partnership with 

the Kwame Nkrumah University of Science 

and Technology (KNUST) in Kumasi, Ghana, 

and the Intellectual Property Office of Ghana, 

enrolled the first intake of MIP students 

at the KNUST in February 2018. Another 

programme targeting East Africa is in the 

pipeline, to be hosted by the University of Dar 

es Salaam in Tanzania. 

Fingers on the pulse of global IP 

• Interviews & featured articles 

• Independent columnists 

• Q&A's 

• Law firm profiles 

• Movers and shakers 

• 15,000 database of IP Professionals 

+ much more 

For more information contact us at: 

info@gipmatrix.com 



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- Founded in 1986 

- Full range of patent, design and literature searches 

- Staff skilled in all fields of science and technology 

- Meticulous, resourceful, cost-effective 

Searching the world’s IP by class, code, keyword, 

structure, sequence, image and interview. 

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request@victorgreen.co.uk 

www.victorgreen.co.uk 

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+44-(0)20-7269-9200 

Victor Green & Company 

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