Global IP Matrix - Issue 2

Northons1975

Thank you for downloading this copy of Global IP Matrix magazine”. We are elated with the reception & feedback our magazine has had since our launch during the INTA Conference in Seattle in May 2018.
We have strived to ensure that this issue is also packed full of current content & issues from some of the world’s leading IP law firms and businesses. We endeavour to bring you a new, contemporary magazine with interesting articles from all over the globe with topics and issues that will educate you in all things IP and also keep you wanting to read & know more.
We would like to thank all of our contributors and all our subscribers from all over the world who are reading our new publication and spreading the word.

Thank you! Look out for the next one!

Elvin Hassan
Senior Editor - Global IP Matrix

www.gipmatrix.com

1


CONTENTS

Page 4

The Complex Art of Infringement Searching

Dean Parry, Technical Director

at PatnetSeekers Wales UK

Page 7

Unearthing the Russian Mole

Victor Green & Company London UK

Page 10

Utility Model Protection in Poland

Marek Bury, Managing Partner at Bury & Bury Poland

Page 12

Artificial intelligence in the Caribbean

and Latin America

Gabriela Bodden, Partner at Eproint Costa Rica

Page 15

Domain names – Are they infringing on your IP

Bart Mortelmans,General manager of bNamed.net

Page 17

Enforcement of IP rights in Sri Lanka

Anomi I Wanigasekera, Partner & Head of Intellectual

Property at Julius & Creasy

Page 19

Joint ownership of trademarks.

Vladimir Biriulin, Partner at Gorodissky & Partners

Thank you for picking up a copy of “The

Global IP Matrix magazine”. We are elated

with the reception & feedback our magazine

has had since our launch during the INTA

Conference in Seattle in May 2018.

We have strived to ensure that this issue is

also packed full of current content & issues

from some of the world’s leading IP law firms

and businesses. We endeavour to bring you a

Page 22

Trademark trend in Africa

Brenda Matanga –

Managing Attorney at B Matanga IP Attorneys

Page 24

ECTA exclusive - The Final Farewell & New Beginnings

Ruta Olmane Immediate past President of ECTA

Associated Partner of METIDA & Dr. Gergely Dzsinich,

(LLM Strategy & Communication Officer at ECTA)

Page 27

Trademark Infringement and the Remedy of

‘Passing Off ’ in Nepal

Anju Upreti Dhakal and Kripa Shrestha

From Pioneer Law

Page 30

Seize business opportunities using smart IP data

Ms Doris Spielthenner, Director, Law Firm Analytics,

CPA Global

Page 33

EUIPO: IPR Infringement Report summarised

Lisa Lovell, CEO Brand Enforcement UK

new, contemporary magazine with interesting

articles from all over the globe with topics

and issues that will educate you in all things

IP and also keep you wanting to read & know

more.

We would like to thank all of our contributors

and all our subscribers from all over the world

who are reading our new publication and

spreading the word. Thank you! Look out for

the next one!

Elvin Hassan

Senior Editor - The Global IP Matrix

Carlos Northon

CEO & Founder Northon’s Media PR & Marketing LTD

Publisher of The Global IP Matrix

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


PATENTS

4

The Complex Art of

Infringement

Searching

“Not checking for third party

patent rights is one of the

biggest mistakes made by

companies when launching a

new product”

Mr Dean Parry – Technical Director

at Patent Seekers Limited for the

last 14 years, having been involved

in more than 14000 searches, for

international patents attorneys both

in private practice, in-house and for

major blue-chip companies, discusses

the importance of carrying out

infringement searching:

So, what is patent

infringement?

The owner of a granted patent has a monopoly

(defined by the patents claims) over his

invention for up to 20 years, if in this time a

third party tries to manufacture and/or sell the

invention in the territories/countries protected

by the patent then they risk infringing the

patent rights of the owner.

Therefore, anyone intending on manufacturing/

selling (launching) a new product should have

a patent infringement search to assess the risk

of infringement. In fact, not checking for

third party patent rights is one of the biggest

mistakes made by companies when launching

a new product and may result in them being

sued for wilful infringement (deliberate

infringement which carries greater damages).

The importance

of using a patent

attorney

Before having a patent infringement search

carried out, the best approach is to have an

initial discussion (and engage) with a registered

patent attorney. As patent infringement law is

an incredibly specialised area, an attorney can

help direct the scope of a search and is the only

person qualified to give the final decision on

whether you are infringing third party patent

rights.

Carrying out the

infringement search

Due to the complexities of patent infringement

searching it is wise to use an experienced search

firm to carry out the search. An example of the

complexities relates to using prior case law for

guidance, especially when considering multiple

countries as there are differences in patent law

from e.g. European compared to US.

When carrying out these patent searches, it’s

best to use a broad, catch all approach. Search

on the essential features of the invention; find

patents (and patent claims) using the most

likely keywords and/or patent classes, and use

the tried and tested search techniques, while

limited to the territories/countries of interest

in the last 20 years.

It’s important to note that patents fall into

several categories during their life cycle:

1. Granted alive patents

2. Granted patents that are now

dead (e.g. early death due to

non-payment of renewal fees,

invalidity action or because they

have recently come to end of the

lifetime of a patent)

3. Patent applications that are alive

4. Patent applications that are dead

5. All the above should be

considered during the search and

then categorized in the results.

The analysis of the results will

help give a greater understanding

when trying to launch a product.

For example:

1. Without question all close,

granted and alive patents need to

be considered.

2. A dead patent that is bang on

for subject matter may have died

due to an invalidity action, so

Dean Parry (Technical Director) Patent Seekers Ltd

www.patentseekers.com

you would want to know this and

whether the way is now clear for you.

3. A patent application that is alive and

close on subject matter may not be

granted now but could be granted in

the future e.g. next week!

Developing a search

strategy

Once an attorney has put together

the main features of the product

and the territories of interest, a

search strategy can be formulated.

A patent infringement search strategy is based

around trying to put together keywords and

patent classes which would have most likely

been used on third party patents. Patent

classes can be identified by looking at the

class description list and the first initial set

of keywords would be the main features

provided by the attorney or company. These

classes and keywords are then used to find an

initial list of patents which can then be used

to create a larger list from their forward and

backward citations. These can then be checked

for keywords and classes used. In this way the

search is taken forward to find further results.

There are various free and commercial

patent databases available to carry out an

infringement search. They contain many

useful features to simultaneously display title,

abstract, main drawing and main claims to

help identify any patents that may pose an

infringement risk. Also, many databases now

include machine translations (some good,

some bad) for territories such as China, Japan,

Korea, etc, to help cover these territories.

Once the main patent results have been found,

it’s important to check the status (application,

granted, alive or dead) of each patent. This can

be done in a few ways including INPADOC

and national patent office checks. There

can be delays and errors in INPADOC so it’s

important to cross check against the national

registers for any patents that are considered

an infringement risk based on subject matter

to gain an up to date and accurate assessments

on status.

How much should be

spent?

Well how much money should

you be throwing at this?

It’s a common question and not an easy one

to answer. There are several questions to

consider:

1. How heavily patented is the market

you are looking to enter and how

litigious is it?

2. Are you a start-up company or

established small, medium or large

company?

3. How deep are your pockets?

When considering the market you are entering,

are there a lot of patents in this subject area? If

there aren’t then the search may be relatively

inexpensive. However, a heavily patented area

such as mobile phone technology would have

thousands of patents, and there may have been

a large number of infringement actions taken.

This would usually require an extensive search

costing many thousands of dollars (would you

really want to enter this market off the back of

a small search?).

If you are a start-up company, then the costs

may be prohibitive, but it is better to have some

level of search carried out than none at all.

Sometimes a simple search can give results that

provide enough of a warning that this market

should not be entered or would need changes

to the product. But nothing can be a substitute

for an extensive search to provide an accurate

representation of the infringement position.

A word on

Supplementary

protection certificates

(SPCs)

SPCs are applicable to certain subject matter,

which the UKIPO details as the protection

of patented active ingredients present in

pharmaceutical or plant protection products

for which you must obtain regulatory

approval to be sold. Examples are marketing

authorisation or product licence. Where a

patent protects “active ingredients”, the SPC

can compensate for the lag time involved in

obtaining regulatory approval, by extending

the patent expiry date up to a maximum of

5 years, although with the potential for a

6-month extension where relevant paediatric

testing has occurred.

From an infringement searching perspective,

the increased timeframe for results to be

granted/alive should be factored in when

dealing with applicable subject matter. This

involves the date period which will need to be

covered during an infringement search; going

back from present day and the potential expiry

date of a patent in the future if granted an SPC.

It is therefore advisable to seek professional

legal advice concerning SPCs and to utilise

an experienced search firm to carry out the

necessary searching and setup involved.

How does

infringement

searching differ from

prior art searching?

Again, this is a common question and although

there are numerous differences between the

two searches, the primary differences are:

1. Territories/countries covered

2. Date range

3. Purpose

4. Searching and analysis of claims

5. Price

A prior art search focuses on patent

descriptions and is typically not limited by any

specific territory or date, while an infringement

search will focus on patent claims and be

limited to publications in the territories/

countries of interest in the last 20 years. The

date range ensures that older documents which

can no longer be in force are not covered by

the infringement search, while limiting to

the territories/countries of interest ensures

only documents which may pose a genuine

infringement risk are identified.

The purpose of the search is also important, a

prior art search attempts to show whether an

invention is new and inventive, whereas an

infringement search is trying to show whether

a product falls within the monopoly covered by

one or more patents.

The search and analysis of patent claims, as

opposed to descriptions as covered by a prior

art search is key to any infringement search. As

while they define the protected invention they

are often written in extremely broad terms

and, as such, can often be misinterpreted.

Similarly, due to the broad nature of the claims

the full specification of most documents must

also be reviewed to determine whether an

infringement risk exists in relation thereto.

This is particularly true of early adopters of

a technology. Their initial filings may cover

the basis for much of the advancements

that have followed, and may be worded

differently to more recent documents, and

recent applications, which may be amended to

include features from the specification before

grant.

All the above shows why an infringement

search is a much more in-depth and timeconsuming

search in comparison to a prior

art search, which in turn leads on to the

increased costs associated with them.

To conclude;

When launching a new product, it’s important

to consider your infringement risk. Consider

the size of the market (and how many big

players there are within the market), approach

a patent attorney to discuss the product scope

and territories you wish to manufacture and/

or sell into. An attorney will be well placed to

commission a commercial patent infringement

search and advise them on the technical

features of the invention.

The best option is an extensive search but if

this is beyond your budget then it is worth

considering scaled down versions of this rather

than having no search at all. Gauge the costs of

the search best on the market you are entering.

A professional search should be carried out

with consideration of all patents (applications,

granted, alive and dead), limited to the time

frame and territories of interest, as this will

provide the true picture of the infringement

position not just now but also the potential

position in the future e.g. patents that may be

granted in the future.

The final word on the infringement position

would need to be considered by the attorney,

once the final results have been analysed and

compared to the product.

When launching a new product, it’s important

to consider your infringement risk. Consider

the size of the market (and how many big

players there are within the market), approach

a patent attorney to discuss the product scope

and territories you wish to manufacture and/

or sell into. An attorney will be well placed to

commission a commercial patent infringement

search and advise them on the technical

features of the invention.

The best option is an extensive search but if

this is beyond your budget then it is worth

considering scaled down versions of this rather

than having no search at all. Gauge the costs of

the search best on the market you are entering.

A professional search should be carried out

with consideration of all patents (applications,

granted, alive and dead), limited to the time

frame and territories of interest, as this will

provide the true picture of the infringement

position not just now but also the potential

position in the future e.g. patents that may be

granted in the future.

The final word on the infringement position

would need to be considered by the attorney,

once the final results have been analysed and

compared to the product.

www.gipmatrix.com www.gipmatrix.com

5


Unearthing the

Over 30 years of searching excellence

Russian Mole

Meticulous

Resourceful

Cost-effective

Specialist global search services for patent attorneys,

universities, technology companies and SME’s

Patentability/Novelty Search

Infringement/FTO/Clearance

Invalidity/Patent Busting

State of the Art

Patent Mapping/Landscapes

Patent Monitoring

Patent Status

Competitor Analysis

Tel: +44 (0)1633 816601

Email: mail@patentseekers.com

www.patentseekers.com

Introduction

Patent information work is sometimes more

colourful than one would expect. At Victor

Green & Company we’ve been asked to carry

out searches that need a lot of lateral thinking.

In a memorable enquiry about a Russian

device called the “Magic Mole”, a great deal of

detective work was required to find the answer.

The Magic Mole was the subject of a US patent

and our client needed to prove they were not

infringing the patent claims by the sale of a

similar product. We were able to identify an

expert witness who contributed to a successful

outcome; the plaintiff dropped the action

against our client.

Should you wish to requisition a search from

us, colourful or otherwise, rest assured that the

relationship between you and Victor Green &

Company, and any information you provide,

will be kept strictly confidential. We took

care to obtain permission from the instructing

attorney for us to publish an account of this

interesting case.

The Search

In 1989 there was a search inquiry about

a ‘Russian Magic Mole’. The Magic Mole

was a machine that allowed pipes to be laid

underground without the need to dig trenches

or tunnels. It looked like a torpedo and

could bore horizontal channels for pipes and

cables under canals, roads and railways using

a pneumatic hammer action. The Russian

inventors had obtained a US patent1 covering

the device and our client was being sued by

them in the United States.

The machine had been imported into the

United Kingdom in 1969, before the US

priority date, knowledge of which would

indicate that the patent was invalid. Although

the US Company knew of prior use of the

device and verbal evidence would have been

sufficient if the disclosure had occurred in

the United States, they needed documentary

evidence for a US court if the information had

arisen in other territories.

It was known that George Cohen Machinery

Ltd had imported the tunnelling device into

the UK by 19742. Patent analysts at Victor

Green & Company started by telephoning

the company and learned that the first batch

of machines had been imported by some

other company. By a series of contacts we

found a company in Ireland that had bought

one of the machines in April 1970 and still

- Founded in 1986

- Full range of patent, design and literature searches

had the manual. Their engineer was good remembered a demonstration of the Magic

- Staff skilled in all fields of science and technology

enough to send the whole document, which Mole and who had diaries dated well before the

- Meticulous, resourceful, cost-effective

by extraordinary luck still had attached the priority date. At a visit to Taunton he was able

compliment slip from the importer, Wogau to show us an entry for January 1969 indicating

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

Brameast Trading Ltd3, signed E.W. Webb. his attendance and proving that the machine

structure, sequence, image and interview.

had public disclosure even before the Russian

priority date of 26 February 1969.

The Importer

With that information in our hands we

went hunting for Mr E.W. Webb. Telephone

directories of the regions of the UK, working

outwards from London, were examined for

every occurrence of the name E.W. Webb

and these were followed up by phone until we

discovered the person we wanted, retired but

alive and reasonably well in Milton Keynes. He

had worked for the Guinness Mahon merchant

bank which owned Wogau Brameast, and was

responsible for the original importation of the

first 40 Magic Moles.

Demonstrations

A meeting with Mr Webb was very fruitful.

The 40 machines were sold, but the product

had been dropped by the bank and the spares

sold off. Mr Webb had set up and attended

demonstrations of the Magic Mole and was

able to give us the name of the engineer, Albert,

who had carried out the demonstrations. The

demonstrations included one in the grounds

of the US ambassador’s residence in London,

Winfield House, with the aim of laying cable

without disturbing the rose beds. We realised

that the demonstration had therefore taken

place on US soil, and wondered if eyewitness

evidence would be sufficient if the date could

be established as early enough. This was

verified by the American Bar Association,

but unfortunately the embassy staff had no

particular interest in helping us with our

enquiries, believing that the records would be

difficult to access if they even still existed.

By another series of contacts…

An engineer in Hull remembered that he

used to obtain spares from “a plumber in

Norwich”. We searched the Yellow Pages for

Norwich (for younger readers these were

telephone directories classified by trades and

occupations), and by phoning everyone in

the list of plumbers, we identified a Mr Reg

Whiting as the owner of the Magic Mole

spares. He too was tremendously helpful. He

faxed us a list of the forty owners of Magic

Moles, and as we started contacting the names

we found an engineer at the South West

Electricity Board in Taunton, Somerset who

www.gipmatrix.com

Victor Green, MD

www.victorgreen.co.uk

request@victorgreen.co.uk

Conclusion

+44-(0)20-7269-9200

www.victorgreen.co.uk

Victor Green & Company

+44-(0)20-7269-9210

Victor Green & Company

Victor Green & Company

First Floor, 25 Angel Gate, City Road, London, EC1V 2PT, England

Albert and the man who had first identified

the Magic Mole in Russia as a machine

worth importing were also interviewed, and

a meeting was arranged at a London patent

attorney’s office at which all the interviewees

were brought together after some 18-20 years

for a discussion with our client’s US attorney

in a strange kind of reunion.

Subsequently it was learned that the plaintiff ’s

attorneys fought back with some vigour, firstly

by trying to invalidate the witnesses’ evidence

on the basis that small sums were paid by

our company for their time and trouble in

taking part in the interviews, and secondly

by suggesting that they had been led by our

interviewer to the evidence they had given by

unfair means. None of this was effective.

Apart from the paper evidence, it was

the presence of Albert, who gave the first

demonstrations in the UK of the Magic Mole

that was wanted at the trial in the US. He

didn’t need to give his evidence - the case of

the other side folded at the trial and the client

was cleared of infringing the patent claims.

References

1 Pneumatic percussion device for making holes in the

ground by packing the latter, US3616865, Institut Gornoga

dela Sibirskogo Otdelenia,

Priority date 26 February 1969

https://worldwide.espacenet.com/publicationDetails/originalDocument?FT=D&date=19711102&DB=&locale=en_

EP&CC=US&NR=3616865A&KC=A&ND=4

2 Pneumatic Tunneller, New plant, equipment and

materials, The Highway Engineer, Journal of the Institute

of Highway Engineers, Vol.21, No.1 p.10. January 1974,

Chartered Institution of Highways & Transportation

(CIHT) website,

http://www.ciht.org.uk/en/document-summary/index.

cfm/docid/0D421485-5E51-4AB9-A0DC859A7EBDCFE8

3 Magic Mole, From Russia comes an ingenious aid for

laying small diameter pipelines quickly, easily and, so it is

claimed, at an economic price. Gas World - Gas Transmission,

14-16, 29 November 1969 7


Over 30 years of searching excellence

Meticulous

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L O N D O N I P W E E K 2 0 1 8

Shaping Future Ideas

December 10-12, 2018

etc venues St Paul's, London, UK

- 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.

request@victorgreen.co.uk

+44-(0)20-7269-9200

+44-(0)20-7269-9210

Victor Green & Company

www.victorgreen.co.uk

Victor Green & Company

Victor Green & Company

First Floor, 25 Angel Gate, City Road, London, EC1V 2PT, England

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Utility Model Protection

IN POLAND

‘Utility model protection

in Poland is severely

underused by the

applicants before the

European Patent Office

which leaves their demand

of protection unsatisfied’

At first glance this title might be considered a

bit farfetched as a conclusion, yet, it finds a lot

of support in the numbers.

The protection for

utility model

Let us sum up the allegedly underused right of

the protection for utility model.

This right lasts for 10 years from first filing

and is granted after examination. Only novelty

and usefulness criterions are examined.

Demonstration of inventive step is required

neither in prosecution nor in litigation. Only

3D described structures can be protected –

as supposed to methods, substances, systems

and circuits. Any refused European patent

application can be converted to the polish

utility model application.

Marek Bury, M.Eng.PhD Managing partner from Bury & Bury

www.bnb-ip.eu

It is rather difficult to assess

what percentage of inventions

of European patent applications

could qualify as Polish Utility

Models (being a subject matter).

A reasonable guess could be based on the

number of applications rendered by EPO as

belonging to mechanical and civil engineering

in the field of technology statistics, which is

c.a. 30%; That number corresponds to 30 000

of refused or abandoned applications annually.

If the reason of the unsatisfactory result of

proceedings before the EPO was an inventive

step objection then prosecution of the

invention eligible as utility model before Polish

Patent Office could be a relatively easy shot.

Another reasonable guess is, that it could be

the case of the 15 000 rejected or abandoned

European patent applications. Applying the

ratio of 12% applicants interested in having

protection in Poland to the number of 15

000 of all possible cases gives 1800. 1800 is a

number of conversions that could be expected,

provided that the demand was about to be

satisfied.

The total number of utility models granted

for the applicants not having principal place

of business in Poland in 2017 was “34”. Even

if the math above is not particularly exact the

1800 vs 34 leaves a huge space for unsatisfied

demand.

The cherry on top of the cake:

The Polish patents and utility

models register mentions no

conversion from the European

patent application – at least none

for foreign entities that have their

protective rights for utility models

granted in Poland in 2017.

Having summed up the

above, let’s take a closer

look at the figures.

There are c.a. 200 000 European patents

annually. Every year c.a. 100 000 European

patents are granted which leaves applicants

of another 100 000 rather unsatisfied. Of the

100 000 European Patents granted annually

roughly 12 000 are validated in Poland (full

translation + request). Less than 100 European

patents validated in Poland have patentees

based in Poland.

This means that roughly 12% of foreign

European applicants are interested in having

valid protection in Poland.

10 www.gipmatrix.com


eflection of the author’s personality, requiring

the human intervention in order for copyright

to arise. This is not the best approach as

adequate protection sparks investment in this

region of the world.

A DIGITAL PAIR OF HANDS:

ARTIFICIAL INTELLIGENCE IN THE

CARIBBEAN AND LATIN AMERICA

Back to the future

What seemed like something

impossible now isn’t, the merging

of cloud based computing, big data

analytics and machine learning

are playing a big role in powering

AI (Artificial Intelligence), which

is now applicable in all technology

areas such as facial recognition,

which has totally impressed me

in the last years. Companies

such as Apple and Samsung may

very well pose the largest facial

recognition and finger print

database, and this makes one

think about adequate protection

in this region of the world besides

the usual trademark or copyright

protection.

AI is extremely useful when applied to

manually-intensive tasks that suffer from high

error rates improving speed and efficiency;

such is the case of conducting searches and

watching services. Whilst this is highly

positive, handing over the task to a digital pair

of hands also poses its risks and should rather

be combined with the human mind giving it

the final touch and this is where intellectual

property experts come in useful, in order to

determine why some results are better than

others and then determine the way forward.

Artificial Intelligence

Technology

Along this line of thinking a select group of

companies including Samsung, Apple, IBM,

Google, Amazon, Microsoft, AT&T, amongst

others, are pioneers in patenting fundamental

AI technology directed to machine learning,

neural networks, natural language processing,

speech processing, expert systems, facial

recognition, robotic and machine vision.

In turn, this fundamental AI technology is

being adapted and utilized within a wide

variety of industries including health care

(human and animal), genetics, biotechnology,

manufacturing, and transportation to create

AI-based products that are better, more useable

and intuitive than before (e.g. machine-based

interlocutors, vehicle production, smart

surgical tools, warehouse robots, self-driving

cars, etc.).

A Chilean company for instance is the creator

of a system capable of reading and ranking

CVs, conducting examinations, interviewing

via video. This is simply incredible!

Many companies are investing millions of

dollars in innovation research focusing on AI,

others develop and sell AI based technology

and are creating strategies to adequately

protect their findings in the form of patents,

copyright and trade secret protection and

others. No doubt Latin America and the

Caribbean are attractive but we are well behind

other economies and there is no time to be

lost!

Following the

footsteps of leading

countries

Luckily the most robust type of protection

for AI can be obtained in European countries

and the US for instance via a patent. In our

12 www.gipmatrix.com

Gabriela Bodden, Partner at Eproint

www.eproint.com

region of the world affording copyright is one

of the select possibilities when patenting isn’t;

however, when non-human copyright arises

the legislation is not amenable.

The position of the United States Copyright

Office is that it will “register an original work

of authorship, provided that the work was

created by a human being.” (Case law (e.g.

Feist Publications v Rural Telephone Service

Company, Inc. 499 U.S. 340 (1991)) which

specifies that copyright law only protects “the

fruits of intellectual labor” that “are founded

in the creative powers of the mind.” This means

that human intervention must be necessary.

In Australia a work originating from the

intervention of a computer could not be

protected by copyright, because it was not

produced by a human (Acohs Pty Ltd v Ucorp

Pty Ltd) supporting the position of the USA.

The Court of Justice of the European Union

(CJEU) is of the position that copyright is

applicable to the “author’s own intellectual

creation.” (Infopaq decision (C-5/08 Infopaq

International A/S v Danske Dagbaldes

Forening). This can be interpreted as that

the original creation should necessarily be a

The second possibility is creating an exception

to all human authorship and affording

protection to AI, which to me is a more

amicable approach to grant authorship to

the programmer. This can now be achieved

in Hong Kong (SAR), India, Ireland, New

Zealand and the UK. This approach is best

encapsulated in UK copyright law, section

9(3) of the Copyright, Designs and Patents

Act (CDPA), which states: “In the case of a

literary, dramatic, musical or artistic work

which is computer-generated, the author

shall be taken to be the person by whom the

arrangements necessary for the creation of the

work are undertaken.”

In this regard section 178 of the CDPA defines

a computer-generated work as one that “is

generated by computer in circumstances such

that there is no human author of the work”.

Therefore granting protection to the work

involved in cresting software that generates

copyright protected works when the initial

creativity arises from a machine. Now we’re

literally hitting the future as once envisioned.

AI in the Caribbean

and Latin America

In Latin America, Mexico is the first country

that has publicly announced & launched a

national AI strategy (amongst the first ten

countries in the world) making it part of

the world’s most technologically ambitious

nations, (proper protection goes hand in hand

with this). In doing so, Mexico has joined

an elite club that already includes the UK,

Canada, China, the UAE, Singapore, South

Korea, France, and Japan.

The challenges these regions faces are those

faced in other regions of the world and involve

the preparation for major political, legislative,

intellectual, technological, political, ethical

and social matters that are and will arise as

AI becomes more deeply integrated into the

Caribbean and Latin America.

Jamaica for instance is one of the most advanced

IP legislative nations in the Caribbean, as per its

economic growth plans to become a nearshore

Business Process Outsourcing (BPO)

destination for important U.S. corporations.

This has already reaped positive results funded

by local and international sources such as is the

case of Xerox (A Fortune 500 that purchased

Jamaican owned ACS) that announced the

expansion of its operations in the Caribbean

and generated 2500 jobs for Jamaicans.

In addition to this, plentiful Latin America and

the Caribbean’s traditionally important sectors

are already utilising AI within agriculture,

commodities, manufacturing of goods and the

public sector. Therefore adequate protection is

vital.

Protecting

uncertainty

Patent protection is the natural route, however,

the likelihood of patentability is a factor to

be considered in this region of the world, as

for instance in many Caribbean islands the

patent legislation of out of date or in operant

representing is a challenge and not yet possible

or viable (such as the case of Suriname).

AI protection via trade secret route may

not be the most secure protection as it is

dependable on whether the parties involved

can keep the confidentiality involved. Trade

secret protection can be aimed at diverse forms

of complicated information, commercial

methods, designs, patterns, source codes of all

sorts, certain techniques, and contents of AI

training sets that cannot be protected via the

traditional patent route. This sort of protection

is readily available in Latin America and the

Caribbean via strictly redacted contracts

(unlimited in space and time) and in some

jurisdictions specific legislation has been put

in place.

Copyright is feasible in the protection of

literary works, compilations of data, computer

source codes, user guides and product related

documents involved within the AI based

technology and is widely utilised in the

Caribbean and Latin America. However, it is

worth noting that Copyright legislation in the

Caribbean in general is aged. It is important to

note that the data in itself is not protected via

copyright, but that in some jurisdictions

Data Protection Acts have been enacted,

whilst this possibility is null in others.

The important interrogative here is who

should the law consider to be the person

making the arrangements for the AI to

generate the work and would this person

be considered the author entitled to

IPrights protection?

Should the programmer or the user of

the program be entitled? In an analogue

world this can be compared to questioning

if copyright is granted to the creator of the

calligraphy pen or to the calligrapher?

Why is this problematic? Simple, copyright

lies with the author that used the program to

create the works capable of protection

(utilising Word to write articles for instance),

however, when faced with AI algorithms that

work almost on their own creating work (not

all algorithms are related to AI or machine

learning specifically), the user’s contribution

to the creative process can be that of pressing

a button enabling the pair of digital hands to

do its magic and guiding it along the process

telling the software ‘’what to do next’’. This

can start of being pretty simple and end up

becoming extremely complex and technical.

We are in the era of technology. AI along with

its many advantages such as machine learning,

the capability of searching algorithms, datadriven

applications capable of recognising

certain patterns, requires adequate protection

in this region of the world as we are already

benefiting from it!

AI has evolved to a stage where robots, nonhuman

beings, and the likes are capable of

developing new inventions and sometimes

where the intervention of the human mind is

minimal but still necessary, or is it?

Is the Caribbean and Latin America capable

of affording adequate IPright protection to the

creations of machines and are these machines

subject of ownership at the Registries? Is

proper legislation being put into place and are

we prepared for this?

www.gipmatrix.com 13


DOMAINS

Domain names -Are they

infringing on your IP?

So, you notice that

somebody registered

a domain name

infringing on your

intellectual property?

Luckily there are procedures

you can take to to take action

against this, like URS and UDRP.

However, we notice that in many

cases the dispute can be resolved

without having to resort to the

costly and sometimes lengthy

dispute resolution procedures or

other legal action.

The first step to take is

checking if it can indeed be

called an infringement of

your IP.

Just because a domain name is not

in active use, that doesn’t mean

that you can have it.

Is the domain name you’re looking at

confusingly similar to a registered trade mark

you own? Was the domain name registered

after your trade mark registration? If either of

them is not the case, then I’m sorry, but most

probably we’re simply talking about a domain

name somebody else also liked and you’ll need

to try purchasing it from them if you would

like to own it.

Are you sure this is officially a

trade mark infringement?

If so let’s contact the owner! For this, we

obviously need some contact information.

Since the new GDPR regulations, getting hold

of that information has become much harder.

So use the (little) information you can find,

even if you had hoped to find more.

The first place to look for the information still

is the Whois. In some cases you might be in

luck and you’ll actually find full contact details

in there. Most often, that will however no

longer be the case.

According to temporary regulations put into

place for gTLDs, the Whois should now show

either an anonymised e-mail address or a link

to a web form via which you can contact the

owner. Not all registrars however already

adhere to those regulations.

Then there is the option

to ask the registrar and/or

registry for the information.

For gTLDs, they are obliged to give you access

to this information, if you have a legitimate

interest. Don’t expect them to hand over the

information just because you’re asking for it. Be

prepared to answer some questions about why

you should be entitled to see this information.

If the domain name is registered under a

country code TLD, your best chances are to

contact the ccTLD registry directly. Most

ccTLDs have procedures in place for disclosure

of contact details.

If you have a valid IP infringement case and

you took the time to jump through the hoops

put into place by the registrar/registry you

contacted, you will probably at this point have

contact information in your hands.

If however you still don’t have the information

you were looking for, but the domain name

was registered before May 2018, you could

try finding the pre-GDPR information via a

website like domaintools.com or domainiq.

com. They might still have the complete

information on file, but will charge you for

looking up this information.

Ready to contact the

domain name holder?

Don’t be too threatening, but obviously still be

firm and make your statement clear.

Here are some things to take into account:

Bart Mortelmans, General Manager of Bnamed

www.bnamed.net

1. Explain why you’re sure this registration is

infringing on your registered trademark.

2. Offer some “compensation” to the current

owner of the domain name in order to

“cover the domain name registration

costs” they have incurred until now. Don’t

be too cheap on this, take into account

what a normal dispute resolution would

cost you (both in time and money). And

while you might not be eager to pay this

IP-infringing crook”, remember that it’s a

solution you’re after, not revenge. Be very

specific; mention how you’ll be paying.

This makes your offer concrete and real.

3. Most importantly; be fully prepared

to handle an incoming transfer for the

domain name quickly and smoothly.

Mention in the letter everything that

the current owner would need to do

to hand over the domain name to your

management (don’t forget any steps;

double check this with your domain

name registrar). You will want to make

the transfer easy on the current owner, so

that they don’t change their mind simply

because the transfer seems a hassle.

4. Make the compensation and the

important parts of what is needed for the

transfer stand out by putting them in bold

or highlighting them. You will want that

information to be easy to find.

Your first attempt to contact the current

owner preferably is via a simple e-mail. If no

response is received within a reasonably time,

try sending them the same via registered mail.

You would be surprised how often a solution

can be found this way, but only when it is an

actual IP infringement.

If it doesn’t work out, then you’ll

still have URS or UDRP (or another

dispute resolution, depending on the

TLD) at your disposal, but trying an

amicable solution first, can save you a

lot of time and money.

www.gipmatrix.com

15


TRADEMARKS

ENFORCEMENT OF INTELLECTUAL

Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has

established itself on rich tradition and the highest professional principles. Julius and Creasy’s

wealth of expertise and experience in a wide range of specialized fields of Law enables it to offer

innovative legal and business solutions to a diverse, sophisticated and high profile clientele.

PROPERTY RIGHTS

IN SRI LANKA

Our firm from its inception has been involved in intellectual property work. We are presently

handling over 50,000 files of which about 15,000 are current and intellectual property involves

both contentious and non-contentious matters. We file a large number of trademark

applications for overseas clients being instructed by our associates in several countries

In compliance with the TRIPS

including UK, European Union, USA , India,

Anomi

Singapore,

I Wanigasekera

Hongkong, Australia

– Partner

,

&

New

Head

Zealand,

of Intellectual Property

Agreement the Intellectual

Japan and Korea.

www.juliusandcreasy.com

Property Act No. 36 of 2003

In (IP contentious Act) makes matters provision we represent and clients both at the National Intellectual Property Office in

opposition lays the foundation proceedings for and effective in infringement proceedings before Courts, Infringement

proceedings enforcement are of instituted Intellectual in the Commercial Illegal High acts Court of and where necessary criminal

proceedings Property are rights. also instituted The system in the Magistrate’s Court.

for enforcement entails a counterfeiting

Although combination our practice of judicial

To strongly deter illegal acts of counterfeiting s.

is to a great extent trademarks we have substantial portfolio of patents as

186 (2) of the IP Act creates the sale, possession

well. remedies A large civil part of and this criminal, portfolio is related to PCT applications filed in Sri Lanka,

High Court

We also

against

file

such decision.

for sale or any purpose of trade or manufacture,

number administrative of design applications and remedies for at overseas goods clients or things in to Sri which Lanka any forged and Mark for Sri Lankan clients

or false trade description is applied, or any

overseas common through law. our associates in various countries. We also advise Sri Lankan The and cross overseas border

Mark so nearly resembling a registered Mark

companies Accordingly, on civil copy action right can be issues instituted including so as to reviewing be likely to mislead, of copyright is falsely applied, agreements and advise

publishers before the both Commercial in Sri Lanka High Court and overseas. of Sri as an offence. Criminal proceedings can

Lanka to combat infringement or imminent

infringement and for protection against

Unfair Competition in relation to Intellectual

Ms. Property. Anomi The Wanigasekera, Act provides for holder injunctive of LL.M or by (Wales) a Plaint filed and by Diplomas the Police. A in complaint Intellectual Property Law,

International

relief and damages

Trade Law,

for loss

Banking

resulting

and

from

Insurance

can be lodged

Law of

by

Institute

the right

of

holder

Advanced

with the

Legal Studies of the

infringement or unfair competition. In Commercial Crimes Division of the CID, upon

Incorporated addition, Court Council is vested of with Legal power Education to order heads investigation the Intellectual may institute proceedings Property Division before of our firm. Ms

Sandamali the impounding Kottachchi, and disposal holder of of infringing LL.B the (Colombo), Magistrate Court. Master of Arts – International Relations ,

Diploma

goods outside

in Forensic

the channels

Medicine

of commerce

& Science

and

and Diploma in Computer System Design is a senior

grant such other relief the court deems just and A special Anti-Piracy and Counterfeit unit

professional equitable. Provisional associate protection in the Firm’s in the Intellectual form attached Property to the Division Criminal and Investigation there are 8 other professional

associates of Enjoining attached Orders to and the Interim Intellectual Injunctions Property Department Division. (CID) of the Sri Lanka Police has

exist to maintain the status quo and prevent

further violations until conclusion of the main

judicial proceedings.

Infringement of copyrights

& other registered

intellectual property rights

Infringement of copyright and other registered

intellectual property rights, willfully or

knowingly, also constitute a criminal offence

liable for conviction before the Magistrate

Court under Chapter XXXVIII of the IP Act.

Sanctions are in the form of imprisonment and

fine, with a maximum penalty of rupees five

hundred thousand or imprisonment for period

of six months or both. Second or subsequent

convictions will give rise to a penalty

double the amount of such fine or period of

imprisonment. Criminal sanctions are further

imposed under s. 475 of the Penal Code for

misappropriation of property.

be instituted on these grounds before the

Magistrate Court by the right holder, assignee

or licensee, directly by way of a Private Plaint

been set up for investigation and curtailment

of piracy and counterfeiting. Over the years

Tel.94 11 4335159 Fax:

the CID

94 11

has

24466

taken

663,

active

+94

initiative

11 2435 451

to raid and

Email: jacey@sltnet.lk;

prosecute

pts@juliusandcreasy.lk

a considerable number of traders

Internet:

engaged

www.juliusandcreasy.com

in illegal reproduction of songs of

popular local music groups and singers before

Magistrate’s Courts for selling, possessing and

displaying for sale counterfeit CDs and DVDs.

Increasing public

awareness

While stringent enforcement of Intellectual

Property Rights is clearly visible under the

criminal law, a strong desire to increase public

awareness as to infringement of Intellectual

Property Rights has come to the fore.

Publication of cautionary notices in the print

media and reporting of raids in the media are

some of the means adopted by the Sri Lanka

Police to deter acts of infringement.

In the realm of Copyright Infringement, s. 22

(3) of the IP Act entitles the rightful owner

aggrieved by any infringement of his rights to

www.gipmatrix.com

make an application to the Director General

of Intellectual Property. An inquiry will be

conducted and the decision of the Director

General shall be binding on all parties. An

appeal can be preferred to the Commercial

protection of Intellectual

Property Rights

The cross border protection of Intellectual

Property Rights is predominantly governed by

the Customs Ordinance No. 83 of 1988.

S. 125 A of the Ordinance prohibits

importation and exportation of counterfeit

trademark goods, pirated copyright goods

and any other goods which contravene the

provisions of the IP Act. Violation shall

entitle the customs authorities to forfeit the

goods and dispose outside the channels of

commerce. Under s. 125 B of the Ordinance

the owner of any registered trademark or

holder of copyright or any other Intellectual

Property rights may make an application to

the Director General of Customs requesting to

suspend clearance of imported/exportation of

goods that are suspected of being counterfeit

or pirated. If a prima facie case of infringement

is established to the satisfaction of the Director

General of Customs the release of goods shall

be suspended.

The Customs may also on its own initiative

suspend the clearance of importation or

exportation of goods in respect of which it

has acquired prima facie evidence that an

intellectual property right has been, or may

be infringed. To facilitate performance of this

ex-officio action in enforcement of Intellectual

Property rights, the Customs Department has

established an Intellectual Property Rights

Enforcement Unit where right holders who

are desirous of safeguarding their rights could

register with, by furnishing information and

documentary evidence of their rights.

17


Bolivar Will not Carry Double (O’Henry)

The problems with joint

ownership of trademarks

Vladimir Biriulin, Partner at Gorodissky & Partners

www.gorodissky.com

The problem of joint ownership of trademarks

rarely surfaces on the Russian IP landscape.

One of these cases elicits remembrance of

a famous story “The Roads we Take” by

O’Henry.

As a rule, a trademark application is filed and

registered in the name of one legal person

or one individual entrepreneur. In an article

in the Civil Code, (Article 1478) a chapter is

dedicated to trademarks which states that “a

trademark may belong to a legal person or

to an individual entrepreneur”. In addition,

there is also a chapter in the Civil Code which

concerns intellectual property in general,

(viz. Article 1229). This article sets forth that

“Exclusive right for the result of intellectual

activity or a means of individualization

(except for the company name) may belong

to one person or jointly to several persons.”

As shown there is some contradiction

between these provisions leaving space for

interpretation. This contradiction played part

in triggering a lengthy and complicated court

case which lasted four years ending in 2018

with involvement of all court instances, patent

office and trademark owners.

Case History

The case under review started as a routine

trademark non-use case. A company, Les

Publications Conde Nast S.A. (plaintiff 1)

and its Russian offspring Conde Nast CJSC

(plaintiff 2) sued an open joint stock company

‘Sinergia Capital’ for non-use of trademarks

(Nos 295229, 304346 and 433377). The case

was examined by the IP court in its capacity

in the first instance. The patent office was

involved in the case as a third person without

its own claims. The IP court satisfied the claims

in part. Both, the plaintiffs and the respondent

appealed the judgment to the Presidium of IP

court. The hearings were postponed four times

on request of plaintiffs and the respondent. The

reason for this was that the parties wanted to

conclude an amicable agreement and needed

time to discuss it. On the fifth scheduled

time the parties appeared at the hearing and

asked the court to approve their amicable

agreement and discontinue consideration of

their cassation appeals.

Provisions of the amicable

agreement:

The respondent agreed with the judgment of

the IP court concerning the early termination

of protection of his trademark VOGUE

according to registration No 295229, trademark

VOUGE (sic!) according to registration No

304346 and trademark VOGUE according to

registration No 433377. The respondent also

owns a trademark VOGUE according to IR No

929433.

Plaintiff 1 owns numerous trademarks in

Russia where the word VOGUE is part of the

trademarks, such as VOGUE EUROPE (IR

430952). All above trademarks cover Classes

32 and 33 of ICGS.

The respondent recognises the right for

VOGUE in the name of the plaintiff.

The parties agree on joint co-ownership in

shares 50/50 and use of the trademarks as

provided in Article 1229(2) of the Civil Code.

Article 1229(2) sets forth that “Exclusive right

for the result of intellectual activity or a means

of individualization (except for the company

name) may belong to one person or jointly to

several persons”. The parties also made some

www.gipmatrix.com

provisions regarding their financial relations

that were acceptable for both parties.

IP Court Vs Patent Office

The IP court approved the agreement

which was submitted to the patent office for

registration. The patent office however refused

to register it. The patent office argued that

joint ownership of trademarks is not possible

proceeding from the combined analysis of the

provisions of the law and judicial practice. It

further opined that if both parties wanted to

have a trademark they could convert it into a

collective trademark.

The parties did not agree with the decision

of the patent office and sued the patent

office in the Moscow Commercial Court

asking the court to recognize the decision as

invalid. They argued that the decision of the

patent office contravenes Article 5(3) of Paris

Convention, Article 11 of the Singapore Treaty

on Trademark Laws and Article 1229 of the

Civil Code mentioned above. They complained

that they would not be able to jointly conclude

a license agreement with the producer of a

19


sparkling wine under the VOGUE trademark.

The parties argued against the patent office’s

statement that there is a collective trademark

option which could have been used by the

parties. In fact, the concept of a collective

trademark supposes that there are a number

of manufacturers producing goods with

similar characteristics however the collective

trademark belongs to the association of

manufacturers (one legal entity) but not jointly

to the manufacturers.

The court delved into the provisions of the

Civil Code and concluded that the law draws

distinction between the rights for things and

the rights for the means of individualization

((Article 128 CC). Further, the court explained

that according to Article 1227(2) CC provisions

concerning real property (Section II CC)

should not be applied to intellectual property.

Hence, provisions concerning joint shared

property (50% and 50%) cannot be applied to

intellectual property in principle. As a result,

proceeding from the fact that a trademark is a

designation serving to individualize the goods

(Article 1477) assignment of a trademark to

more than one person contradicts the essence

of the trademark which should individualize,

i.e. distinguish the goods of one person from

those of another.

Being not satisfied with the judgment of

the Moscow Commercial Court the parties

appealed the judgement before the 9th

commercial court of appeal which confirmed

the judgement of the Moscow Commercial

court without additional arguments.

The parties appealed the judgement to the

IP court as cassation instance. This became

a second entry to the IP court though for a

different reason. They delivered a staunch

approach in support of their original claim,

i.e. they again referred to Article 1229 which

admits of no double interpretation. Besides,

the lower courts ignored the provisions of

international agreements which allow joint

ownership of trademarks. They also referred to

the International Bureau of WIPO which had

established joint ownership of International

Registration No 430952 and this trademark

enjoys protection in Russia in the absence of

objections from the patent office.

The IP court confirmed its earlier position

stating that in contravention of conclusions

of the courts of first and appeal instances the

law does not contain provisions forbidding

joint ownership of trademarks but conversely,

it directly provides for joint ownership in its

Article 1229 CC. The lower courts did not take

into account that the concept of exclusive right

does not consist in that it should belong to one

person but in that it is assigned to a person

or persons defined in the law while all other

persons are deprived of the right to use the

trademark. The IP court also pointed out that

international agreements allow joint ownership

of trademarks and Russia is a member of those

agreements. In the end, the IP court cancelled

the judgments of the lower courts and obliged

the patent office to resume examination of the

parties’ request to register partial assignment

of the trademark.

Backlash from Patent

Office

This time the patent office backlashed. It

applied to the Supreme Court with a cassation

appeal against the judgment of the IP court. The

Supreme Court went through the arguments of

the courts and the complainants and concluded

that Article 1229 on which the trademark

20 www.gipmatrix.com

owners relied, appears in the chapter of the

Civil Code which regulates general aspects of

intellectual property while the issues specific to

the trademarks are explained in other articles

of the Civil Code. Those articles provide that

only one person may own a trademark. The

Supreme Court also justified the approach

of the first instance court and of the court of

appeal in what concerns international treaties

discussed by IP court during the hearing.

Article 5C(3) of Paris Convention sets forth

that simultaneous use of a trademark by

industrial or trade companies being co-owners

according to the law of the country where the

trademark is used does not limit protection

in any country… The key words here are coowners

according to the law of the country. It

is implied by this that the Russian law does not

allow joint ownership.

Provisions of Article 11 of the Singapore Treaty

do not prescribe that a member country should

grant protection to a trademark in the name of

several persons simultaneously.

As a result, the Supreme Court upheld the

decision of the patent office refusing registration

of VOGUE in the name of joint owners. Not

withstanding the decision of the Supreme

Court, doubts still remain. Article 1229 CC

cited many times by the trademark owners

and by the courts is absolutely unequivocal, in

that it allows joint ownership of the trademark.

Interpretation of that provision with reliance

on other provisions is not convincing.

This is confirmed by the fact that the

mentioned article even though it sets forth

general conditions nevertheless includes a very

specific limitation indicating that a company

name cannot be owned jointly. That means

that despite being general it is also quite

specific, otherwise it should not mention the

company names leaving interpretation to

other specific provisions regulating company

names in the section concerning the means of

individualization. If the law does not want to

allow joint ownership Article 1229 should be

excluded from the Civil Code.

To conclude, the situation is as it is and

trademark owners should be aware that

attempts at joint trademark ownership are

doomed to failure, at least for now.

IIPLA

5TH

January 14 & 15, 2019

Carlton Palace Dubai, UAE

Dubai

IP Congress

2019

Phone: 1 844 MY-IIPLA (+1 844 694 4752)

Email: mail@iipla.org | www.iipla.org

YOU ARE

INVITED

TO ATTEND


TRADEMARK

TRENDS IN AFRICA

Brenda Matanga –

Managing Attorney at B

Matanga IP Attorney’s, shares

her general observation from a

Zimbabwean perspective.

As I was reading the 2018

world’s most valuable 1 brands, 2

I observed that there is not a

single brand originating from

an African country represented.

The list is dominated by US

brands 3 , European ones and

some significant Chinese brands 4

were emerging on that list. What

struck me was, out of 54 African

countries, none has a globally

competitive brand represented on

that list.

Is it that African brands are not

competing at a global level or are

they not doing well enough to

earn recognition at that level? 5

Brands that are acknowledged on that list are

obviously brands with presence on the global

market.

My own explanation would be this, I could

be wrong, but I am persuaded to believe that

the following factors listed below do have an

impact:

1. Africa is generally a consumer and

not a creator.

2. Poor marketing strategies

3. Uninventive brands

4. That African brands are only trading

within the African continent and

do not make it in the international

market.

5. With most African countries

providing the raw materials, through

foreign exports it definitely means

Brenda Matanga – Managing Attorney at B Matanga IP Attorney’s

www.bmatanga.com

Africa’s products are not in any way

inferior but what may be lacking is

competitive branding

6. That most brand owners do not

use intellectual property rights to

distinguish their products on the

market so as to create value for their

brands.

THE ETHIOPIAN

COFFE CASE;

Selling unbranded products is one of the

reasons that African products are not

competitive enough to gain recognition on the

international market. A case in point would

be the Ethiopian coffee case with Starbucks6.

It is a fact that the world’s finest coffee such

as Harrar, Sidamo and Yirgacheffee originate

from Ethiopia. Ethiopian coffee has a unique

flavour and aroma that distinguishes it from

coffees from other countries but the producers

in Ethiopia were failing to obtain high returns

on their coffee sold internationally on the retail

market. The bulk of the coffee sales profit was

going to middlemen and distributors.

Use of IP was the only solution to Ethiopian

coffee industry where trade marks were

eventually used to differentiate Ethiopian

coffee in the market place. This helped the

producers to achieve higher returns for

their coffee. The different coffee brands were

registered as trademarks in key markets such

as Europe, USA, Canada, Brazil, China, Japan

and even in South Africa, thereby resolving its

legal dispute with Star Bucks and increasing its

brand recognition and value.

TRADE MARK

FILING TRENDS

A close analysis of statistics of the filings at

the Zimbabwean registry is reflective of this

current pattern where global brands dominate

the register. It is these top valuable brands that

are filed in our jurisdiction7. The company

which has filed the most trade marks is in

Great Britain with over 1829 marks8 in the

registry followed by a US company with 1810

trade marks9. Only one local company has

about 800 applications at the Registry, whilst

the majority of the trade mark applications

originate from international companies.

FILING SYSTEMS

AVAILABLE IN

ZIMBABWE

There are three options provided for the

protection of trade marks in Zimbabwe.

1. International route-Madrid System10

2. Regional route-African Regional

Intellectual Property Organisation

(ARIPO)

3. Domestic Route- Direct filing at

the Zimbabwe Intellectual Property

Organisation (ZIPO)

A trademark holder’s choice of the route to

take is dependent on factors such their budget,

urgency in obtaining the rights, intention and

generally the effectiveness of each route. The

legal rights obtained are the same11, but it is

interesting to note that a lot of applicants still

favour the national route, which is often a

more viable option. The following table reflects

this reality.

YEAR NATIONAL BANJUL MADRID TOTAL

2015 1382 155 600 2137

2016 1227 241 984 2452

2017 1127 101 1119 2347

MADRID

PROTOCOL

TOP FILERS IN

ZIMBABWE -2017

It is not a surprise to see the same brand holders

being the main users of the international

trademark registration system12. Local

companies do not have a trademarking culture

and only one local company has filed using

the Madrid filing system, since accession13. I

suppose this system has been designed to serve

the bigger global players and may not serve

much purpose for local companies whose

brands are not even in the global market.

Numbers do not lie, the graph below will

inform you about the real beneficiaries of the

Madrid system.

22 www.gipmatrix.com www.gipmatrix.com

23

COUNTRY

OF ORIGIN

China 442

United States of America 156

Germany 64

Switzerland 55

United Kingdom 35

France 32

Japan 20

Italy 18

Belgium 15

India 14

NUMBER OF

APPLICATIONS

FILED 14

TO CONCLUDE

Whilst a majority of countries have IP systems

in place, it is the utilisation of those systems

by local brand holders that is lacking and

hence their absence from the global scene.

One would at least expect to have the larger

markets in the continent such as Nigeria and

South Africa represented in these rankings.

Companies should extensively market their

products on a global scale and develop

strategies of penetrating the global markets.

There is need to utilize modern technology to

market Africa’s products. This is how brands

acquire global presence, recognition and in

turn create value from their existence on the

global market.

REFERENCES

1. There are several methodologies to value brands. The

most popular method of calculating brand value is based

on predicting future earnings derived from the brand

and calculating the net present value.

2. BrandZ report www.marketing-interactive.com/top-

100-most-valuable-brands-in-the-world-announced/.

Forbes rankings also reiterate the same findings.

3. Amazon was the most valuable brand in the world with

an estimated brand value of about 150.81 billion U.S.

4. Alibaba, Tencent and JD ,all ecommerce platforms.

5. MTN made the ranking in 2014 and 2015 but fell off the

table after it became embroiled in a multibillion-dollar

lawsuit in Nigeria, which wiped billions off its market

valuation.

6. http://www.wipo.int/ipadvantage/en/details.jsp?id=2621

7. Writer’s personal survey.

8. Data provided by the Registry.

9. Figures collated by writer from data provided.

10. Zimbabwe became a signatory of the Madrid Madrid

Agreement Concerning the International Registration

of Marks (Madrid Protocol) hereinafter referred to as

Madrid since 11 December 2014 when it deposited

its instrument of accession. Domestication was only

done on the 1st of July 2016 through the General Laws

Amendment Act which incorporated the Madrid

Protocol. According to Zimbabwe’s Constitution,

Section 327 (2) treaties are not binding on Zimbabwe

until they have been approved by Parliament and

incorporated into Zimbabwean law as Acts of

Parliament.

11. Trade Marks Act (26:04) Section 97A (4) a, Section 12

(1) Madrid Protocol Regulations.

12. Apple is currently the top filer designating Zimbabwe

followed by Huawei then other huge pharmaceutical

giants such as Bayer Aktiengesellschaft and Janssen

Pharmaceutica N.V.

13. A company in the financial services sector.

14. These are the origins of designations of the Zimbabwe

applications filed via Madrid according to WIPO.

15. MTN South African Brand in Telecommunications

is regarded with such respect not only regionally but

internationally.


ECTA SPECIAL

of the ECTA Secretariat. The project should

be accomplished within 2018 and the ECTA

Management team trusts that it will greatly

assist the organisation and management of the

internal work of the ECTA Committees and

Secretariat.

The Final Farewell &

New Beginnings

Ruta Olmane – Immediate

past President of ECTA

& Associated Partner of

METIDA recaps on the last

two years achievements as

the President of ECTA and

conveys the honour of the

ECTA Presidency to the

new ECTA President and

Management team.

ECTA’s Main Task

The main task of ECTA (European

Communities Trade Mark Association) is to

promote the knowledge and professionalism

of members and owners alike in the fields of

trade marks, designs, copyright and other

Intellectual Property rights, within the

European Union.

In the last two years I have been honoured

to be a President of this association and I am

really proud to see that with the assistance of

my excellent team ECTA is still maintaining its

high reputation and continues to develop and

expands its expertise.

During my Presidency, ECTA has maintained

and developed good relations with EU Officials,

including the European Commission and IP

attaches of the EU Member States. During

this year, more than 10 meetings with EU

Officials were held in Brussels. During these

meetings the ECTA Management Committee

was informed about the status of various

legislative reforms and recent developments

and expected changes, future IP dialogues and

IP priorities of the upcoming Presidencies of

the Council of the EU. ECTA is recognized as

a long standing and trusted partner by many

governmental authorities.

New Initiatives

This year ECTA extended its activities

and was involved in some new initiatives

organized by the EUIPO. ECTA continues

leading or participating in some joint

projects with other User Associations e.g.

Ruta Olmane – Immediate past President of ECTA &

Associated Partner of METIDA - www.ecta.org || www.metida.lt

issues concerning Brexit, industrial designs

and the Steering Committee advising the

European Trade Mark and the Design

Education Centre for which ECTA also

nominated a candidate for the Examination

Board and teachers.

Through the Management Committee,

Council and/or Committee members,

ECTA was represented at 51 meetings

and events such as MBBC meetings, User

Group meetings, Liaison meetings as well

as bilateral meetings with EUIPO and

WIPO, the European Commission and

others.

EUIPO

Upon an invitation from EUIPO,

representatives of ECTA participated in TM5

and ID5 meetings during the year. One of

the days of the TM5 Annual Meeting 2017,

was dedicated to the User Session. Partner

Offices´ representatives and User Associations

representatives delivered presentations on three

selected topics; namely Quality Management,

Fraudulent Solicitations and Bad Faith Trade

Marks: an e-commerce perspective.

I was honoured to give a presentation about

the questions of Quality Management from

the user’s perspective as well as moderating a

workshop about ‘Quality Management’. During

INTA’s annual meeting in Seattle, ECTA was

also invited to participate at the TM5 midterm

meeting User Session.The word about

the ECTA Award spread around rapidly this

year, which led to ECTA receiving a record

number of applications for award. In order

to further expand the visibility in 2018 the

ECTA Management signed a ‘Memorandum

of Understanding’ with ELSA International

and very much look forward to future mutual

cooperation with members of ELSA.

Honorary Members &

their Contributions

During my presidency, I was pleased that

three honorary members were admitted. In

accordance with the Articles of ECTA, a person

can be admitted as an honorary member either

if he or she has made a significant contribution

to the development of ECTA or the European

Intellectual Property regime, particularly

trademarks and/or designs, or both.

By the first mentioned requirement, it is meant

that the person in question, for a long time,

actively and consistently has participated in

the work of ECTA and clearly contributed to

its evolution and prestige. By the other it is

understood that he or she is either in academia

or operating as an IP Professional, be it in

the administration or in any other relevant

position, or is/has been important to the trade

mark or design system.

In 2017, two ECTA past Presidents Fabrizio de

Benedetti (IT) and Dr. Max Oker-Blom (FI)

were admitted and this year former Executive

Director Antonio Campinos was admitted.

Further Movements

from ECTA

The ECTA Management created a special task

force for Brexit, which, under the leadership

of Dr. Max Oker-Blom, (ECTA honorary

member and advisory committee member),

closely follows Brexit developments and has

assisted in producing the ECTA position in

this respect.

The ECTA Management created a special task

force for CCBE, which under the leadership

of Philippe Péters (Member of ECTA Law

Committee) will represent ECTA there. The

CCBE’s Permanent Delegation to the Court

of Justice and the General Court of the EU

and the EFTA Court (PDLux) is a committee

comprised of practitioners with particular

expertise and experience in EU litigation. This

committee prepares papers on a wide-range

of issues, including proposed changes to the

practical guides for practitioners pleading

before the EU Courts or the EFTA Court.

The ECTA Management Committee has

dedicated a large amount of time on the largest

project in the history of ECTA in order to

re-fresh the external website, create online

working spaces for the committees (in order to

facilitate work efficiency and overview in the

committees) and not least to facilitate the work

ECTA increased the number of workshops and

seminars organized and in addition this year

organized a workshop in Munich about the

Case Law of the EUIPO Boards of Appeal and

German courts. Many of the workshops were

broadcasted as webinars.

ECTA’s 37th Annual

Conference

ECTA’s 37th Annual Conference covered

a wide range of IP topics and the latest IP

trends as well. Highly focused subjects – such

as Brexit, the EU Copyright Reform, the EU

Trade Mark Directive and the latest challenges

in the enforcement area of IP rights - were

addressed and discussed by internationally

recognised speakers. For the very first time,

we introduced a special pharma session

where the moderator and speakers from the

most prominent pharma companies shared

their experiences. As always, we also offered

the opportunity to attend several workshops

during the conference. The workshops focus

on plain packaging questions and exchanging

of best practices of small/family companies.

In addition, a workshop was organised with

WIPO and EUIPO where you were able to

learn about their new IT tools.

As always during the ECTA annual conference

exciting social events were organised each

evening; the welcome reception was organised

in the spectacular Zappeion building

surrounded by stunning garden settings

and the Gala dinner was organised at the

Nasioutzik Museum.

This year we gathered more than 800 attendees

at the Annual Conference and statistics shows

that there is a growing interest from delegates

outside Europe to attend our ECTA event.

The New ECTA

President &

Management Team

During the Gala dinner I conveyed the honor

of the ECTA Presidency to the new ECTA

President. The new ECTA Management consist

of five members Sozos-Christos Theodoulou

from Cyprus as President, Anette Rasmussen

from Denmark as First Vice President,

Mladen Vukmir from Croatia as Second Vice

President, Carolin Kind from Germany as

Seceretary General and Laszlo Berczes from

Hungary as Treasurer.

During my presidency the overall goal was to

make ECTA the foremost and most prestigious

trade mark, geographical indications, design,

copyright and related rights association of the

European Union; this was achieved.

I deeply thank the entire ECTA family for

their support and true dedication to ECTA. I

would especially like to thank all current and

former ECTA Council members, members

of Advisory Committee, ECTA Committees

leadership team and ECTA Management team

and ECTA Secretariat. Without the exceptional

teamwork all these goals would not have been

achieved. I was honoured to serve ECTA and

will remain an active ECTA member.

The newly appointed

President of ECTA

Dr. Gergely Dzsinich, (LLM Strategy

& Communication Officer at ECTA)

looks back at ECTA’s 37th Annual

Conference in Athens and speaks about

the inauguration of the new President

Mr. Sozos-Christos Theodoulou.

During the 13th-16th June 2018, ECTA

organized its 37th Annual Conference at

the Inter Continental Athenaeum Hotel in

Athens. The event has already grown into an

international professional occasion, broadly

recognised and also visited by professionals

from Europe, the Americas, Africa, Asia, and

Australia.

ECTA is known for organizing its events in a

way so that the delegates may not only benefit

from the high standard professional programs

but may also have quality time for each other

to build reliable professional connections.

This unique atmosphere is one of the primary

motivators for delegates to decide on attending

in each year.

The ‘Professional Programme’ not only

included presentations, workshops, and panel

discussions but also gave the opportunity to

discuss issues such as: Brexit, the Trade Mark

Directive, the EU Copyright Reform, goods in

transit and the trade mark profession’s future.

As always, ECTA took due care of organising

various social programs, day trips and

exclusive dinners in Athens, which were also

open to accompanying persons.

The 37th event has resulted in changes in the

Management. Mrs. Anette Rasmussen became

First Vice-President, and Mr. Mladen Vukmir

took on the role of Second Vice President of

ECTA.

The Gala Dinner served as the ceremonial

inauguration venue of ECTA’s new President:

Mr. Sozos-Christos Theodoulou, who is well

known and respected not only in the trade mark

profession, but also within the Association,

having been a member of the Management

Committee for the past four years.

A Six Year Strategic

Plan

The new President explained to Global IP

Matrix that ECTA operates by a rolling six-year

strategic plan. The plan is regularly reviewed

and adapted every two years by each incoming

president.

Mr. Theodoulou aims at continuing the

support of ECTA’s five pillars approach, which

consists of these elements: 1. the development

of membership benefits; 2. the broadening

of ECTA’s expertise; 3. the reinforcement of

external partnerships; 4. the strengthening

of the internal organization and; 5. the

broadening of the financial basis.

Mr. Theodoulou highlighted: “A streamline

of projects is planned to be executed in the

next two years, which are built on our five

pillars concept. From the organisational

angle, a new structured IT system will be

introduced shortly to the Association, which

will significantly support the internal and

external communication, moreover, the

workflow. Regarding our outreach activities,

we would like to approach the university

world, academics and students alike.

Furthermore, ECTA is expected to bring on

board more industry members, examine

and adapt to the consequences of Brexit, as

to ECTA’s seat and structure; enhance the

Association’s intelligence within the EU,

create new committees, as necessary, and, last

but not least, become more visible to national

authorities.”

Looking Ahead

Regarding the 38th Annual Conference, we

have been informed that ECTA is already

diligently preparing the event which will take

place in Edinburgh, Scotland from 26th-29th

June 2019. We encourage our readers to visit

the www.ecta.org homepage and ECTA’s

LinkedIn, Twitter and Facebook pages for

news and also information about their events.

24 www.gipmatrix.com www.gipmatrix.com

25


Trademark Infringement

Nepal

Trademark Infringement and the Remedy of

‘Passing Off’ in Nepal

Anju Upreti Dhakal

and Kripa Shrestha

From Pioneer Law

Discuss trademark

infringement in Nepal.

1 The author is an Intellectual Property and

Commercial Attorney with LL.M. degree

from Kathmandu School of Law, Purbanchal

University of Nepal.

2 The author is an Intellectual Property

Attorney with B.A.LL.B, degree from Nepal

Law Campus, Tribhuwan University of Nepal.

Nepal is a developing country in the South-

Asian region with the market based mainly

on imports from India and China. Nepal is a

party to WTO and other WTO related treaties

such as TRIPS.

Since being a developing country, a special

provision is maintained in regard to its

compliance with WTO treaties i.e. Nepal has

until 2021 till she has to make laws compliant

with the different WTO treaties such as TRIPS.

Thus efforts have been made at modernisation

and harmonisation of trade related laws and

Intellectual Property laws. Nepal is also party

to the Paris Convention on Protection of

Industrial Property 1883. However ominously,

Nepal is yet to ratify other major trademark

conventions such as Madrid Agreement/

Protocol, Nice Agreement etc.

Like any other country, trademark plays a

major role in the Nepalese market but due to

the lack of effective laws and poor enforcement

of trademark, brand owners are in peril due

to mass free-riding in the country. Some wellknown

examples are Kansai Nerolac, Royal

Stag, Rajnigandha trademark etc.

Legislations in Nepal

Patent, Design and Trademark Act, 1965 (2022)

(“PDTA”) is the main legislation governing

trademark protection and enforcement in

Nepal. Beside the PDTA there are other

legislations that deal with, to some extent, the

matter relating to trademark in Nepal. Such

other legislations include the Custom Act,

Ms. Anju Upreti Dhakal - Partner at Pioneer Law Associates

www.pioneerlaw.com

2007 (2064), the Black Marketing and Some

Other Social Offences and Punishment Act,

1975 (2032), and Export and Import Control

Act, 1957 (2013).

Department of Industry (“DOI”) is the

authority which registers and administers

Trademark in Nepal. DOI also works as the

quasi-judicial body for the settlement of

dispute related to trademark as a court of first

instance.

The legal recourse on trademark issue depends

on the nature of infringement or the stage of

infringement. The remedy available against

the infringement of a trademark can be

classified broadly as (a) filing a petition for the

opposition when the impugning trademark

has been applied by a second party and

published in the Industrial Property Bulletin;

(b) filing a cancellation petition against an

impugning trademark that has been already

registered; (c) filing a petition to prevent use

along with demanding confiscation of goods

and damage in case the impugning trademark

has not been applied for registration or

registered but has been used in similar

products and commercialised; (d) filing an

injunction petition to stop the registration,

sale, distribution or commercialisation of

the impugning trademark or products; (e)

restraining the export or import of goods

bearing the impugning trademark and (f)

Remedy of Passing off. Section 16(2) of the

PDTA provides that “no one shall copy or

use or cause to use in the name of the others

without transforming the ownership or

written permission, the trademark registered

in the name of any person.” The use of

the mark cancelled or use of the mark as a

registered mark without its registration or

unauthorized use of the registered trademark

is punishable under Section 19 and 25 of the

PDTA. The owner of the registered mark can

seek (a) the order to restrain the use of the

trademark identical or similar to that of the

registered trademark, (b) confiscation of the

goods that infringes the registered trademark,

(c) imposition of a fine to the infringer(s), and

(d) damage for the loss of the infringement.

Section 19 of PDTA authorizes the DOI to

impose fines up to Rupees 100,000 to the

infringer and confiscate the goods involving

the infringement of the registered trademark.

www.gipmatrix.com

Section 25 of the PDTA provides damage

pursuant to which the registered owner can

claim damage of the actual loss suffered from

the infringement. However, the case is different

if the trademark is not registered.

Passing off as a

remedy

In Nepalese context, the concept of passing off

has not been explicitly recognized. However,

in interpretation of Proviso clause of Section

18(1) of the PDTA, which states that where

the proposed trademark is likely to hurt the

reputation of the trademark of the other, such

proposed trademark may not be registered, it

is understood that the concept of passing off is

somewhat adopted. In light of this provision,

we can say that a trademark not registered in

Nepal may be protected under the remedy of

this passing off action.

The remedy of passing off has been provided

by the DOI in the YUM YUM case, PEARL

DROP and NISHA Henna (cases subjudice in

Supreme Court) trademark cases where the

trademark was protected on the basis of the

goodwill that it had garnered over the years of

its use in the market. However, the practice of

this remedy has not been consistent. The DOI

and the Courts do not see eye to eye when it

comes to the passing off remedy. Although the

DOI has issued a criteria list for determination

of well-known-ness of a trademark, it does

not strictly adhere to it in most cases, thus it

has become more unpredictable and difficult.

However, we, as activists, are constantly trying

to persuade the relevant authorities to enact

modernised and harmonious provisions for

the protection of well-known trademarks in

Nepal.

To conclude

Thus, in this context of globalization and

market expansion, Nepal faces a big problem

of free-riding and trademark infringement

essentially jeopardizing the Nepalese economy.

The law is almost silent in this regard and

its practice has been very inconsistent, thus

making it unpredictable. Therefore, it is

advised for any investor/exporter in Nepalese

market to register their trademark before

actual product penetration.

27


J. Varbanov & Partners

European and Bulgarian Patent & Trademark Attorneys

One of the oldest and leading IP companies in Bulgaria

Professional, cost effective services and quality advices

Areas of practice:

*IP Protection

*IP Enforcement

*Anti-counterfeiting

*Litigations

*Domain name registrations

*IP watches

PO Box 1152, BG-1000 Sofia, Bulgaria

South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria

Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,

e-mail: jvp@jvpatents.com

www.jvpatents.com


Smart IP Data

Seize business opportunities

using smart IP data

immediately informed when they start to

use a different law firm for its filings into

your jurisdiction, giving you a window of

opportunity to also obtain work from the

tech giant whilst its open to using new

law firms.

Additionally if you are already working

for a major applicant or with a law firm,

you can set up an alert to be notified

when they start using a new law firm to

handle the filings in your jurisdiction.

You can immediately step in and start

to strengthen your relationship with the

client to ensure that you retain them

rather them losing them to another

competitor.

Although it seems that the tech

giants may hold a significant

amount of your personal data, in

this article we explore how you

can easily obtain significant data

insights about THEM; Smart data

that informs and enables you to

spot new business opportunities

with the tech giants.

We’re all familiar with the big tech giants

that seem to always be in the news. Headlines

about their controversial moves with

acquisitions, data breaches or court cases,

but most of the time it’s about their latest

innovations.

For example, Facebook has generated news

headlines (not just about its data breaches)

but also about its latest innovation named

Athena, a low earth orbit internet satellite that

is designed to “efficiently provide broadband

access to unserved and underserved areas

throughout the world”. Google has also

been making headlines with its new Google

Assistant developments. The latest being an

AI assistant that can communicate to make

phone calls and schedule appointments for

its user with a believable human voice. This

is considered by many as a breakthrough

development in the application

of AI and natural language

analysis.

Regardless of the good or

controversial headlines the

tech giants may generate, an

undeniable fact about them is

that they are very innovative

and file many patents. For

patent attorneys and law firms

these tech giants can be a

great source of business and

revenue. That being said, they

can be considered a competitive

business space for law firms to

enter, but is that really true? The

patent filing data shows that there is a diverse

spread of law firms that actively work with

these companies and that the spread of law

firms regularly changes.

The rise and fall

What’s interesting to analyse is the rise and

Ms Doris Spielthenner, Director, Law Firm Analytics, CPA Global

www.cpaglobal.com

fall of patent filings from these tech giants

amongst specific law firms. Looking at the

latest PCT filing data for 2018, Google works

with more than 35 US based law firms. Upon

a closer look at their ‘Source of PCT filings’ in

Filing Analytics, it shows that three of these

law firms started working with Google in 2016

and 14 of them only just started working with

them in 2017.

At first glance this may look like

deliberate diversification, which

would mean that the top law firms

who would have gotten the most

amount of work must be getting

less and that the work from Google

is more diversified. However, this

doesn’t appear to be the case here.

The top five major law firms who

have historically received the

most work from Google still

received a sizable amount of

work from Google in 2017 and

2018. So questions then arise, how is the work

being divided amongst law firms, who are the

new entrants receiving additional work and

are there any law firms receiving less work

i - Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io

from Google? Let’s take a closer

look at the patent filing data to get

the answers.

Upon looking at the case flows for

Google, we can clearly see some

law firms losing business from the

tech giant even though there is no

shortage of work coming from them.

For example, the screenshot from Filing Analytics

shows that Law Firm 4 and 5 lost business

from Google over the past years, while Law Firm

6 only started receiving work from them in 2017.

Law Firms 1-3 show a nice increase in work in

2017 but they haven’t received any work from

Google in 2018.

ii - Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io

Now there may be many reasons for this such

as the law firms may not have the technology

speciality area or there could just be a lack of

resource capacity etc. However the important

aspect to note is that there is plenty of work

available from Google but it’s now being snapped

up by new entrants. New entrants who are most

likely focussing strongly on business development

and actively targeting new clients like

Google, rather than just relying on their existing

clients for work.

iii - Google’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io

iv - Facebook’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io

Another interesting point to raise is the pattern

of the work declining from Google amongst the

law firms over the years.

While some law firms show an increase in

work for 2018, Law Firm H shows a sharp drop

and Law Firm L shows no work for 2018. Will

these two lose all business from Google in the

next year?

The data from Google’s ‘Filed PCT

Applications’ data also shows similar patterns

of consecutive drops.

Observe the sharp drops in Law Firm B and F,

and the gradual drop in filings for Law Firm

A and D.

The same pattern holds true for other tech

giants like Amazon and Facebook. For

example, if we take a closer look at Facebook’s

‘Filed PCT applications’ in Filing Analytics it

shows that law firm A had an increase in work

from Facebook over the years, whilst law firms

B and F show a clear decrease in work volume

from them.

These drops and rises, amongst other factors

could be considered to be indicative of the

strength of the relationship between the client

and the firm and the effort put in by the law

firm towards business development and client

retention.

Entering &

keeping your

place in the

market

So how can a law firm who wants to work

with a tech giant know when would be the

best time to try and enter the market? Or

if you are a law firm already

working with a tech giant or a

significant applicant, how can

you prevent losing business

from them to another law

firm?

Apart from the patent data

and analysis that Filing

Analytics already provides,

its new Watch feature ensures

that you are alerted to any

filing changes related to a law

firm or applicant, without you

having to do any extra work!

For example, if you put a Watch

alert on Facebook you will be

v - New ‘Watch’ feature on filinganalytics.io

Team up with

another Law

Firm

Another key feature to assist law firms to

obtain more work is the ‘pi Connect’ feature,

which connects you to other law firms to easily

set up new business partnerships. Rather than

try and work with the tech giants directly,

why not connect with a law firm in another

jurisdiction to handle the tech giants incoming

filings for your jurisdiction. This is also an easy

way for law firms to increase their business

opportunities with no extra resourcing

required on their part.

vi - New ‘pi Connect’ feature on filinganalytics.io

To discover which tech giants

you can find work from or find

out who is working with who

visit http://filinganalytics.io

and obtain a free report on any

law firm of your choice with

details of the firm’s recent filings,

their filing partners in your

jurisdiction, client lists and more.

All this information is publicly available under

register sources for different jurisdictions. These

actual snippets have been identified using Filing

Analytics which collects these information

points from diverse sources and makes the data

available and easily searchable while providing

further analytics on the data.

30 www.gipmatrix.com www.gipmatrix.com

31


EUIPO: IPR

infringement report

EUIPO:

IPR Infringement

Report summarised

Counterfeiting remains a huge

problem for the economy,

and year on year it continues

to rise. Some new research

from the EUIPO looks at the

epidemic as it stands, but also

at various actions being used to

combat IPR Infringement. Lisa

Lovell, CEO, BEUK, explains


The Report

It is no secret that the epidemic of

counterfeiting is still on the increase. In

June 2018, The European Union Intellectual

Property Office (“EUIPO”) produced the

results of some new research showing the level

to which counterfeiting has reached.

“The report brings together the findings of

the research carried out since 2013 by the

European Union Intellectual Property Office

(EUIPO), through the European Observatory

on the Infringement of Intellectual Property

Rights (Observatory), on the extent, scope

and economic consequences of Intellectual

Property Right (IPR) infringement in the EU.

Evidence on the economic value of IPRs in the

EU economy, the extent to which this value

is exploited, the infringement mechanisms

used to realise that value and the actions

being taken in response to these challenges are

outlined and discussed.”

The Value of IPR

According to another study, conducted in

partnership between the EUIPO and the

European Patent Office (EPO); the total

contribution of IPR-intensive industries to the

EU economy accounts for approximately 42%

of GDP (€5.7 trillion) and 28% of employment.

EU’s GDP 42%

Employment 28%

EU exports to the rest of the world 93%

“Innovation and innovative assets play a

significant role in economic growth and their

importance as business assets is increasing, not

only to innovators, but to business partners,

financiers and policy makers. Consequently,

scoping and understanding their growing

value and contribution to economic and

employment growth is now, more than ever, a

significant priority.”

IPR-owner compared to non IPR-owner

companies have higher;

• Revenue 29% higher per employee or

32% for SME’s

• Salaries 20% higher on average (in

the same sector and country).

• Business Indicators higher turnover,

employment, profitability and access

to finance

• Profitability higher profitability and

therefore faster growth

How & Why is IPR

infringed?

The report shows that the ‘global phenomenon’

of counterfeiting is continuing to evolve at

a rapid pace, largely in line with significant

technological advances.

Not only does the use of better technology make

it easier for the counterfeiters to manufacture

the illicit goods, but there are other incentives

involved, including the availability of cheaper

production methods, the increased return

on investment, much lower prison sentences

and fines for IPR infringement than those

awarded for more serious crimes and therefore

the decreased risk of choosing to produce

counterfeit goods.

“There are a number of distinct incentives for

criminal gangs to engage in counterfeiting

activity. First and foremost is the potential

return on investment, which, as has been

suggested, can be greater than those returns

gained on the sale of illicit drugs. According

to the International Institute of Research

against Counterfeit Medicines (IRACM)

an investment of $1,000 in the purchase of

heroin could result in a yield of $20,000 in

return. In comparison, the same investment in

counterfeit cigarettes can yield $43,000, and

the return on counterfeit pharmaceuticals

might be as much as $500,000.”

www.gipmatrix.com

Lisa Lovell, CEO & Founder Brand Enforcement UK

www.brandenforcement.co.uk

Damage to the Health of

the Consumer

Not only is the sale of counterfeit goods

damaging to the economy, but it can also be

very damaging if not catastrophic to the health

of the consumer.

This illicit production (affects) the health

and safety of consumers, who, as a result of

buying these products can suffer a range of

injuries, such as chemical damage to scalps,

the ingestion of toxic substances through the

application of counterfeit cosmetic products,

and burns from self-igniting counterfeit

batteries.”

Damage to the Economy

“According to a study carried out by EUIPO

and the OECD in 2016, estimates of IPR

infringement in international trade in 2013,

could reach as much as 5% of EU imports, or

€85 billion per year.”

The report shows that a massive EUR59

billion sales are lost every year throughout

Europe due to counterfeiting. The research,

which commenced in 2013, is intended

to provide a comprehensive picture of the

impact counterfeiting has on the economy

and the knock-on effect that in turn has on

employment and growth.

In the EU, the estimated loss of jobs is

approximately 435k (UK 58k) and the loss

per Inhabitant EUR116 (UK EUR141). Sector

wise, the clothing sector is the hardest hit, with

an estimated loss of annual sales in the EU of

EUR23,247 million, medicines EUR15,953

million, cosmetics EUR5,828 million,

smartphones EUR4,212 million and wine and

spirits EUR2,744 million.

The report also concluded the percentage of

sales on the basis of the afore-mentioned and

the following sectors: footwear and accessories,

sports goods, toys and games, hand bags and

luggage, jewellery and watches, recorded

music, pesticides and agrochemicals, batteries

and tires. The total cost spent on all these

sectors in million EUR (percentage of sales

and euros per inhabitant in different states and

sectors.

33


COUNTRY SPENDING COST % SALES

(EUR)

(EUR) PER INHABITANT

Austria 1,041m 121m 6.9%

Belgium 2,055m 183m 6.8%

Bulgaria 552m 77m 19.8%

Cyprus 196m 234m 15.1%

Germany 8,326m 103m 5.9%

Denmark 1,147m 203m 6.0%

Estonia 1,041m 1021m 6.9%

Spain 6,175m 133m 9.3%

Italy 8,620m 142m 7.9%

Sweden 1,248m 128m 5.0%

Investigations (ICE-HIS) and

resulting in seizure of 20,520

domain names across 27

countries.

• “Follow the Money” approach, a

European Commission initiative seeking

to disrupt the trade in counterfeit goods

and in particular the revenue streams

of counterfeiters in order to establish

voluntary agreements between rights

holders and internet platforms, the

digital advertising community, payment

providers and transport companies.

• OECD Task Force on Combatting Illicit

Trade (TF-CIT), facilitates research,

adopts policy recommendations and

promotes best practices to combat illicit

trade and trade in counterfeit goods.

“Because of the high value associated with

IPR, infringement of those rights is a lucrative

criminal activity, which generates significant

costs to the rights owners and to the economy

in general.”

Costs of Combatting

IPR Infringement

The report looks at two main ways IPR

infringement affects SME’s; the loss of sales,

and the need to invest resources in detecting

infringement and dealing with it. A survey

of 1,291 companies in 14 EU Member States

set out the types of costs of combatting IPR

infringement as follows;

• employee time;

• external legal assistance;

• court fees in connection with

infringement-related litigation;

• storage and destruction costs;

• other infringement-related costs.

Overall, the average company in the sample

spent EUR 115,317 per year on enforcementrelated

activities, which varies depending on

the size of the company.

• Small company (less than 50

employees) EUR 83,653

• Medium companies (50-250

employees) EUR 103,166

• Large companies (250+

employees) EUR 159,132 per year

“..IPR ownership is essential for SMEs to grow

...IPR infringement is a major threat to the

development of innovative SMEs.”

Initiatives to combat

the growing trend

So, whilst we are well aware that counterfeiting

is on the rise, and will no doubt remain this

way for the foreseeable, what actions are

being taken in an attempt to combat IRP

infringement? The report sets out various

initiatives which have been employed to try to

reverse the growing trend;

“In response to these developments the

EUIPO, together with public and private

partners, is undertaking and supporting a

number of actions to meet these challenges.

These actions range from providing rights

owners with information on the changing

infringement landscape, working with

Europol on wider responses to IP crime, not

least by funding a specialised IP crime unit

within Europol, supporting the European

Commission (DG Trade) efforts to address the

supply of counterfeit goods in third countries,

and by providing citizens with information on

the availability of legal digital content offers

and on the economic impact of purchasing

counterfeit goods or accessing illegal content.”

• EUIPO works with the European

Commission on assisting European

Innovative SME’s with the management

and protection of their IPR’s

• EUIPO’s Enforcement Database

offers rights owners a secure line of

communication with Customs and

Police Officials and encourages sharing

of product identification tips

• EUIPO’s ACRIS and ACIST databases

offers European companies information

on detentions at the borders and the

internal market in order to assist

companies with risk management

• EUIPO’s TMView and DesignView

assists companies with understanding

of the existing IPR landscape, helping

to promote original innovation whilst

avoiding conflict

• EUROPOL’s IP Crime Coordination

Centre (IPC3) monitors and reports IP

crime and conducts investigations in

order to counter IP crime globally

Global Scale Operations conducted by

various enforcement bodies including;

• Op Pangea X (September

2017) coordinated by Interpol

tackling illicit medicines/

medical devices, including 197

enforcement authorities from

123 countries.

• Op Opson VI (early 2017) a

joint Europol-Interpol initiative

targeting counterfeit food and

drink, resulting in seizure

of 13.4 tonnes (food) and

26.3m litres of drink worth an

estimated EUR230million.

• Op In Our Sights (finalised

November 2017) a joint

initiative of EUROPOL,

INTERPOL and US

Immigration & Customs

Enforcement – Department

of homeland security

www.gipmatrix.com

The Future

We forecast that counterfeiting will continue

to rise. However, in order for us to allow

innovation to grow we must continue to

find better ways in supporting companies in

developing and also protecting their IPR. We

must continue to raise consumer awareness of

the damage counterfeiting causes, not only our

economy but also of the potential health risks

to the consumer. We must continue to work

together in partnership and develop more

joint initiatives to combat the crime and keep

the costs of combatting counterfeiting as low

as possible, so companies can not only free up

budgets but also employee time in order to get

on with their core businesses. Finally, we must

continue to disrupt the trade of the criminals,

by circumventing the new technologies used by

the counterfeiters, whilst continue to develop

our own in order to maintain a competitive

edge.

It is great news therefore that the research

of the EUIPO will continue and the report is

expected to be published on an annual basis.

“EUIPO acknowledges that the current

provision and support offered to European

companies is subject to continued review and

evaluation, as the IPR infringement landscape

becomes more complex, as for instance,

technological developments continue to offer

new opportunities for criminals to infringe

IPRs and to distribute their goods more widely

and via ever changing routes and shipments.”

“The Observatory will therefore continue to

use the evidence captured via its databases

and through interactions with its key

stakeholders to keep pace with this evolving

landscape, to ensure that in the future both

EU companies and citizens continue to benefit

from the economic value, employment and

innovative investment associated

with intellectual property.”

35


38 www.gipmatrix.com

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