Global IP Matrix - Issue 2

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.
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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
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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

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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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