Global IP Matrix - Issue 4

Northons1975

We are delighted to present the fourth issue of The Global IP Matrix magazine to you, our loyal readers.

We have had an amazing year and grown immensely in popularity since our launch of the GIP Matrix at INTA in Seattle in 2018.

When we first launched the Global IP Matrix our main goal was to produce an IP publication like no other to educate and captivate our audience with raw, undiluted news reported to you by world-renowned IP professionals from all over the globe (who are experts at knowing how the land lies in the global IP world) and we have achieved this!

Over the last year, we have continued to work with leading IP law firms and service providers to ensure our publication has something for everyone with an involvement in this very interesting industry.

We hope that you really enjoy this issue and many more to come.
Thank you all, for helping us in exceeding our expectations.

From all of us at & The Global IP Matrix & Northon’s Media, PR & Marketing Ltd

www.gipmatrix.com

1


CONTENTS

Page 6

The matter of ‘Prior Use

by Gorodissky & Partners

Page 9

Trademark Infringement - The Nigerian Perspective

by Stillwaters Law firm

Page 13

New Development against Bad Faith

Applications in China

by Unitalen Attorneys at law

Page 17

Border measures to ensure safeguarding of IP right

by OMC Abogados & Consultores

Page 19

Is Zimbabwe a part of the global conversation on

intellectual property rights?

by B Matanga IP Anttorneys

We are delighted to present the

fourth issue of The Global IP Matrix

magazine to you, our loyal readers.

We have had an amazing year and grown

immensely in popularity since our launch of

the GIP Matrix at INTA in Seattle in 2018.

When we first launched the Global IP Matrix

our main goal was to produce an IP publication

like no other to educate and captivate our

audience with raw, undiluted news reported to

Page 20

Scope of the law on trade secrets

by Julius & Creasy

Page 25

GDPR vs WHOIS: Time for a paradigm change?

by ProDomaines

Page 30

AI - Is it changing patent prosecution?

by Dennemeyer The IP Group

Page 34

Patent Landscape of Sports-Related Concussion

by PatentSeekers

Page 38

No to Evergreening of plant variety in the

‘Plant Varieties Law!

by LexOrbis IP Attorneys

you by world renowned IP professionals from

all over the globe (who are experts at knowing

how the land lies in the global IP world) and

we have achieved this!

Over the last year we have continued to work

with leading IP law firms and service providers

to ensure our publication has something for

everyone with an involvement in this very

interesting industry.

We hope that you really enjoy this issue and

many more to come.

Thank you all, for helping us in exceeding our

expectations.

From all of us at & The Global IP Matrix

& Northon’s Media, PR & Marketing Ltd

Carlos Northon

CEO & Founder Northon’s Media PR &

Marketing LTD

Publisher of The Global IP Matrix &

Women’s IP World

carlos@northonsprmarketing.com

Elvin Hassan

Editor for The Global IP Matrix &

Women’s IP World

info@womensipworld.com

Craig Barber

Head of Design for The Global IP Matrix &

Women’s IP World

info@northonsprmarketing.com

2 www.gipmatrix.com www.gipmatrix.com

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THE GLOBAL IP MATRIX EDITORIAL BOARD

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The Global IP Matrix Editorial board

Mr. Afamefuna Francis Nwokedi

Principal Counsel of

Stillwaters Law Firm

www.stillwaterslaw.com

Nigeria

Ms. Brenda Matanga

Managing Attorney & head of practice

at B Matanga IP Attorneys for Africa

www.bmatanga.com

Zimbabwe

Ms. Laura Castillo

CEO of IP Law Firm DR

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Dominican Republic

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& Associate partner of METIDA

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The matter of

‘Prior Use’

The prior use of a designation

does not provide any advantage in

Russia, in terms of registration of

this designation as a trademark.

This means that the prior use of a designation

by one company (hereinafter – the brand

user) does not preclude another company

either from registering the said designation as

a trademark nor from using the designation

without having it registered as a trademark.

However, if the prior use of a particular

designation meets particular criteria, it can

be relied on in order to challenge further

registrations as well as to prohibit the use of

same/similar designations by other companies.

Furthermore, the said remedies lay in the

area of the Competition law rather than the

trademark law. If the brand user does not hold

any trademark or IP right to its brand, the only

option left is to appeal to the Competition Law.

In this paper, we consider two

commonly encountered situations

where it is possible to oust others

from exploiting the brand by

resorting to the Competition Law.

The first one is where the prior use is claimed

to prevent another company from using the

brand. In such a situation the adverse company

does not assert any IP right to the brand and

defends its right to use the brand by alleging

that it is not protected as a trademark or as a

copyrighted item and, therefore, it is free for

use by anyone.

The adverse party’s bad faith in using the

brand consists of exploiting well-known and

recognisable among consumers brand to get

extra profit without investing significant funds

and time into the promotion of its own brand.

The second situation differs from the first one

in the fact that the adverse company asserts

the rights to the brand in bad faith. Such a

situation may happen when the adverse party

registers the designation as a trademark, which

was already present on the market and used by

one or many companies.

In Russia…

In Russia, the Competition Law extends to any

Anton Melnikov, LL.M, Senior Lawyer, Gorodissky & Partners Russia

www.gorodissky.com

act of unfair completion and provides special

remedies a company may rely on in both

situations where it is necessary to enforce its

rights to a brand not protected as a trademark

or as a copyrighted item.

Prior use versus same/

similar designations

not registered as a

trademark.

We will consider one of the recent cases

decided by the Russian Federal Antimonopoly

Service (hereinafter – FAS) and later affirmed

by courts. The circumstances of the case are

as follows.

Kikkoman Corporation (hereinafter –

Kikkoman), a Japanese company, initiated

an unfair competition case against

TD SANBONSAI LLC (hereinafter -

SANBONSAI), a Russian company, claiming

that SANBONSAI’s copying Kikkoman’s

original bottle of 150 ml. amounted to an act

of unfair competition.

The design of the said bottle was originally

created by the famous Japanese designer Kenji

Ekuan in 1961. Further, the IP rights to the

design were assigned to Kikkoman which

widely used this bottle around the world as

well as on the Russian market for a long time.

TRADEMARKS

It is a crucial fact that Kikkoman Corporation

did not have any effective IP rights to the

said bottle design in Russia which could be

relied on in lawsuits against the infringer: the

design was not registered as a trademark nor

as an industrial design; it was not protected by

copyright either.

TD SANBONSAI LLC used the Kikkoman

bottle for the same product on the Russian

market. The Russian distributor of Kikkoman

Corporation – Mistral Trading LLC got

aware of the use of the Kikkoman bottle by

SANBONSAI in Russia in several cities,

brought charges claiming unfair competition

and won the case before FAS (2015 -2016)

by proving unfair competition on the side of

SANBONSAI.

The principal issue of such cases is of what

criteria should the prior use meet to support

unfair competition charges and get such

companies like SANBONSAI prohibited from

further using other’s brands in bad faith.

FAS applied the provisions of the Competition

Law, in particular, Paragraph 2 of Article 14.6

states that:

“unfair competition by an economic entity

actions (inactions) that could create

confusion with activities of an economic

entity-competitor or the goods or services

put on the market by the economic entitycompetitor

is prohibited, including copying

or imitating appearance of the goods put on

the market by a competitor, goods packaging,

label, name, color range, the brand style

in general (in

the totality of

branded clothing,

salesroom, shopwindow

dressing)

or other elements

individualizing the

competitor and (or)

its goods”.

By the Decision on

the Kikkoman case

(№ 08/90596/16

dated December 27,

2016) FAS found the

Defendant liable of

violation

of the

Competition

Law since its bottle

design was confusingly similar

to Kikkoman’s bottle, originally created by the

famous Japanese designer. In particular, in its

Decision FAS stated that:

“Having assessed the entire evidence

available on the case file, the FAS

Commission comes to the conclusion that

the actions of Trading House “SanBonsai”

related to marketing the soy sauce in 150 ml

packages (containers), which are similar to

the design of bottles of “KIKKOMAN” soy

sauce in their appearance (design), may lead

to confusion in the soy sauces market in the

Russian Federation, are aimed at obtaining

advantages in carrying out the business and

may cause losses to the Claimant”.

FAS also held that the Defendant’s actions

constitute an act of unfair competition

because:

1.Marketing the infringing bottle which

is confusingly similar to the Kikkoman

bottle may mislead consumers regarding

the features of the goods;

2.The said circumstances evidence that

the actions of SANBONSAI may indeed

cause losses to Kikkoman because

confusion in the market may result in

shrinking consumers’ demand for the

original sauce.

It is worth noting that the fact that the

Kikkoman product and its unique shape were

well-known among Russian consumers and

professionals significantly helped to plead the

case before FAS.

In addition to the Competition Law, FAS also

quoted Article 10bis of the Paris Convention

for the Protection of Industrial Property,

prohibiting “any competition act violating fair

customs in industrial and trade matters”.

As a result, FAS ordered SANBONSAI to stop

marketing the infringing bottle and imposed

fines on SANBONSAI and its CEO. The FAS

decision (№ 08/90596/16 dated December

27, 2016) on Kikkoman case was affirmed

by the Moscow Commercial Court (case №

А40-21129/2017) as well as by the 9th Court

of Appeals.

Therefore, prior use can be relied on against

the bad faith use of one’s brand if the

following circumstances are proven:

1. The claimant has widely used the brand

in question for a long time on the Russian

market;

2. Wide and long-term use has made

consumers associate the brand with a

particular company or features of the

respective product/service;

3. The infringing brand is confusingly

similar to the claimant’s brand;

4. The adverse company does not have

any legal grounds for using a similar

brand/design (such as trademarks,

copyright);

5. The adverse company uses a similar

brand/design in bad faith as such use

may mislead consumers regarding the

manufacturer/features of goods.

Prior use versus a

registered trademark

The second situation may take place when an

infringer registers the brand as a trademark

which has been previously used on the market

by one or many companies for a long time.

In such a case, the prior use may also play a

significant role in challenging the registered

trademark.

This situation differs from the first one in that

the prior use is claimed against the registered

trademark rather than against the bad faith

use of another’s brand. Therefore, the adverse

party acting in bad faith can rely on the

registered trademark in a dispute with the

brand user.

Similarly to the first case, here the brand user

needs to rely on the Competition Law and

claim unfair competition associated with the

registration/use of the trademark.

Article 14.4 of the Competition Law prohibits

unfair competition associated with acquiring

the rights, among others, to trademarks.

Article 1512 of the Russian Civil Code

establishes that a trademark can be canceled

in case the antimonopoly authorities hold that

registration of the trademark was made in

violation of the Competition Law.

FAS occasionally delivers its decisions on

similar cases, one of which we consider here.

The circumstances of the second case are to

some extent similar to the first one and differ

in that the adverse company registered the

brand as a trademark in its name and relied

on it in the dispute with the brand user.

HOLMER Maschinenbau GmbH (hereinafter

– HOLMER GmbH) has imported into Russia

HOLMER designated agricultural machinery

since 2002. Holmer Rus LLC (hereinafter

– Holmer Rus), a Russian company, has

registered various HOLMER trademarks

in its name. HOLMER GmbH initiated an

administrative case against Holmer Rus

claiming that the registration of HOLMER

trademarks was made in violation of the

Competition Law.

Likewise, the brand user, HOLMER GmbH,

did not have any effective IP right to the said

brand in Russia which could be relied on

against the HOLMER trademarks registered

by Holmer Rus.

6 www.gipmatrix.com www.gipmatrix.com

The case was considered by the Office of FAS

(hereinafter – OFAS) in the Lipetsk region.

OFAS agreed with HOLMER Maschinenbau

GmbH and held Holmer Rus LLC responsible

for unfair competition. OFAS’ decision was

also affirmed by the Commercial Court of

the Lipetsk region (court case number А36-

10122/2017), Court of Appeals and Court of

Cassations.

The court practice on similar cases has

elaborated criteria on when the prior use

can be relied on in cases against a trademark

registered in violation of the Competition

Law:

1. The claimant has used the brand/

designation in question for a long time on

the Russian market before the priority date

of the litigious trademark;

2. The trademark in question is confusingly

similar to the claimant’s brand/designation;

3. The litigious trademark was registered/

used to oust competitors from the market;

OFAS’ decision holding Holmer Rus liable

in committing an act of unfair competition

constituted the legal ground for Rospatent

to annul the registration of the litigious

trademark.

To conclude…

In conclusion, it is worth noting that

the prior use does really matter when a

brand user needs to protect its brands

not enjoying protection as a trademark

or copyrighted item. At the same time as

the remedies in question lie in the area of

the Competition Law, the claimant should

prove unfair competition to protect its

brand by means of the Competition

Law that requires extra proofs/efforts

in comparison with the enforcement of

trademark rights.

Either way, it is

recommendable that

the business should

register its trademarks

in advance rather than

fight against the unfair

competition which

results in wastage of time

and money.

7


AIPPI

London

2019

TRADEMARKS

INFRINGEMENT:

The Nigerian Perspective

2019 AIPPI World Congress – London

September 15 - 18, 2019

Mr. Afamefuna Nwokedi

Principal Counsel of Stillwaters Law Firm www.stillwaterslaw.com

London has progressed to be a global leader in arts, commerce, entertainment, tourism and development. In

recent years London has pushed to become one of the most innovative and business driven nations in the world, which is

why we find it a suitable location to debate the latest topics of IP.

Whether you are visiting for the first time or returning once more, you will discover a city full of unforgettable landmarks,

exciting things to do and extraordinary cuisine around every corner.

Take advantage of the Early Bird discount, register by June 12 to secure a reduced registration rate.

We look forward to seeing you in London, September 2019.

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

PHARMA DAY

• Wait! Pay for delay

• Patent Linkage: an international perspective

• Hot and hostile: recent developments in SPCs and patent term extensions

• Antibodies and epitope/competitive claims

PANEL SESSIONS

• The art of IP – museums & architecture

• In-house perspectives on IP enforcement

• Describe your best defense: trade mark infringement or not?

• Protecting trade secrets in the EU – new and improved?

• A platform for discussion: liability & safe harbour

• Forming portfolios for FRAND licensing: who decides?

• Keep your hands off my brands

• Patents and Artificial Intelligence: what’s next?

• BREXIT & IP: an update

• Seize the day – customs & border control

• Right on the money – IP & finance

• Post-grant amendments: flexibility or certainty?

• Designs on trial

• Hot Topics

LUNCH SESSIONS

Lunch Sessions 1

• An update from USPTO Director Andrei Iancu

Lunch Sessions 2

• It’s natural … or is it? Greenwashing fashion

Lunch Sessions 3

• Africa and innovation

PLENARY SESSIONS

• Copyright in artificially generated works

• Consumer survey evidence

IP damages for acts other than sales

• Plausibiltiy

More information on www.aippi.org

Intellectual property and commerce

are topics which are needless to

say, inextricably linked and in the

course of initiating and operating

a commercial enterprise, there

arises the need for safeguarding the

intellectual and industrial values

of the business as well as ensuring

non-violation of the corresponding

right of others.

The importance of intellectual

property practice and its

consequent rights/interests have

gained rapid recognition in Nigeria

within the last two decades.

Like any importing country for almost

everything, especially pharmaceuticals,

electronics and most retail consumables, the

potential to make quick gains in copying

is on the high side and this, unfortunately,

translates to infringement, dilution,

counterfeiting or piracy. That Nigeria

has had a fair share of these can be put

into perspective when one considers its

population, market share and paradoxically,

the ingenuity of its people.

In Nigeria, trademark infringement can

generate two causes of action, civil and/or

criminal. Various laws have been enacted

to protect intellectual property (IP) rights

in Nigeria and the courts have adopted

internationally acclaimed standards in

interpreting these laws. In Bells Sons & Co. V.

Godwin Aka & Anor (1917-1976) 1 I.P.L.R.,

the Supreme Court of Nigeria court posited

that:

“….the law of trademarks is aimed at the

subtle as well as the obvious infraction

of it and both the ears and eyes must be

together involved in the exercise”.

Studies show that within the realm of

trademarks, outright boldface infringement

is the most common infraction and as per the

Supreme Court in A. B. Chami v. W. J. Bush &

Co. Ltd (1990 -1997) 3 I. P. L. R.,

“…right shall be deemed to be infringed

by any person who not being the

proprietor of the Trademark or a

registered user, thereof, using it by way of

the permitted use, uses a mark identical

with it or so nearly resembling it as to be

likely to deceive or cause confusion in the

course of Trade, in relation to any goods

in respect of which it is registered.”

See also Section 5(2) of the Trade Marks Act

(TMA).

While the Act is explicit on infringement,

however, for a trademark to be protected

under the Act, it must be registered and

recorded in the trademark register. In Ferodo

Ltd & Anor v. Ibeto Ind. Ltd (2003 – 2007) 5

I.P.L.R., the apex Court asserted that:

“… A trademark if registered gives the

proprietor the exclusive right to use the

Trademark in the marketing or selling his

goods.

And without his consent,

if anyone else uses an

identical Mark ora Mark

so nearly resembling it

as to be likely to deceive

or cause confusion, will

entitle the proprietor to

sue for infringement of the

trademark…”

More importantly, is the

need to tender evidence of

registration by way of an

Extract of Records issued by

the Registrar of Trademarks.

According to the Act, this

is what is required to prove

registration and not the

certificate of registration

per se. This requirement

is evidentially fortified by

the written expression on

the face of the certificate,

which specifically states

www.gipmatrix.com

that the “certificate is not to be used in legal

proceedings”. However, the decision of the

court in Crysterlight Overseas v. Yugolex

Drugs & Anor (1997-2003) 4 I.P.L.R., where

judgement was given against a Plaintiff, who

failed to tender the registration certificate

of its trademark in evidence to prove its

claim for infringement no doubt throws in a

secondary requirement of the actual sighting

of the certificate by the court.

In deciding when a mark is said to be

identical, confusingly similar or so nearly

resembles, the courts have held in British

American Tobacco & Anor V. Int’l Tobacco &

2 Ors (2003 – 2007) 5 I.P.L.R., that:

“…in the exercise of comparison, it is

wrong to take the two Trademarks side

by side to determine whether they are

identical or some close resemblance

exists. The issue is whether the person

who sees or has seen the proposed

Trademark will confuse it with the

existing Trademark, as to create

confusion and be deceived that the

proposed Trademark is the same as the

existing one.”

9


The marks alone must be considered,

divorced from associated features or get up

and the like. Evidence is, however, admissible

to show which of the features shown in the

Register of Trademarks are essential and

which are inessential so as to be unimportant

in deciding questions of infringement. Re.

Ferodo Case.

Two peculiar

reasons attest to the

high propensity of

infringements in Nigeria.

The first is the widespread and prevailing

misconception that the “Letter of Acceptance”

issued by the Registrar constitutes

registration, and the second is the inexplicably

unwilling desires by some proprietors to

pursue potential infringement matters

outside Nigeria’s most populous and major

commercial city, Lagos. Perhaps I should add

a third factor often explained off as “clients’

strategic interest”. Under this nomenclature,

some proprietors, especially with the not-so

established brands, are mindful of exposing

their products to the fireworks of litigation,

whether infringement and more especially

counterfeiting. The perception here is that a

major crackdown will leave the public with a

perception of uncertainty.

There is another layer of secondary reasons

such as non-use and the vulnerabilities arising

from the physical expanse of the country.

Available reliefs and remedies in an

infringement action include injunction,

damages, delivery up for destruction and

accounts of profit. Predetermination reliefs

such as interim (Anton Piller Order) and

interlocutory injunctions are also available.

In the past, there was a proliferation of the

issuance of Anton Piller orders by the trial

courts. Anton Piller is a search, cease and

warehouse order that can be given by the

court to avoid the disposal and destruction of

material evidence. Under the old dispensation,

the order was given on an interim basis,

lasting until a subsequent hearing on the

interlocutory application is taken. The hearing

could then take months with the partially

satisfied aggrieved claimant puffing and

trotting for securing a major debilitating blow

on the operations of the infringer.

However, with the coming into operation of

the not so recent Federal High Court Civil

Procedure Rules, the situation has been

greatly moderated. Quite apart from the fact

that the courts rightly view the order as an

intense discovery process, the Rules provide

that it lapses after 14days, whether executed

or not.

Looking at Nigeria, one very interesting

discovery is that most actions from which

infringement arise embody passing-off and

in some major ways counterfeiting. From our

perspective in the office, this throws up quite

a few potentially damaging (for the infringer)

options outside the scope of the accessible

criminal action that the Merchandise Marks

Act (MMA) offers. For while sections 4 of the

MMA provides that:

Any person shall be deemed to forge a

trademark who either-

(a) Without the assent of the proprietor

of the trademark makes that trademark

or a mark so nearly resembling that

trademark as to be calculated to deceive;

or

(b) Falsifies any genuine trade mark,

whether by alteration, addition,

effacement, or otherwise, and any

trademark or mark so made or falsified is

in this Act to be as a forged trademark.

Beyond the scope of the above-stated

section, is the wider reach and benefit

that the counterfeiting angle brings to

bear when regulatory bodies such as

Standards Organisation of Nigeria (SON),

and National Agency for Food and Drug

Administration and Control (NAFDAC) are

involved in the counterfeiting side of the

argument.

The involvement of these agencies of

government assuages the tedious and

arduous challenge of getting the Police

through the office of the Director of

Public Prosecution to undertake criminal

prosecution of an infringer or indeed a

counterfeiter. This difficulty is accentuated by

the prevailing perception that infringement

and any cause of action arising therefrom

is a private right and public funds should

not be utilised for the protection of private

commercial gains. The backup by these

agencies comes in handy, especially where

multiple entities are committing the

infraction. Needless to say, obtaining a fiat

from the Attorney General to prosecute is a

tall order.

10 www.gipmatrix.com

To conclude

I am of the opinion that a claimant should

be allowed to pursue criminal prosecution of

a counterfeiting act in the same action as an

infringement action; albeit in the light of the

criminal nature of counterfeiting, the evidence

required to prove the same must be beyond

reasonable doubt as provided under Section

135-137 of the Evidence Act, 2011. That this

will involve private prosecution of criminal

matters is not in doubt, to avoid abuse of

the process, where the Attorney General is

of the considered opinion that grounds of

prosecution does warrant such he may join

the proceedings at any stage and exercise his

powers through the use of “Nolle Prosequi” to

extinguish the criminal aspect of the action.

Interestingly, the trial courts are vested with

both civil and criminal jurisdictions as per

the court’s decision in Amiwero v. A.G of

the Federation (2015) 15 NWLR (Pt.1482)

pg.390. The possible end result of this will

be a win-win situation for both the state and

the aggrieved proprietor. For the state, public

funds will be saved in having the private

prosecution of criminal matters arising from

civil action.

Commencement of infringement action

requires a thorough due diligence on the

infringer and the collation of information

such as, address of operation, branches,

factory, importers, storage sites- such as

warehouses, distributors, bankers, etc., this

would assist the court in evaluating evidence

during trial, see Holdent International

Limited v. Petersville Nigeria Limited (2013)

LPELR-21474. More often than not, these

are all done in very discreet manner through

the use of Private Investigators (PIs) bearing

in mind that the Client is faced with a

Catch 22 situation of trying to maintain a

balance between low profile publicity on the

infringement or counterfeiting and at the

same time sending out a message to other

potential infringers or counterfeiters that the

client is resolute in protecting its rights.

Regardless of the

challenges that extant

laws and bureaucracy

may pose, it is important

to note that time, due

diligence, planning, and a

good strategy are of major

essence in undertaking

any contentious action.


New Development against Bad Faith

Applications in China

Background

In recent years, with the in-depth

implementation of the trademark

and brand strategy plus the

continuous promotion of the

reform of trademark registration

facilitation, the number of

trademark applications in China

has been growing continuously.

As a result, the title of the top ranking

on new trademark applications in

the world has been maintained by

China for many years in a row. In

2018, 7.3895 million trademark

applications were unbelievably

filed nationwide with an increase

of 1.416 million over 2017 and a

growth rate of 23.72 percent.

However, among the big filing numbers,

some trademark applications filed by small

numbers of applicants obviously exceed the

real needs of normal operation. In addition,

these small numbers of applicants do not

hoard a large number of trademarks for the

purpose of use, which hinders other brand

owners with normal operation needs in

China from applying for their trademark

applications. Also what is more serious is

that they are willing to transfer the hoarded

trademarks to real brand owners at a very

high price to obtain illegitimate interests.

Malicious hoarding of trademarks disturbs

the market order of fair competition and the

order of trademark registration management

and also wastes administrative and judicial

resources. These kind of “abnormal”

trademark applications are the target which

the trademark administrative authorities

attack emphatically.

Facing the hoarding trademarks in bad faith

and other “abnormal” trademark application

acts, the Chinese Trademark Office and

the Trademark Review and Adjudication

Board of the China National Intellectual

Property Administration of the trademark,

and the people’s courts have taken many

different measures, such as a review in

advance even from the filing stage and an

incorporate review to apply the law strictly.

These measures effectively curb the behavior

of hoarding trademarks in bad faith, such

as possession of public resources without

legal reason and new trademark applications

repeatedly filed by trademark squatters. It also

plays a positive role to maintain the market

order of fair competition and promote the

market main body to use the brand strategy

and achieve innovation and development.

Developments

Recently, a judgment on trademark hoarding

has attracted wide attention in China

among the intellectual property owners.

Wuhan Zhongjun Campus Service co.,

LTD. (hereinafter referred to as Wuhan

Zhongjun) applied for a retrial before the

China Supreme People’s Court because it was

dissatisfied with the invalidation decision of

Mr. Lei Zhao - Senoir Partner at Unitalen

www.unitalen.com

its trademark registration for “shining silver”

in Chinese character No. 13675000. In the

end, the Supreme People’s Court made an

administrative and final ruling which is not in

favor of Wuhan Zhongjun.

The supreme people’s court pointed out in

the retrial ruling: if the trademark applicant

violates the provisions of article 4 of the

trademark law, has no real purpose of use,

and hoarded a large number of trademarks

without justifiable reasons for seeking

improper interests, it may be deemed

to belong to the ‘other improper means’

stipulated in the first paragraph of article 44

of the trademark law.

What did this enterprise do in the

past? Why was it finally considered

by the Supreme People’s Court that

it registered and hoarded a large

number of trademarks for seeking

improper interests, not based on its

normal production and business

activities?

According to the search on the official website

of the Chinese Trademark Office, Wuhan

Zhongjun has applied for a total of 934

trademarks including the the dispute mark

“shining silver”, word mark for “Five eight”,

“Zhifubao shining silver” and “Huixin shining

silver” in Chinese characters, which obviously

belong to other Chinese brand owners, on a

variety of goods and services. Actually, “Five

Eight” is one of the most famous internet

service providers in China, “Zhifubao” in

Chinese character means Alipay which belong

to Alibaba Group and “Huixin” in Chinese

Character looks quite similar to Wechat in

Chinese character. Furthermore, it was even

worse that Wuhan Zhongjun was publicly

selling the trademark on the Internet.

It is impossible to put into use nearly a

thousand trademarks. After inquiring the

major trademark sales websites in China,

it can be found that some trademarks of

Wuhan Zhongjun are listed on the trademark

websites for sale. In addition, according to

the communication between a newspapers

reporter and the agent of those websites, some

trademarks can be sold for as much as 60,000

12 www.gipmatrix.com RMB each at least.

13


According to the investigation of the Court,

the telephone communication between

Wuhan Zhongjun and the agent of Shining

Silver also made it clear that the trademark

application for disputed trademark was made

for profit only through trademark transfer,

rather than its own use. Wuhan Zhongjun

has the sole purpose of a large number of

registered trademarks, which is to seek

improper interests through high transfer fees

of trademarks.

Small series of search also further indicated

that nearly 40 trademarks of Wuhan

Zhongjun are currently pending in the

transfer procedure, not even including the

previously approved transfer. Of course, we

do not know how much they have got for this

illegal business, but overall trademark transfer

profit is very rich to Wuhan Zhongjun.

After the retrial, the Supreme People’s Court

held that the trademark registration of Wuhan

Zhongjun was not based on the needs of its

normal production and business activities, but

for the purpose of hoarding a large number

of trademarks and seeking for improper

interests, which constituted the situation of

“obtaining registration by other improper

means” stipulated in the first paragraph of

article 44 of the current Trademark Law of

China.

Apart from applying for a large number of

trademarks for the purpose of making a

profit, “other improper means” of hoarding

trademarks also includes that:

1. A large number of trademark

applications imitate others famous or

well-known trademarks;

2. A large number of trademark

applications imitate other famous

personal names, copyright, and other

prior rights;

3. A large number of trademark

applications improperly occupy public

resources;

4. Beyond the use requirements, a large

number of trademark registrations

imitate place names, jargon, and other

public resources.

For example, Shanghai Junchang Information

Technology co., Ltd. and its affiliated

companies have applied for nearly 5,000

registrations for place names below the county

level. The Chinese Trademark Office rejected

the application for trademark registration on

the basis that it had the intention of unjustly

occupying public resources, disturbing the

normal order of trademark registration and

easily causing adverse social effects.

In another case, Guangzhou 43999

Information Technology co., Ltd. applied for

more than 9,000 trademarks, among which

210 were opposed by different right holders.

The Trademark Office combined 39 trademark

oppositions together to consolidate with

different cases and speed up the procedure.

Also, Shanghai Wuyue Information

Technology co., Ltd. applied for more than

500 trademark registrations, among which 77

were opposed by different right holders, and

the Chinese Trademark Office dealt with 13

of them together...In these cases, the Chinese

Trademark Office held that related enterprises

apply for a large number of trademark

registrations and it is contrary to the principle

of good faith, disrupting the normal order

of trademark registration management,

trademarks filed by these enterprises shall not

be registered.

Next steps

According to current trademark

regulations, guidelines in China, there

is a limit to identify and take actions

against bad faith applications during

the substantial examination stage. To

eventually solve the problem of bad

faith applications, China is considering

amending Trademark Law again and

adopting the common law system to

emphasise the idea of intent to use. It has

already been suggested that when the

applicants file new trademark applications,

they shall also submit a declaration in

which to indicate where the relevant

trademarks have been used or will be used

and also include related pieces of evidence

furthermore the Chinese Trademark

Office shall examine the relatedness

between the business scope of the business

license of applicants and goods or services

covered by trademark applications.

14 www.gipmatrix.com www.gipmatrix.com

15


BORDER MEASURES

BORDER MEASURES TO ENSURE THE SAFEGUARDING OF

INTELLECTUAL RIGHTS

Intellectual Property enforcement

and border measures are vital

to detect those foreign trade

operations in which the rights of

intellectual property are violated.

Generally, well-known trademarks are

those which have such a great reputation

that, upon registration pursuant to local

law (and regardless of the country or

class), they are officially recognised for

protection and distinction worldwide.

Improvements in

Border Measures for

IP Rights

Public authorities and members of the private

sector have assumed the great challenge

of ensuring the recognition of Intellectual

Property Rights by improving the IP legal

framework in Andean countries. There is

an obligation of members of the Andean

Community to introduce border measures for

the protection of intellectual property rights.

Specifically, for Peru, and as part of the

enforcement of the Trade Promotion

Agreement entered between Peru and The

United States in 2008, the Legislative Decree

number 1092, and its regulation (Supreme

Decree No. 003-2009) entered into force on

the 1st of February 2009, approving border

measures for the protection of copyrights or

Dr. Oscar Mago - founding partner and CEO of

OMC Abogados & Consultores www.omcabogados.com.pe

related rights and trademark rights, including

well-known trademarks.

The precautionary measures available to

enforce well-known trademarks in Peru are

immobilization, seizure or withholding of the

merchandise.

Such border control measures can be initiated

by a citizen, a legal entity or the customs

administration. Peruvian customs are able to

perform spontaneous inspections of goods

if they have reasonable grounds that are

counterfeited or pirated and cannot be held

liable for any damage to inspected goods.

When requesting protection at the borders,

the petitioner will be required by the customs

administration to deposit a bond to cover

possible losses or damages caused to the

importer, exporter, and/ or consignee of the

goods resulting from any suspension of the

release of non-infringement goods. This bond

must be a sum equivalent to 20% of Free on

Board (FOB) value of the goods. In the case

of perishable goods, the guarantee shall be

constituted by 100% of the FOB value of it.

Merchandise under US$ 200 FOB value will

not be affected.

In order to verify the ownership of the

relevant goods and for them to clear customs,

trademark owners (directly or through their

legal representatives or agents) must be

registered in an official database kept by the

customs administration, who will liaise with

the Peruvian Trademark Office (INDECOPI)

for the purpose of registering rights holders.

There is a recent case of the mark

ANGRY BIRD, which is a well-known

trademark owned by the firm

ROVIO ENTERTAINMENT LTD.

Due to the success of this mark and its

products and services involved, many persons

are trying to introduce and sell counterfeited

products bearing this mark in Peru. The

number of goods entering the Peruvian

market is so big, that the owner is constantly

summoned to appear before the Judiciary.

Also, police and judicial notifications

are received to confirm the trial initiated

ex-officio by the Public attorney. As most

products are made abroad and imported

into our country, it is not possible to find the

factory or source of these knock-offs that

infringe the owners IP rights; consequently,

the only way to stop these infringements

is through Peruvian customs, which,

subsequently, is doing an excellent job!

The process seeks to be brief. If the accused

has been caught in the infringement act,

or has confessed the commission of the

infringement, or the elements of conviction

are sufficient and evident, the Public Ministry

starts the criminal process and promotes the

application of the principle of opportunity

(Principio de oportunidad) which has the

intention to reach an agreement between

both parties to compensate for damages

and losses that have been incurred. Another

requirement to apply for this principle is when

the damage caused does not have a significant

impact on consumers and the penalty to be

imposed is minimal.

These border measures

are very important to

avoid that third parties

exploit the prestige of the

well-known trademark,

with low-quality

products and also for

16 www.gipmatrix.com www.gipmatrix.com

consumer protection.

17


IP ZIMBABWE

SafariRenewals

. . . P r e s e r v i n g Y o u r R i g h t i n A f r i c a

Since 1992 ……

YU-LI TSAI

LU-FA TSAI

Is Zimbabwe a part of the global conversation on

intellectual property rights?

C

M

Y

CM

MY

CY

CMY

K

Safari Renewals LTD is a leading Intellectual Property NIPB renewal

company in Africa handling IP renewal services in all African

countries Nincluding OAPI and ARIPOB+ The company was primarily

established to provide high quality and affordable IP maintenance

services to the African community+

Falomo1Ikoyi6 Lagos Nigeria P+O+Box @6464

5078ON3B 738 678 34866O5078ON3B 847 033O@867

renewals@safarirenewals+com

w w w + s a f a r i r e n e w a l s + c o m

§ Quality | Reliable | Invaluable §

IP Right Prosecution & Litigation

Corporate Legal & Consulting

IP Value-Added Services

Focus: Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition

Licensing, Counseling, Litigation, Transaction

Territories: Taiwan, Mainland China, Hong Kong, and Macau

Fields: Mechanics, Chemistry, Pharmacy, Biology, Electronics, Optics,

Telecommunications, and Computer Sciences

Address: 13th Floor, 27, Sec. 3, Chung San N. Road, Taipei, Taiwan

Telephone: 886-2-25856688

Fax: 886-2-25989900/25978989

E-mail: email@deepnfar.com.tw

Web site: http://www.deepnfar.com.tw

As the rest of the world

commemorated World Intellectual

Property Day on the 26th of April,

as an ordinary Zimbabwean citizen

I pondered on the relevance of this

day to the country. It was in this

quandary that it occurred to me that

there was every reason to celebrate

some of the country’s achievements

with the rest of the world. There are

some significant strides which are

worthy of celebration.

Firstly, the mere reason that Zimbabwe has

recognised intellectual property rights as a

constitutional right, in the new constitution

is reason enough for celebration. Section 71

of the bill of rights under property rights

provides thus;

“Subject to Section 72, every

person has the right, in any part

of Zimbabwe, to acquire, hold,

occupy, use, transfer, hypothecate,

lease or dispose of all forms of

property, either individually or in

association with others.”

Literally interpreting this provision,

intellectual property fits into this category as

it says “all forms” of property. In addition to

that, the constitution further accommodates

this type of property in its definition of

property being “property of any description

and any right or interest in property”.

Ms. Brenda Matanga Managing partner at

B Matanga IP Attorneys for Africa www.bmatanga.com

Our celebration, however, would have been

more elaborate if this right had been clearly

provided for without having to deeply engage

our legal minds. A more apparent clause

which leaves no doubt to an ordinary person

that this right is included in the bill of rights

would have been more preferable. Some

countries such as the United States of America

have clearly embedded an independent Clause

in Article 1, Section 8, and Clause 8 of their

Constitution recognising this right. The

Congress under that provision is granted the

powers to promote the progress of science and

useful arts by providing inventors the limited

but exclusive right to their discoveries.

Be that as it may, Zimbabwe is part of

the global conversation as it has publicly

embraced intellectual property by becoming

a party to the international legal instruments

that govern intellectual property. Like many

other countries, it is a member of the World

Intellectual Property Organisation (WIPO)

through the WIPO Convention of 1967.

This is the constituent instrument of the

specialised agency of the United Nations.

WIPO’s objective is to promote the protection

of intellectual property worldwide and to

ensure cooperation among the intellectual

property unions established by the treaties

that WIPO administers. Zimbabwe has been

a party to the following; Paris Convention

(Industrial Property), since April 1980, Berne

Convention (Literary and Artistic Works),

since April 1980, Patent Corporation Treaty

(PCT) (Patents), since June 1997. Zimbabwe

is, therefore, a part of these globally

recognised legal rights. As a major milestone,

Zimbabwe is a member and signatory to the

World Trade Organisation’s (WTO) celebrated

Trade-Related Aspects of Intellectual Property

Rights known as (TRIPS Agreement)

which sets out the basic minimum

standards regarding the protection

of intellectual property. Unlike many

other countries, Zimbabwe has gone

a step further and has incorporated

these minimum standards in its

legislation. As a country, it has the

necessary intellectual laws in place

which are TRIPS compliant. To this

alone, we celebrate.

A notable development is its recent

inclusion in the international trademark

filing system community, as a member of

the Madrid Protocol. Through The General

Laws Amendment Act, the protocol was

domesticated by amending the Trade Marks

Act (Chapter 26:04 and incorporating the

protocol in the Trade-marks Act. A mark

registered under this protocol is accorded the

same protection as a trademark registered

directly in Zimbabwe.

Regionally, Zimbabwe is a member and

signatory to the African Regional Intellectual

Property Organisation (ARIPO)’s protocols:

- The Lusaka Agreement which establishes

the organisation, the Harare Protocol on the

protection of patents, and industrial designs

together with the Banjul Protocol which

governs the protection of trademarks amongst

the member countries. Zimbabwe is privileged

that this regional office is housed in Harare

and can be directly accessed by Zimbabwean

citizens.

It’s also worth noting that Zimbabwe has a

fully-fledged office (Zimbabwe Intellectual

Property Office-(ZIPO) that is responsible for

the grant and administration of intellectual

property rights in the country. One can

indeed protect their intellectual property

interests in Zimbabwe. The country has

institutionalised IP and has come up with

an IP policy and implementation strategy

to intentionally develop its IP. Though in its

infancy, this blueprint is certainly an essential

guide in a country that exudes seriousness in

promoting innovation and IP creation.

To note the importance of IP enforcement

to the country, there is a special court (IP

Tribunal) that has been created through

an Act of Parliament to specifically handle

IP matters. A pool of judges well versed in

the area is starting to develop and lawyers

who practice in this area of the law exist.

All that Zimbabwe needs to do is build its

jurisprudence in this area of the law and

expose more of the local IP holders to this

global conversation so that they become more

proactive in protecting these legal rights.

Otherwise, this Southern African country is

not doing too badly at all!

18 www.gipmatrix.com www.gipmatrix.com

19


TRADE SECRETS

SRI LANKA

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 Scope of expertise of and the experience law on in a wide trade range of secrets/ specialized fields undisclosed

of Law enables it to offer

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

information 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

including Today, UK, trade European secrets are Union, among USA the , India, Ms. Singapore, Anomi Wanigasekera, Hongkong, Partner Australia & Head , New of Intellectual Zealand, Property & Ms.

Japan

most

and

important

Korea.

properties businesses Navindi Naotunna, Associate at julius & Creasy www.juliusandcreasy.com

own. World Intellectual Property

Organization (WIPO) has defined

In trade contentious secrets matters as “any we confidential represent clients both at the National Intellectual Property Office in

opposition business information proceedings which and provides in infringement proceedings before Courts, Infringement

proceedings an enterprise are a instituted competitive in edge”. the Commercial High Court and where necessary criminal

proceedings Secret formulas, are also instituted processes, in the and Magistrate’s Court.

methods used in production are

Although among our the practice information is to a protected great extent trademarks we have substantial portfolio of patents as

well. as A trade large secrets. part of A this trade portfolio secret is is related to PCT applications filed in Sri Lanka, We also file

number

proprietary

of design

knowledge

applications

and it is

for

up to

overseas clients in Sri Lanka and for Sri Lankan clients

the holder to protect that knowledge.

overseas through our associates in various countries. We also advise Sri Lankan and overseas

For example, the Coca-Cola recipe

companies

and Google’s

on copy

search

right

algorithm

issues

are

including reviewing of copyright agreements and advise

publishers the world’s both most in Sri famous Lanka trade and secrets overseas.

Trade secrets are difficult to maintain over a

period of time. Secrecy does not stop anyone

Ms. else Anomi from inventing Wanigasekera, the same holder product of or LL.M (Wales) and Diplomas in Intellectual Property Law,

International process independently Trade Law, and Banking exploiting and it Insurance Law of Institute of Advanced Legal Studies of the

commercially. It does not give the holder

Incorporated

exclusive rights.

Council

Employers

of Legal Education

become

heads the Intellectual Property Division of our firm. Ms

Sandamali vulnerable Kottachchi, when employees holder with of trade LL.B (Colombo), Master of Arts – International Relations ,

Diploma secret knowledge in Forensic leave Medicine employment. & They Science and Diploma in Computer System Design is a senior

should ask employees to provide a written

professional associate in the Firm’s Intellectual practices. Property The Act Division specifically and there recognises are 8 other professional

undertaking that they will not compete with

disclosure, acquisition or use by others of

associates attached to the Intellectual Property Division.

the employer’s business when they leave, in

secret information without the consent of the

addition to signing a confidentiality agreement.

person lawfully control of that information to

However, these undertakings must be drafted

constitute an act of unfair competition (s160

carefully as to not to restrict Tel.94 the employee’s 11 4335159 Fax: (6)). 94 In 11 keeping 24466 with 663, the +94 TRIPS 11 2435 requirements 451

right to earn a living.

Email: jacey@sltnet.lk; s160 (6) (c) pts@juliusandcreasy.lk

of the Act requires “undisclosed

Internet: information” www.juliusandcreasy.com

to be accessible to persons

within the circles, the information must have

The law in Sri Lanka

commercial value because of its secret nature

The TRIPS Agreement was the first and must be the subject of reasonable effort

international agreement to protect trade on the part of the right holder to maintain its

secrets expressly (Article 39). In Sri Lanka, secrecy. The unlawful disclosure, acquisition or

no formal definition of a trade secret exists use of the undisclosed information may result

and there is no restriction as to the type of from through breach of contract or breach

information that can constitute a trade secret. of confidence. The provisions relating to an

The protection of trade secrets forms part of unfair competition are applicable in Sri Lanka

the general concept of protection against unfair independently and in addition to the other

competition. The law relating to protection provisions of the Act protecting inventions,

against unfair competition was first introduced industrial designs, marks, trade names,

to Sri Lanka in 1979 under the provisions of literary, scientific and artistic works and other

section 142 of the Code. Currently, Section intellectual property (s160(b)). Any person

160 of the Intellectual Property Act 2003 or enterprise or association of producers,

(the Act) governs unfair competition in Sri manufacturers or traders aggrieved by any act

Lanka. It is based on WIPO Model Provisions or practice referred to in section 160 of the Act

on Protection against Unfair Competition. is entitled to institute proceedings to prohibit

S160(1) of the Act defines unfair competition the continuance of such act or practice and

as to any act of competition contrary to obtain damages for losses suffered as a result

honest practices in industrial or commercial of such act or practice (s160(7)). Section

160(9) stipulates that the protection granted

under unfair competition is in addition to the

common law rights.

Cases

A typical case for breach of contract involves the

disclosure of secret information by an employee

who rightly obtains secret information during

the course of his employment but afterward

uses it to use for his own advantage.

In Diesel and Motor Engineering PLC v,

Chathura Milinda Wickremasinghe and

Buddika Malinda Kuruklasooriya (HC/ Civil/

31/ 2017/ IP) Ruwan Fernando J summarized

the trade secret law in Sri Lanka. In this case,

both the Defendants were involved with

the Executive Management and were privy

to all the confidential information and/or

undisclosed information and commercially

sensitive business information belonging to

the Plaintiff in reliance of the Non-Disclosure

Agreements entered with the Defendants.

Both of them resigned from the employment

of the Plaintiff on the same day and formed a

company named “M & M Solutions (Pvt) Ltd”.

The Plaintiffs inter alia sought injunctions

against the Defendants restraining the

38 TH ANNUAL

CONFERENCE

In a period of change within the

EU, cool heads and constructive ideas

are needed. As the UK seeks to define its

future relationship with the EU we might

see the shape of the ‘New Horizons’ through

the ‘haze of uncertainty’ that currently

clouds our view.

Scan QR code

to view details

www.ecta.org

20 www.gipmatrix.com www.gipmatrix.com

21

DETAILS


directly and/or indirectly use Plaintiff ’s

recipes with respect to Bubble Tea and

Plaintiff ’s undisclosed/ confidential/

commercially sensitive business information

in respect of drink costs and sea freights.

Northon's Media PR & Marketing Ltd

Defendants from directly or indirectly making

use of and/ or disclosing confidential and/or

undisclosed information and/or commercially

sensitive business information belonging to

the Plaintiff. A key issue was whether the list

of customers and suppliers and methods of

doing business are freely available in the public

domain and amounts to Defendant’s skill and

knowledge applied and experience gained

during the employment. The Defendants

further pleaded that the Plaintiff ’s action

constitutes a restraint of trade.

In Finality Rentokil (Ceylon) Ltd v

Vivekanantha (1952) 2 Sri Lanka Law Reports

346, the Court held that the employer cannot

prevent the ex-employee from using the

knowledge, skill, and experience gained during

the employment because the public policy

requires that every man shall be at liberty to

work for himself.

In the UK Court of Appeal decision in the case

of Faccenda Chicken Ltd v Fowler and others,

the Court held that not all the information such

as sales information in general or information

about price could be regarded as trade secrets.

They amount to a trade secret only if there is

an express restrictive covenant. In Printers &

Finishes Ltd v Holloway (1965) 1 WLR 1, the

Court noted that information the future use of

which will not be restrained is information not

readily separable in the mind of the employee

from other information which he is free to

use, and the actual or threatened misuse of

information which has been deliberately

memorized for the purpose of its being carried

away and used elsewhere will be restrained.

After considering the above cases Ruwan

Fernando J held that if any information

acquired by an employee during employment

as part of the skill, knowledge, and experience

can be separated from other confidential

information of commercial value that becomes

the property of the old employer, the employee

is at liberty to use such information. If such

information cannot be so separated from

the employer’s confidential information,

the employee is prevented from using such

information after his employment has ended.

The court granted an interim injunction as

the Plaintiff prima facie established that the

Defendants had acted in a manner contrary to

honest commercial practices which constitute

an act of unfair competition in section 160(6)

of the Intellectual Property Act No 36 of 2003.

Misuse of trade secrets may also occur after

acquiring the information by violation of

a duty of confidence, or after acquiring the

information by theft. In Mabroc Teas (Pvt)

Ltd. v Dilan Shammi Wijeyesekera H.C.Civil

60/2016/IP, the Plaintiff contended that the

Defendant being a Director of the Plaintiff

company was directly involved with the

production and distribution of “Bubble Tea”

and also in respect of the Plaintiff ’s tea export

industry. He had been made privy to all the

confidential information belonging to the

Plaintiff. After resigning from the Plaintiff ’s

company the Defendant had pursued to obtain

confidential information and to unlawfully

acquire the Plaintiff ’s client list through emails

with the Plaintiff ’s

employers. R.

Marikar J refused

to grant interim

relief preventing

the Defendants

from using the

undisclosed/

confidential/

commercially

sensitive business

information of

the Plaintiff which

has been obtained

through emails as

the Plaintiff has not

disclosed a prima

facie case against

the Defendant. His

Honor held that the

Plaintiff has failed

to prove on balance

of convenience on

what capacity the

Defendant acted

as a Director, what

activities he had

and on what type

of confidential

information he

obtained and what

are his entitlements.

However, the

Plaintiff and the

Defendant entered

into an overall

settlement where

the Defendant

agreed not to

To conclude

The following general observation may

be made in respect of trade secrets. An

employee is under a duty not to divulge

any of the trade secrets of the employer

imparted to the employee in confidence.

It is common for employers to enter into

a contract restraining trade to protect

trade secrets. However, to enforce such a

contract it has to be reasonable and should

not restrict employee’s freedom to trade. By

contrast, contract law cannot be applied in

all cases of misappropriation of undisclosed

information. When a third party who is

not a party to the contract misappropriates

the undisclosed information, the terms of

the contract do not apply to that person.

However, even in the absence of a contractual

relationship between the parties trade secret

holder can rely on the doctrine of breach of

confidence. Trade Secrets Law does not address

the mistaken acquisition of a trade secret. The

law should prohibit the use or disclosure of a

trade secret obtained by mistake if the person

has knowledge of the mistake at the time of his

use or disclosure. If trade secret information

can be developed independently or through

reverse engineering, it cannot qualify as misuse

of a trade secret.

OAA Law

ONAMBELE-ANCHANG & ASSOCIATES LAW FIRM

Onambele, Anchang & Associates Law firm (OAALAW) was founded in

1990 by Joseph Antoine Onambele who was later joined by Mary Concilia

Anchang. Both managing partners. Proud to be the pioneer bilingual and

bijural firm practicing civil and common law in all jurisdictions of

Cameroon, the CEMAC region and abroad, the firm owes its maturity in

legal services through innovative and resilient research coupled with hard

work for clients across the globe.

OAALAW equally boasts of 3 decades of practice as a full-service

corporate law firm. OAALAW represents and assists clients in matters

that include Intellectual l Property Protection, filings, mergers, prosecution,

litigation, telecommunication, mining, real estate, finance corporate, ADR,

joint venture, IPP, BOT in infrastructure, etc

Mary Concilia accredited with the OAPI is the pioneer IP lawyer of the

African Union community IP system in Africa. Thus making OAALAW the

pioneer IP agents and lawyers in the entire OAPI region.

Mary Concilia is equally the 1st female African country member of the

ICC international court of arbitration in Paris, a position she held from

2006-2010.

She is the founding chair of the African Chamber of Trade &

Commerce (ACC) created in 2015.

Join us at OAALAW, the most dynamic one-stop-shop address for,

quality efficiency, diligence, and competitiveness for total

satisfaction.

Contact:

Mary Concilia Anchang

Partner Onambele, Anchang & Associates

Opposite the United States Embassy

Rosa Park Avenue- Golf Ntougou

BP. 6262 Yaounde Cameroon

Tel (237)2 22 20 97 76 M (237) 677 5815 51 Fax (237) 22 21 53 41

oaalawpartners2@gmail.com

info@oaalaw.cm

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22 www.gipmatrix.com www.gipmatrix.com

23


DOMAINS GDPR

The 33rd MARQUES Annual Conference

GDPR vs WHOIS:

Time for a paradigm change?

#MARQUES19

BRANDS CONFRONTING CHANGE

Tuesday 17th - Friday 20th September 2019

*Early Bird Discount*

Available to members of MARQUES for bookings

received before Friday 28th June 2019

Register online at www.marques.org/events

Citywest Hotel,

Garters Ln, Saggart, Co. Dublin,

D24 KF8A, Ireland

The latest event in history about to unfold

manifests as a strong letter from NTIA

(US National Telecommunications and

Information Administration) to ICANN CEO,

pushing, in no uncertain terms, ICANN to act

upon dealing with WHOIS anonymity issues.

Assistant Secretary for Communications

and Information and Administrator at

NTIA, David J Redl, states that “Given

the impact that…European General

Data Protection Regulation …has had

on the WHOIS…now …is time to …

swiftly create a system that allows for

third parties with legitimate interests…

access to non-public data critical to

fulfilling their missions”.

A strong conclusion follows that unless

“…clear and meaningful progress…”

is made, “...alternative solutions such

as calls for domestic legislation will

…be considered.” (1)

As the issue is turning into a State matter, it

might be time to review how WHOIS ended

in this situation as collateral damage, what

exactly is at stake and if finding a solution to

Private data access might lead to a paradigm

change.

Looking at collateral

damage…

Back to the beginning, what is

GDPR and why did it impact

WHOIS so much?

Applicable since May 25, 2018, the General

Data Protection Regulation applies in

all Member States of the EU. It has been

launched to ensure “everyone’s…right to

the protection of personal data…under the

Charter of Fundamental Rights”. It thus

enforces 4 main principles: Right of Access,

Right to Portability, specified Data Protection

Requirements and most of all, Privacy

Rights including non-disclosure of

private data.

The full spectrum is delivered with

Extraterritorial effect (legislation extends

to companies outside the EU as soon

as an EU individual or data subject is

concerned) and increased sanctions.

Non-compliance penalties can amount

to whichever is the greatest of 4% of

total worldwide Company income or 20

million euros.

Now if this Policy has been launched

primarily to give back Consumers some

control over the extensive collection (and

use) of personal data by such online actors as

GAFA and Online marketers, Domain Names

were nowhere on this radar.

They were mostly collateral damage.

The WHOIS is a collection of contacts

pertaining to the Domain Name, collecting

and disclosing a good amount of private data

(Registrant Name, Surname, address and

email for example).

So when GDPR came into view, after years of

general non-consideration, Registrars realised

their very nature made them at minimum

data collectors and possibly data controllers.

As ICANN Contracted Parties, they suddenly

realised as well that they were caught between

two irreconcilable compliances: their ICANN

contract (RAA) making it mandatory to

deliver access to a “fully-data-disclosing”

WHOIS and GDPR, threatening unbearable

financial sanctions should private data be

disclosed through the same channel.

There was no other possible choice for

impacted Registrars but to make it clear to

ICANN they would comply with GDPR

regulations, close the access to general

WHOIS data and push on discussions to

reach a last-minute agreement.

ICANN and its community had to react and

it was indeed a reaction more than a planned

move. When it became clear that Registrars

would abide by their local laws over the

Mr. Jacques Blanc, Managing Director, ProDomaines

www.prodomaines.com

RAA, ICANN made the new status official

by creating the Temporary Specification

for gTLD Registration Data (“Temporary

Specification”) (2). It came into effect on 25

May 2018 for operators of gTLD registries and

ICANN-accredited Registrars. To be reviewed

once a final solution was reached through

the Expedited Policy Development Process

(EPDP) Group, tasked with creating the future

WHOIS policy in accordance with the new

situation.

Meanwhile and as a visible consequence, most

WHOIS had been anonymised and contacts

masked but for Registrar, Registration and

Expiry date, plus DNS Technical data.

Remember WHOIS database was conceived

as a basic list of contacts for Domain Name

Management, but then became Domain Name

primary public record, figuring the ID card

of a Domain name and nexus of research

and investigations on Fraud, Counterfeiting,

and Cybercrime, including Trademark

infringement.

Hence consequences of its anonymity struck

hard on the IP Community: suddenly, Law

and IP Enforcement have become harder to

achieve, aftermarket entities such as Domain

Marketplaces and Escrows struggle to check

the reality of ownership, and even UDRP had

to modify its workflow.

The only entities (other than infringers, that

is…) that might have beneficiated of the

WHOIS getting dark are the individuals, now

being spared Spam coming from the contact

address collection by harvesting bots.

24 www.gipmatrix.com www.gipmatrix.com

25


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One of the oldest and leading IP companies in Bulgaria

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26

www.gipmatrix.com

What is the way ahead?

So where are we now?

The Community has been discussing a bunch

of possible solutions which all have their pros

and cons. ICANN’s Temporary Specification

states that “users with a legitimate and

proportionate purpose for accessing the nonpublic

personal data will be able to request

such access through registrars and registry

operators”.

After discussing for a few weeks (months.. ?

) to reach an agreement upon such terms as

“users” “legitimate”, “proportionate”, one

can realise the heart of the matter is Liability:

who is to bear the burden of GDPR financial

sanctions in case of private data disclosure?

The actual data collection being made through

Registrars, the said parties are adamant they

do not have neither resources nor expertise to

balance “legitimacy” and “proportionality” of

disclosure requests on their own, much less so

when requests might number in thousands. So

a series of alternatives have been discussed:

-Build a sufficiently thorough

accreditation process and give any

accredited entities full data access. The issue

is on the accreditation process itself (who, to

what extent, for how long…), and liability in

case of a faulty disclosure mistake.

-ICANN becoming the central data

repository to which collected data and

disclosure requests would be redirected. The

issue is ICANN prevalence and liability on

behalf of the Registrars over local legislation.

Accreditation process issue remaining.

-Separate Public and Private data

so Public data are disclosed while Private

data is handled through one of the previous

processes. There are issues with Registrars

resources to flag an existing 150 million

Domain Names and the fact that Private

and Public data can be mixed. Accreditation

process issue still stands.

Finally, the EPDP phase 1 report came

through with a majority adoption of measures

such as administrative contact no longer

being part of collected data, technical contact

becoming optional and study of a process to

determine if the Registrant field contains any

information that could lead to private person

identification. Should that be the case, data

publication becomes opt-in/opt-out

The road is still long until this becomes an

actual applicable Policy, so maybe it’s time to

change the paradigm and ask ourselves: what

do we really want and are we ready to go all

the way?

Paradigm change

Quote David Redl again: WHOIS is “an

incredibly valuable tool for governments,

businesses, intellectual property rights

holders, and Internet users around the world.”

Should we endorse this line of thought, then

we have to presume this (priceless) WHOIS

data (Community is fighting to disclose again)

is truthful, reliable and reflects the reality of

real contacts behind the Domain Name.

Well…

Let’s face it: in its actual state, the WHOIS

is declarative. It was initially conceived as a

basic list of contacts, nothing more. So apart

from some restricted ccTLDS extensions, the

published data is not systematically verified,

despite ICANN WHOIS Data and Accuracy

policy (3). Hence, it’s often inexact if not

outright bogus.

As we recognise this fact, let’s change the

paradigm.

Domain Names actually support most of

Online Business exchanges: websites, emails,

extranets, DNS naming… Add Enforcing

activities mentioned above, this makes

Domain ID (WHOIS) one of the most web

structuring information pieces, the exactitude

of which should be paramount.

And if WHOIS truthfulness is paramount,

maybe we should make it so. And look at

moving from a declarative model to an IDvalidated

model. From a “list of contacts” to

a real ID document, supporting the growing

role of the considered asset.

Such a model exists: Trademark

Clearinghouse, for instance, has demonstrated

the relevancy of initially validating your

identity (ID and Trademark rights on

subscription) then use this ID further along

through a digital ID marker (SMD file) which

enables further “entity validated” actions

(NewGTLDs Sunrise registrations).

Such a system could be made RGDP

compliant and preserve privacy while hosting

validated and

accredited-available

data in a central

repository. Could

something similar

apply to Domain

Name registrations,

thus changing

the nature of the

WHOIS? No doubt

this would give a

serious boost to

Law and IP Rights

enforcement, by

ending a ramping

and often damaging

lack of clean data.

Now some could

resent this end of

anonymity as a

shrinking of freedom

and a booming of

regulation. Is the

community ready for

such a move? Are we

ready to trade more

regulation for more

security, a heavier

way to do business

for better recognition

of the actors behind

the scene? And

maybe a decrease

of domain name

numbers due to

tougher barriers put

on registrations?

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and find out and,

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Sources:

(1) https://www.internetnews.me/wp-content/uploads/2019/04/

NTIA-Ltr-to-ICANN-re-WHOIS-April4-2019.pdf

(2) https://www.icann.org/resources/pages/gtld-registrationdata-specs-en

(3) https://www.icann.org/resources/pages/whois-dataaccuracy-2017-06-20-en

BIO

Jacques Blanc, Managing D irector, ProDomaines

Jacques has been working in the internet world since 1994, so

he tends to favor the long strategic view whenever looking at

the first truly all-encompassing worldwide media.

Starting 1994 as a Financial Communications Director at

Mediagérance, he became Head of Biz Dev. at Email Vision

(Emailing French N°1) in 2000. Jacques entered the IP and

Domain Name business in 2002 as VeriSign France Sales

Manager. Following two divestitures, Jacques was successively

Southern EMAE Manager for Melbourne IT DBS (2008),

taking a passionate part in the. BRAND episode in a major

Brand Protection Company, then Digital Brand Consultant

for CSC DBS (2013) Corporate Domain Name Management

N°1.

Jacques is now Managing Director of ProDomaines, an

ICANN accredited Corporate Registrar based in Bordeaux.

He is also part of ICANN Accountability and Transparency

ATRT3 Team.

Jacques holds a License in Public Law and a Master in

International Law (University Paris1 Panthéon-Sorbonne),

as well as an Engineering Degree in International Sales

(C.E.S.I.).

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WWW.CANAANSOLICITORS.COM


AI:

PATENTS

Is it changing

patent prosecution?

Invention submission

AI has proven to be valuable to patent

committees during the invention submission

process. Patent committees typically receive

an invention submission and want to do

a high-level prior art analysis before even

evaluating the submission to determine if it is

worthy of patent protection. Committees want

an easy method to understand if the invention

is novel. With AI, they can take the text of

the invention disclosure and put it into the

system. They do not even need to know how

to structure a Boolean search because, within

moments, they will see highly predictive

results.

Some feel that artificial intelligence

(AI) is revolutionizing the way

patents are prosecuted, while

others disagree. When we hear

this term used in relation to patent

prosecution, we immediately think

of prior art searching. However, AI is

being employed in several other ways.

As Susan Krelitz, adjunct professor

of Intellectual Asset Management at

the Mitchell Hamlin School of Law

said, “IP Law firms and departments

will use AI if it makes their life

easier, faster or less expensive. It is

that simple.” Let us discuss each of

the following areas, with specific

examples, where AI has proven to be

easier, faster or less expensive:

• Prior art searching

• Invention submission evaluation

•Watching the competition and

identifying new competitors

•Directing R&D with white space

landscaping

•Opposition Invalidity Searching

Prior art searching

The most obvious use of AI within the

IP industry is prior art searching. AI and

machine learning are technologies that

allow us to easily and quickly gain insight

into massive amounts of patent data. The

traditional method of conducting a prior

art search is to have a researcher construct

a query into a patent database. The query

will identify published patents that meet the

specific criteria in the query. The criteria may

include class codes, keywords, exclusionary

words, etc.

The success of the prior art search is

dependent on the skill of the searchers. Did

they consider the right classes? Did they

select the right keywords? Did they exclude

keywords, without which the results will be

overly inclusive? Did they use the correct

Boolean operators? In other words, the search

inquiry will return exactly what the researcher

requested, nothing more and nothing less. The

result of a traditional search is usually a long

list of patents that the searcher must then sift

through and prioritize.

AI-based searching is different. It processes

human language with flexible semantics.

There is no need to learn Boolean search

structures. AI allows the user to input any

description of an invention directly into the

system, which then automatically extracts the

meaning of the text and identifies patents with

a similar purpose or technical content. The

system intelligently analyses the data and is

not dependent on the specific quires selected

by the searcher.

Take Octimine, for example. An innovative

start-up in the field of IP management

and recognized as one of the leading AI

platforms, Octimine takes semantic patent

search, analytics, and machine learning to

the next level. Founded in 2015 by former

Max-Planck-Institute and LMU Munich

researchers, the company was acquired by the

Dennemeyer Group in October 2018 and can

assist its users, through AI, in various aspects

of patent prosecution.

Octimine has a simple user interface but also

uses a hybrid approach for more flexibility.

The software solution allows a searcher to

input natural language text in any format and

refine the scope of the search by using specific

filters. One example of a filter is a date range.

Octimine users can restrict the search to prior

art that existed on or before a particular date.

dennemeyer.com

Although the ease of entering a query is a

definite advantage of AI, many see the way

AI returns results as even more valuable.

Traditional search engines return a long

list of patents with little or no ranking and

no visualization. Octimine ranks results by

relevance and allows the searcher to quickly

see the most relevant prior art. Modern IP

search tools also use visualization to illustrate

search results and help users to get an

overview of the results in a split second.

Although AI has substantial advantages over

traditional search tools, it is not universally

accepted. There are several reasons given by

detractors for not using AI, the most common

being that Boolean searching is proven and

safe. Others complain that using AI involves a

“Black Box.” The searcher does not know how

the search was performed. Others complain

that they already know how to do Boolean

searching and they do not see the need for a

simplified method.

To help overcome these concerns, the

experts suggest using AI searching alongside

traditional methods. Many skeptical Octimine

users have been surprised that AI has identified

relevant prior art overlooked by conventional

methods. Because AI is so easy to use, running

an additional AI-based search to augment a

traditional search is not time-consuming nor

is it expensive.

Several large IP departments use Octimine to

do this type of first screening of the invention.

If prior art is identified that is directly on

point, they can decide to terminate the patent

process before investing a lot of time. If the

search identifies prior art, but the art is not

definitive, the committee can ask the inventor

to clarify any ambiguity. This can all be done

without a professional searcher and can,

depending on the results, save the committee

from investing unnecessary time in the

process.

Watching, identifying

and comparing

competition

AI is ideally suited both for comparing

a company’s portfolio to its competitors’

and for identifying unknown competitors.

There are traditional systems to monitor and

compare competitive portfolios, but those

systems require the company to identify the

competitors first.

AI allows a company to input a patent

portfolio into the system and then ask the

system to identify similar portfolios. If the

company is using Octimine, it will identify the

most similar portfolios, regardless of whether

the competitor is even known to the company.

Several analytics and visuals can be run to

compare similar portfolios.

Directing R&D

with white space

landscaping

Several progressive companies are using AI

to identify white space where they should

direct their patent and R&D activities. AI

reveals the patent activity of a technology,

provides an overview of the state of the art

and offers valuable insights to commercial and

technology managers. As such, enough data

is available to inform the R&D department

as to where they should focus their activity

and where the IP department should focus its

filling strategy.

Octimine, by way of example, has several

graphical analytics to make it easier for the

company to see the white space.

Opposition /

invalidity search

When objecting to a competitor’s patent, the

first option is to file an opposition (at the

EPO), or a post-grant review (at the USPTO)

and try to prove that there was non-cited

prior art that invalidates the patent. AI is

ideally suited for finding similar patent art. If

using Octimine, all a user must do is insert

the patent number and set a filter for the

appropriate date. Octimine will identify prior

art that is on point.

Integration with IP

management systems

The most sophisticated AI systems offer APIs

that allow integration of the AI system to

their customers’ other systems. For example,

Octimine has an API that allows search

results to flow into other systems where they

can be associated with the relevant matter.

The Dennemeyer Group plans to integrate

Octimine into DIAMS IQ, Dennemeyer’s IP

management software system.

One example of where this integration is

valuable is in the invention submission and

review process. Once Octimine is integrated,

inventors and patent review committee

members can review the search results in the

same system they use to manage the invention

submission. They will be able to make an

AI-based novelty search a standard part of the

review process.

Other uses

This article is not an exhaustive list of the ways

AI is used by IP departments and firms today.

Other uses include identifying licensees,

patent valuation, patent proofreading, general

landscaping, and clustering.

The future of AIbased

IP systems

No one will question that AI is here to stay.

The most progressive firms and departments

are already using AI to make certain processes

easier, faster and less expensive. As systems

like Octimine become more pervasive, use

will increase and detractors will melt away.

About the

Dennemeyer Group

The Dennemeyer Group has more than 55

years of experience in delivering quality

Intellectual Property services including

patent annuities, trademark renewals,

recordals, strategic IP consulting and

intelligent software solutions for efficient

IP management. These services are

further expanded when coupled with

Dennemeyer & Associates, the group’s

law firm, to include EP validations, PCT

nationalizations, trademark, and patent

filing and prosecution.

30 www.gipmatrix.com

www.gipmatrix.com

31


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Patent Landscape of

Sports-Related Concussion

Bio: Liang Wang (MSc in Environmental

and Energy Engineering from Sheffield

University) is a Senior IP Manager at

Patent Seekers Limited and has developed

an expertise in patent search and analysis

across multiple disciplines. He is a key

member of the company’s patent search

teams, involved in over 16000 searches

for international patent attorneys both in

private practice, in-house and for major

blue-chip companies.

“Every April 26, we celebrate World

Intellectual Property Day to learn about

the role that intellectual property (IP)

rights play in encouraging innovation and

creativity. This year’s World Intellectual

Property Day campaign – Reach for Gold –

takes a closer look inside the world of sports.

It explores how innovation, creativity and

the IP rights that encourage and protect

them support the development of sport and

its enjoyment around the world.” – World

Intellectual Property Organisation

This article presents an overall review

of the patent landscape of sportsrelated

concussion.

Introduction

Concussion: Temporary unconsciousness

or confusion and other symptoms caused

by a blow on the head. – Oxford Dictionary.

Effects are usually temporary but can

include headaches and problems with

concentration, memory, balance, and

coordination.

Concussions are a surprisingly common

occurrence in sports. Although it is a temporary

injury to the brain, it can lead to serious and

longer-lasting problems. We hear the word

“concussion” quite often these days across

different sports, including but not limited to

rugby, football and basketball: “Cillian Willis was

forced to end his rugby career”, “Czech goalkeeper

Petr Čech suffered from a severe concussion in

a football match”, “Liam Picken was forced to

retire from AFL due to concussion” etc. Over

the last decade, the sports-related concussion

has become a significant concern among the

public, sports, and clinical professionals. There

have been numerous attempts at preventing

concussion in sports, such as change of certain

rules, use of protective equipment, improved

training methodology, monitoring/detecting of

concussion, etc.

Mr Liang Wang - Senior IP Manager at Patent Seekers Limited

www.patentseekers.com

How rapidly is new innovation taking place in this space?

From the chart above, we can see that there were steady numbers of publications each year since 2000.

The number of patent filings appears to start to rise in 2010, with a big surge occurring from 2013

onwards; this may be attributed to the beginning of awareness of concussions in sports. The apparent

dip in filings in 2017/2018 is most likely explained by applications that have yet to be published and

would be claiming those years as a priority. It could be anticipated that the number of concussionrelated

patent filings will continue to increase in the coming years as to how to prevent sports relatedconcussion

has become a huge topic globally. There have been numerous efforts for prevention and

mitigation of sports-related concussion, including the use of protective equipment, improved sports

regulations and legislation, concussion education and improved monitoring of concussion.

What are the trends in technology focus?

There have been numerous efforts for prevention and mitigation of sports-related concussion,

including the use of protective equipment, improved sports regulations and legislation, concussion

education and improved monitoring of concussion.

The heat map at the bottom of the previous page shows the number of patent publications placed

in the top 20 IPC classifications over the last 20 years. It appears that most of the patent filings fall

in the classifications of A42B3 (Helmets; Helmet covers; Other protective head coverings) and

A61B5 (Detecting, measuring or recording for diagnostic purposes; Identification of persons), which

demonstrates the technology areas where companies/organisations focus on. From a further

drill-down analysis, A42B3/06 (Impact-absorbing shells, e.g. of crash helmets), A42B3/12

(Cushioning devices) and A63B71/10 (Games or sports accessories for the head) appear to

have the most publications in the area of protective equipment, there also appears to be plenty

of activity happening in the concussion monitoring area as shown in A61B5/11 (Measuring

movement of the entire body or parts thereof, e.g. head or hand tremor, mobility of a limb).

By use of the latest technologies across different areas, it would be expected that there will be

more efficient ways to prevent concussion in sports to better protect athletes from serious brain

injuries.

What is the global origin of this technology?

As discussed above, the prevention of sports-related concussion has become a global awareness, which

can be clearly seen from this map, showing the distribution of the top 20 priority countries in this field.

The United States appears to be the most active country in this technical area, almost triple the number

of publications compared to China and Canada, who are also fairly energetic. Other leading countries

include Japan, Australia and some European countries, including Germany, the United Kingdom,

France, Spain, and Italy. The above chart shows that companies and individuals all over the world have

a great interest in developing new technology and filing related patents in this area.

Who are the current market leaders?

This chart shows the companies which have the most patent filings in this field and indicates the

current market leaders, actively involved in the field of sports-related concussion. Riddell, an American

company specialising in sports equipment for American football, appears to have the most publications

(mostly relating to helmets). Other leading companies in the area of protective equipment include

Bauer, Easton Sports, Kranos, Bell Sports and Salomon, etc. BrainScope, a medical neuro-technology

firm using artificial intelligence to assess a variety of neurological conditions including concussion,

appears to be the top company leading patent

filings in concussion measuring/detecting

technology. IBM and Blast Motion also seem to

be interested in the area of sensing technology for

concussion. This chart also appears to be well in

line with the above “technology focus” chart.

Technology Landscape

This patent landscape map shows the distribution

of patents in the data set based on relatedness of

text, providing a visualisation of the technology

clusters prevalent within the sports-related

concussion portfolio and revealing a diverse set

of interests.

There appear to be plenty of patent filing

activities in the area of development of protective

equipment, which can be seen from those red,

green and brown clusters. Although concussions

are not always preventable and there may not

be a magic product on the market currently for

preventing concussions, helmets can protect

against more severe head injuries. It appears

that the helmet is the main technology focus,

which can be explained as the most obvious and

potentially the most effective way to prevent

concussion if they can be properly designed with

the help of latest technology, such as new material

with high energy absorbency and improved

design of the helmet layers.

In addition to the above, companies and individual

inventors have also put numerous efforts into

the field of advanced detecting and measuring

of concussion, including biometric assessment,

electrical simulation, and rehabilitation. All these

new and improved technologies will be of great

help for early and better diagnosis of concussion,

which can eventually lead to successful treatment

and prevention of any related sequela.

Conclusions

This overview of the patent landscape

surrounding sports-related concussion has

revealed that the use of protective equipment

and motoring/detecting of concussion are

the two main areas where the majority of

companies are trying to dive into and invest.

There has already been a great number of patent

filings relating to the development of products

and technologies, and it could be anticipated

that this will continue in the coming years as

sports-related concussion has emerged as a

major public health and clinical concern due to

the increased number of diagnosis worldwide.

It would be wonderful if technology could

solve the sports-related concussion crisis,

and there should be more and better research

into how to prevent concussion and therefore

protect athletes’ health.

34 www.gipmatrix.com www.gipmatrix.com 35


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Professor André Spicer, Professor of Organisational Behaviour,

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Affairs, Microsoft

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‘No’

to Evergreening of plant variety

in the ‘Plant Varieties Law!’

Ms Vijaya Chaudhary - Associate at LexOrbis

www.lexorbis.com

“Every April 26, we celebrate World

‘Under the current Intellectual Property

Right (IPR) regime, the Indian Patents

Act excludes plant per se or any part

thereof including seeds, varieties,

species and essentially a biological

process from patentability.’

The Protection of Plant Varieties and Farmers’

Right (PPV&FR) Act, 2001 (hereinafter

mentioned as the Act), a unique sui-generis

system for the protection of plant varieties in

compliance with Article 27(3) (b) of

Trade-Related Aspects of Intellectual

Property (TRIPs) Agreement, is the

only legal instrument for protecting

a new plant variety that has been

developed. In order to be registerable

under the PPV&FR Act, the variety

must satisfy the four essential criteria of

registration i.e. novelty, distinctiveness

(D), uniformity (U) and stability (S).

The novelty of a variety is decided on

the basis of date of sale of a candidate

variety. As per section 15(3) (a) of the

Act, if the application for registration

of a variety is filed within one year

from the date of its sale in India or

within six years (in the case of trees

and vines) and within four years (in

other cases), of its sale outside India,

the candidate variety is considered

to be a new variety. Provided, the use

of said variety for trial purpose does

not affect the novelty of the candidate

variety. Furthermore, a variety in seed

chain for more than one year can also

be registered as an extant variety or a

variety of common knowledge (VCK)

under the PPV&FR Act.

It is interesting to note that the

total period of registration of

both the new and extant (VCK)

variety is the same i.e. 18 years

(trees and vines) or 15 years

(other varieties) as the duration

of registration is calculated from the

date of issuance of the registration

certificate under the Act (section 24(6)

of the PPV&FR Act).

For registering a

variety under the

PPV&FR Act

The applicant is required to make a request in

the prescribed manner along with the seeds/

propagating material of the candidate variety

with the PPV&FR Authority (hereinafter

mentioned as the Authority). Provided the

Authority shall accept the application of only

those crop species that are notified by the Central

Government under section 29(2) of the Act. Till

date, registration is open for only 151 crop species

of various agricultural, horticultural, forestry and

commercial crops. Hence, the crop species which

are not notified under the Act, the newly bred

variety of the same crop cannot be registered

with the Authority.

Furthermore, the grant of a registration

certificate to a plant variety under the PPV&FR

Act is subjected

to actual field

testing of the DUS

characteristics

claimed for a

candidate variety,

said test may

be a field test or

on-site testing,

depending upon

the method of

propagation

of the variety

applied for

registration.

The DUS test is

conducted strictly

in compliance

with the crop

specific DUS

Test Guideline

published by the

Authority. As

per section 19

of the Act, the

DUS testing of

a new variety is

conducted for

two years and

two locations

and for extant

variety; the DUS

Test is conducted

for one year and

two locations.

However, in case

of an essentially

derived variety, the manner of testing shall be

decided by the authority on a case-to-case basis.

Hence, the DUS Test is necessary for all new

varieties other than the essentially derived variety.

Additionally, there is a provision of conducting a

‘special test’, if the field test fails to establish the

requirement of distinctiveness for the candidate

variety. Hence, the registration of plant variety

under an extant category is less time-consuming

in comparison to a new variety.

As per revised procedure of registration

published in September 2018 (http://www.

plantauthority.gov.in/rp2.gif);

The applicant must submit the specified quantity

of seeds/ propagating material of the candidate

variety, in the prescribed manner, at the time of

filing the application for registration with the

Authority. Provided, in the case of hybrids, seeds

of parental lines, are also required to be submitted

at the time of filing the application for registration.

However, in the case of foreign applicants, such

mandatory requirement of seed submission

at the time of filing may cause unnecessary

delay in the registration process, as they have to

comply with the regulatory requirements for the

import of seeds in India before

applying for registration with

the Authority. Furthermore,

both the applicant as well as the

Authority shall maintain the

seeds of the registered variety,

with substantial viability and

purity, during the entire period

of registration.

The varieties notified under

section 5 of the Seeds Act, 1966

are also eligible for registration

under the Act. Provided no DUS

testing is conducted for such a

notified variety and approval

from the Extant Variety Release

Committee (EVRC) is the only requirement for

its registration. The total period of registration is

also calculated from the date of notification of the

said variety under section 5 of Seeds Act, 1966.

However, the conflict arises when an application

for registration of a parental line of notified

hybrid is made with the Authority. As per

the Indian Plant Variety Registry decision

dated October 28, 2013 (on representation of

Nuziveedu Seeds Pvt. Ltd., Applicant dated

13.06.2013 and 12.07.13), the parental line of

a notified hybrid cannot be considered to be a

notified variety as only a hybrid variety and

not its parental lines were expressly notified

under section 5 of the Seeds Act. The applicant

challenged the order of Registry dated October

28, 2013, and contended that the characters of

parental lines of the extant notified hybrid are

documented in the application for notification

of hybrid under section 5 of the Seeds Act and

both the hybrid and parental lines must be

considered as a single unit for propagation and

stability. Upon reconsideration of Nuziveedu

Seeds Pvt. Ltd. (applicant) representation against

Plant Variety Registry decision dated October

28, 2013, the learned Registrar in its order dated

December 05, 2018 decided in favour of the

applicant stating that parental lines of a notified

hybrid variety shall be deemed to be notified

under section 5 of the Seeds Act, 1966 and shall

be eligible for the same period of protection as

that of its notified hybrid variety. The Registry

decision is based on Delhi High Court judgement

in Maharashtra Hybrid Seeds Co. vs UOI for

category of registration of a parent lines of a

extant hybrid variety where the court in order

to prevent evergreening of Intellectual Property

Rights in Plant Varieties decided that parental

lines of a hybrid shall be registered in the same

category as that of its hybrid.

To conclude

This decision of Registry not

only restricts the indirect

protection of hybrid after

the expiry of the period of

protection but also expedites

the process of registration of

parental lines of a notified

hybrid variety.

1 IN THE MATTER OF: Nuziveedu Seeds Pvt. Ltd., with

respect to registration of NC-71, NC-99, NC-102 and

NC-108 cotton parental line varieties-Category to be

applied.

38 www.gipmatrix.com www.gipmatrix.com

39


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40 www.gipmatrix.com www.gipmatrix.com

41

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