Global IP Matrix - Issue 5

www.gipmatrix.com 

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2 www.gipmatrix.com

CONTENTS 

Page 4 

Don’t sugar-coat it: the sweet story of diabetes 

by Patent Seekers 

Page 8 

Patent Linkage and Indian Laws 

by LexOrbis 

Page 10 

Can a thorough search help you gain 

a granted patent? 

by Victor Green & Company 

Page 14 

The road ahead for autonomous vehicles: 

a patent report 

by Minesoft 

Page 18 

Main Changes of the New Chinese 

Trademark Law in 2019 

by Unitalen 

It has been a fantastic year for The Global 

IP Matrix magazine, thanks to all the 

efforts made by our contributors and 

to you, the reader for your continued 

support. We take great pleasure in putting 

together each issue of this publication, and 

we sincerely hope you enjoy this final issue 

of 2019. We have again, collaborated with 

Page 21 

Geographical Indications: 

The African experience Part 1 

by Stillwaters Law firm 

Page 26 

Three Consonants 

by Gorodissky & Partners 

Page 28 

Digital client-acquisition tools bring IP 

attorneys more cases 

by WeCrest 

Page 34 

Amazon Project Zero NOTES 

by Brand Enforcement UK 

some of the world’s most influential IP law 

firms and businesses to bring you another 

eclectic mix of content, direct from the 

professionals working at ground level. We 

are already excited for the coming year 

and cannot wait to continue growing and 

evolving in our partnerships to bring you 

some exciting new features for 2020. 

Ms. Elvin Hassan 

Editor & Head of international liaisons 

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 & 


Head of International liaisons for 


elvin@womensipworld.com 

Craig Barber 

Head of Design for The Global IP Matrix 

& Women’s IP World 

info@northonsprmarketing.com 

THE GLOBAL 

IP MATRIX 

EDITORIAL 

BOARD 

Gabriela Bodden 

Partner at Eproint 

www.eproint.com 

Costa Rica 

Marek Bury 

Managing Partner and Patent 

Attorney at Bury & Bury 

www.bnb-ip.eu 

Poland 

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 

Partner at IP Law Firm DR 

www.iplawdr.com 

Dominican Republic 

Ms. Ruta Olman 

Immediate past president of ECTA 

& Associate partner of METIDA 

www.metida.lt 

Latvia 

3

PATENTS 

Don’t sugar-coat it: 

the sweet story of diabetes 

An overview of diabetes treatment and its patent landscape. 

Bio: Filip Silvestre (BSc Biotechnology) 

is a Senior Analyst on the Biotech team 

at Patent Seekers (A leading patent 

research company based in the UK 

and Canada). Filip is an experienced 

searcher and has worked on a wide range 

of casework on a variety of topics. His 

specialisms are therapeutics, surgical 

devices, pharmaceuticals, and genetic 

engineering. Filip took this opportunity 

to explore the current patent landscape 

around diabetes treatments and 

provided an insight into some of the 

most innovative technologies that are 

currently being developed. 

Filip Silvestre, Senior Analyst, Biotech team at Patent Seekers 

www.patentseekers.com 

How rapidly is innovation taking place in this space? 

The increasing trend in diabetes frequency is mirrored in the patent landscape, as shown in Figure 

1. An increase in diabetes-related patent filings is evident, with a peak in 2015-2016. The increase in 

patent filings could be explained by an increase in the prevalence of diabetes, which has resulted in a 

greater burden on the healthcare systems. The frequency of diabetes is predicted to continue increasing; 

hence, it may be rational to assume a continued increase in patent filings. The recent increase in patent 

filings further supports this assumption, as approximately 20% of patent filings appear to be in 2015- 

2017. The apparent reduction in patent filings in 2018 is most likely explained by applications yet to be 

published that would be claiming these years as a priority, as there is an 18-month delay between the 

filing of an application and its publication. 

Introduction 

Diabetes is a metabolic disorder that is 

subdivided into two main subtypes: type 

I and type II. The onset of diabetes is a 

result of a complex interplay between a 

range of genetic and environmental factors. 

While type I diabetes is characterised by 

the autoimmune destruction of insulinproducing 

beta cells in the pancreas, type 

II diabetes is generally a result of insulin 

resistance or impaired insulin secretion. 

Both types are characterised by poor 

glycaemic control, wherein blood glucose 

levels are frequently elevated for prolonged 

periods. Recurring hyperglycaemia 

imposes a higher risk of developing diseases 

such as cardiovascular disease, diabetic 

retinopathy, and kidney failure. 

This article will analyse the patent landscape in 

the fight against diabetes, along with exploring 

some of the more interesting, cutting-edge 

technologies that are being used to treat patients 

suffering from this disease. 

The rising occurrence of diabetes is posing a 

tremendous challenge for healthcare systems 

around the world. According to the International 

Diabetes Federation, the number of people 

suffering from diabetes worldwide has increased 

by 314 million between 1980 and 2014 and is 

predicted to continue increasing. A significant 

portion of this increase is attributable to type 

II diabetes, or often referred to as diet-induced 

diabetes, wherein poor diet and sedentary 

lifestyle are considered to be the leading causes 

for the epidemic. 

Figure 1. Worldwide patent filings in the last 20 years. 

In accordance with the increasing demand and patent filings in this field, this area is ranked as one of 

the most important for the future by the Global Innovation Index (The Global Innovation Index (GII) 

2019 ranks and breaks down the innovation performance of 129 countries and economies around the 

world). We will now explore how the technology landscape has changed over this period of growth 

and innovation. 

What are the trends in technology focus? 

Considering the complexity of diabetes, it should be of no surprise to expect a wide range of innovation. 

Figure 2 illustrates a heatmap showing the number of patent publications categorised in the top 20 

CPC classifications over the last 20 years. It is apparent that innovation in this field encompasses a 

range of different technology areas, focussed on the different challenges posed by diabetes. The two 

main areas of innovation appear to be pharmaceuticals (A61K & C07) and medical devices (A61B5), 

with pharmaceuticals dominating the landscape. A look at the recent trend in patent publications may 

provide us with an insight into the future focus of innovation, the three classes with the most patent 

publications since 2015 are listed below. Interestingly, most of the identified areas are not related to 

pharmaceuticals. 

4 www.gipmatrix.com

A23V2002/00 Food compositions, function of food ingredients or 

processes for food or foodstuffs 

A61B5/14532 for measuring glucose, e.g., by tissue impedance measurement 

A61K36/481 Astragalus (milkvetch) 

use of needles and tubing, thereby lowering 

patient discomfort and increasing treatment 

compliance. Such innovative solutions have 

been shown to significantly lower the risk 

of developing complications resulting from 

diabetes through effective glycaemic control. 

However, these devices are not fully independent, 

and insulin contained within them needs to be 

replenished regularly; hence, future efforts may 

focus on exploiting advancements in stem-cellbased 

regenerative therapies to overcome these 

challenges. 

2. Keeping an eye on the sugar 

Figure 2. A heatmap of patent publications in the top 20 CPC classifications. 

Who are the current competitors? 

Despite the recent potential shift in focus away from pharmaceuticals, most identified areas over 

the last 20 years relate to medicinal preparations. This is reflected in Figure 3, wherein the landscape 

appears to be dominated by big pharmaceutical companies, which is not surprising considering its 

burden upon the healthcare system. The key assignee appears to be Merck Sharp & Dohme, which 

holds approximately 17% of the total patent filings in the area. However, it faces firm competition 

from Beijing Lvyuanqiuzheng Technology Development, which may be explained by China having the 

highest demand for novel solutions, as it has the highest population of diabetics in the world. 

Figure 3. Diabetes-related patent filings by the top 15 assignees. 

What are the innovations with the biggest potential impact? 

A search of the current literature around diabetes treatments uncovers a treasure-trove of innovation. 

We will now explore some of the most interesting technologies being developed that might help 

overcome the challenges posed by diabetes. 

1. An Artificial Pancreas? 

Enzyme based finger-prick tests have been the standard means of monitoring blood glucose levels. 

However, this process only gives limited insight into glycaemic changes and has been shown to have 

low compliance among diabetic patients, thereby translating into a growing need for technology 

that can improve glucose monitoring. This has recently been addressed by Medtronic’s development 

of the MiniMed 670G System. It is a smart insulin pump that automatically calculates and delivers 

an appropriate dosage of insulin, based on glucose sensor readings. A similar product that is 

particularly interesting has been designed by Omnipod, which is an external device that avoids the 


An interesting opportunity for easier and 

more effective glucose management has been 

investigated by Novartis and Google, wherein 

glucose is monitored through smart contact 

lenses. However, its application has been limited 

due to discomfort associated with the sensors 

and a lack of reliable glucose readings. Ulsan 

National Institute of Science and Technology 

appears to have made progress within this field, 

as it developed contact lenses comprising sensors 

made of stretchable and transparent materials, 

which circumvent previous limitations. The new 

lenses also comprise an integrated antenna for 

wirelessly transmitting data in real-time, which 

makes the previously cumbersome process of 

blood glucose level monitoring significantly 

easier. 

3. Deciphering the genetic 

enigma of diabetes 

The genetic code governs all biological systems. 

Our understanding of the human genome has 

huge implications for the future of healthcare, as 

many patients exhibit a heterologous response 

to treatment. It also has the potential for the 

discovery of predictive biomarkers that could 

improve preventative measures through the 

development of genotype tailored lifestyle 

programmes. Despite the potential benefits, 

developments in this field appear to be ongoing. 

This is illustrated by a recently granted patent 

(EP2609218B1) that appears to disclose a 

method of diagnosing an individual’s genetic 

predisposition to developing diabetes, while 

The University of California appears to have 

discovered genetic variants that affect response to 

Metformin treatment. These examples provide us 

with an insight into how a better understanding 

of our genome could lead to a more personalised 

treatment approach, which has the potential to be 

more cost-effective. 

Conclusion 

Worldwide prevalence of diabetes is a growing 

challenge for the future of healthcare. It is, 

therefore, no surprise that big pharmaceutical 

companies dominate the market. While there 

is an absence of a definitive cure, recent efforts 

have been made in effectively managing 

glycaemic levels, which has significantly 

reduced the mortality rate and economic 

burden of diabetes. Perhaps the lack of 

apparent activity in applying genomic data 

to the development of preventative measures 

may present a gap in the market that could 

help overcome challenges posed by diabetes. 

Nevertheless, the dynamic diversity of 

innovation within this field makes it difficult 

to ascertain the direction of future activity. It 

will be exciting to see the next move of the key 

players in the fight against diabetes. 

5

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Patent Linkage 

and Indian Laws 

Bio: Ms. Swati Gupta is a Patent 

Agent and holds a master’s degree 

in Pharmaceutical Sciences, besides 

holding an advanced certification 

from WIPO in IP Management. She is 

also a registered pharmacist. Swati is 

an Associate, working with the Patents 

Science team. 

Patent linkage may be regarded as a 

link between the marketing approval 

of the generic product and the patent 

status of the originator reference 

(innovator) product. Marketing 

Approval ensures the safety and efficacy 

of a pharmaceutical product. However, 

the patent gives exclusive rights to a 

patent holder to prevent others from 

making, selling, using, importing, and 

offering to sell a patented product. A 

patent provides exclusive rights to a 

patent holder for a period of 20 years 

and no generic could be brought to the 

market for sale until the patent of the 

originator reference product is in force. 

Therefore marketing approval cannot 

override the patent rights. 

In some jurisdictions, a link between the 

marketing approval of the generic product and 

the patent status of the new product known 

as Patent linkage has been established. Patent 

linkage disallows the marketing approval of the 

generic drug until the patent of the originator 

reference drug is valid. The US is the first country 

to adopt Patent linkage as a part of the Hatch 

Waxman Act (1984). The use of Patent linkage 

in the US intends to stimulate innovation in the 

field of pharmaceuticals and on the same side 

intends to facilitate the timely entry of generic 

medicines in the market. 

Under the Hatch-Waxman Act, an Abbreviated 

New Drug Application (ANDA) now contains 

the bioequivalence data which facilitates the 

entry of generics into the US market without 

any requirement of submitting costly clinical 

(humans) and preclinical (animal) data to ensure 

safety and efficacy. All the innovator or generic 

drugs approved by the FDA are entered in the 

orange book. However, ANDA applicants must 

have to certify the following conditions: 

(1) the drug has not been patented 

(2) the patent of the innovator drug has 

expired 

(3) the generic drug will not be placed on 

the market until the patent expires 

(4) the patent is not infringed on or is 

invalid 

If the patent of the reference originator 

(innovator) product is in force than the Applicant 

of the generic drug has to either wait till the patent 

expires or must notify the innovator company of 

its filing and describe why the generic product 

is not infringing the patented product or can 

also prove the patent of the innovator product is 

invalid or unenforceable. 

India has not adopted Patent linkage yet. A 

generic manufacturing company can apply for 

the marketing approval of a generic product even 

if the patent status of the originator reference 

product is valid. However, the approved generic 

drug cannot be brought to the market if the 

patent of the originator drug is in force. There 

are different authorities responsible for the 

grant of a patent and marketing approval in 

India. The authority responsible for the granting 

of patents is the Indian Patent Office, and the 

national regulatory authority responsible for 

giving marketing approval to pharmaceutical 

products is the Central Drugs Standard Control 

Organisation (CDSCO). The Drug Comptroller 

General of India (DCG) provides marketing 

approval in accordance with the Drug and 

Cosmetic Act 1940. Moreover, the CDSCO 

does not maintain any register of patented 

pharmaceuticals like the orange book in the US. 

There is no linkage between the patent rights and 

marketing approval of generic drugs in India. 

Patent linkage is not applicable in India, but 

a direct attempt to push Patent linkage was 

attempted by Bristol-Myers Squibb Company 

(Bristol-Myers Squibb Company & Ors v. 

8 www.gipmatrix.com 

As discussed by Ms. Swati Gupta & co-authored by Manisha Singh, 

LexOrbis - www.lexorbis.com 

Dr. BPS Reddy & Ors, I.A.No. 3696 of 2013, 

I.A.No. 13386 of 2013, I.A.No. 11383 of 2014 

in CS(OS) No. 2680 of 2008 prohibiting the 

Drug Comptroller General of India (DCGI) 

from granting marketing approval for a generic 

version of Sprycel (dasatinib, used to treat 

chronic myeloid leukemia) and secured an ex 

parte injunction. 

Next came the High court judgement of Bayer 

Corporation and Ors v. Cipla of India (UCI) and 

Ors, 162 (2009) DLT 371, which has given clarity 

over Patent linkage in India. Bayer has attempted 

to prohibit the Drug Comptroller General of 

India (DCGI) from granting marketing approval 

to Cipla for a generic version of Soranib. The 

Court has disapproved Patent 

linkage citing several reasons for its decision: 

1) Two state authorities (Indian Patent Office and 

DISCO) operate solely with different objectives. 

The Drug and Cosmetic Act has no statute 

which denies the approval of generic drugs 

when the patent is in force. Moreover, the DCGI 

is only responsible for the safety and efficacy 

of the generic drug and the ensuring of other 

necessary infrastructural facilities required for 

the manufacturing of the drug. Furthermore, the 

market approval of the drug is only liked to the 

conditions given in the Drug and Cosmetic Act. 

2) The Court has further clarified that courts 

cannot establish or decree a Patent linkage, 

desired by Bayer as it would be a policy choice 

avoided by the Parliament. 

3) The Court has clarified that Article 27 of 

the TRIPS agreement clearly states that the 

patents are to be made available without any 

discrimination of technology and Patent 

linkage applies to pharmaceuticals only. 

Conclusion: 

Patent linkage is favourable for the 

Big Pharma companies that invest 

a significant sum of money in the 

research and development of new 

and innovative drugs as it provides 

second-tier protection for a patent 

monopoly. As discussed, the High 

Court has already decided that there 

is no provision of patent linkage in 

India. However, it can be a beneficial 

provision, if adopted carefully taking 

into consideration the public health, 

interests of big pharma companies and the 

generic manufacturing companies.


9

Can a thorough search 

help you gain a granted patent? 

At Victor Green & Company, we 

provide a range of searches and pride 

ourselves on the quality of our reports. 

Three types of prior art search have 

been selected for a closer look; budget 

pre-filing/novelty, patentability, and 

validity. Each can affect the likelihood 

of reaching a strong granted patent. 

We analysed a sample of patents that 

had been opposed and considered the 

searches that may have been done by 

the assignees. 

The value of our reports is attested to 

in our testimonials, and we know that 

attorneys often reword their claims in 

the light of our novelty search reports. 

Types of search 

Atal, Akers, and Hantos have summarised the 

different types of search that may be required 

during the patent lifecycle [1-3]. These can 

be a ‘state of the art’ search conducted before 

research and development investment or a 

pre-filing novelty search conducted before 

applying for a patent. A further patentability 

search may be done before foreign filing, 

infringement searching before launch, and 

validity searching at the time of grant. The 

usefulness of our searches is described in our 

client testimonials [4]. 

Patentability searches 

These assess the patentability of a new product 

or process and also look for all documents 

relevant to the novelty, or obviousness of an 

invention. This type of search is performed 

before filing or registration, or before seeking 

commercialisation. It can help a client decide 

how they should draft their patent claims or 

whether to file an application at all, thereby 

reducing unnecessary costs and delays in the 

filing process. 

by Victor Green, Alessio Brizzi, Davinia Collyer & Jo Shaw 

of Victor Green & Company www.victorgreen.co.uk 

Validity searches 

A validity search confirms whether a patent 

or design (either the client’s or a competitor’s) 

is valid with respect to the prior art. For 

patent validity, this may cover both patent 

and non-patent literature. If relevant previous 

documentation is found that was not located 

by the examiner, the patent has a greater 

chance of being revoked on the basis that it was 

incorrectly granted. 

Validity searches on competitors’ patents are 

therefore useful if the competitor is considering 

infringement proceedings. Alternatively, 

if a client wants to take legal action for a 

competitor’s infringement of a patent they 

own, or is approaching a company to arrange 

a licensing deal, a validity search may be 

required to decide if the patent in question is 

vulnerable to legal challenge. 

Analysis results for 

opposition set 

Oppositions to European patents have been 

described in two papers by van de Kuilen 

[5-6]. He found that the main reasons 

for revocation were lack of inventive step 

(accounting for 43% of revocations), lack of 

novelty (22%) or added subject matter (11%). 

We searched for European patents that had 

been opposed. The European jurisdiction 

was chosen due to the fact the European 

Patent Office (EPO) is rigorous in the way it 

classifies the source and relevance of citations, 

providing detailed legal status information. 

We limited the set to those that had been 

revoked, amended, or unchanged; the 

percentages were 31% revoked, 28% amended, 

and 41% unchanged. 

When a competent patentability or pre-filing 

search is done, the prior art identified puts 

the attorney in the best place to draft the 

specification. It can help the attorney fulfil 

the requirements of the patent application, 

e.g., demonstrate novelty and inventive step, 

and describe how the invention has addressed 

problem(s) in the prior art. It also provides 

sound preparation for the examination and 

any opposition that might be filed. 

(Fig.1) The legal status of opposed European patents to show 

proportion amended, revoked or unchanged 

10 www.gipmatrix.com

We then limited this set of opposed European patents to those which had been revoked and had 

earliest priority dates between 2001 and 2010. On average, it takes four years for an opposition 

to reach an outcome, so the date range was chosen to encompass this comfortably. These 

patents were analysed further in PatBase Analytics. For further information about PatBase, see 

www.minesoft.com. 

Results were similar to those found by van de Kuilen [5, 6]. Patents in high-value subject areas 

were more likely to be opposed. The topics were mainly pharmaceutical and chemical. Harhoff 

described the patenting strategy of this sector as ‘portfolio optimisation,’ involving high levels 

of patent filings as well as high levels of patent opposition [7]. The graph of top five assignees 

showed BASF, Procter & Gamble, Siemens, L’Oréal and Unilever. 

Conclusion 

There are several reasons why an examiner 

may not find all relevant prior art. EPO 

searches are limited to the Patent Cooperation 

Treaty Minimum Documentation, 

so searching outside this set could reveal other 

relevant documents. Furthermore, examiners 

are allocated a limited time per application to 

undertake the search. Sternitzke pointed out 

that there were a variety of reasons why prior 

art may not be cited by the applicant [10]. 

Companies may not realise the significance 

of prior art they are already aware of or may 

simply withhold it. Furthermore, they may not 

have the expertise to search for inventive step 

and novelty in-house. 

For some families for which the European 

patents were revoked, it appeared that the 

applicant could have benefitted from supplying 

more prior art with their application. It is 

important that searches at all stages of the 

patent lifecycle are thorough. Further research 

could undertake to drill down into the 

individual Register records for families; thus, 

this area could be usefully revisited. 

Fig. 2 Top 20 jurisdictions by families, applications and grants 

(Fig. 2) Top 5 assignees from the set of opposed and revoked 

European patents with earliest priority dates between 2001 - 2010 

Origin of citations 

During the life cycle of patents, citations may be supplied by applicants, examiners or third 

parties. We wanted to see if there were any trends concerning the percentage of citations from 

the applicant compared with the total number of citations from all sources. We were interested to 

see if the source of a citation could clarify the value of external patentability searches. 

Cited documents are coded by the EPO in terms of origin (search, examination, opposition, 

applicant) [7, 8]. Citation categories include documents cited in the description section of the 

patent application [9]. We looked at a random sample, consisting of every tenth family, drawn 

from a single year of our set of families that contain opposed and revoked European patents. 

Using these EPO codes, we analysed citations according to their origin. 

Analysis results for citation set 

There are many variables affecting the number and source of citations, as they can be supplied 

over several years by several parties. Different jurisdictions have different approaches. For 

example, in the US, applicants are required to submit a comprehensive set of citations, see 

Harhoff [7]. Furthermore, citations may not have always been fully classified or included in 

the databases. Thus, several caveats must be applied to any conclusions drawn from citation 

data sets. However, it is possible to make general comments on our sample set. The number of 

applicant citations fell predominantly into two groups. 

For a few families, it appeared that more citations had been supplied by the applicant 

than by the examiner or by third parties. This set included two outlier families, where 

each applicant supplied over a hundred citations. Both were multinational companies. 

The number of citations suggested that they had done their utmost to gain and retain 

their patents. 

For other families, it appeared there were many more citations supplied by the 

examiners and opponents than the applicant. This suggested that for some families, the 

applicant could have provided more prior art if they had undertaken a higher quality 

search before the application was made. 

We conclude that at all stages 

in the patent lifecycle, thorough 

patent searches will contribute to 

strengthening the patent application 

and the resulting patent. 

References 

1 

Atal V & Bar T 

Prior art: To search or not to search, 

International Journal of Industrial Organization, 28, (5), 

507-521, 2010 

2 

Akers NJ 

The European Patent System: an introduction for patent 

searchers, 

World Patent Information, 21, (3), 135-163, 1999 

3 

Hantos S 

Helping others acquire, license or invest in patents with 

confidence – A guide for patent searchers to patent due 

diligence, 


4 

Testimonials 

Victor Green & Company, 

https://www.victorgreen.co.uk/testimonials.html 

5 

van de Kuilen A 

Successful European oppositions: Analysis for the patent 

information professional, 


6 

van de Kuilen A 

Successful European oppositions (part II) Analysis for the 

patent information professional, 

World Patent Information, 45, 57-60, 2016 

7 Harhoff D, et al 

The strategic use of patents and its implications for enterprise 

and competition policies 

Report for the European Commission, 8 Jul 2007 

8 

Report for the European Commission, 

Exchange Format EPO - Patent Information Resource 

Exchange of Patent Information as produced by the EPO from 

their master documentation database DOCDB, European 

Patent Office, v2.5.8, PRODUCT-ID: T09.01 

PROJECT: DOCDB XML [N], Jan 2018, Notes on contents 

p103 

9 

EPO, Guidelines for Examination, 9.2 Categories of 

documents (X, Y, P, A, D, etc.) 

https://www.epo.org/law-practice/legal-texts/html/guidelines/ 

e/b_x_9_2.htm 

10 

Sternitzke C 

Reducing uncertainty in the patent application procedure 

– Insights from invalidating prior art in European patent 

applications, 



11


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13

The road ahead for 

autonomous vehicles: 

a patent report 

Patent landscape reports give a 

snapshot of the patents in a specific 

subject area or which cover a type 

of technology. Generally taking 

one to two weeks to complete, a 

landscape report can cover hundreds 

or thousands of patent families. The 

reports can be used to visualise and 

discover existing gaps in relevant 

areas, gain competitive intelligence by 

understanding the current landscape, 

predict where your market is heading 

and spot trends in areas of interest 

to aid investment. They are a critical 

step in research and development as 

well as competitive or patent strategy 

for any company or institution. 

You can execute your landscape search more 

efficiently and accurately with PatBase, a highquality, 

comprehensive patent search and analysis 

platform that uses enhanced data and enables 

searchers to conduct complex searches across the 

widest full-text collection available. 

By Caitlin Kavanagh, Marketing Executive, Minesoft 

www.minesoft.com 

This generates a broad discussion of the advantages and disadvantages of these type of cars. On the one 

hand, all human factors and climate influences can be switched off. However, the human brain identifies and 

predicts things that cannot easily be automated, like pedestrians and other obstacles crossing the road. Also, 

cars need to be able to drive in both crowded areas like cities and on highways with rather straight forward 

traffic; driving a car involves more than just handling the technical equipment in the car, for example, road 

safety, navigation, traffic lights, road signs, etc. 

Is this a growing area of interest 

In the following sections, PatBase Analytics V2 is 

used to extract insights and answer the questions 

below for the fast-growing technology area of 

autonomous vehicles. 

• Is this a growing area of interest? 

• What are the fields of current interest? 

• Who are the key players? 

• Where are the key players filing their inventions? 

• Who are the most influential leaders in this area? 

Driverless cars: 

an introduction 

Autonomous driving involves the act of propelling 

and navigating a vehicle without human input when 

travelling from point A to point B. The Department 

of Motor Vehicles (DMV) in California has setup 

strict regulations for testing driverless cars. 

The autonomous vehicles testing regulations were 

adopted on 19 May 2014 and became effective from 

16 September 2014. Permission has been given to 

many car producers like Volkswagen, Mercedes 

Benz, Google, Tesla Motors, Bosch, Nissan, GM, 

BMW, Honda, Ford, and some others to test 

driverless cars. 

However, the first fatal accident involving an 

autonomous vehicle took place in Williston, Florida 

on 7 May 2016 where a Tesla Model S electric car 

was engaged in autopilot mode. Shortly after, a 

second accident occurred wherein a Google car was 

involved. 

Most recent 20 years by families, applications & grants 

Studying the most recent 20 years by families, applications & grants shows that the driverless cars technology 

area is a fast-growing one. The dip in applications can be explained by the 18-month lag between when 

patents are applied for and when they are published. In fact, the number of applications has increased almost 

exponentially between 2009 and 2017. 

This technology area 

is continuing to grow 

globally, with China 

surpassing the US 

in 2016. Filings in 

Germany, Japan, and the 

European Patent Office 

have remained pretty 

consistent over the past 

20 years with a recent 

peak in 2016 – 2018 

worldwide, as reflected 

in this graph. 

Most recent 10 years 

by CPC group and 

number of families 

What are the fields of current interest? 


The most startling growth in a sub-category (calculated by most common classification codes) has been in CPC 

code ‘G05D1’ – the control of position course or altitude of land, water, air, or space vehicles, e.g., automatic 

pilot – which has grown from 99 families in 2010 to 2639 families in 2018. Already, this classification code 

has 2480 families from 2019, and we are only 8 months into the year (at time of writing) which shows it is a 

technology area that is continuing to grow year on year. 

Also, worth a mention is the CPC code ‘B60W30’ – purposes of road vehicle drive control systems not related 

to the control of a particular sub-unit – which increased from 510 families in 2010 to 2618 families in 2018. 

The other remaining CPC codes in the top 5 for this result set are Y02T10 (road transport of goods or 

passengers), B60W10 (conjoint control of vehicle sub-units of different type or function) and F16H61 (control 

for changing speeds or reversing gearings for conveying rotary motion, control of exclusively fluid gearing, 

friction gearing, gearings with endless flexible members or other particular types of gearing). 

Who are the key players? 

Considering that Japan has a thriving automotive 

industry and that 9 of the top 20 assignees are 

Japanese companies to compared to only 3 US 

companies, you might expect to find Japan at the 

top of the list. However, much work in this area is 

being done in the US, from Silicon Valley companies 

like Waymo and Uber to traditional automotive 

companies like Ford Motor. 

Studying the jurisdictions that the top assignees are 

filing in most also supports this picture; 9 of the top 

10 companies in this technology area are prioritising 

Germany and the US, with both countries featuring 

in the top 3 locations that all 9 companies are filing 

in. 

Who are the main opinion 

leaders in this field? 

Top 20 assignees by families 

Unsurprisingly in this technology area, the top 20 assignees are dominated by large automotive companies – 

the majority of which would be considered household names. The top 20 assignees are made up of 9 Japanese 

companies, 6 German companies, 3 US companies, and 2 French companies. 

Companies like Bosch and Hitachi might not be considered part of the automotive industry, but as multinational 

conglomerate companies, their involvement in this area is to be expected. At the end of 2018, Bosch 

announced their intention to develop “pods,” similar to the small driverless vehicles that Google has tested 

in California. The idea being that one-day people will be able to hail these pods in the same way they do a 

taxi. They have also started work on including automated freeway driving and parking in premium vehicles. 

Hitachi’s experience in IT and operational technology (OT) has helped in launching their “Lumada” Internet 

of Things platform, utilising AI, security, analytics and more, to support a range of businesses in connected 

services and autonomous driving from the cloud. 

Where are the key players filing their inventions? 

Top 20 jurisdictions by families, applications & grants 

The top 5 jurisdictions for filing in this area are the US (26,000+ families), Germany (21,000+ families), China 

(15,000+ families), Japan (14,000+ families) and the European Patent Office (10,000+ families). 


Citation network for forward citations 

Studying the citations for the data set provides a 

novel way of interrogating the data. For instance, 

in the citation network above (showing the forward 

citations by assignee in the driverless cars technology 

area) the most cited companies by a significant 

amount – and therefore the most influential – are 

Nissan (8524 forward citations) and Toyota (5531 

forward citations). 

It makes sense that Toyota is receiving a lot of 

forward citations as they are one of the biggest filers 

in this area; however, Nissan Motor is the 5th biggest 

filer and yet is outperforming Hyundai, Toyota, ZF 

Friedrichshafen and Bosch in number of forward 

citations. 

The number of forward citations is also a useful 

predictor of patent values as a large number of 

forward citations suggests industry-wide investment; 

indicating in this instance that mainly multi-national 

automotive corporations own valuable patents in 

this area. 

Conclusion 

Having access to a powerful patent 

searching and analysis tool can 

aid companies in discovering new 

opportunities, protecting their 

patent portfolio, and monitoring a 

technology area. 

All charts and graphs featured in 

this article were created in PatBase 

Analytics V2. Users can visualise a 

birds-eye view of market trends and key 

competitors, as well as identification 

of potential business partners and 

licensing partners. Visually appealing 

reports communicate the results of 

a patent analysis clearly to decisionmakers 

in a boardroom environment, 

even those without patent know-how! 

Go to www.minesoft.com for more 

information. 

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17

TRADEMARKS 

Main Changes of the New Chinese 

Trademark Law in 2019 

Background 

In recent years, with the in-depth 

implementation of the trademark and 

brand strategy and the continuous 

promotion of the reform of trademark 

registration facilitation, the number 

of trademark applications in China 

has been growing continuously. As a 

result, China has maintained the title 

of ‘top-ranking’ on new trademark 

applications, in the world 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. At the same time, many 

malicious applications for free ride purposes 

and a large number of hoarding trademarks 

for profit for transfer also appeared. This has 

severely disrupted the market economic order 

and the trademark management order, caused 

social attention, and has strongly called for 

regulation. 

As for the malicious application of free ride 

behaviour; the current law is relatively clear, 

and in recent years, the crackdown has been 

very strong, so that this kind of behaviour is 

effectively contained. However, in terms of 

the regulation against hoarding registration 

behaviour, there are only provisions in 

principle in the law, and no direct, clear and 

operable provisions, leading to an insufficient 

crackdown in practice. This amendment aims 

to stop the malicious application at the source 

so that the trademark application can return to 

the original source of the system for use. 

Written by Mr. Lei Zhao – Senior Partner at Unitalen Attorneys 

www.unitalen.com 

Major change 1: strengthen 

the regulation against bad 

faith applications and bad 

faith litigations 

First, enhance obligation to use trademark, 

adding a new provision “bad faith applications 

without use purpose, shall be rejected” in 

paragraph 1 of article 4. This new provision 

could be even applied in the very early 

examination stage by the Chinese Trademark 

Office and could be used in opposition and 

invalidation actions as a reasonable ground by 

the CTMO and any parties including brand 

owners. 

Basically, “with the purpose of use” it is a 

kind of subjective ideology on the directive, 

however, how to show the use purpose in 

the trademark applications is unclear at this 

moment. Some think applicants need to 

provide evidence for use or show the intent 

to use in future new trademark applications. 

Some even think defensive applications of 

famous brands, such as full-class applications, 

will simply be rejected in the non-used 

classes. These subjective understandings 

are not accurate; at least from the perspective 

of this revision, it should not affect defensive 

applications of famous trademarks and good 

faith applications without use evidence. 

On April 23, 2019, the 10th session of the 

standing committee of the 13th Chinese 

National People’s Congress adopted a decision 

to amend the Trademark Law of the People’s 

Republic of China. This revision contains many 

highlights which have attracted the attention 

and discussion of relevant practitioners and 

brand owners. The changes involve six articles 

and will take effect on November 1, 2019. The 

National Intellectual Property Administration 

will study and draft relevant laws and 

supplementary regulations and departmental 

regulations to fully ensure the smooth 

implementation of the revised Trademark Law. 


Second, the trademark agency shall be 

standardised, adding that “trademark agency 

shall not accept the entrustment if the 

trademark agency knows or should know that 

the entrusting party has engaged in malicious 

application” in paragraph 3 of article 19. 

At present, the majority of trademark 

agencies in the market are very professional. 

However, there are some bad agencies which 

assist in and are even directly engaged 

in malicious application and hoarding 

trademark applications. Some agencies set 

up affiliated companies in the field unrelated 

to the business which file a large number of 

trademark applications for sale. Some use their 

professional knowledge to maliciously file 

applications for the trademark of customers 

and also ask for high transfer fees. These have 

had an adverse impact on society. Under 

the new amendment, the trademark agency 

shall not accept entrustment for bad faith 

applications; otherwise, the trademark agency 

will be punished. 

Third, enhance the punishment against bad 

faith applications and bad faith litigations. 

Pursuant to paragraph 4 of article 68, those 

who apply for trademark applications in bad 

faith shall be given administrative penalties 

such as a warning or a fine according to the 

circumstances. Where a trademark lawsuit is 

brought in bad faith, the People’s Court shall 

punish it according to the law. 

As introduced, these kinds of bad faith 

applications will be directly rejected in the 

first pass of examination, but rejection is 

still far from enough because of the abuse of 

trademark rights. Bad faith litigation is not 

only detrimental to the alleged enterprises but 

also is a waste of judicial resources; moreover, it 

does not comply with the legislative purpose for 

trademark protection. Therefore, it is necessary 

to increase the provisions of punishment, 

which could give bad faith applications and 

bad faith litigations a real blow. 

Fourth, as a supporting measure for the 

revision of the trademark law, the CNIPA 

is studying and drafting a departmental 

regulation; “Regulation for Standardising the 

Trademark Application Behaviour,” which will 

operate a level of refinement. The content of 

the law to modify the specific behaviour of bad 

faith applications and hoarding trademarks 

and possible punishment measures. For 

instance, very obvious large numbers of 

trademark applications beyond a reasonable 

limit and repeated applications based on 

improper purpose will be listed. 

In addition to the possible rejection in 

examination, opposition, and invalidation, 

CNIPA also will use the credit record, industry 

self-discipline measures. Furthermore, if the 

circumstances are serious, the CNIPA could 

stop accepting applications represented by 

the trademark agency which violate the above 

provisions. At the same time, it stipulates 

that any organisation or individual that finds 

any abnormal trademark applications may 

provide clues to help the CNIPA to identify 

and punish the violator. The regulation is 

now closed for public comment and will be 

improved according to feedback, to implement 

the revised content of the new Trademark Law. 

Major change 2: strengthen 

the enforcement and raise 

possible damages for brand 

owners 

In recent years, China has been advocated 

to strengthen the protection of intellectual 

property rights and improve the system of 

punitive damages of intellectual property 

infringement. In judicial practice, such as 

the Beijing Intellectual Property Court, it has 

been gradually enhancing the damages for 

infringement of intellectual property rights. 

We have been able to see a few million and 

more than ten million worths of damages for 

patent cases. On the trademark side, it is rare 

to see more than a few million and 

even ten million worth of damage, which 

mostly ranges from more than tens of 

thousands to less than one million, which is far 

less than the profit of the infringing party. 

The low amount of damage for infringement 

has dramatically dampened the enthusiasm of 

intellectual property right owners. Therefore, 

a higher level for punitive damages needs 

to be introduced to substantially raise the 

cost of breaking the law and make infringers 

pay a heavy price. To further aggravate the 

infringement cost, infringers in bad faith 

should be punished, trademark rights should 

be strictly protected, and brand owners should 

be awarded adequate compensation. More 

specifically, for the statutory damage, it should 

be raised from 3 million to 5 million RMB. For 

willful infringement, it could be punitive and 

be raised once but not more than three times 

to the one time and not more than five times 

in total. 


The new Trademark Law also provides that, in 

the trial of a trademark infringement litigation, 

the People’s Court may, at the request of the 

rights holder, order the destruction of the 

commodities that bear a registered trademark 

which is owned by brand owners and the 

materials and tools that are mainly used to 

manufacture the counterfeits. Counterfeit 

goods may not enter into commercial channels 

after only removing trademarks. The above 

measures to take destruction and prohibition 

of access to commercial channels greatly 

increases the illegal cost of the counterfeiters 

and forms an effective deterrent to them. At 

the same time, the added provision makes 

the protection of trademark rights more 

comprehensive. 

Epilogue 

In recent years, Chinese President, Mr. Xi 

Jinping, officials and heads from all different 

levels of courts, the National Intellectual 

Property Administration and other 

departments have been implementing and 

emphasising the system of punitive damages 

for intellectual property to effectively curb 

IPRs infringement. 

The overall trend of this amendment is mainly 

to strengthen the protection of intellectual 

property rights, hit bad faith trademark 

application behaviour without the real purpose 

of use, improve remedy systems against the 

bad faith applications and bad faith litigation, 

and increase the damages for the trademark 

infringement, especially willful trademark 

infringement in bad faith. Therefore, illegal 

cost will be significantly increased. 

It can be predicted that the cost of 

IPRs infringement will be higher in 

the future. For those who violate IPRs 

in bad faith, they may be punished 

until they lose all their money and 

have “nowhere to continue.” This 

is also good news for honest and 

trustworthy operators in China. 

Therefore, in conclusion, it will 

undoubtedly be more and more 

meaningful for operators to actively 

design and build their own intellectual 

property rights protection systems; 

so, they are timely and effectively 

detect infringements. They should 

also take vigorous rights protection 

actions where need be. 

19

GEOGRAPHICAL 

INDICATIONS: 

THE AFRICAN EXPERIENCE-part 1 

Written by Mr. Afamefuna Francis Nwokedi, Principal Counsel, 

Still Waters Law Firm - www.stillwaterslaw.com 

Africa as a continent though 

diverse in many ways has a thread 

of commonality in its tradition, 

culture, developmental phase, 

and economic aspirations. This 

commonality is highlighted in the 

significant overlap of kith and kin 

across borders. Over the years, 

various attempts have been made 

to integrate the economic activities 

of the various African states 

through bilateral and regional 

agreements. Most recently, under 

the auspices of the African Union, 

over 54 member states signed up to 

the African Continental Free Trade 

Area (AFCFTA) agreement as “an 

instrument to accelerate intra- 

African trade and boost Africa’s 

trading position in the global 

market by strengthening Africa’s 

common voice and policy space in 

global trade negotiations”. 1 

In preparation for the full launch of the 

AFCFTA the African Union, under its 

AUC’s Department of Rural Economy and 

Agriculture (DREA) preempted expectations 

by setting up a technical workshop for the 

validation of the draft Geographic Indications 

Policy Framework in Africa. Ongoing 

discussions are still being held in this regard. 

Bearing in mind the existence of a couple 

of unified Intellectual Property (IP) Offices 

in the form of OAPI and ARIPO, it is not 

far-fetched to imagine the establishment of a 

unified African IP Office similar to EUIPO in 

the not too distant future. 

How do we define GI? 

Geographical indication (GI) is an arm of the 

IP regime that has deep proprietary essence in 

the African continent. Africa is replete with a 

geographical heritage that is inherently brandfriendly. 

For instance, I can imagine Sparkling 

water produced in Australia under the name 

of “Kalambo Water”; Kalambo being a 772- 

foot single-drop waterfall hedged between 

Tanzania and Zambia. 

The World Intellectual Property 

Organisation simply defines 

“Geographical Indication” as: 

“a sign used on products that have a specific 

geographical origin and possess qualities or a 

reputation that are due to that origin.” 

It proceeds to explain the 

characteristics of GI as: 

“To function as a GI, a sign must identify a 

product as originating in a given place. Also, 

the qualities, characteristics, or reputation of 

the product should be essentially due to the 

place of origin. Since the qualities depend on 

the geographical place of production, there is a 

clear link between the product and its original 

place of production”. 

A Geographical Indication can encompass 

information on the origin of the goods or 

service (the indication of source) and a subset 

of special qualities (more often referred to as 

appellations of origin). Products protected by 

means of Geographical Indications must have 

qualities linked to the territory from which 

they are produced or originate. The character 

and attribute of the quality varies according 

to the natural and cultural history of the 

resources and their transformation processes, 

as well as to the legal framework in which the 

GI develops. 2 


Geographical Indication protection involves 

recognising a collective exclusive right to the 

use of a geographical name or sign on goods 

and perhaps services. The Geographical 

Indication product represents a public 

good because its intrinsic characteristics 

have patrimonial values that belong to no 

one in particular but to all with the specific 

environment in general. 

Geographical Indications are usually 

geographical names, but they can also be 

composed of symbols and icons as long 

as they convey geographical information, 

the Eiffel Tower in Paris illustrates an ideal 

example in this regard. 

Legally, the options for Geographical 

Indication protection include defense against 

unfair competition (e.g., through litigation) 

and positive protection through registration 

under various forms (e.g., designations or 

appellations of origin, protected geographical 

indications or certification trademarks). 3 

The nature of 

Geographical Indications 

Geographical Indication protection schemes 

require a description of the product that 

proves its link to a territory, and the 

existence of a governing body that oversees 

compliance with the description. Appellation 

of origin (AO) is the oldest type of registered 

Geographical Indication, and it guarantees 

a closer link between quality, reputation, 

territory, resources, and culture. The quality 

conveyed by Geographical Indications to the 

consumer is defined by the meaning of the 

protected name, the legal figure used, and the 

product description with which it complies. 

Geographical Indications are intended to 

designate product quality, highlight brand 

identity, and preserve cultural traditions. 

21

Examples of well-known Geographical 

Indications include “Darjeeling Tea,” “Persian 

Rugs,” “Swiss Watches,” “Champagne” and 

from Nigeria, (though no provision has been 

made for the registration of GI), one can 

think of “Ofada Rice” and “Dongoyaro Tea.” 

While most often used in food products, 

Geographical Indications can be used to 

identify unconsumable products that may be 

associated with a specific geographic location. 

4 

is made in Article 1 (2) and Article 10 of the 

Paris Convention, where the latter Article 

in dealing with false indications of goods, 

states that the provisions dealing with goods 

unlawfully bearing a trademark and their 

seizure: 

“…shall apply in cases of direct or indirect use 

of a false indication of source of the goods or 

the identity of the producer, manufacturer, or 

merchant.” 

Any producer, manufacturer, or merchant, 

whether a natural person or a legal entity, 

engaged in the production or manufacture of/ 

or trade in such goods and established either in 

the locality falsely indicated as the source, or in 

the region where such locality is situated, or in 

the country falsely indicated, or in the country 

where the false indication of source is used, 

shall in any case be deemed an interested party. 

as climate, soil, or traditional methods of 

production, etc. 8 

The term “appellation of origin” is mentioned 

in Article 1(2) of the Paris Convention and is 

defined in Article 2 of the Lisbon Agreement 

thus: 

“Appellations of origin means the geographical 

name of a country, region or locality, which 

serves to designate a product originating 

therein, the quality and characteristics of 

which are due exclusively or essentially to the 

geographical environment, including natural 

and human factors. The country of origin is the 

country whose name or the country in which 

is situated the region or locality whose name 

constitutes the appellation of origin which has 

given the product its reputation”. 

Three elements are identifiable in the above 

definition: 9 

The use of Geographical Indications allows 

producers to obtain market recognition 

and often a premium price. With the 

increased internationalisation of food and 

product markets, Geographical Indications 

have become a vital source of marketing. 

Geographical Indications are also often 

associated with non-monetary benefits such as 

the protection of knowledge and community 

rights. 5 

In order to fully understand the meaning of 

Geographical Indications and how the term is 

derived, there are at least two other important 

concepts linked to the idea of Geographical 

Indications that must be analysed, these 

being; “indication of source” and “appellation 

of origin.” 

Long before a multilateral agreement was 

reached on the definition of Geographical 

Indications, and how they are to be protected, 

i.e., TRIPS Agreement; the concepts of 

“indication of source” and “appellation 

of origin” were incorporated in other 

international treaties. These are: the Paris 

Convention for the Protection of Industrial 

Property of 1883 (Paris Convention), the 

Madrid Agreement for the Repression of False 

or Deceptive Indications of Source on Goods 

of 1891 (Madrid Agreement), and the Lisbon 

Agreement for the Protection of Appellations 

of Origin and their International registration 

of 1958 (Lisbon Agreement). 6 

i. INDICATION 

OF SOURCE 

Indication of sources refers 

to a sign that indicates that a 

product originates in a specific 

geographical region.6 An example 

being, Ofada Rice, which refers 

only to geographic origin. It is the 

broadest concept when compared 

to Geographical Indications and 

appellations of origin and appears 

in both the Paris Convention and 

the Madrid Agreement. Neither 

agreement, however, defines 

indication of source. Reference 

Further clarification of the notion of 

“indication of source” is found in Article 1(1) of 

the Madrid Agreement: 

“All goods bearing a false or deceptive 

indication by which one of the countries to 

which this Agreement applies, or a place 

situated therein, is directly or indirectly 

indicated as being the country or place of origin 

shall be seized on importation into any of the 

said countries.” 

Article 1(2) of the Paris Convention defines 

objects for the protection of industrial 

property and refers to both “indication of 

source” and “appellation of origin,” which 

may suggest that both expressions could be 

synonymous. There are, however, distinct 

differences between the two. 

ii. APPELLATION OF 

ORIGIN 

This refers to a sign that indicates that a 

product originates in a specific geographical 

region only when the characteristic qualities 

of the product are due to the geographical 

environment, including natural and human 

factors. 7 

Unlike an indication of source, which is only 

subject to the condition that a given product 

originates in the place designated by the 

indication of source, the use of appellation 

of origin requires a quality linkage between 

the product and its geographical origin. This 

means that certain characteristics of the 

product should be essentially or exclusively 

attributable to its geographic origin, such 


a. The appellation must be a direct 

geographical name (not symbols or other 

kinds of expression) of the country, the 

region or the locality. 

b. The appellation must serve as a 

designation of the geographical origin 

for the product, which means that the 

product and geographical name must be 

the same, such as Porto or Bordeaux; 

c. The quality and characteristics exhibited 

by the product must be essentially/ 

exclusively attributable to the designated 

area of geographical origin. 

Relative to the Madrid Agreement, these 

conditions for qualifying appellations are 

higher, thus narrowing the range of possible 

indications. An example of protected 

appellations under the Lisbon Agreement 

includes ‘Bordeaux’ for wine. 

The African Landscape 

Geographical Indications, taken as any 

geographical name or sign affixed to a good 

which conveys geographical information that 

is useful in identifying the origin, reputation 

and qualities of the product can be legally 

protected in two primary forms in Africa. 

Defensive protection, which focuses on the 

prevention of misleading indications and 

unfair competition and positive protection 

involving the registration of a Geographical 

Indication either through a sui generis 

system or as trademarks. The legal means for 

obtaining defensive protection would mainly 

be through unfair competition laws, common 

law rules on passing off or case 

law. 

There exists the possibility of 

obtaining positive Geographical 

Indication protection, in one form 

or another, in all but six African 

countries. 10 

For these six countries, there is 

no positive protection available, 

or there is no reliable information 

on whether positive Geographical 

Indication protection can 

be obtained. Among the 47 

countries where there is some 

level of positive protection, such 

protection can be obtained under

one of two legal regimes. 

Protection can either be through specific 

Geographical Indication laws or through 

trademark regimes where protection of 

certification or collective marks is possible. 11 

Also, 23 of the 47 countries mentioned above 

have specific laws providing Geographical 

Indication protection while in South Africa, 

there is sui generis Geographical Indication 

protection for only wines and spirits pursuant 

to a bilateral agreement with the EC. 12 

Of the 23 countries with sui generis 

Geographical Indication laws 13, 16 are 

Members of the African Intellectual Property 

Organisation (OAPI) and therefore have the 

same Geographical Indication law.14 In the 

remaining 24 countries, positive Geographical 

Indication protection can only be obtained 

through certification or collective trademarks 

under national trademark laws. 15 

The increased international 

awareness that exists in the GI 

space, suggests that many of the 

countries which currently only 

provide trademark protection 

for Geographical Indications are 

likely to move towards specific 

sui generis laws. However, 

though much locally in use, GIs 

are not generally recognised in 

Africa as protectable. 

The free to use communal 

nature of most African societies 

work against most attempts to 

have any form of proprietary 

right attached to available 

Geographical Indications. As 

a predominately agriculturalbased 

economy, wise counsel will 

prevail, if most African states 

incorporate the protection of 

Geographical Indications into 

their legislations. 

African Union 

2 World Intellectual Property Organisation. 

www.aopi.wipo.net/fr/OAPI/index.htm 

3 Larson, J. Relevance of geographical indications 

and designations of origin for the sustainable 

use of genetic resources. Food and Agriculture 

Organization (FAO), Rome, (2007) 

4 Uwanna, I. Intellectual Property: A Valuable 

Asset to Every Company, ‘n.d.’ i.uwanna@ta-ng.com 

5. See www.geographicindications.com 

5 Papadopoulos, I. An Economic Analysis of the 

Welfare Implications of Geographical Indications, 

World Trade Institute, (2003) 

6 Blakeney, M. “Proposals for the International 

Regulation of Geographic Indications,” The Journal 

of World Intellectual Property, Vol.4, No. 5, (2001) 

631 

7.Keith, E. M. Observations on the Development 

Potential of Geographical Indications. U.N. 

Millennium Project Task Force on Trade. March 

(2003) 

8 Sergio, E. International Protection of 

Geographical Indications and Developing 

Countries, South Centre Working Paper 10, (2001) 

3 

9 Rangnekar, D. The socio-economics of 

geographical indications. A review of empirical 

evidence from Europe, UNCTAD/ICTSD, Issue 

Paper 8. (2004) 

10 These countries are Cape Verde, Comoros, 

Djibouti, Eritrea, Sao Tome & Principe, and 

Somalia. 

11 In many countries, it is possible to obtain 

trademarks with geographical references in certain 

circumstances. However, these are mostly particular 

types of trademarks which could either be collective 

or certification marks. There are several reasons 

for this. These include the fact that trademark 

law generally prohibits the registration of purely 

descriptive words and forbids misleading the 

consumer through the trademark itself. For further 

discussion see, e.g., Larson (2007) 

12see http://europa.eu/scadplus/leg/en/lvb/r12207. 

htm (last visited on 27 August 2011. 

13 Thompson, L. R., and Bukman, P. Geographical 

Indications. International Food & Agricultural 

Trade Policy Council (IPC), Washington, DC: USA. 

(2003) www.agritrade.org 

14 Wikipedia, Geographical Indication. Wikimedia 

Foundation Inc., (2007) www.en.wikipedia.org. Last 

visited on 8 August 2011 at 2.39 PM. 

15 The rationale of the ‘extension’ is that 

geographical indications for all products deserve 

the same level of protection, i.e., the one which 

applies currently is limited only to wines and spirits. 

In order to establish such uniform protection for 

all products and extend the additional protection 

of Article 23.1 of the TRIPS Agreement to other 

products, it is proposed to remove the reference in 

Article 23.1 of the TRIPS Agreement to wines and 

spirits. 

SafariRenewals 

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Since 1992 …… 

Protect your IP online 

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§ 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 

C 

M 

Y 

CM 

MY 

CY 

CMY 

K

Three 

Consonants 

A trademark application No 2016737523 

was filed by “Gazpromneft” JSC (a 

prominent Russian oil company) for the 

goods in Class 4 and services in Classes 

35, 37, 40, 41, 42. 

The trademark application included a 

figurative part and a word part – the letters 

GPN. The patent office agreed to register 

the trademark with the three letters being 

disclaimed. The patent office argued that the 

claimed designation contains a combination 

of three letters in the Latin alphabet. This is 

an abbreviation of the name of the company 

– GazPromNeft, which is a contraction of 

three words (Gaz (gas), Prom (industry), 

and Neft (oil). The patent office insisted that 

the abbreviation is not a word; it is made in 

standard font without any graphical features 

that could influence the positive perception 

of the designation by the consumer. Hence, it 

does not possess distinguishing capability. In 

its decision, the patent office relied on Article 

1483 of the Civil Code which sets forth that 

registration is not allowed if the designation 

does not possess distinctive capability. This is 

further explained in the Recommendations 

of the patent office for examiners. It is stated 

there that the combinations of letters which 

are not words are not registrable (an exception 

to this rule are designations which acquired 

distinctiveness over use, such as e.g., BMW). 

The applicant appealed the decision 

at the IP court. The IP court did not 

agree with the patent office, cancelled 

the decision, and sent it back for 

reconsideration. 

The patent office did not reconsider its decision 

but appealed the judgment of the IP court at 

its cassation instance. The cassation instance 

supported the judgment of the 1st instance 

court (Case No СИП-453/2018 judgment 

of March 25, 2019) and pointed out that the 

applicant had initially appealed the decision 

of the examiner at the Chamber of Patent 

Disputes and argued that the element “GPN” 

does possess distinctiveness however he failed 

in its attempt to prove it. 

When the decision was appealed at the IP 

court, it was stated by the court that the patent 

office did not give credit to the evidence 

submitted by the applicant. The court pointed 

out that the patent office had not explained in 

its decision why it had declined a linguistic 

report of the expert and had not examined 

other evidence submitted by the applicant at 

the time of filing the trademark application 

or during the appeal procedure. The applicant 

did argue that the designation “GPN” has the 

properties of a word. Furthermore, a linguistic 

report confirmed this. The designation does 

have the basic characteristics of a word, and 

as such, it is a particular unit of the language. 

Conversely, the patent office argued that the 

claimed designation is an abbreviation used 

by the applicant on the market. This is not 

correct according to the IP court. The applicant 

argued that the word element “GPN” had been 

used for a long time and de facto became a 

trademark; it plays the role of the trademark 

in that it distinguishes his goods and services 

from those of other manufacturers. 

To support the arguments contained in the 

appeal, the appellant submitted sources of 

information as follow: a linguistic report, 

copies of contracts concerning supplies of oil, 

printouts from the Internet. 

The patent office declined the arguments 

contained in the appeal; it did not accept the 

assertion of the appellant that the combination 

of letters “GPN” had been used as part of the 

company names of several companies forming 

part of the Gazpromneft group. According to 

the patent office, that circumstance did not 

confirm the use of that designation for the 

purpose of individualisation of goods and 

services of the appellant because company 

names serve to identify legal persons but not 

the goods and services. The patent office stated 

that the appeal did not contain arguments 

confirming the famous character of the 

designation nor was there submitted evidence 

showing that the designation “GPN” acquired 

distinguishing capability as a result of its 

intensive use. 

The court of the first instance cancelled 

the decision of the patent office because in 

contravention of Article 1483(1) the patent 

office did not consider the expert report which 

opined that an abbreviation, regardless of the 

alphabet in which it is written, is a word. 

The patent office simply preferred not to 

notice the report. 

Besides, the court also pointed out that the 

patent office should have taken into account 

that the designation was used in the company 


By Vladimir Biriulin, Gorodissky & Partners 

www.gorodissky.com 

names of subsidiary companies and may be 

used in labor relations of the plaintiff. Thus, the 

court refuted the assertion of the patent office 

that the company name could not be used for 

individualisation of goods and services. 

Further, the court stated that the patent 

office had not duly evaluated the fact that 

the designation was used on documents 

confirming the manufacture of goods and 

rendering services by the plaintiff. 

The court also agreed with the plaintiff who 

referred to the international experience of 

use of company names in their abbreviated 

form, such as BMW, CNN, BBC, WWF, and 

others. Besides, the court did not agree that the 

designation consists of consonants only. When 

being read it would be pronounced as Gee, Pee, 

eN, i.e., the designation includes vowels as well 

as consonants. 

In conclusion… 

The patent office appealed the judgment at 

the IP court cassation instance; however, 

the Presidium of the IP court dismissed the 

complaint of the patent office. The court also 

made a statement that may not be pleasant 

for the patent office. It pointed out that the 

rules of registration of trademarks do not 

endow the patent office with the capacity to 

recognise its own conclusions as indisputable 

without analysis of the plaintiff ’s arguments. 

The Praesidium also concluded that not every 

combination of letters is an abbreviation, but 

an abbreviation is a word. 

As a result, the Praesidium of the IP court 

upheld the judgment of the 1st instance of 

the IP court and dismissed the patent office’s 

complaint.

J. Varbanov & Partners 

European and Bulgarian Patent & Trademark Attorneys 

One of the oldest and leading IP companies in Bulgaria 

Professional, cost effective services and quality advices 

Areas of practice: 

*IP Protection 

*IP Enforcement 

*Anti-counterfeiting 

*Litigations 

*Domain name registrations 

*IP watches 

PO Box 1152, BG-1000 Sofia, Bulgaria 

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

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

e-mail: jvp@jvpatents.com 

www.jvpatents.com

Digital 

client-acquisition tools 

bring IP attorneys more cases 

Many IP attorneys are seeking to 

increase their inbound trademark 

cases and to acquire new clients in the 

highly competitive IP market. In this 

article, we explain how IP law firms 

can significantly grow their revenue 

by using innovative marketing tools 

intelligently. 

Why are Madrid refusals a key 

component of a data-driven 

marketing strategy with digital tools? 

Rising numbers of trademark applicants 

are opting for the Madrid System instead of 

filing national applications, leading to more 

provisional refusals than ever before. 

The Madrid System has never been this 

popular. In 2018, the Madrid System achieved 

a new record when trademark owners filed a 

combined total of over 60,000 applications for 

international registrations. More interestingly, 

over 120,000 provisional refusals were issued 

by Madrid member jurisdictions in the same 

year (WIPO 2019). 

The total number of provisional refusals by 

designated Madrid members increased by 

7.6% in 2018. 

Trend in provisional refusals of 

designations in international 

registrations, 2004-2018 

Table 1 

Mr. Pascal Moungouango, Sales & Marketing Director, WeCrest Ltd 

www.wecrest.com 

Big Data enables digital client-acquisition 

Most Madrid member jurisdictions require 

a local law firm to handle the response to 

a provisional refusal. Consequently, any 

provisional refusal can be considered a 

business opportunity for a local law firm 

within the designated jurisdiction. 

To take advantage of this opportunity, the 

question that must be answered is: Which firms 

are receiving the most provisional refusals and 

therefore have the most cases? 

Many IP attorneys are familiar with the 

frequent frustrating experience when a client 

does not send them any cases after they have 

invested a significant amount of time and effort 

in developing a relationship with them. 

Therefore, knowing which filers (trademark 

holders or representatives) have the most 

cases in a jurisdiction is crucial in order to 

concentrate marketing efforts to where the 

most revenue can be generated. 

WeCrest’s IP legal marketing solutions include 

several innovative tools, which operate based 

on daily-updated data of all provisional refusals 

issued in the Madrid System. Frequent filers 

can be identified and located worldwide, in a 

particular country, or even in a specific city. 

This enables WeCrest users to set up targeted 

meetings only with the most valuable clients. 

Table 2 

WeCrest Filer Ranking of the top 10 

refusal recipients for the US in 2018 

Focusing only on valuable clients might sound 

a bit too calculated. However, following this 

approach consistently will eventually improve 

the return on invested (ROI) resources and 

time from a business perspective. 


Source: WIPO Statistics Database: March 2019.

Every IP attorney also needs to be a marketer. 

An IP attorney’s job is first and foremost to practice IP law, yet, probably the second most 

important task is client acquisition. 

Nowadays, it is hard to find any company, which is not applying data-driven decision making to 

pursue their business objectives. 

So, why are many IP firms not yet tapping into the power of Big Data? 

With the rapid development of the digitalisation of the IP profession, more and more law firms are 

focusing their client acquisition efforts on online channels. Compared to traditional marketing, 

only digital marketing allows sophisticated performance tracking, constant optimisation, and 

ultimately an effective ROI management. 

Nearly all marketers use quantifiable and scientific methods. A scientist solves a question or 

problem by making observations and doing experiments and calculations. The goal is to be able 

to predict and repeat experiments with desired outcomes. By applying the same approach to IP 

legal marketing, attorneys can make improvements to their strategies and achieve their desired 

business objectives more effectively. 

Based on 2018 data1, email marketing is still ranked as the most effective digital marketing 

channel, surpassing SEO, social media, and paid advertisement. A major advantage of email 

marketing is reaching target clients exactly where most of their attention is directed to – namely 

in their email inbox. 

How should IP attorneys use email marketing to offer their services? 

Delivering the right message to the right client, and especially at the right time, is known to lead 

to higher conversion rates than non-targeted marketing. 

This ‘Next Best Offer’ approach essentially reverses the traditional marketing equation, by placing 

the client at the center and trying to meet the individual needs. 

WeCrest’s email marketing tool, the ‘Madrid Notifier,’ skillfully implements the Next Best Offer 

strategy to drive client acquisition for IP firms. With this tool, attorneys can send to provisional 

refusal recipients a notification email along with an individualised response offer. As the refusal 

case needs an immediate response by a local law firm to the local IP office, the next best offer will 

likely be accepted. 

Table 3 

1 - A firm can have an enticing offer, but it 

is useless if the client never opens the email. 

Getting the client to open the email is half 

the battle. Therefore, it all comes down to the 

subject line. 

2 - When setting a sender name, being as 

human as possible is the key. Olivia@lawfirm. 

com is both inviting and unintimidating to 

people when they open their inboxes. The best 

impression an IP attorney can make on his or 

her client is to show they are dealing with a 

person – not an organisation. 

3 - Opens, i.e., the number of emails that 

are actually opened by the recipient, is an 

important KPI (key performance indicator), 

and considering and spending time on not 

only the subject line but also the preview text, 

will help to drive opens and engagement with 

the clients. 

4 - Personalisation is essential to marketing 

as it increases engagement because people 

want to be seen as individuals. Thus, it is 

recommended to send the email to a personal 

email address and to address the recipient 

using their first name. 

5 – Less is more. It might seem as though 

more Calls-to-Action (CTAs) give clients more 

options, and hence increase engagement with a 

law firm, but that is not always, how it works. 

Using a CTA in IP legal marketing requires a 

balance between options and simplicity. The 

best practice is to include only one CTA at the 

bottom of the email, which allows the recipient 

to reply with a simple ‘yes.’ 

Conclusion – 

Entering the new era 

of IP legal marketing 

The digitalisation of the IP profession 

has arrived. Now, new clients can be 

acquired online with a few clicks. 

Therefore, more and more IP attorneys 

are increasing their revenue by using 

digital marketing tools and the latest 

refusal data intelligently. 

To get started with digital clientacquisition, 

please visit www.wecrest. 

com and open a Free Account. For more 

information, you can send an email to 

Pascal.Moungouango@wecrest.com 

Footnotes: 

WeCrest’s email marketing solution: Sending response offers with the Madrid Notifier. 

Furthermore, a response offer email adds value to the potential client as the offer addresses their 

current needs. 

Email marketing checklist for IP attorneys 

There are five main success factors, which will further drive client-acquisition through email. 

1 https://www.smartinsights.com/emailmarketing/email-communications-strategy/ 

email-marketing-still-worth-takingseriously-2018/ 

1 - Subject line 

2 - Sender name and email 

3 - Email preview text 

4 - Personalisation 

5 - Call-to-Action (CTA) 


TRADEMARKS 

BRAND 

PROTECTION 

Amazon 

Project Zero NOTES 

By Lisa Lovell, Brand Enforcement UK Ltd 

www.brandenforcement.co.uk 

Amazon’s Project Zero was initially 

rolled out in February 2019 and 

covered the USA only. With a current 

estimate of 3,000 brand participants, 

the project was expanded to Europe 

on 5th August 2019; and now includes 

France, Germany, Italy, Spain, and 

the UK. 

“Project Zero builds on our longstanding 

work and investments in this 

area. It allows brands to work with us 

to leverage our combined strengths 

to move quickly and at scale to drive 

counterfeits to zero,” said Dharmesh 

Mehta, Amazon’s Vice President of 

Consumer and Brand Protection. 

What is Project Zero? 

The initiative, aimed at eliminating the spread 

of counterfeits on Amazon, enables brands 

to remove counterfeit listings from the site 

without the need to communicate with 

Amazon, and thereby essentially “empowering 

brands to help drive counterfeits to zero.” 

“Our aim is that customers always 

receive authentic goods when shopping 

on Amazon,” Mehta. 

Is Project Zero free? 

It is free to enrol in Project Zero, get access to 

the automated protections and use of the free 

self-service counterfeit removal tool. However, 

brands that choose to use the product 

serialisation service incur a cost per unit, based 

on volume. 

Joining Project Zero 

Currently, an invitation-only experience, 

brands that are not yet enrolled should join the 

waiting list. However, it is currently unclear as 

to how long the wait might be. 

Once enrolled in one country, brands are 

automatically enrolled in other countries, 

therefore avoiding the need to be added to the 

waiting list or to enrol again. 

Amazon Brand 

Registry 

Interested brands must have a governmentregistered 

trademark and have enrolled their 

brand(s) in Amazon Brand Registry. Brands 

not yet enrolled in Brand Registry can get 

started by visiting brandservices.amazon. 

co.uk. 

• Three-Pronged Approach 

• Automated product scanning 

• self-service counterfeit removal tool 

• product serialisation scheme 

A three-pronged approach, Project Zero 

comprises of a suite of tools that combines 

advanced technology and machine learning 

with a brand’s knowledge. 

When a brand joins Project Zero, Amazon 

turns on automated protections for all, but it’s 

then left up to the brand as to whether they 

use the (self-service) removal or (paid for) 

serialisation tools. 

Automated Product 

Scanning 

“Our aim is to proactively prevent these 

[counterfeits] before anyone ever sees 

them,” said Mehta. 

The first of these tools, automated 

protections, continuously scans the online 

stores, proactively detecting counterfeits by 

referencing logos, trademarks, and other’ key 

data’ about a brand and then removes any 

suspected counterfeits. 

Mehta continued: “Our approach … is 

part of what happens in our store, so 

we can scan and verify before it gets to 

a customer and stop it if it’s inauthentic. 

This is much better for the customer and 

the brand. It also allows us to take the 

appropriate actions if there’s a broader 

issue.” 

These machine learning algorithms scan more 

than 5 billion product listings every day, and 

for the US brands involved in the programme, 

the automated protections have prevented 

more than 65 million products from being 

prevented and sold in stores. In other words, 

for each and every suspected counterfeit 

that a brand has taken down, more than 500 

have been proactively stopped by Amazon’s 

automated protections. 

“Part of this is improved data sharing 

between what customs and similar 

organisations around the world have 

versus what they’re willing to share with 

us. This includes data that different 

companies can share to identify 

patterns and create better referrals for 

law enforcement.” Mehta said. 

“We’ve been testing these automated 

protections with a number of brands, 

and on average, our automated 

protections proactively stop 100 times 

more suspected counterfeit products as 

compared to what we reactively remove 

based on reports from brands,” Mehta 

continued. 

Self-Service Tool 

Amazon has been testing its algorithms for a 

while, but the self-service counterfeit removal 

tool is new. 

Traditionally, if a counterfeit does ‘get through’ 

the automated protections, the brand would 

need to submit a notice to Amazon, which 

would then lead to an investigation and finally 

appropriate action, which can lead to delays. 

“If brands are here to help us drive 

counterfeits to zero and if they’re trying 

to get counterfeits out of our stores, why 

don’t we just give them the power to do 

so?” Mehta. 


12th Edition 

GIPC 

Media Partner 

“Disruptive Innovation And Rethinking IP” 

8 - 10 January, 2020, New Delhi, India 

www.iprconference.com 

Key Highlights 

8th January 2020 - Inaugural Ceremony 

GIPC Awards Ceremony, Plenary Sessions 

9th January 2020 - High Tea & Cocktail 

Mock Trial, Group Photograph Session 

10th January 2020 - Gamification of IP 

I-HIPP Sessions, Plenary Sessions 

Eminent Speakers 

Prof. Dr. Heinz Goddar 

Boehmert & Boehmert 

Mr. Hari Subramaniam 

Subramaniam & Associates 

Mr. Pravin Anand 

Anand and Anand 

Mr. Raghavender G.R. 

National Mission for Justice Delivery 

& Legal Reforms, Govt. of India. 

Mr. V. Lakshmikumaran 

Lakshmikumaran & 

Sridharan attorneys 

Dr. Markus Engelhard 

Boehmert & Boehmert 

Dr. Sourabh Khemani 

L. S. Davar & Co. 

Mr. Jay A. Erstling 

Patterson Thuente IP 

Mr. Erik van der Vyver 

Von Seidels 

Mr. Carlos Parra 

Olartemoure & Asociados 

Mr. Gregory L. Maurer 

Klarquist Sparkman 

Dr. Claudia Pappas 

Thyssenkrupp AG 

Organised by Star Sponsor Knowledge Partner Managed by 

Diamond Sponsor

The self-service tool allows a brand to search 

the Amazon platform and, if they believe 

they’ve found a counterfeit, the brand can take 

it down itself. This gives brands unprecedented 

power to control and remove listings from the 

Amazon store directly. 

“I’m excited about the technology 

advances underneath the protections... 

I’m not aware of anyone else that, at 

scale, is giving brands access to remove 

products from their store directly.” 

Mehta. 

However, in order to maintain this autonomy, 

brands must maintain a high bar for accuracy. 

There are several processes in place to promote 

accuracy, including required training as 

part of Project Zero enrolment and ongoing 

monitoring to prevent misuse of these tools. 

Some brands who have unfortunately not 

managed to reach this level of accuracy, have 

been removed from the programme. 

Abuse of Power “There’s been a couple 

of cases where brands [have been] 

abusing the self-service counterfeit 

removal tool, so we’ve removed a small 

number of brands from the project,” 

warned Mehta. 

Product Serialisation 

Scheme 

The final tool is a product serialisation 

capability, which provides brands with a 

unique code for every product it manufactures 

and allows Amazon to scan and verify the 

authenticity of every unit before it is shipped 

to a customer. 

Product serialisation is a powerful tool for 

detecting and stopping counterfeits from 

reaching customers. Brands also have the 

choice to determine which of their products to 

serialise. 

Brands do not need to serialise their products 

to enrol in Project Zero. However, the brands 

that do serialise their products are reportedly 

seeing the best results. 

Merchants obtain tracking numbers from 

Amazon and apply them to their products 

and packaging, so Amazon’s systems can scan 

items for authenticity. It builds upon the Brand 

Registry, for registering logos and trademarks 

to facilitate detection of infringement, 

introduced in 2017. 

“Unlike other companies, Amazon’s 

product serialisation is more proactive,” 

said Mehta. “Many other companies 

will apply a unique code during the 

manufacturing process, so the customer 

is able to scan the code after purchasing 

the project, which is entirely reactive,” 

he said. 

The Success of Project 

Zero in the USA 

Dharmesh Mehta, Vice President, Amazon 

Worldwide Customer Trust and Partner 

Support, spoke about the US version of the 

project and the progress it’s made. 

“More than 99.9% of the products that 

consumers view have never received 

a counterfeit complaint,” Mehta said. 

He added that while that’s a high rate 

of authentic products being sold on 

Amazon, it’s not perfect and it’s not 

resulting in zero counterfeits. “How 

could we combine what Amazon has 

in terms of strengths in technology, 

machine learning, and innovation 

with the strengths brands have in 

the intimate knowledge of their own 

products and IP? Moreover, how can 

we work together to drive products to 

zero?” he said. 

While Mehta is not an expert in what other 

online platforms are doing, he believes that 

each of the components of Amazon’s suite is 

unique. 

“More than 99.9% of the products that 

consumers view have never received 

a counterfeit complaint,” Mehta said. 

He added that while that’s a high rate 

of authentic products being sold on 

Amazon, it’s not perfect and it’s not 

resulting in zero counterfeits. 

Mehta concludes: “The initial results 

from Project Zero have been promising 

and we will keep improving – we will 

continue to refine our technology, 

expand to more countries, and will 

continue to work with brands to drive 

counterfeits to zero.” 

“A core part of that memo is around 

the value and impact we can have by 

government organisations, brands, 

marketplaces … working together to 

stop counterfeits. We’re super aligned 

with that, and I think there’s more we 

can do there,” explained Mehta. 

The brands that are using serialisation as part 

of Project Zero haven’t used the self-service 

counterfeit removal at all, according to Mehta. 

Also, for those brands using the self-service 

tool, Amazon has received zero notices of 

counterfeits from them. 

Deterrent Effect 

Mehta also believes that while criminal 

referrals are not the end-all solution, 

they are a significant deterrent; “If 

you look at digital piracy and what 

happened several decades ago in terms 

of monetary and criminal penalties, 

I don’t think counterfeiting has kept 

pace.” He added, “The more we can do 

to create additional disincentives for 

the bad actor and get better at detecting 

them is good for all of us.” 

Lisa Lovell, CEO of Brand Enforcement UK 

Ltd, concludes, “As well as online enforcement 

initiatives such as Project Zero, many brand 

owners combine these efforts with offline 

enforcement initiatives. Many of our clients 

not only want to disrupt online trade; they 

also want to follow the money to obtain some 

physical evidence in the form of a product. 

From this, we can establish far greater 

intelligence about whoever is operating the 

online listing. It often leads us to warehouses 

where all of the stock is kept”. 

Where physical evidence is found in the United 

Kingdom, brand owners can also work with 

Trading Standards so that they may consider 

bringing a criminal action against the offender 

on behalf of the brand. “We liaise with Trading 

Standards on behalf of our clients, provide 

them with the relevant witness statements 

and documentary evidence in order that they 

may pay an informal or even official visit to 

the trader’s premises. They can make official 

enquiries as to the source of the supply of the 

goods and can even bring a prosecution on 

behalf of the brand which costs nothing but the 

time it takes to draft the witness statement”. 

In some circumstances where Trading 

Standards may not be able to assist due to 

resource issues, brands may want to consider 

bringing a private criminal prosecution or a 

civil action. “Once the physical evidence has 

been gathered, we are able to utilise this for 

either private criminal or civil actions. In any 

event, it is essential that brands must think 

about their online efforts versus their offline 

efforts as a combination of both will always 

bring the best results.” 

Learn more about Project Zero and sign up to 

join the waiting list at www.projectzero.com 


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Global IP Matrix - Issue 5

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