Global IP Matrix - Issue 5

Northons1975

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 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

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 &

Women’s IP World

Head of International liaisons for

Women’s IP World

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

www.gipmatrix.com

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

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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

www.gipmatrix.com

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.

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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.


www.gipmatrix.com

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,

World Patent Information, 32, (3), 188-197, 2010

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,

World Patent Information, 35, (2), 126-129, 2013

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,

World Patent Information, 31, (1), 48-53, 2009

www.gipmatrix.com

11


12 www.gipmatrix.com


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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?

14 www.gipmatrix.com


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).

www.gipmatrix.com

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.

15


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www.gipmatrix.com

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.

18 www.gipmatrix.com


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.

www.gipmatrix.com

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

www.gipmatrix.com

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

22 www.gipmatrix.com

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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23


24 www.gipmatrix.com


Since 1992 ……

Protect your IP online

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Corporate Legal & Consulting

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

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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

26 www.gipmatrix.com

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.

28 www.gipmatrix.com

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)

30 www.gipmatrix.com


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.

34 www.gipmatrix.com


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

36 www.gipmatrix.com


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