The Women's IP World Annual 2019/2020

Northons1975

We are delighted to present you with the launch edition of The Women’s IP World Annual 2019/2020, celebrating women at all levels working in IP Law and Innovation. From the very beginning, the response and feedback we had was amazing, and we would like to thank all of the incredible women involved. Our aim was to celebrate a group of diverse women, from all over the globe, showcasing their achievements and also their personalities to inspire and inform. We have taken an unbiased approach and kept the articles & profiles as authentic as possible, to keep the author's own personal style. This has resulted in a cocktail of inspirational women coming together to share thoughts, ideas, and experience positively. We hope you enjoy this issue as much as we have enjoyed putting it together.

Ms. Elvin Hassan

Editor & Head of International liaisons

Contents

page 04

AIPPI Opening letter

by Olga Sirakova, AIPPI Secretary General.

page 05

Genius, Creativity, and Endurance: all in the long

journey of women’s recognition

By Renata Righetti Pelosi, AIPPI President.

page 07

The Importance of Women in Innovation

by Bobbie Carlton, Founder, Innovation Women.

Law firm profiles, bio’s and article

Africa

page 11

Anku.Anku At-Law - Partner profile & article -

Trademarks Exclusivity: THE HAMPATA CASE

by Sarah Norkor Anku, Senior Partner at Anku.Anku

At-Law.

page 15

OAALaw - Partner profile & article - IP Funding a

key to entrepreneurial development through IP

asset ownership in Africa

by Mary Concilia Anchang - partner at OAA Law.

page 19

Stillwaters law firm – Profile & article - The

importance of Intellectual Property to Small and

Medium-Sized Enterprises

by Amaka Okafor Associate, Stillwaters Law Firm

Asia

page 23

Corner Stone & Partners, Partner profile & Article

- Cross-Class Protection of Well-known Marks

Should Accord with Their Popularity

by Brenda Zhao of Corner Stone & Partners.

page 27

Women in Intellectual Property Law

by Anomi I Wanigasekera - Partner at Julius & Creasy.

www.womensipworld.com

We are delighted to present you with the launch edition of The Women’s IP World Annual 2019/2020, celebrating

women at all levels working in IP Law and Innovation. From the very beginning, the response and feedback we have

had was amazing, and we would like to thank all of the incredible women involved. Our aim was to celebrate a group

of diverse women, from all over the globe, showcasing their achievements and also their personalities to inspire and

inform. We have taken an unbiased approach and kept the articles & profiles as authentic as possible, to keep the

author’s own personal style. This has resulted in a cocktail of inspirational women coming together to share thoughts,

ideas, and experience positively. We hope you enjoy this issue as much as we have enjoyed putting it together.

Ms. Elvin Hassan - Editor & Head of International liaisons

page 28

LexOrbis Partner profile

Manisha Singh, Co- Founder and Partner at LexOrbis

Europe

page 31

Dr. Helen G. Papaconstantinou and Partners,

Partner profiles & presentation

Women as lawyers and leaders in IP in Greece.

page 34

Patpol Partner profile

Izabella Dudek-Urbanowicz.

North & Central

America U.S.A

page 36

Advitam, Partner profile & Article - The Myth of

Work-Life Balance

by Michele S. Katz Founder Advitam IP, LLC.

page 39

Dumont, Partner profile & Article - Why

is everybody talking about cultural

misappropriation?

by Laura Collada, Dumont.

page 43

Eproint, Partner profile

Gabriela Bodden.

South America

page 45

Litvin Marzorati Legalis, Founder Partner profile

Melisa Litvin.

page 46

Estrategia Juridica, Director & Attorney at

Law profile

Claudette Vernot.

IP Service provider

profiles, bio’s & articles

page 48

Patent Seekers - Women of Science

by Freya Shepherd, member of the Biotech team at

Patent Seekers.

page 51

Minesoft, Co-Founder & Managing Director profile,

Ann Chapman-Daniel - Article, taking out the trash:

big industry starts clearing up the mess made by

our ‘throwaway’ society

by Moira Sivills, Business Development Executive, &

Caitlin Kavanagh, Marketing Executive, Minesoft.

page 55

Dantofon, Co-Founder & Strategic Operations

Manager profile, Lee-Ann Picoto - Article

Innovation in its modern meaning is a new idea,

creative thoughts, new imaginations in form of device

or method.

page 59

Brand Enforcement UK LTD, CEO profile

Lisa Lovell.

page 60

Carlton PR & Marketing. Innovation Nights,

Innovation Women, Founder profile

Bobbie Carlton.

Carlos Northon

Founder & CEO 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

02 03


Letter from AIPPI

OLGA SIRAKOVA - SECRETARY GENERAL OF AIPPI

My name is Olga Sirakova, and I am

writing this opening letter in my capacity

as Secretary General of AIPPI. It has been

my honour and pleasure to serve AIPPI in

different roles, including as Secretary and

President of the Bulgarian group of AIPPI,

four years as a member and four years

as Chair of the Nominating Committee,

and the last five years as Bureau member.

These roles have been voluntary, limited

in term, and which I perform alongside my

daily professional engagements.

I am a Bulgarian patent and trademark

attorney, Bulgarian attorney at law,

European patent attorney, European

Trademark and Design Attorney, and

partner of Bulgarian law firm Interius. Most

importantly, I am a mother of two wonderful

grown-up children. Trying to combine all

these roles, I am no exception from the other

IP professionals.

It takes a lot of passion to reconcile these

different roles and social responsibilities;

none of us could do it alone. We are grateful

to our teachers for all lessons learned – easy

and difficult ones.

We work together with our partners and

colleagues from all over the world to best

protect and help our clients, across different

cultures, jurisdictions, and time zones. We

discuss, negotiate, and fight. Sometimes

we win, sometimes we lose, and every

time we get a little bit stronger. This is the

daily routine for IP lawyers. For us, women,

the choice is not whether you pursue a

complicated case with the help of a man, or

of a woman. As long as you have a reliable

and trustworthy partner to work together

with, you will be strong and successful. My

experience shows that the reverse is also

correct - male colleagues are looking for

professional support – men or women, and

this is what matters. However, has it always

been like that? Is it like that all over the world?

Maybe not, as this publication is launching

only now. Maybe women still need to share

their success stories to encourage others.

All women may still need to express the

challenges they experience and get inspired

by how others face them and deal with them.

Northon’s Media, PR & Marketing’s

publication“, Women’s IP World,” is a

platform. A platform for women to

demonstrate their achievements, to learn

and get a shared creative impulse from each

other. It is also a platform where women

could receive recognition for their work

showing their professional experience and

their unique personalities.

AIPPI is happy that this publication is

launching at the occasion of the AIPPI World

Congress in London and that we could

support this endeavour.

AIPPI is an organisation which was once

regarded as a “men’s club.” These times are

long gone. Our bylaws explicitly require

gender diversity for all positions in all the

institutional bodies of the association.

Therefore, the current Bureau comprises

of 15 members, 7 of which are female,

including the President and the Secretary

General. Women mostly do the day-to-day

work at the General Secretariat of AIPPI.

The composition of our membership, as

well as our committees, (which are the

cornerstones of AIPPI), show true balance

and commitment of both men and women.

This makes this organisation one of the most

influential and respected non-governmental

IP organisations in the world. We are all

engaged in this volunteer work in the best

way we can be.

Diversity and equal rights need to be

practiced in our daily work environment,

not only in the IP profession. Tremendous

progress has been made, and we see it all

around; however, there are things to be

improved. I am therefore confident that this

publication will find an interested audience

in the IP World.

What keeps us all together

is the shared passion for

what we do. We will be

successful if we continue

sharing it. Share it with us!

Genius,

Creativity, and

Endurance:

all in the long journey of women’s recognition.

The ‘names’ of our ancestors of which we

are aware of are disproportionately male

names, remembered, regardless of the

specific reasons why.

Of course, all of us know the names of some

powerful women; for example, empresses

or queens, and the names of a few

outstanding creators, poetesses, and artists.

However, the more we go back through

the centuries, the more difficult it is to find

memories and traces of the contribution of

women to the development of knowledge,

inventiveness, and understanding.

As discussed by Renata Righetti Pelosi, President of AIPPI

www.aippi.org

All along with the entire human history

we women were always, approximately,

half of the total number of human beings.

However, recognition of the female

contribution to the development of culture

and society has always been neglected.

No need to recall Bertoldt Brecht to

recognise that most of the ‘History,’ as

we know it, did not report the names of

those who were not so powerful, women

or men, but against ‘the other side of

Heavens’ damnatio memoriae worked

even more efficiently. Too often, when a

female scientist or scholar proved herself

to be outstanding, the social and political

environment cut her off.

An example is the well-known case of

Hypathia, the very first notable woman

in mathematics and astronomy, who

was murdered by insurgent Christians, in

Alexandria, Egypt, during the second half

of the IV century AD. Furthermore, let us

remember the thousands of women who,

many centuries later, were burnt at the

stake in Europe and America as witches and

who were probably the only healers in their

communities who took advantage of the

traditional female knowledge of herbs and

plants.

Closer to our times and moreover, as we

are mentioning names, it is essential also to

remember the name of Maria Sklodowska.

She was twice a winner of the Nobel Prize

for two different scientific fields; her name

04 05

05


has almost been forgotten as she is better

known worldwide under her husband’s

name, Curie, instead of her own!

Notwithstanding all the difficulties still

existing, we must reecognise that thanks

to the fighting and endless efforts of

many women all over the world, most

countries now acknowledge women’s skills,

capacities, and equal rights; it is at least

partially, achieved.

We can see it in

any field, and the

IP world is not an

exception.

The number of women in all the professions

linked to IP has significantly grown in less

than half a century, which is a period so

short that several of us are witnessing the

process and the actual changing in our own

professional lives.

Nowadays, in most jurisdictions, there are

no longer rules limiting the enrollment/

election/activity of female Judges, Lawyers,

Patent and Trademark Attorneys, IPO

Directors, Examiners, Researchers, etc. As a

consequence, also, the number of women

reaching top positions in their respective

fields has increased very much. It brings a

more favourable ambiance from the very

beginning for any woman in her career in IP.

Looking back at my experiences, I

am certainly not the only one of my

generation who was often approached as

the “secretary,” at most the assistant, of a

male colleague when meeting clients or

associates. We do not hear this much of

younger female colleagues. It hopefully

means we have progressed.

Sometimes in private practice, it is more

difficult to reach the highest positions than

in the public sector because their rules

must always be applied, and the selection

and promotion process is more ‘neutral’

and objective. However, of course, many

women presently are at the top of IP Firms

in many jurisdictions.

IP Associations

often take a

similar attitude to

public sectors.

Within AIPPI, for instance, Art.1.5 of the

Statute states that the Association “shall

not discriminate, especially concerning

religion, race, national origin or gender.”

The above is an obvious principle

considering its International vocation and

to implement it the Nominating Committee

and the Bureau are always very careful to

suggest for any election members with

different geographical and professional

backgrounds as well as gender diversity.

The implementation of this diversity

principle has allowed AIPPI (over the last

few years) to substantially increase the

involvement of women in all the Committees

as well as, for the first time after more than

a century, to have at an international level a

female Reporter General, Secretary General

and President. The same principles apply

to the National and Regional Groups, that

are the backbone of AIPPI, and the numbers

of female delegates and presidents of

Groups increases every year. Also, other

“sister” Associations have been, and are

still going, through a similar process of

renovation and modernisation. It is not a

completed process as yet and AIPPI, like

other IP Associations, support networking,

mingling and exchanging experiences and

opinions among its female members.

Many women are also

IP owners in their

own right or because

of their position

within Companies.

Unfortunately, I am not aware of any study

nor statistics on this specific area of IP.

Perhaps someone knows better or would

think of conducting studies?

Even then the vast majority of IP owners are

companies and consequently any statistic

will not have a definite significance

Recently we received

some interesting,

good news

concerning inventors’

gender, from a

survey conducted by

WIPO among PCT

applications updated

to 2018.

It shows that last year, 33% of all filed

PCT applications mentioned at least one

woman among inventors and that 17%

had woman/women as inventors. These

numbers are certainly not good enough

but show that the trend of women being

patent inventors is continuously increasing

over the last monitored years (2000-2018).

Women only inventors increased by 54,5%

in the previous two decades, and invention

with a woman among inventors increased

by 65%.

The other good news is that the increasing

rate seems to be accelerating.

It is interesting to remark that, not

surprisingly, in the field of Pharma, Biotech

and Biology, Food Chemistry and Organic

Fine Chemistry, the majority of inventions

have at least one woman among mentioned

inventors.

It is very appropriate in this connection

to mention that in June 2019, in Vienna,

EPO honoured the winners of the

Inventor Award 2019. For the first time, an

inventor won in two categories: Lifetime

Achievement and Popular Prize and the

winner was Margarita Salas Falgueras

for her inventions on DNA amplification

for genomics. A considerable achievement,

indeed!

Unfortunately, we do not have any data

on creators of trademarks/logos or design,

though I am quite sure that the creativity

of women is very present, strong and

influential in those sectors. In my personal

opinion, women always have a better taste

and the finest touch on aesthetical works

and activities.

To conclude these few lines, I wish to share

with you a personal dream and hope.

Despite any reasonable likelihood, I like to

hope that exclusive rights granted to cooks

who invented new recipes - according to

the so-called Sybaris Patent, from the Greek

colony in Southern Italy, dating to the VII

Century BC - were occasionally granted to

female cooks too.

The hope is that

younger women

in IP, but not only,

could witness a

better tomorrow

that – resounding

Kahlil Gibran – ‘We

cannot visit, not

even in our dreams.’

We need to ask - are we driving important

potential innovators and innovations out

of business? Are we losing or delaying

innovations because half the population

doesn’t see the Innovation Economy as

welcoming or a realistic setting for their

talents? How do we entice them to stay?

Consider career growth – promotions, pay

equity, bonuses, and new job opportunities.

Add in a dose of business growth and

success. Ponder funding a startup. How about

attracting investment in an existing business?

Have you looked lately at board seats? C-level

executives. Market leaders. Acknowledged

experts. Thought leadership. Even mentions

in the media and social media? Alternatively,

as we have been calling them, the 6 “C’s” –

Cash, Career, Customers, Credit, Credibility,

and Community. These are just some of the

places and opportunities where women are

left behind or left out. Starting at the top:

– Deloitte looked at nearly 7,000 companies

in 60 countries. In 2017 women held 15

percent of all board seats globally, up from

12 percent of board seats just two years

prior.

The Importance of

Women in

Innovation

Bobbie Carlton, Founder, Innovation Women

www.innovationwomen.com

Gender equity discussions and initiatives in recent years may

feel trendy, and momentum may seem like it is on our side,

but we still must face sobering statistics when it comes to

women in business, women in tech and women in innovation.

– According to Fortune, women held 15.7

percent of board seats at Fortune 500

companies 15 years ago. Today, women hold

25.5 percent of those seats.

The number of women running Fortune

500 companies is at a record high; there are

33 female CEOs among the Fortune 500 (with

presumably one CEO per business) in 2019,

up from 24 in 2018. This is just a little over

6 percent. However, female CEOs tend to

leave quicker than their male counterparts,

so we could see these numbers drop quicker

than we’d like. Women stay for less than 4

years, where the average male CEO stays for

5 years.

Some women leave these positions, or

the positions that could succeed the top

positions, to start their own companies.

They often cite stalled careers, pay

inequities, and a lack of meaningful work

(a big issue for women who work or want to

work on the forefront of innovation). Worst

case, they point to unsafe, abusive, or just

plain uncomfortable work environments.

If you only look at funding, the numbers for

female entrepreneurs are just as or more so

dismal:

– According to data from Pitchbook and All

Raise, in 2018, 482 female-led U.S. companies

raised $2.88 billion, or 2.2 percent of all

venture money invested. The number of

deals by female founders is growing, but the

percentage of the overall amount remains

stagnant due to the increase in so-called

mega-deals. One mega-deal example, Juul

($12.8B), represented $10B more than all the

female founders in the U.S. combined.

So, forget startups, because high growth

companies often need outside investment in

order to scale. Let’s look at small businesses.

– A 2016 Amex OPEN report revealed there

were 11.3 million women-owned businesses

in the U.S., and those businesses generated

$1.6 trillion in revenues.

The same report showed that women

start small businesses at a rate five times

the national average, or about 1,000 new

women-owned businesses every day.

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– Women apply for fewer and smaller small

business loans, but when they do receive

loans, it’s at a higher annual percentage rate

(the actual yearly cost of funds over the term

of a loan.)

– Women-owned businesses account for

only 4 percent of the U.S’ business revenue,

and women entrepreneurs employ fewer

workers - about 8 percent of all workers.

Are women focusing on small businesses

that don’t need outside investment because

they know their chances of receiving funding

are so low? Almost two-thirds of women selffund

their businesses or bootstrap. Are they

hamstrung by a lack of working capital, or are

they taking other paths to success? Seventyone

percent of women business owners said

their business was profitable according to

Guidant Financial and LendingClub’s 2019

Small Business Trends report.

Outside financing can make the difference

when it comes to the survival of your startup

or small company. Twenty percent of small

businesses fail in the first year, and half fail

before five years – why pile on the challenges

when you might be able to focus your energies

on starting and growing a business that

doesn’t need funding or investment?

More and more data are surfacing that points

to the existence of diverse teams as a way to

speed success, to solve problems faster, and to

produce fresh innovation. (Note that diversity

is not just gender-oriented but involves race,

economic strata, sexual-orientation, and

more.) Two heads are better than one when

it comes to innovation. Why? Moreover, why

women in particular?

When we talk about innovation, we’re often

talking about new products and processes.

When conceiving and designing these, it’s

always helpful to test theories and prototypes

on your target market. In addition to products

designed specifically for women, are we ready

to write off the opinions of half the potential

market? Making sure women are represented

on your team helps you design with them in

mind. Having women on your team speeds

the overall process.

Also, it’s not just the teams; it’s the team

leaders. Have you ever wanted to offer up a

new idea or concept and rejected the thought

yourself before you shared it with others?

Maybe you didn’t share your idea because

you were fearful of rejection, scarred by

repeated and persistent rejection? According

to Sylvia Ann Hewlett, Melinda Marshall and

Laura Sherbin, writing in the 2013 article “How

Diversity Can Drive Innovation” in the Harvard

Business Review, “Without diverse leadership,

women are 20 percent less likely than straight

white men to win endorsement for their ideas;

people of colour are 24 percent less likely;

LGBTs are 21 percent less likely.”

Head spinning yet?

The odds are indeed stacked against us. Or

are they? Perhaps it is time to throw aside the

scary negative data and focus on results:

– According to data from First Round

Venture Capital’s 10-year Project, female

founders outperform their male peers by

63 percent in terms of value created for

investors.

The Small Business Association concluded

in 2017 that venture firms that invested in

Women-Led Businesses (WLB) saw an

improvement in their fund’s performance.

– According to David Rock and Heidi

Grant in an article in the Harvard Business

Review, various studies point to companies

with more women being more likely to

introduce radical innovations, and “cultural

diversity is also a boon to innovativeness.”

If results are better for female founders and

diverse teams, why are we still so far behind

and so far away from gender-parity? The World

Economic Forum estimated in 2018 that at the

current rate of progress toward equity in pay,

it will take 202 years to reach parity. (Progress

– in 2017, the estimate was 217 years. However,

this was a significant jump from the previous

year – in 2016, the estimate was “only” 170

years.)

How do we move beyond the scary data and

the challenges represented by the numbers?

1) Start by examining your biases – both

conscious and unconscious. When we say

entrepreneur, who do you see? When we say,

scientist or engineer? Lawyer? Doctor? Nurse?

(Biases cut both ways.) What do they look like

in your mind’s eye? We all have biases formed

by our life experience. Know your bias. How do

you treat the team? Who is shouldering extra

office work and chores? Often, it’s the women.

2) Think about how you inform and influence

the unconscious bias of others. Who do we see

as thought leaders, experts, and influencers?

Often these are the speakers at conferences,

the expert sources in the media and the (very

visible) executives? Visibility drives business

opportunities and shows the next generation

what a leader looks like. Don’t turn down that

speaking opportunity. Don’t assume that only

the (more-likely male) CEO can speak for your

company. Stand up and be counted. Mentor.

Speak to classes. Show the flag. Also, when

you can’t take the stage, don’t automatically

pass the opportunity off to one of the usual

suspects – look to the women on the team,

even if this might be their first time on-stage.

(You may wish to consider speaker training or

specifically targeted practice opportunities.)

3) Consider family-friendly policies for

everyone. Flexible schedules. Working from

home. Paid leave for both maternity and

paternity. When men have flexibility, their

partners have options that could include

staying with your company where before

they might have dropped out or pulled back

from their careers. (This applies to same-sex

couples too.)

4) Expand your thinking. Don’t stop at gender

equity. Diversity and inclusion should be

our approach. While white women have

challenges in the workplace, the challenges

multiply when you bring women of color into

the fold. Pay equity gets farther and farther

away. So diversity is more than gender and

race – consider economic status, physical

abilities, national origin, political beliefs, and

sexual orientation too.

5) Have a goal. Track and measure your

progress toward your goal. If we want to

have an impact, we need to know where we

are starting (setting a benchmark) and what

success looks like.

6) Don’t just focus on the top layer. Think long

term and consider in-depth succession plans.

It’s tough to move up when there’s no one to

backfill what you do.

7) Don’t settle. Our goal should be 50/50 when

we look at gender equity. We should receive

equal pay. Women should sit on boards, lead

companies, and countries.

8) Consider legislation to move stalled efforts

forward. No Manel Zones. Board equity.

In 2018, California passed a bill requiring

companies to have a minimum of one on their

board of directors by the end of 2019. This is

modeled on the requirements from European

countries. At the end of July 2021, companies

with five-person boards will need two women

and boards with six or more will need three.

It’s important to us all that we tap the

entire population if we want to make real

and timely progress toward the biggest

challenges of our age – disease, climate

change, privacy, an aging population,

racial and gender inequality, ethical use of

artificial intelligence, income inequality,

hunger, clean water…the list goes on. Half

of us can’t sit on the sidelines and hope the

other half come up with the answers.

Bibliography:

https://www.weforum.org/projects/closing-the-gender-gapgender-parity-task-forces

https://www.sba.gov/content/venture-capital-social-capital-andfunding-women-led-businesses

https://hbr.org/2016/11/why-diverse-teams-are-smarter

https://s3.amazonaws.com/mentoring.redesign/s3fs-public/

SCORE-Megaphone-of-Main-Street-Women%E2%80%99s-

Entrepreneurship-Spring-2018_1.pdf

https://www.urban.org/research/publication/competitive-and-

special-competitive-opportunity-gap-analysis-7a-and-504-

programs/view/full_report

https://www.fundera.com/blog/2017-spotlight-womenentrepreneurs

https://fortune.com/2019/01/28/funding-female-founders-2018/

https://www.catalyst.org/research/women-on-corporate-boards/

https://www.cnbc.com/2019/05/16/the-number-of-womenrunning-fortune-500-companies-is-at-a-record-high.html

https://www.cnbc.com/2019/05/16/the-number-of-womenrunning-fortune-500-companies-is-at-a-record-high.html

http://10years.firstround.com/

https://www.guidantfinancial.com/small-business-trends/

women-in-business/

https://www.forbes.com/sites/allbusiness/2019/05/04/womenentrepreneurs-self-fund-new-business/#7751e732256e

I P L A W F I R M

PROFILES

&

ARTICLES

Sponsored by

08

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GHANA

Name: Sarah Norkor Anku

Africa

Law firm name:

Anku.Anku At-Law

Country: Ghana

Position: Senior Partner &

Intellectual Property Consultant

Website: www.ankuatlaw.com

Sponsored by

Sarah Norkor Anku is an astute legal

practitioner, intellectual property expert,

Lecturer and Public Speaker with decades

of experience covering Intellectual

Property (IP), in particular, Patents,

Trademarks, Industrial Designs, and IP

Assets Management. She is currently the

Senior Partner and Intellectual property

Consultant at one of the leading law firms

in Ghana, Anku.Anku At-Law.

Born in Accra, she spent her formative years

in Ghana. She holds an LLM in Alternative

Dispute Resolution (ADR) from the University

of Ghana, and a Master’s Degree in Intellectual

Property from Africa University, Zimbabwe, and

MSc. Food Chain Management from Imperial

College of Science, Technology, and Medicine,

University of London.

She is the first President of Intellectual Property

Network - Ghana (an IP Think Tank and

Advocacy group) and has represented Ghana at

different fora on matters relating to Intellectual

Property Rights. She was the first Vice-

Chairperson for the 18th and 19th Sessions of

the Standing Committee on the Law of Patents

of the World Intellectual Property Organisation

(WIPO).

Sarah has served on numerous committees

of the African Regional Intellectual Property

Organization (ARIPO) including the Working

Group on the Improvement of ARIPO Protocols

Relating to Industrial Property, Staff Affairs

Committee, Administrative Council and

Technical Committee on Industrial Property.

Sarah Norkor Anku began her working life

as a Research Assistant and National service

person at Water Research Institute of CSIR in

Ghana and subsequently with the (then) Food

and Drugs Board as a Regulatory Officer. After

being called to the Ghana Bar, she progressed

to Lawfields Consulting as an associate, and

then to the Registrar General’s Department

as an Assistant Registrar General and a State

Attorney. She also worked with the Danish

Technological Institute as a Key Expert and IP

Consultant on the ACP-EU-TBT Programme in

the United Republic of Tanzania.

Sarah was recognised for her contribution to

the field of IP and organisations at the just

ended Litigation & IPR Gorilla conference.

The event which served as a platform for

professionals in the field to chart the course for

IP practice saw Anku.Anku At-Law, where Sarah

is a senior partner, being awarded as one of the

Top 50 Legal/IP companies globally.

Under the leadership of Sarah, the Intellectual

Property Network – Ghana, in collaboration

with the Registrar-General’s Department,

organised the maiden National Intellectual

Property Forum, and two subsequent

successful Forums. She also led a team,

comprising some selected members of staff to

establish a procedural framework for the grant

of Utility Model Certificates in Ghana, which

led to the grant of Ghana’s first Utility Model

Certificate.

Sarah has contributed significantly to the

upgrade of the workflow of the Patent

Application Process at the Ghana Industrial

Property office, developing a manual for Patent

Administration in Ghana, and training support

staff to facilitate Patent Administration.

Sarah is passionate about using her expertise

to support businesses to grow through the

effective management of their Intellectual

Property. She is a leading voice on IP in Africa

and currently leading a campaign to raise

public awareness on IP practice and its role in

the economic development of countries. She

blogs regularly on the subject via her social

media handles and also on

www.ankuatlaw.com.

10 11


Being Intellectual Property Rights,

Trademarks are negative rights, as

against positive rights created by other

property rights. Therefore, where a

party to a Trademark dispute is found

not to have a right, that party cannot

prevent others from freely using the

Trademark.

EXCLUSIVE RIGHTS OF

TRADEMARKS

Trademarks are generally defined as marks

which distinguish the goods and services of

one enterprise from the other. They are assets

of value to businesses and can further be

exploited through licences. Businesses invest

significant resources in their Trademarks and

take steps to protect such Trademarks from

being infringed by competitors. Trademark

protection, like any other Intellectual

Property Right, is territorial in nature; thus,

protection in one country does not guarantee

protection in another. In this regard, it is

not surprising that businesses aware of the

value of their intellectual property develop

strategies to manage their Trademarks.

Strategic management of Trademarks include

strategies for protection, exploitation, and

enforcement of their rights.

The rights acquired by a Trademark owner

confer the right to exclude others from using

the mark on the same or similar goods and

services without the consent of the rights

owner. Despite the exclusive rights conferred

on a Trademarks owner, it does not obtain

a monopoly. As aptly stated in a plethora of

decided cases, “[I]intellectual Property Rights

are not monopolies.”

Trademark rights may be obtained through

registration or the common law right of

use. Where there is a conflict in ownership

of a Trademark between parties, municipal

laws provide the answer. Some jurisdictions

apply the first to file system as against the

GHANA

TRADEMARKS

EXCLUSIVITY:

THE HAMPTA CASE 1

As discussed by Sarah Norkor Anku, Senior Partner at

Anku.Anku At-Law - www.ankuatlaw.com

Businesses thrive on strong brands and invest significantly

in creating and sustaining brand leadership. A brandmark

is a creation of the intellect of an individual or a group of

individuals for the business. Such marks ought to be recognised

and protected, oftentimes as Trademarks. Intellectual property

rights encourage creativity by protecting owners of intellectual

property from copying and in the case of trademarks, from

Trademarks squatters, among others.

first to use common law rights. The first to

file system confers the right to the mark to

the first applicant who files an application

with the relevant statutory body. On the

other hand, the first to use system confers the

right to the first party to use the mark. Most

jurisdictions follow the first to file system with

its incidental challenges such as the menace

of Trademarks squatters.

THE HAMPTA & SONS CASE

The Ghanaian case of Hampta & Sons vrs Afua

Konadu & Anor, currently on appeal, reveals

the challenges of the first to file system as

against the first to use, and the misapplication

of certain principles of Trademarks law.

Municipal laws and common law confer the

negative rights of excluding others from using

the registered Trademark, As against positive

rights created by other property rights. In

the case of Campomar Sociedad, Limitada v.

Nike International Ltd, the Court cited Buckley

LJ in Lyle and Kinahan Ltd, where Buckley LJ,

“…pointed out that the only right conferred by

registration was a right to prevent others from

using the trademark as a mark for their goods.”

Trademarks Act, 2004 (Act 664), as amended,

governs Trademarks in Ghana. The Act confers

on a Trademark owner the right to prevent

others from using the Trademark without

authorisation of the registered owner. This is

particularised in Section 9 of the Act. Section

9 (2) is to the effect that it is only a registered

owner of a Trademark who has a right to

institute court action against any person

who infringes the registered Trademark. In

Aremu v. Lilaram Thawards , it was held that

“A person is only entitled to have absolute and

exclusive right to the use of a trademark if a

certification of registration in respect of the

trademark has been issued to him. In this case,

since no certificate had been issued in respect of

the trademark, the plaintiff’s action against the

defendants was not maintainable.”

BRIEF FACTS OF THE CASE

Both the Plaintiff, HAMPTA, and the 1st

Defendant, Konadu, trade in spices at

Kumasi, the second-largest city in Ghana.

While the HAMPTA trades in spices under

the unregistered Trademark MINAZEN, the

Konadu trades in spices under the Trademark

REMIE. In July 2018, HAMPTA, decided to

register its mark MINAZEN at the Trademarks

Office, 2nd Defendant, only to realize

that Konadu had applied to the Office to

register the mark in her name. Based on the

application for registration, Konadu solicited

the help of the Police to harass the HAMPTA

officials. All efforts to restrain her from these

acts of unfair competition failed. HAMPTA,

therefore, resorted to the High Court of

Ghana for redress. While the substantive

matter was pending, Konadu filed for an

interlocutory injunction against HAMPTA.

Subsequently, the trial judge injuncted both

parties from using the mark MINAZEN even

though Konadu had stated in her processes

that she does not trade in spices with the

mark MINAZEN. The judge stated in his

interlocutory ruling dated 26th October 2017,

on page 11, as follows:

“I do not intend to go into the merits of the

conflicting claims of the parties, the vexed

question of who owns the exclusive right to

the MINAZEN trademark will be determined

after a full trial. What is apparent is that

none of the parties has an exclusive right

to the use of the MINAZEN trademark, as

the applications of both parties are yet to

be determined by the Registrar General’s

Department. Indeed, the rights of parties

could only be determined after parties have

led evidence in support of their case, and all

the pieces of evidence have been evaluated.

It will, therefore, be prejudicial to conclude

that a party, particularly the applicant, has

a right to which ought to be protected…

In conclusion, the judge held on page 12

of his ruling that, “Both the applicant and

respondent are, however, restrained

forthwith from using the MINAZEN

trademark to package their products and

subsequently marketing, distributing and

selling the same…”

ANALYSIS AND

CHALLENGES

Enforcement of Trademarks hinges on the

municipal laws of each State. In Mattel Inc v.

3894207 Canada Inc 2006 SCC 22 [Canada],

the Supreme Court of Canada cautioned, in

the case of the enforcement of a registered

Trademark, that “[f]airness, of course, requires

consideration of the interest of the public and

other merchants and the benefits of open

competition as well as the interest of the

trademark owner in protecting its investment in

the mark. Care must be taken not to create a zone

of exclusivity and protection that overshoots

the purpose of trademark law. The purpose of a

trademark is to create and symbolize linkages”.

The Protection Against Unfair Competition

Act of Ghana, 2000 (Act 598) ensures that

intellectual property rights are not abused to

the extent of creating monopolies.

In addressing matters of trade, one cannot

lose sight of issues relating to competition as

the propensity of some players of the market

to apply unfair practices to compete unfairly.

It is for this reason, among others that the law

on Protection Against Unfair Competition

seeks to regulate fair practices in trade,

including Intellectual Property Rights.

In the case of HAMPTA & Sons, did the judge

err in law by injuncting both parties from

using the mark “MINAZEN”? Did he overshoot

the purpose of Trademarks law? Was he fair to

the merchant who had acquired a reputation

in the mark through use even though not

registered? Was his decision in the interest of

promoting trade?

As stated by Oliver Wendell Holmes Jr.:

The prophecies of what the courts will do

in fact, and nothing more pretentious, are

what I mean by the law”… the law lies in the

bosom of the judge.

Konadu was the first to file the mark

“MINAZEN,” even though she does not use

the mark, while HAMPTA is the first to use the

mark and the later (in time) to apply to the

Trademarks Office for registration.

Konadu had emphatically stated that she

does not trade in the mark “MINAZEN.”

Therefore, it surmises that an injunction on

both parties was an injunction against HAMTA

only, which was busily trading in products

bearing the mark while overlooking the

adverse effect on the value of the brand. One

would have expected that the judge would

have considered section 9(2) of Act 664,

which is to the effect that only a registered

owner of a Trademark can initiate an action

in infringement and refused the application

of Konadu. Yet, he based his decision on a

mere application for registration, despite

citing the Aremu case supra. Again one would

have expected the Court to have frowned

on such acts of unfair competition, where a

competitor squats on another’s Trademarks

just because the user of the mark had not

registered it.

In this case, Konadu had no right in law to

initiate an injunction application against

HAMPTA to prevent it from using a mark that

it had traded in for many years, particularly,

where the judge had found that both parties

had applied for the registration of the mark

‘MINAZEN,’ but none had been issued a

certificate of registration. Surprisingly, despite

his findings, the judge concluded without

any legal basis, that both parties should be

injuncted from using the mark even though

none of the parties had the right to prevent

the other from using the mark, as provided in

section 9(1) of the Trademarks Act, 2003 (Act

664), as amended, and to institute a court

action against the other for using the mark in

the first place, as provided in section 9(2)(a)

of the Act and as decided in the Aremu case

supra.

CONCLUSION

The rights conferred on a Trademarks owner

is settled; however, the interpretation of the

term “Exclusive Rights,” has been misapplied

in some cases. There are a plethora of cases

that expatiate the meaning of the term as

negative rights, that is, a right to prevent

others from using a registered Trademark

as against positive rights of use. To avoid

occasional misapplication of some of the basic

principles of Intellectual Property Rights, it is

highly recommended that businesses take

steps to develop IPR management strategies

that include seeking appropriate legal

protection in markets of interest.

1 HAMPTA & SONS VRS AFUA KONADU (TRADING UNDER THE NAME & STYLE AS REMIE FOODS VENTURES) & THE REGISTRAR-GENERAL (Suit No. P/OCC 02/2017)

1 See Kirki AG v. Ritvik Holdings Inc 2005 SCC 65 [Canada]; DRISTAN Trademark supra; Campomar Sociedad, Limitada v. Nike International Ltd [2000] HCA 12 [Australia]

2 (see Glaxo Group Ltd v. Dowelhurst Ltd [2000] EWHC Ch 134 [UK]; DRISTA Trademark [1986] RPC 161 (SC) [India]

2

(1964) GLR 253-256

12 13


CAMEROON

Name: Mary Concilia Anchang

Law Firm name:

Onambele Anchang & Associates

Country: Cameroon

Position: Managing Partner

Website: www.oaalaw.cm

Mary Concilia Anchang is married and a

mother of two wonderful children. Called

to the Cameroon Bar in 1993, she offers

a vibrant multicultural, international,

bilingual, and bijural law practice

experience. Managing partner at Onambele

Anchang & Associates (OAALAW) she has

demonstrated consistency and dedication

in 26 years of advocacy.

A full-service corporate law firm, OAALAW

serves a broad range of businesses from

various industry sectors. OAALAW offers

loyalty, diligence, compliance, and optimum

satisfaction. One of Cameroon’s most

respected female lawyers, Mary is one of the

most sought after contemporary lawyers in

Cameroon and the Central African region.

She is passionate, vibrant, and very engaging.

Her peers often revere her resolve to address

challenging matters. Her brilliance and a keen

eye for detail have earned her great recognition

from her clients.

In 2016 OAALAW won the “AI AFRICAN

“AWARDS of Excellence.

Mary is a pioneer African IP lawyer, accredited

with the African organisation of Intellectual

& Industrial property (OAPI) since 1994. Her

IP practice spreads into 17 countries, within

French-speaking Africa.

In 1998, Mary was appointed to advise the

Cameroonian Association of ‘Inventor’s

and Innovators on ‘’HEPASOR,” a cure for

hepatitis, Mary founded “The Foundation

for the Promotion of Innovation /Inventions

and Artistic Designs” (FPI) to promote local

research and the transfer of technology. FPI

and OAPI Inventions/Inventors participated

at the International Exhibition Fair (INPEX)

with Dr. Nakammatz, the inventor of Viagra in

1999 at The BBC Tomorrow’s WORLD London

Exhibition Fair. FPI received an award and Mr.

John Trevor the inventor of the “Touch lamp”

visited FPI. Furthermore, FPI and OAALAW

accompanied the invention of VANHIVAX, a

therapeutic vaccine for HIV/AIDS.

In 2006, Mary was appointed as arbitrator and

court member of the International Court of

Arbitration, at The International Chamber of

Trade & Commerce (ICC) in Paris. She became

the first Pioneer African Female appointed to

this office since its creation from 2006-2010.

A founding member of the Cameroon National

Committee of The International Chamber of

Trade & Commerce (ICC) she presided the IP

and Arbitration commission from 2004-2014

and was a member of the same in Paris until

2014.

In her finest hour, in 2015 coupled with her

legal practice she became The Founding

Chair of “The AFRICAN CHAMBER OF TRADE

& COMMERCE” (ACC). During this initiative,

Mary pledges to bring her experience and

knowledge into a project that she is passionate

about. “Institutional Advocacy for ‘Africa’s

Socio-Economic Development.”

She is convinced of the need to promote IP

asset ownership in Africa for improved wealthcreating

entrepreneurial activities. She believes

validating African inventions and innovations

derived from R&D and appropriation of

the rich, diverse, mutating, and fascinating

cultural heritage of Africans is mandatory to

conquering new markets.

In 2018 ACC organised the 1st International

Forum on the Production and Transformation

of Cotton, Textile & Accessories (FICOTA 2018)

with the 2nd Edition in 2020. The Cotton,

Textile, Accessories, and Fashion sector in Africa

are a vision ACC works to optimise for wealth

creation and job opportunities.

(www.africanchamber-abo.org)

In 2018, Mary was recognised amongst 100

of the finest professional women in a book

titled “WOMEN PIONEERS IN DISPUTE

RESOLUTION” by Arbitral Women.

Mary is also an active member of INTA,

ARBITRALWOMEN, AMOAPI, FPI, etc.

When Mary isn’t working, she enjoys travelling,

music, dance, sports, and supporting charities

in any way she can.

14

15


IP FUNDING;

A KEY TO ENTREPREUNEURIAL DEVELOPMENT

THROUGH IP ASSET OWNERSHIP IN AFRICA

It is pertinent to note that Africa’s

development requires a substantial financial

boost.

However, African markets and economies

cannot develop if Africans are not owners

of their intelligence in talents, skills, and

resources.

Also, that, the effort required to make

this happen does not only depend on the

understanding or appreciating of the fact

of Africa’s richness in potential, as is often

proclaimed.

The burden lies with the continent, actually

seeing that this translates into Africans being

equally positioned to take proper advantage

of their riches and resources for their wellness.

Wealth creation and job opportunities cannot

be imagined nor imposed. The continent

needs to sort, organise, and see that what is

happening is real.

Written by Mary Concilia Anchang, Onambele,

Anchang & Associates - www.oaalaw.cm

R&D in Africa

In the past three decades of law, business

and comparative IP practice with little

compliance mechanism observed, I have

observed isolated researchers in Africa and

also universities with recognised research

units, make free publicity of their discoveries

and know-how without consideration for

the ownership nor money value of their

intelligence worth.

A considerable amount of training and

research efforts through workshops and

seminars have been going on in Africa in the

past decades; even so, with minimal impact

on the ownership aptitude of Africans - of

their intelligence and virtual IP assets.

At these seminars, resolutions are reached;

however, implementation falls short. Right

after these efforts, the institutions and

concerned actors continue as if they have no

obligation to undertake strategies; to either

implement the resolutions or enforce policies

to fund research for improved performance in

the field.

CAMEROON

Having travelled vastly through several parts of the world, I try to use

my professional experiences to influence competitive business habits

and policies, as the need occurs without complex nor bias. My goal is to

contribute towards building a highly attractive business environment for

the economic empowerment of African businesses and institutions and also

push the much-needed gender agenda for African women. The world needs

to be safe. However, extremes in the rich and poverty gaps between the

tenants of the earth do not advance this debate.

In Africa, given the particularities and

multicultural background of the people, the

need to own virtual assets seems strange or

a utopia. It has not been a tradition of the

people.

This leaves the ugly impression that IP asset

ownership is a luxury. This may be interpreted

as selflessness, hospitality, charity, or

negligence. The reason may also sometimes

be explained or excused by ignorance.

However, such arguments can no longer

prevail in the 21st century. The world order

has changed. Value is in money and capital or

assets ownership.

Nevertheless, Africa need not be

discouraged. With the increasing growth of

African markets, and the continent acclaimed

as one of the world’s “most attractive and

competitive” as well as an exponential

consumer population. By 2060 it obliges

innovative ways of doing business and brings

great hope to the continent of abundant

sunshine and rain.

There is a need to adopt

appropriate strategies and

policies to fund African

research. The time is ripe

and Now.

Less than 20 percent of the technology used

in Africa is not African owned. Worse still, it is

not free for transfer. It is expensive.

If Africans do not own IP assets, they may

never make headway in capital and industry.

Most Sub Saharan IP offices and markets

depend on a significant IP importation market

in products and services to survive in business.

This weakens the economy. Whereas, as

IP asset owners, African businesses could

witness increased exportation to influence

market standards and statistics in brands for

goods and services.

While it is evident that old money belongs

to asset owners of yesterday, more virtual

assets are yet to be owned today. If targeted

by Africans, the scope of intelligence is

immeasurable. The establishment may be

accused of capitalism. However, the only way

Africa can make an entry into new markets is

by owning their intelligence. This provides

added value and competitiveness in the

marketplace. African businesses must be

seen to own more and more titles in designs

and models, trademarks, patents, labels,

geographical indications, etc.

When this happens, African’s can make an

exciting inroad in the IP marketplace.

As such, an opportunity for African IP experts

to sort and export IP services abroad.

Funding IP in Africa will open a floodgate

of business ventures in a multitude of

entrepreneurial activities for jobs and

welfare creation in Africa through

sustainable value chains.

Funding for

R&D

Policymakers must oblige

the budgets and efforts to

finance R&D.This requires the

involvement of specialists and

experts. Funding will facilitate the

creation of prototypes needed

to validate innovative ideas and

discoveries for new investment

opportunities and potential

markets.

While it is evident that the

establishment only recognises

conventional articles and concepts for use,

the urge for new concepts and markets

remains unequivocal. However, the burden to

change the order of things rests irrevocably

on efforts to be made by the aspirant.

(Africans)

Once an unconventional idea meets

the recognised norms as internationally

approved, the value becomes evident and

open to the world market rules for pricing

within the supply and demand rules.

This involves a lengthy and very costly

process prior.

The facts hitherto argue in favour of the

unequivocal need to adequately fund Africa

research. The paradigms and impact on

Africa’s development potential will shift

upwards if Africans own at least 30 percent

of their intelligence in IP assets. By doing

so, they should apply adapted solutions to

African problems.

R&D in Africa must be accompanied as is in

other parts of the world. Africans should

be able to protect their findings to become

owners of their intelligence.

Private institutions like The AFRICAN

CHAMBER OF Trade &Commerce (ACC)

through her advocacy platforms, seeks to

channel Africa’s trade and industry through a

shared federated vision.

The target is to build adapted infrastructures

to guarantee Africa’s economic development

with an emphasis on IP asset ownership by

Africans.

The Role of IP for Africa’s Socio-economic

development is critical. While vehicles

like the ACC work with experts, inventors,

businesses, and stakeholders to secure

“sector-oriented inclusive business models

to grow African markets, the need to fund

research remains paramount.

Competitiveness in value chains can only

be experimented through entrepreneurial,

innovative start-up initiatives for Africa’s

economic growth. As asset owners, African

markets will be more attractive with the

potential and capacity to conquer new

markets. Thus, owners and consumers of

services and the tools they sell will result

in African businesses and infrastructures

witnessing substantial growth percentages.

There is, therefore, urgent need to redirect

our policies and resources towards funding

research and development in Africa.

With Africans owning solutions for African

problems, the socio-economic impact will be

friendly and attractive with an even playing

ground for Africans and their development

partners.

In all fairness, better welfare resides in

the ability to offer competitive goods

and services produced locally for local

consumption.

As signatories to several bilateral regional

and international binding trade tools (The

recently ratified Continental Free Trade

Agreement CFTA, AGOA, OMC, EPA, PCT,

Madrid Agreement and Protocol, Paris

Convention, ADPIC, The Bangui Laws, etc.)

Africa may not take full advantage of these

laws in the absence of IP asset ownership in

exchange.

If we consider that “ECONOMIC RIGHTS “are

fundamental Human rights, Africa’s industrial

development can no longer wait. This calls

for institutional advocacy with skilled experts

to address these concerns.

In conclusion

Knowledge ownership is something Africans

have shied away from, for centuries.

However, IP constitutes an integral part

of African assets in virtual capital worth.

Acquisitions should be considerably funded

for African economies to witness prosperity

from their cultural heritage, with Africans as

owners of their talents in quality and value.

Finally, the need to concert and

forge reliable strategies for

successful partnership initiatives

to fund IP asset ownership in

Africa is unequivocal. This should

influence the pace and standards

of business. The time is NOW not

TOMORROW!

16 17


NIGERIA CHINA

OAA Law

Name: Amaka Okafor

ONAMBELE-ANCHANG & ASSOCIATES LAW FIRM

Law firm name:

Stillwaters Law Firm

Country: Nigeria

18

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

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

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

bijural firm practicing civil and common law in all jurisdictions of

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

legal services through innovative and resilient research coupled with hard

work for clients across the globe.

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

corporate law firm. OAALAW represents and assists clients in matters that

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

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

joint venture, IPP, BOT in infrastructure, etc

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

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

pioneer IP agents and lawyers in the entire OAPI region.

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

international court of arbitration in Paris, a position she held from 2006-

2010.

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

(ACC) created in 2015.

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

efficiency, diligence, and competitiveness for total satisfaction.

Contact:

Mary Concilia Anchang

Partner Onambele, Anchang & Associates

Opposite the United States Embassy

Rosa Park Avenue- Golf Ntougou

BP. 6262 Yaounde Cameroon

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

oaalawpartners2@gmail.com

info@oaalaw.cm

www.oaalaw.cm

Amaka Okafor has an LLM in

International Trade Law from the

University of Leeds United Kingdom

and is an experienced Intellectual

property lawyer located in Lagos

Nigeria. She started her practice in

2014 with Stillwaters law firm; one

of the leading intellectual property

firms in Nigeria and has risen to the

position of senior associate since

then. In 2014, Amaka also founded

Safari Renewals. Safari Renewals

is a leading Intellectual Property

maintenance and management

company also in Nigeria.

The company was primarily established

to provide high quality and affordable

Intellectual Property renewal and recordal

services in all African countries (including

OAPI and ARIPO). Safari’s vision is to become

the global market-leading company in

the maintenance and management of

IP in Africa by delivering state-of-the-art

services and laying down an international

standard for quality reliability and value in

the industry.

Amaka has successfully built a team that

is comprised of qualified and dedicated IP

practitioners as well as diverse staff from

various trademarks and patents Registries

throughout Africa, with extensive expertise

in dealing with Intellectual Property

transactions and management, sharing

a common goal of meeting their client’s

needs in the best way possible.

She has 5 years of working experience

in intellectual property protection and

enforcement in Africa and has a keen

interest in branding and trademark

protection in the digital age. During her

practice, she participated in a wide array of

IP matters. From searches to registrations,

renewals, annuities, assignments, agency,

distributorship, franchising, licensing,

transfer of technology, copyright

depository, piracy, infringement, passingoff,

border enforcement measures, customs

related assistance, product registration,

and dispute resolution matters. She has

filed over 1000 trademark applications and

successfully registered over 500 in various

African countries in the course of her

practice. In addition, she has handled over

100 oppositions and refusal hearings.

Amaka has also written several articles

on diverse issues including but not

limited to intellectual property, branding,

counterfeiting, and bilateral investment

treaties.

She is also the assistant secretary at the

IP Committee- Nigerian Bar Association-

Section on Business Law (NBA-SBL) and

played in a vital role in the inauguration

of the IP Committee in several tertiary

institutions in Nigeria.

Position: Associate

Website: www.stillwaterslaw.com

19


The importance of

NIGERIA CHINA

Intellectual Property

to Small and Medium-Sized Enterprises.

As discussed by Ms. Amaka Okafor Associate, Stillwaters Law Firm

www.stillwaterslaw.com

With the advancement of the internet, technology, social media and

entrepreneurship becoming mainstream there has been a significant

shift from school leavers seeking to work with traditional organisations

(e.g. banks, schools etc.) or pursuing traditional careers such as law,

medicine and accounting to setting up businesses/small and mediumsized

enterprises (SMEs) and acquiring skill sets centered around

information technology, innovation, media, digital marketing to mention

but a few; otherwise known as the 21st century skills.

20

Most SMEs, regardless of what product or services

they provide, continuously use, and create IP

daily. Every SME today, either has a trading name,

an invention, valuable confidential business

information, creative, original designs or may

have significantly improved on a product or

service. For example, László József Bíró was a

Hungarian-Argentine inventor who patented the

first commercially successful modern ballpoint

pen. However, after him, there have been several

improvements on this invention by other persons,

which have likewise been patented. In addition to

the pen being a patentable invention, the name

on the pen is another form of protectable IP called

trademarks.

In this current era of creativity, invention, and

innovation, there is no better time to stress the

importance of Intellectual Property in SMEs.

This article briefly addresses the meaning of

Intellectual Property, the rights conferrable on the

owner of an IP (i.e., Intellectual Property Rights

-IPRs) and their relevance to SMEs.

Intellectual Property

in a nutshell

Every business enterprise broadly has two

categories of assets;

• Physical Assets: such as machinery, buildings

and large warehouses

• Intangible Assets (Intellectual Property):

which includes the brand, trademarks, designs

inventions and other intangible possessions of

the business

Previously, the value of the physical assets of a

business to a large extent, determined the value

of the business and were the significant sources

of revenue for a business. However, recently,

businesses have begun substituting these bulky

physical assets with intangible assets, and as such,

IP is fast becoming more valuable than physical

assets in many SMEs. For instance, it can be

observed that more companies are now relying

more on innovative software and programs as a

major source of income. This trend can also be

observed in sectors that still require these physical

assets (such as the manufacturing sector) as a lot

of SMEs in these sectors rely more on creativity

rather than the size of their machinery to remain

relevant in highly competitive markets. Intangible

assets are indeed taking center stage in this new

dispensation and SMEs need to be sensitised on

its importance to adapt and benefit from this

development adequately.

Intellectual property rights

For SMEs to adequately benefit from their IP, one

vital step is protecting these intangible assets

by acquiring exclusive and enforceable legal

rights in them. These rights are referred to as

INTELLECTUAL PROPERTY RIGHTS (IPRs) and are

usually acquired by registering or depositing (in

cases of copyright) these intangible assets with the

relevant agencies.

IPRs are broadly classified into:

• Patents; protect innovative products

(inventions) and processes

• Copyright; protects literary works

• Industrial Design; protects a creative design

(including textile designs)

• Trademarks and Designs; protect distinctive

signs/ brand

The relevance of acquiring

IP rights

The most important benefit of protecting IP

or acquiring IPRs is the exclusivity it grants the

Holder. Trademarks, for example, prevent third

parties from using and/or registering identical

and/or confusingly similar marks.

IPRs afford the Holder the liberty to create

a brand and niche of itself, without being

susceptible to brand dilution by unhealthy

competitors.

• Due to the exclusivity IPRs confer, the Holder

enjoys a higher return on investments. For

example, the Holder could sell or franchise its

IPR, which may not have been possible if its IP

was not protected.

• For SMEs dealing with inventions and seeking

to attract investors, having a patent portfolio,

demonstrates a high level of expertise,

and could be very persuasive in attracting

investment.

• A well-structured and protected IP portfolio

can be used as collateral for obtaining loans.

• One of the major challenges faced by most

SMEs is marketing. A successful marketing

strategy shows a link between the product and

services rendered with the SME. Intellectual

Property is a vital factor in creating this link. It

essentially differentiates, promotes diversifies

and markets the products/services of the IPR

holder.

As crucial as IP may seem, it is still constantly

disregarded by most SMEs and its relevance

and potential for revenue generation grossly

underestimated.

To Conclude

Intellectual Property is, in many ways, one of

the most relevant parts of any business today.

Trademarks, for example, are essentially the face of

any business involved in the production of goods.

It enables consumers to distinguish the Holder’s

goods from those of its competitors. It serves

as a guarantee to consumers of the quality to

expect when purchasing an item. For example, the

brand ‘NEW LOOK’ is associated with affordability,

whereas “LOUIS VUITTON” signifies premium

quality. Any customer buying a pair of shoes from

either of these brands is guaranteed of what to

expect.

IP, if properly developed and managed increases

the competitiveness of any SME and could also

create secondary revenue in terms of licensing,

franchising or sale which may significantly raise its

profit margins. IP also enhances the SMEs value in

the eye of potential investors and could be used as

collateral to obtain loans.

However, like physical assets, IP must be legally

acquired, monitored, and managed carefully before

SMEs can reap its full benefits. Before this can be

achieved, entrepreneurs must first acknowledge

the importance and relevance of IP and begin to

appreciate it as an investment and valuable asset.

Once an IP has been legally protected and there

are demands for the product protected by the IP, its

value substantially skyrockets and, in most cases,

becomes the most valuable asset of the business.

21


CHINA

Name: Brenda Zhao

Asia

Law firm name:

Corner Stone & Partners

Country: China

Position: Senior Partner

Website: www.cornerstoneip.com.cn

Brenda Zhao is a senior partner of

Corner Stone & Partners with almost

20 years’ experience in the IP field.

Brenda is very proficient in Chinese

and foreign IP laws,

regulations and policies and has

sound knowledge and expertise on

trademark matters.

In the past, almost 20 years, Brenda

has been engaged in IP protection,

and also practicing the philosophy”

A Foundation to Your Success,”

addressing clients’ needs, and

providing clients with high quality,

efficient and thoughtful law services.

She is renowned for her exceptional

professional skills and down to earth,

meticulous work attitude.

As an excellent trademark attorney, Brenda

is committed to providing clients with

overarching IP protection and diversified

dispute resolution methods to find the best

cost-effective solutions. With her great legal

expertise and remarkable communication

skills, she has provided effective legal advice

to many clients; especially handling several

significant IP protection cases for many

world-famous companies. Her service has

achieved excellent results in the protection

of clients’ rights and interest and earns her

positive recognition.

With many years of experience, Brenda not

only provides the necessary support for

clients’ trademark affairs in China but also

does well in handling high-end complicated

cases and providing professional legal

advice. She is an expert in trademark

opposition and review, copyright and

domain name protection, IP infringement

and litigation, and other IP dispute

resolution.

Brenda has also written and published

many professional articles in relevant

national and international magazines. She

has lectured at national and international

IP forums and moderated IP round tables

in the fields of trademarks. Brenda is

passionate about sharing her experience in

the IP field and contributing to IP protection

and maintenance of a fair competition

environment.

She was awarded the Elite Women award

in 2018, in the campaign against IPR

Infringement and Counterfeit in China.

Currently, Brenda serves as the chair of

the Asia-Pacific Subcommittee of the ADR

and Mediation committee of INTA and as

a member of the Anti-Unfair Competition

Team of Marques.

Sponsored by

22

23


elevance degree, protection should extend to the goods in Class 11 in this Disputed case. mark: No. 10316891 Corner Trademark Stone “

"of Hong Kong Taitaile

It is a common & Partners

view in the IP field that cross-class protection should be provided for

3. The Court

3. The

Ruling

Court Ruling

Electrical Appliance Cross-Class Co., Ltd. ("HK Taitaile"), Protection a well-known used in relation trademark of Well-known to that the enjoys goods considerable in Class Marks popularity. However, in general,

3. The Court Ruling

CHINA

11: lamps, refrigerators, and air conditioning seasonings. apparatus, the The protection relevant electric is limited heating decisions to goods apparatus, or services faucets bearing considerable relevance to the

3. The Court Ruling

3. The Court Ruling

on

Should It is a common

administrative

Accord view in

penalty

with the IP

produced

Their field that cross-class

by

Popularity protection should be provided for

well-known mark. In the event of marginal relevance, protection will generally not

for pipes (Am.), bath heaters, etc.

The court held the following: The court held the following:

Nestle a well-known also indicate trademark that Nestle that enjoys had considerable put popularity. However, in general,

The court held the following:

be given despite trademark --- similarity by Brenda to balance public Zhao interests. of

The court held the following:

in a great the protection deal of is effort limited to protect goods or their services bearing considerable relevance to the

1. The disputed mark constitutes

太 太 乐 trademark on the goods of

Protection of well-known

The court held the following:

Corner Stone

Cited marks: the mark “ well-known & Partners

” in series mark. We take

with In the the view

numbers event that of since

of marginal well-known

8640043, relevance, marks have

150618, protection huge or will small generally popularity not or

reproduction and imitation of the

1. The disputed mark constitutes reproduction and imitation of the seasonings cited marks. prior to distinctiveness, the date of for application

those with huge popularity,

trademarks

protection according

should

to their

accord

1. The

1. The disputed

disputed cited mark marks. constitutes

constitutes Comprising reproduction

reproduction the and 843154 Chinese and of

and Societe imitation

imitation des Produits of be given the

for registration of Nestle despite

the

cited of cited the S.A. trademark marks. (“Nestle”), similarity

disputed marks.

used in to balance relation public to the interests.

popularity should be mark. provided, with the scope with of protection their most possibly popularity. extended or The

Comprising the Chinese characters “" 金 品 太 太 Z” 乐 ," the disputed

It is

mark

a common

exactly

view contains

the IP field that cross-class protection should be provided for

1. The disputed mark constitutes Comprising

Comprising reproduction the Chinese

the mark Chinese and characters

exactly

imitation characters contains

of " 金 the 品

" the 金 太

品 cited distinctive 太 乐

太 ," marks. the disputed mark exactly liberally contains interpreted, to effectively fight

(iv) Although the goods of lamps, scope the acts of of unfair protection competition like

乐 should

a ," ," well-known the disputed trademark mark exactly contains

We take that the 1 view enjoys that considerable since well-known popularity. marks However, have huge in general, or small popularity or

the distinctive characters " 太 太 乐 “ in the cited ” marks. Also, the combination refrigerators, of air the

"passing-off."

Comprising the Chinese characters the conditioning apparatus, be extended, and crossclass

protection be provided

the

distinctive " 金 distinctive 品 太 太 characters 乐 ," characters the disputed " 太 " 太 乐

太 mark "


in " the exactly in the

cited cited contains

marks.

the marks. protection

Also,

Also, the

is

combination of the

distinctiveness, limited the combination to goods for services those of the

with bearing huge considerable popularity, relevance protection to the according to their

Also, the combination of the characters bath heaters, etc. in Class 11 in relation

characters “ 太 太 乐 ” and “ 金 品 ” the disputed mark does not bear any special

the distinctive characters " 太 太 characters 乐 characters " in the “ 太 cited “ 太 “ 乐

太 marks. ”

乐 and

” and Also, “ 金 品

“ 金 the ”

品 in combination ” the the

disputed disputed of mark well-known

the does mark.

to which not popularity In bear the event

the any should 1. of Facts

disputed special marginal be provided, of the Case relevance,

mark is with used the protection scope do of protection will generally most not possibly extended or

mark does not bear any special

if need be to maintain the

meaning which is different mark from does that not of bear the any characters special meaning “ 太 太 be 乐 given ” in despite the not constitute cited trademark

meaning which different from that of the characters “ 太 乐 ”

liberally

in the

marks.

cited

interpreted, similarity goods to

marks.

to balance effectively to the public goods interests. fight the acts of unfair competition like

characters “ 太 太 乐 ” and “ 金 品 ” meaning the disputed which which is is mark different does

is different from not

from that bear

that of any the special

of characters the “ of 太 太 seasonings 乐 ” in the in Disputed cited Class marks. 30 mark: in No. respect 10316891 of Trademark distinctiveness “

"of Hong Kong Taitaile of wellknown

used in relation trademarks to the goods in Class as much

"passing-off."

Therefore, the disputed mark constitutes reproduction and imitation of the cited

meaning which is different from Therefore,

Therefore, that of the characters the

disputed disputed mark “ 太 mark 太 constitutes 乐 ” constitutes in the cited reproduction

reproduction marks. and which imitation the cited of the Electrical marks cited Appliance are used, Co., Ltd. the ("HK Taitaile"),

We take the and view imitation that since well-known of the cited

marks have huge or small popularity or

marks.

Therefore, the disputed mark constitutes goods for both sides 11: lamps, are refrigerators, all articles air conditioning of apparatus,

marks.

as possible

electric heating apparatus,

and

faucets

avoid their

Cross-Class Protection Therefore, of the disputed mark constitutes marks.

reproduction reproduction and and imitation of of the the cited cited distinctiveness, for

daily 1. use Facts those

whose of the with

for Case huge popularity, protection according to their

audience pipes (Am.), bath are heaters, ordinary etc.

Well-known Marks

dilution, thereby effectively

marks.

popularity should consumers. be provided, As Nestle’s with the scope chicken of protection extract most possibly extended or

marks.

and seasonings bearing the mark “ 太 太 乐 ” fighting the actions of unfair

liberally interpreted, to effectively fight the acts of unfair competition like

2. Prior to

2.

the

Prior

date

to

of

the

application

date 2. Prior of application to for the registration date for of registration application of the disputed

of for the disputed

mark, Nestle’s cited

have mark, Disputed

been on Nestle’s mark: Cited No. marks:

sale for cited 10316891 the mark Trademark “ ” in “ series with the numbers "of Hong of 8640043, Kong 150618, Taitaile

2. Prior to the date of application for registration a long time and competition like committing

"passing-off." of the disputed mark, Nestle’s and 843154

cited

of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the

marks had taken a significant registration market of the share disputed in terms mark, of Nestle’s the goods of they chicken Electrical have extract been Appliance publicised Co., Ltd. and ("HK sold Taitaile"), all used

marks had taken dishonesty in relation to the goods and in Class “passingoff.”

electric heating apparatus, faucets

2. Prior to the date of application marks for registration had taken cited

a significant of marks a the significant disputed had taken

market

market mark, a significant

share Nestle’s share in

market

terms

in cited

of the goods of chicken extract

Should Accord with Their Popularity

terms of the over goods the country, of chicken the extract consumer 11: lamps, refrigerators, air conditioning public, apparatus, 1

(seasoning) and seasonings share and achieved terms of the considerable goods of chicken popularity on

(seasoning) and seasonings and achieved considerable 1. Facts popularity of when the the Case market, catching on the

so

ction of Well-known Marks

marks had taken a significant market sight market, of the so disputed mark

(seasoning) share in and

extract terms seasonings of the goods

(seasoning)

and and

achieved of chicken

seasonings

considerable extract

and

popularity for pipes on (Am.), the bath market, heaters, so

etc.

much so that they are no less than well-known trademarks. Therefore, on the the cited goods marks of lamps, refrigerators, etc.,

Cross-Class Protection of Well-known Marks

much

much so that

so that

they achieved they are no

are considerable less

no less

than than well-known popularity well-known trademarks. on the trademarks. Therefore,

will Therefore, inevitably

the cited

the associate cited marks

d with Their Popularity by Brenda Zhao, Senior Partner of Corner Stone & Partners

(seasoning) and seasonings and achieved considerable popularity on the market, so

marks

it with Nestle’s

should be provided with market, extended so much protection so that they according are no less

should be provided with extended protection according

to Disputed their mark:

to

popularity, well-known No. 10316891

their popularity,

with trademark Trademark

with

太 太 “ 乐 to a "of Hong Kong Taitaile

Should Accord with www.cornerstoneip.com.cn

Their Popularity

much so that they are no less than should well-known be provided than trademarks. well-known with Therefore, extended trademarks. the protection cited Therefore, marks according considerable to Cited their marks: popularity, extent, the mark “

with with the ” in series with the numbers of 8640043, 150618,

--- by Brenda Zhao of

Electrical Appliance Co., Ltd. ("HK Taitaile"), used result in that relation to the goods in Class

--- by Brenda Zhao of

protection

protection

scope extended

scope the extended

from cited Class

from marks 30

Class

to should Class

30

11.

to be Class provided

protection scope extended from Class 30 to Class 11.

and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the

should be provided with extended protection according to their popularity, with 11.

the close connection between the cited

s

11: lamps, refrigerators, air conditioning apparatus, electric heating apparatus, faucets

It is a common view in the IP field that cross-class protection

with extended protection according to

There are four reasons as below:

marks and Nestle’s goods of chicken

Corner Stone & Partners

protection scope extended from There Class There Cross-Class are 30 four

are to Class four reasons their reasons 11. popularity, Protection as below:

as below:

with of protection Well-known scope for pipes Marks (Am.), bath heaters, etc.

should be provided for a well-known trademark that enjoys

extract and seasonings is damaged and 1

(i) Nestle’s

(i) Nestle’s

chicken extract

chicken

extended products

extract

from

products

Class under 30 the to

under

Class TOTOLE 11.

the TOTOLE

brand have the brand distinctiveness received

have received

the

There are four reasons as below:

of Nestle’s the well-known

that cross-class protection should be provided for considerable popularity. However, in general, the protection

(i) Nestle’s Should chicken Accord extract with products Their under Popularity the TOTOLE brand have received the

It is a common view in the IP field that cross-class protection should be provided for

trademark “ 太 太 乐 ” is tarnished.

ys considerable popularity. However, in general, is limited to goods or services bearing considerable titles of China

titles of

Name

China There Brand

Name are Product

Brand four and reasons Product

Shanghai

and as below: Shanghai

Name Brand

Name

from

Brand

governmental

(i) Nestle’s

relevance

Cited marks: the mark

chicken extract products titles of under China the Name TOTOLE Brand brand Product have --- and received by Shanghai Brenda the Name Zhao Brand of from “

from governmental ” in series with the numbers of 8640043, 150618,

a well-known trademark that enjoys considerable popularity. However, in general,

governmental

r services bearing considerable relevance to the to the well-known mark. In the event of marginal relevance, agencies,

agencies,

trade associations,

trade (i) associations, Nestle’s or civil chicken or

societies. extract civil societies. products The affiliated

and

under The affiliated

enterprise,

843154 of Societe

enterprise,

TOTOLE

des Produits Nestle S.A. (“Nestle”), used in relation to the

the protection is limited to goods or services bearing considerable relevance to the

titles of China Name Brand Product agencies, and Shanghai trade associations, Name Brand or from civil governmental

societies. The affiliated enterprise, TOTOLE

Corner Stone & Partners

TOTOLE

marginal relevance, protection will generally not protection will generally not be given despite trademark

the TOTOLE brand have received the

well-known mark. In the event of marginal relevance, protection will generally not

company,

company,

has received

has received

the titles of China Top 100 Food Industry Enterprises and

agencies, trade associations, or civil company, societies. has titles received The of China the affiliated the

titles Name titles of enterprise, Brand China

of China Product Top TOTOLE Top 100 and 100 Food

Food Industry

Industry Enterprises

Enterprises and 1

ty to balance public interests.

similarity to balance public interests.

and

be given despite trademark similarity to balance public interests.

China Top 10 Seasoning Shanghai Manufacturers. Name Brand Relevant from governmental

China It is a common Top 10 view Seasoning the IP field Manufacturers. that cross-class Relevant protection audit reports should audit

and be reports provided other documents

company, has received the titles China of China Top Top 10 In conclusion.

and for other documents

agencies, Seasoning 100 Food

trade Manufacturers. Industry Enterprises

associations, Relevant and

or civil audit reports and other documents

We take the view that since well-known The Trademark Review and Adjudication cited marks is liable to mislead the public may prove a

may

that well-known

prove

Nestle’s trademark

that societies. sales

Nestle’s

volume that enjoys

The sales affiliated is considerable

volume

large enterprise, and large

the popularity. chicken However,

and TOTOLE the

extract in general,

chicken The

and

extract registration

seasonings

known marks

marks

have huge or small popularity or

China Top 10 Seasoning Manufacturers. and seasonings of the disputed mark

We take have the view huge that or since small well-known popularity marks have Board huge or (“TRAB”) small popularity held or that although the and harm Nestle’s interests, contravening may prove Relevant that Nestle’s audit reports sales volume and other is is large documents

the protection is limited and the chicken extract and seasonings

under the TOTOLE brand company,

to goods

are enjoying has

or

received

services

considerable the

bearing

titles

considerable

of popularity China

relevance to the

infringes the trade Nestle’s and right to its well-known

uge popularity, or distinctiveness, distinctiveness, protection

for

according

those for those with

to their

huge with popularity, huge protection marks of two according parties to are their similar, the goods of Article 13.3 of PRC Trademark Law,

may prove that Nestle’s sales under volume well-known under the is the large TOTOLE mark. TOTOLE Top and In the 100 the brand

event Food chicken brand of

are

marginal Industry are extract enjoying relevance, enjoying Enterprises and considerable seasonings

protection considerable and will

popularity

generally

in the trade and

trademark, popularity not and in the trade application and

for its

the scope

popularity,

of protection most

protection

possibly extended

according

or

to their seasonings in Class 30 in relation to which the which provides that “Where a mark is a

popularity should be provided, with the scope of protection most possibly extended or

among the

among

relevant

the

public

relevant China nationwide.

public Top 10 nationwide. Seasoning Manufacturers.

popularity should be provided, with the cited marks are used differ markedly from the reproduction, imitation,

registration contravenes Article 13.3 of PRC

under the or TOTOLE translation of brand a are

be

enjoying

given despite

among the considerable

trademark similarity

relevant Relevant

public popularity

to balance

audit

nationwide.

in

public

the

interests.

trade and

ly fight the acts of unfair competition like

reports and other

scope liberally of protection interpreted, most to effectively possibly extended fight the acts goods of unfair of lamps competition and refrigerators like in relation third party’s well-known trademark which

Trademark Law.

among the relevant public nationwide. documents may prove that Nestle’s sales

or "passing-off."

liberally interpreted, to effectively fight the to which the disputed mark is used, and no has been registered in China and where the

We take the view volume that since is well-known large and the marks chicken have huge extract or small popularity or

acts of unfair competition like “passing-off.” confusion is liable to be created among the goods are non-identical or dissimilar, which

distinctiveness, for and those seasonings with huge under popularity, the TOTOLE protection brand according to their

relevant public, thus deciding the disputed may mislead the public and cause injury

of the Case

1. Facts of the Case

are enjoying considerable popularity in

4. Significance

mark be maintained.

to the interests of the registrant of the wellknown

trademark, no registration shall be liberally interpreted, to effectively fight the acts of unfair competition Opinions like of the Supreme People’s Court

popularity should be provided, with the scope of protection most possibly extended or

the trade and among the relevant public

Disputed mark: No. 10316891 Trademark

Dissatisfied with the TRAB’s decision, Nestle

nationwide.

granted and the use of the mark shall be

about Some Issues Concerning Intellectual

ademark “ Disputed mark: “of "of Hong No. 10316891 Kong Taitaile Trademark Electrical “

"of Hong Kong Taitaile

"passing-off."

instituted proceedings against TRAB before prohibited”.

Property Trial Service in Current Economic

Appliance Co., Ltd. (“HK Taitaile”), used in

(ii) Nestle’s chicken extract and seasonings

Taitaile"), used Electrical in relation Appliance to the Co., goods Ltd. in ("HK Class Taitaile"), used in Beijing relation to Intellectual the goods in Class Property Court. The

Situation specifies the following: “In deciding

relation to the goods in Class 11: lamps,

under the TOTOLE brand have been

1. Facts of the Case

goods similarity and trademark similarity,

ning apparatus,

11:

electric

lamps, refrigerators,

heating apparatus,

air conditioning

faucets

apparatus, electric court heating made apparatus, the No. faucets (2016) BJ73AF4969 2. Protection of well-known trademarks

refrigerators, air conditioning apparatus,

widely publicised and heavily promoted

Administrative Ruling on February 25, should not only serve to avoid confusion

the distinctiveness and popularity of the

electric for pipes heating (Am.), bath apparatus, heaters, etc. faucets for pipes

via the media like CCTV, provincial TVs,

2019, in favor of Nestle and the disputed over origin but extend to avoidance

registered trademark to be protected

(Am.), bath heaters, etc.

and newspapers.

mark, was invalidated.

of dilution. It would be insufficient to Disputed mark: No. 10316891 Trademark “

"of Hong Kong should Taitaile be taken into account. The more

determine the scope of protection of

Cited Electrical Appliance (iii) Co., In Ltd. their ("HK Taitaile"), relevant used decisions, in relation the to the goods distinctive in Class and the more popular a

Cited marks: the mark “

” in series with

the numbers of 8640043, 150618,

in series with the numbers of 8640043, 150618, 2. Cause of Action

prior well-known trademarks on the

the numbers of 8640043, 150618, and 843154

Trademark Office under the State registered trademark is, the more extended

and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the

11: lamps, refrigerators, air conditioning apparatus, electric heating apparatus, faucets

ts Nestle S.A. of Societe (“Nestle”), des used Produits in relation Nestle to S.A. the

grounds of “confusion over the origin of

(“Nestle”), Nestle asserted the following:

Administration for Industry and and stronger protection will be provided for

goods” only. In view of the cited marks’ for pipes (Am.), bath heaters, etc.

used in relation to the goods in Class 30:

Commerce and Beijing No. 1 Intermediate it. This helps to stimulate the winners on the

1

chicken extract (seasoning), seasonings, etc. 1. Nestle’s cited marks constituted wellknown

trademarks. The disputed mark is degree, protection should extend to the

great popularity and the goods’ relevance

People’s Court have recognised Nestle’s market, improve the market environment,

1

mark as a well-known trademark and stop improper acts of free-riding and

Nestle applied to invalidate HK Taitaile’s mark.

Cited marks: the mark “ ” in series with the numbers of 8640043, 150618,

a reproduction and imitation of Nestle’s goods in Class 11 in this case.

in terms of the goods of chicken extract imitation.”

well-known marks. Its coexistence with the

and 843154 of Societe des Produits Nestle S.A. (“Nestle”), used in relation to the

24 1

25


SRI LANKA

Women in

Intellectual Property Law

In the early days…

In the early days, the terms copyright, patent,

and intellectual property were terms that were

only limited to masculine space. Creative and

literary works were assumed to be authored by

men. Women were only seen as an inspiration for

the cultural creation of men. Women who seek

to create either scientific or artistic work were

required to do so on masculine terms. They were

seen as inferior to men simply because of their

gender because what is protected by intellectual

property law is the outgrowth of a gendered

system, intellectual property law itself became

premised upon assumptions of creative work

favouring the male creator.

For example, knitting, quilting, and other

needlework arts are creative industries which

are dominated by women. They were industries

where women primarily illustrated their creativity.

However, unlike men, women are more pursued

by caring and sharing their knowledge rather

than being profit-oriented. By contrast, the

central purpose of intellectual property law is the

incentive logic. That is to promote the production

of new works or new ideas by guaranteeing the

maker the exclusive right to remuneration for the

things that he or she produces. Therefore, knitting

and quilting developed as collective enterprises

outside copyright law. However, nowadays, these

industries have been commodified, and with

the ease of copying, it has become essential for

women to seek copyright protection for their

patterns.

“Literature” was established as a male domain.

However, as literacy among women grew,

women took up the pen to write. Copyright law

is structured to identify an individual author and

provide certain rights to that author. It mainly

helps them to monopolise revenues from the

As discussed by Anomi I Wanigasekera, Julius & Creasy

www.juliusandcreasy.com

Intellectual property law is a neutral area of law. Comparatively, areas of

law such as family law and employment law are gender-sensitive from its

formulation. For example, ‘family law’ is built on gender-based themes such as

separation, family violence, parenting disputes, etc. Laws have been molded

to address women’s disadvantage. In the case of intellectual property law,

values about gender, race, and class seep in only at the execution and not at

the formulation. On the other hand, intellectual property law is a fast-growing

practice area of law where the subject matter varies from very technical issues

to products of everyday life. Female attorneys who pursue careers in the field of

intellectual property law face many challenges across the globe.

books. Early feminists were more interested

in seeing their ideas spread than they were in

protecting their copyrights. However, in present

many female authors earn their living from the

system of copyright.

The history of invention seldom mentions

women’s inventive achievements. Industrial

women are almost non-existent. The general

perception was that invention was an

overwhelmingly masculine affair. During the

early days, even when women invented objects

(because women lacked property rights and due

to financial constraints), a patent was often taken

in the name of the father, brother, or husband.

Nowadays, women have become professional

inventors. For example, fields like biotechnology

have a large number of female researchers;

however, unlike men, women are less likely to

commercialise their inventions. In my personal

opinion, women by nature are soft negotiators.

They are indirect and person-oriented. Therefore,

they are less likely to market themselves and their

work to potential business partners.

To present times in IP Law…

The number of women who graduate from law

school has increased with time. However, only

a few prefer to practice as lawyers. Moreover,

among them, only a very few female attorneys

specialise in intellectual property law. Even

among them, fewer female attorneys specialise in

patent law practice compared to trademark law.

In the patent field, the existence of lesser women

can be explained by the fact that it is a highly

technical field.

Scientific and technical training is necessary

to specialise in this field, and fewer women

earn technical degrees. In many parts of the

world, women have limited access to the kind

of education that would allow them to pursue

careers in the technical field. However, trademark

law and copyright law are popular areas of law

among women where they outnumber men.

One of the reasons why many female attorneys

choose trademark law can be attributed to the

role they play when interacting with clients. It is

client-oriented. Often the attorney must guide

and counsel her client on the selection and best

use of the mark.

The Gender system has influenced who invents

and who creates creative work. The general

perception that men are the important inventors

remains. Educational, social, cultural, and

economic factors have dissuaded women from

pursuing inventive careers. Women are still

absent from many aspects of the intellectual

property law system, not only as inventors and

creators but also as patent attorneys.

Sri Lanka…

Compared to other countries in the world, the

position of Sri Lankan women is much better.

Sri Lanka was the first country in the world

to elect a female head of state. Also, a recent

article revealed that 64% of the professionals

in Sri Lanka are women. Companies in Sri Lanka

prefer female workers as their attitude towards

work is more positive, and they are ready to take

any role. All attorneys in Sri Lanka are eligible to

practice as trademark agents, and the majority

of the registered trademark attorneys are female

lawyers. Even the Director General, as well as the

Deputy Directors of National Intellectual Property

Office, are females at present.

Therefore, despite the position in other

countries, it appears that Sri Lankan

women have achieved equality with men

even in the arena of intellectual property

law, except in the field of technology.

26

27


INDIA

Name: Manisha Singh

Law firm name:

LexOrbis

Country: India

Position: Co-Founder & Partner

Website: www.lexorbis.com

Manisha Singh is Co-Founder and Partner

at LexOrbis, India’s premier Intellectual

Property Firm, providing end-to-end

IP services and solutions starting from

ideation to monetisation including,

procurement, protection, maintenance and

enforcement of all forms of IP rights and

assets and other legal services.

She has been advising and handling

dispute resolutions for a wide range

of clients including global technology,

pharmaceutical companies, public sector

enterprises, Government of India and

Department of Non-Banking Companies, to

name a few. She regularly represents clients

as their litigating counsel at the Supreme

Court of India and various High Courts and

has over 20 years of litigation experience

practicing at all forums including at the

Supreme Court of India, High Court, District

Courts and other Tribunals.

Manisha studied law from one of India’s

premier law schools, The Law Faculty of

Delhi University, after completing her

Master’s degree in Economics from Patna

University.

Manisha is ranked amongst the top and

leading lawyers in IP and dispute resolution

segments of Indian legal practice by leading

law journals and publications. She is known

as one of the prominent thought leaders

in these segments and liked for providing

proactive, out of the box, business-oriented

counseling, and representation.

She founded LexOrbis in 1997 with a set of

like-minded lawyers to bring an international

perspective to the Indian intellectual

property right laws, that were in the process

of being integrated with the International

IP systems post-signing by India of TRIPS

Agreement in 1995. She worked closely

with the policymakers, judiciary, and other

stakeholders to establish a robust and level

playing IP regime in India, and she continues

to work on critical and high-stake policyrelated

cases.

Her in-depth understanding and knowledge

of all the aspects of IPR is reflected in her

prolific academic and research-based writing

in renowned publications worldwide and

she has been routinely invited to author

articles and commentaries on contemporary

IP policies and issues by national and

international publications including

Managing IP, World Intellectual Property

Review, Indian Business Law Journal, IP

Frontline, Marques, Mondaq, Asialaw, etc.

Manisha is member of many significant IP

forums and professional bodies in India

and abroad, including the International

Trademark Association (INTA), International

Association for the Protection of Intellectual

Property (AIPPI), American Intellectual

Property Law Association (AIPLA),

Intellectual Property Owners Association

(IPO), Licensing Executives Society

International (LESI), Asian Patent Attorneys

Association (APAA), European Communities

Trade Mark Association (ECTA) and

Pharmaceuticals Trade Marks Group (PTMG).

Manisha has been widely recognised for her

work in the IP space by various national/

international associations.

Some of her latest accolades include her

recognition for Patent prosecution work

by the IAM Patent 1000, 2019; IP Strategist

by IAM 300, 2019; Managing Intellectual

Property, 2019, recognising as an IP Star;

IP Star Women of the Year, 2019 by Legal

Media Group; 2019 GIPC- Award for

Excellence for invaluable services in the field

of IP; Recognised amongst India’s Top 100

Lawyers, The A-List by India Business Law

Journal; Recognised as Leading Lawyer for

IP by Asialaw 2018; Managing Intellectual

Property, 2018, recognising as an IP Star for

Litigation and Strategy & Counselling.

28

29


GREECE CHINA

Name: Eva Yazitzoglu

Law firm name:

Dr. Helen G. Papaconstantinou and Partners

Europe

Country: Greece

Position: Senior Partner

Website: www.hplawform.com

Eva Yazitzoglou is a co-founder of

HP&P (Dr. Helen G. Papaconstantinou

and Partners). After many years’ of

having a successful career in a leading

position with the firm, Eva became a

managing partner in 2018. Holding

a law degree from the University of

Athens, she is an Attorney at Law and

a European Patent Attorney.

Eva has more than 40 years of recognised

professional experience in trademark, patent

and copyright law, including consultation,

management, and maintenance of

international trademark and patent

portfolios and has been advising major

international clients in all industry sectors.

She has also worked closely with clients

from various sectors and has successfully

addressed various trademark and patent

infringement cases involving individuals

and companies throughout Greece, either

by reaching out-of-court agreements or by

proceeding to litigation.

She is a member of the Athens Bar

Association as of 1974 and is admitted to

practice before the Supreme Court and the

Council of State. She is a Council Member of

EPI and an active member of several other

professional bodies (including the Athens

Bar since 1974), AIPPI and INTA. Moreover,

she makes significant contributions through

various associations and prestigious IP

resources.

Name: Miranda Theodoridou

Law firm name:

Dr. Helen G. Papaconstantinou and Partners

Country: Greece

Position: Partner

Website: www.hplawform.com

Sponsored by

Miranda Theodoridou, partner and

co-founder of HP&P (Dr. Helen G.

Papaconstantinou and Partners),

heads the Trademarks and the

Administrative Courts Department.

Holding a law degree from the

University of Athens and an MBA

from the University of Derby, Miranda

is an Attorney at law and a member

of the Athens Bar since 1980, and a

European Patent Attorney with over

35 years recognised experience in all

IP issues.

She specialises in the legal representation of

major multinational companies before the

higher instances of the Administrative Courts

and IP litigation while providing consultation

in all trademark, copyright, domain name,

and GDPR matters. She is admitted to

practice before the Supreme Court and the

Council of State. She is a council member of

ECTA and a member of EPI, AIPPI, and INTA.

Miranda makes significant contributions

through various associations and prestigious

IP resources. Recent contributions include:

Templates of Commercial Law – Templates

concerning Oppositions and Recourses

before the Administrative Trademark

Committee – Nomiki Bibliothiki - July 2019,

GREEK LAW DIGEST - The Official Guide to

Greek Law - Trademark - Nomiki Bibliothiki -

February 2019, WTR Yearbook 2019/2020: A

global guide for practitioners - a supplement

to World Trademark Review - January 2019.

30 31

31


GREECE

GREECE

Maria Athanassiadou, partner and

co-founder of, HP&P (Dr. Helen G.

Papaconstantinou and Partners),

heads the patents and industrial

designs department. Maria holds

a law degree from the University

of Athens and a Masters’ degree in

Spanish studies from the University

of Barcelona. She is an attorney at law

and a member of the Athens Bar since

1996.

With more than 20 years’ experience in all

intellectual property fields, she focuses her

practice on IP litigation, prosecution, and

counselling, with a particular emphasis

on patents, utility models, supplementary

protection certificates, industrial designs,

Name: Maria Athanassiadou

Fotini Kardiopoulis, partner and

co-founder of HP&P (Dr. Helen G.

Papaconstantinou and Partners), heads

the anti-counterfeiting and antipiracy

department. She holds a law degree from

the University of Athens with first-class

honours and an LL.M. from the London

School of Economics and Political Science.

Fotini is a member of the Athens Bar since

1985 and has been admitted to practice

before the Supreme Court and the Council

of State. She has also been a lecturer for

10 years in the Police Academy.

Since 1998 Fotini has been dealing with a

broad range of IP matters with an emphasis

on trademarks, plant breeder’s rights, contract

drafting and reviewing and alternative dispute

resolution. She has extensive experience in

IP litigation, devising and implementing anticounterfeiting

programs, filing and administering

customs actions, monitoring and enforcing IP

rights online and advising on domain name

disputes, consulting on license & franchise

agreements and copyright issues. She has further

Law firm name:

Dr. Helen G. Papaconstantinou and Partners

Country: Greece

Position: Partner

Website: www.hplawform.com

Name: Fotini Kardiopoulis

and trademarks, advising major international

clients especially in the pharmaceutical

sector. She is admitted to practice before

the Supreme Court and the Council of State,

and she is an active member of the INTA and

PTMG.

She is a regular contributor to several

significant trademarks, designs and patent

publications. Recent contributions include:

3rd Edition Intellectual Property Country

Comparative Guide – The legal 500 - June

2019, WIPR Annual 2019 – GREECE – Business

Brief, Patents in Europe: Helping business

compete in the global economy 2019/2020,

Patents in Greece – Lexology GTDT - May

2019, General Court rules on genuine use of

figurative trademarks MEBLO – WTR Daily -

March 2019, Designs 2019 A Global Guide.

Law firm name:

Dr. Helen G. Papaconstantinou and Partners

Country: Greece

Position: Partner

Website: www.hplawform.com

conducted a significant number of seizures/raids,

including preparatory investigations concerning

various sectors, such as apparel, electric/electronic

goods, toys, watchmaking, and tobacco/cigarettes,

often involving, in addition to customs procedures,

civil and criminal action.

She is an active member of various associations,

including CIOPORA, MARQUES, and INTA. In

this context, she has given two presentations

as an invited speaker at the CIOPORA Academy

Workshop, which took place in Madrid on October

2008. She is one of the very few attorneys

specialising in plant varieties in Greece and the only

Greek lawyer being a member of CIOPORA.

Fotini regularly publishes articles in the fields of

her expertise. Recent contributions include the

GREEK LAW DIGEST - The Official Guide to Greek

Law - Trademark - Nomiki Bibliothiki - February

2019, WTR Yearbook 2019/2020: A global guide for

practitioners - a supplement to World Trademark

Review - January 2019, 3rd Edition Intellectual

Property Country Comparative Guide – The Legal

500 - June 2019 and WIPR Annual 2019 – GREECE –

Business Brief.

HP&P:

Women as lawyers

and leaders in IP in Greece

This is not the case with Dr. Helen G.

Papaconstantinou and Partners (HP&P). The

legal profession in Greece, particularly in

the upper echelons, was traditionally and

continues to be mostly male-dominated.

However as early back as in 1986, Dr. Helen

G. Papaconstantinou was one of the few

bright examples of women heading a

law office; leaving her individual mark in

the profession for more than 40 years, up

until her retirement at the end of 2018.

The tradition of the law office of Dr. P. D.

Theodorides – Dr. H. G. Papaconstantinou

(est. 1920) and the company Dr. Helen

G. Papaconstantinou, John Filias and

Associates now lives on through our law firm,

Dr. Helen G. Papaconstantinou and Partners,

which was established in 2015, with the

steering wheel of the Firm again entrusted to

women; namely to the capable hands of Eva

Yazitzoglou, Managing Partner and the other

three Partners Miranda Theodoridou, Maria

Athanassiadou and Fotini Kardiopoulis, who

have an in-depth experience in the IP field for

many years. Also, HP&P not only has women

in top positions, but it is also three-quarters

female.

The Firm is broadly recognised as leading in

the IP law sector in the country. HP & P enjoys

an international reputation for high-quality

expert services by providing sophisticated

legal and business solutions in the IP field and

aptly combines its international orientation

with a thorough knowledge of the Greek

legal and business environment.

What sets HP&P apart is its extensive

experience and expertise in the

As discussed by HP&P Lawyers

www.hplawfirm.com

Greece has established a strong legal and policy framework for ensuring

equal rights to both men and women in the country. However, evidence

shows that, in practice, discrimination seems to persist; Greece

currently has one of the lowest rates of women’ employment in the

European Union while the Greek financial crisis and austerity measures

have disproportionately affected women. Moreover, women are still

significantly under-represented in executive positions and top rank

positions in the legal profession.

entire spectrum of IP services and its

commitment to problem-solving and

achieving results. HP&P was the first law

firm of its kind to implement a quality

control system (ISO 9001/2015).

With respect to the people comprising the

Firm, HP&P is home to 11 fully qualified

lawyers with considerable experience in all

intellectual property matters over many years

of practice. Two HP&P attorneys are European

Patent Attorneys, while all the attorneys

of the Firm are members of the Athens Bar

Association. Most of them are admitted to

practice before the Supreme Court and the

Council of State. With the efficient assistance

of 22 experienced paralegals and supporting

staff, HP&P provides legal and administrative

services of excellent quality and closely

collaborates with 35 technical counsellors

whose expertise covers all technical fields.

The Firm serves its foreign clients in English,

French, German, Spanish, and Italian.

HP&P is registered in the Athens Bar

Association and is a member of the Greek

Association of Law Firms.

Moreover, the Firm has always been active in

promoting intellectual property matters in

Greece and internationally. All HP&P attorneys

are active members of various international

associations, such as EPI, ECTA, AIPPI, INTA,

PTMG, MARQUES, CIOPORA, ITMA, CIPA and

the UK Society of Legal Scholars.

The Firm’s expertise spans all aspects of IP

and related legal services (i.e., consultancy,

litigation work, and administrative support),

including, but not limited to trademark,

patent and design matters; copyright;

domain name and internet law; exploitation

of IP rights; anti-Piracy, anti-counterfeiting

and customs monitoring/border measures;

competition, advertising and consumer

protection law, and many more.

HP&P attorneys make significant

contributions to distinguished IP resources

as well as through various associations,

including the International Trademark

Association (INTA) and the European

Community Trade Mark Association (ECTA).

HP&P is consistently ranked among the top

IP law firms in Greece by international legal

directories and associations, indicatively

mentioning: Corporate INTL, Corporate

USA Today, IAM Patent 1000, IP STARS –

Trademarks and Patents, Legal 500, The

Trademark Lawyer, The Patent Lawyer, WIPR

Leaders, WTR 1000, and others and have

received many awards in the IP field.

Despite its top ranking, HP&P is

continuously striving to improve

the quality and reliability of its

services further and enhance its

actively inclusive working ethos that

encourages collaboration as the

main driving force behind effective

leadership and successful results. Our

vision is to keep on incorporating new

practice areas and opportunities so

that we can continue to adapt to the

growing and ever-changing needs of

our clients and the legal industry.

32 33


POLAND

Name: Izabella Dudek-Urbanowicz

Law firm name:

Patpol - European and Polish Patent

and Trademark Attorneys

Country: Poland

Position: Managing Director

Website: www.patpol.pl

North & Central America

Izabella Dudek-Urbanowicz is a

Polish and European Patent and

Trademark Attorney. She is a

respected practitioner in the field of

trademark law with a proven track

record of trademark prosecution and

contentious cases. She is a member of

INTA, Marques, PTMG, and ECTA.

Mrs. Izabella Dudek-Urbanowicz was elected

Managing Director of Patpol in 2016. She

leads the team of over 90 people, and her

key responsibilities include the development

of business strategies focusing on people

and innovation. Before her nomination,

Mrs. Dudek-Urbanowicz was the head of

the Trademark and Design Department and

proved herself to be an experienced patent

attorney and a capable team leader with

excellent managerial skills.

Mrs. Dudek-Urbanowicz has a legal

background as a Master of Laws from the

Faculty of Law and Administration at Warsaw

University.

Amongst the clients of Mrs. Dudek-

Urbanowicz, there are mainly

pharmaceutical and FMCG companies;

however, she also has vast experience

working with other industry sectors, as

far as trademark and design protection is

concerned. For Izabella, the best recognition

for her work are well-managed won clients’

cases and satisfied clients.

At work, what she appreciates most is daily

contact with people, both clients, and

colleagues. During her tenure, Patpol has

grown through a constant development

process, through new milestones in the

company lifecycle; such as establishing

Patpol Legal – a full-service law firm – in

late 2018 or introducing new employee

benefits packages, i.e., additional days off or

healthcare and sports packages.

In her own words: “Patpol is one of the

unique firms where the rotation is very low.

This company has its own energy, which

consequently attracts people who are not only

great specialists, passionate about their work

but also personalities with good spirit and

broad intellectual horizons and curiosity for the

world.”

Recently in 2019, Mrs. Dudek-Urbanowicz

was recognised as the recommended

professional in Poland according to

the World Intellectual Property Review

Leaders (WIPR Leaders) guide. The list of

professionals, WIPR Leaders, was selected

after a four-month nomination process,

during which opinions from 12,000 IP

specialists in the world were collected.

Outside work Mrs. Izabella likes spending

time with her daughters, reading fantasy

or detective books. Also, she is a big fan of

hiking excursions and collecting Japanese

dolls.

About the IP market

in Poland:

“I am pleased to note the positive trend

among Polish small, medium, and large

entrepreneurs regarding the demand for

protection of their industrial property

rights - not only trademarks but also their

inventions. There is a growing awareness

amongst businesses, research centres,

or NGOs about various possibilities of

financing innovations. Entrepreneurs

use these funds to make their inventions

– quite often revolutionary - recognised

worldwide.”

Sponsored by

34

35


A calming

influence U.S.A.

U.S.A.

Learn more at www.AdvitamIP.com

in a chaotic

Name: Michele S. Katz

Law firm name:

Advitam IP, LLC

Country: U.S.A.

Hackers. Counterfeiters. Squatters. When too much of daily professional life is filled

with the stress of IP portfolio management, many companies Position: and entrepreneurs Founding Partner turn

to Michele S. Katz.

Website: www.advitamip.com

Calm. Focused. Thorough. Michele provides a calming approach to managing IP

assets. With nearly two decades of experience, Michele conducts trademark searches,

prepares opinions, and monitors trademarks to confirm that her clients’ intellectual

property rights are used properly and effectively. She manages copyright registration

portfolios in addition to familiarizing U.S. Customs with client designs in an effort

to stop counterfeit goods at U.S. borders. In the area of patents, Michele litigates

complex patent litigation matters including such varied products as textiles, hard

disk drives, airbag covers and interface transfer technology. She also manages patent

portfolios to ensure U.S. and foreign patent protection for clients.

Michele Katz, the founder of the

intellectual property law firm Advitam

IP, LLC, has provided powerful expertise

in client counseling, strategic analysis,

licensing, prosecution and litigation in all

areas of intellectual property (IP) law for

almost 20 years. Her diverse skill set and

drive to deliver results applies equally

to obtaining trademark and copyright

registrations and issued patents, as it

does in obtaining favourable outcomes

in state and federal court and before the

Trademark Trial and Appeal Board (TTAB),

US Customs, and the US Court of Appeals

for the Federal Circuit. As a certified

mediator, Michele has also successfully

brought parties to creative solutions for

their disputes.

She is most passionate about giving back in

a meaningful and measurable way. Her firm,

in collaboration with her family, started a

scholarship fund in the name of her beloved

father, an icon in the IP field, and annually

funds a master’s scholarship in the innovate

sciences at The Hebrew University (Israel). In

the same vein, Michele created a mentorship

program that mentors law students and new

TRADEMARKS | PATENTS | COPYRIGHTS

lawyers all over the world via Skype in all

DOMAIN NAMES | LITIGATION | CUSTOMS

aspects of professional development and

goal attainment.

An advocate of education, Michele is also

on the speaking circuit. She has spoken on

high-level IP topics at global conferences,

such as at the Asian Patent Attorneys

Association’s Annual Meeting in Okinawa,

Japan. She has put much focus on education

to the business owner community as well.

Michele is a big believer that business

owners make better business decisions when

they understand the fundamentals of IP law.

Hence, she has frequently been asked to

speak to new business owners and cohorts

of the music, film, tech incubator, 2112,

Illinois Hispanic Chamber of Commerce-

1871’s LatinX Incubator, as well as the wellestablished

business owners of the National

Association of Women Business Owners.

Getting to them while they’re young is

critical. So since 2015, Michele has served as

the expert on IP law and entity formation

for the Young Entrepreneurs Academy

(YEA!); a transformative after school

program, brought to Chicago by NAWBO

Chicago while Michele was president of that

organisation. The program is geared for

12-17-year-old girls and teaches them how to

select, research, vet, develop, and market a

business.

Her client results have earned her recognition by Super Lawyers Magazine and Illinois

Leading Lawyers. In addition, she is a founding partner of Advitam IP, an

intellectual property law firm. She also is a past president of the National

Association of Women Business Owners (NAWBO), Chicago Chapter.

Bask in the calming influence of effective IP portfolio management.

Contact Michele today at MKatz@AdvitamIP.com or 312.332.7710

Learn more at www.AdvitamIP.com

icheleKatz_WIPW_ad_FN.indd 1

IP world.

As far as accolades go, Michele was

recognised by Super Lawyers Magazine

as an Illinois Rising Star in Intellectual

Property Litigation for 6 consecutive years

and awarded the Corporate Woman of

Achievement Award in 2005, 2006, 2008 and

2010 by NAWBO Chicago. In 2019, Michele

received a nomination to the IAM Strategy

300 – The World’s Leading IP Strategists.

The guide created by IAM Strategy identifies

the individuals who are leading the way

in the development and implementation

of strategies that maximise the value of

IP portfolios. Also, most recently, Michele

was selected as the only US attorney to

be featured in this inaugural issue of the

Women’s IP World annual magazine.

Michele has passions outside of the IP

world as well. She enjoys spending time

with family, including her three 8/14/19 children,

3:27 PM

travelling internationally, refining her foreign

language skills, getting her heart rate up

with outdoor activities such as hiking,

kayaking, rock climbing, rappelling and

ziplining, relaxing with wine and whiskey

tastings and watching movies. Every

summer, she spends a week volunteering

at La Semana, a week-long culture daycamp

for children in elementary through

high school, who were adopted from

Latin America, and their family members.

Fostering cultural understanding has always

been an integral part of Michele’s personal

life and Advitam IP’s business practice.

The Myth of

Work-Life Balance

MicheleKatz_WIPW_ad_FN.indd 1

Instead, we launched into a

twelve-minute dialogue about

work-life balance, an illusory trap

many women fall into – especially

in the male-dominated and very

demanding field of IP. Why is this?

Let’s begin by taking a good, long look at

ourselves. We are entrepreneurs and firm

partners. We are mothers, wives, sisters, and

daughters. We are litigators in the courtroom

and defenders of ideas. We are marathon

runners, readers, and philanthropists. We

are chauffeurs and ATMs. We are paralegals

and secretaries and second chairs looking to

ascend the corporate ladder.

We are many things to many people.

On any given day, we might find ourselves

standing in the center of a courtroom

and in the center of our kitchen – two very

different environments. During the radio

interview, the host asked if I identified as

a woman entrepreneur or as an attorney.

My answer: The woman aspect is front

and center. Gender identity is like cultural

identity. Both speak to who we are. Yes, I

am the founder of Advitam IP. Yes, I have

a PhD in family “logistics” spearheading

questions like “What’s for dinner?” “Have you

seen my keys?” “Will you help me with my

homework?” and “How do you work this?”

“Where are we going on vacation?”

So how do you have a career you love and

still have a life? First, banish the myth. Life

rarely mirrors the perfect balance symbolised

by the scales of justice. I liken our days to

triage with constantly shifting priorities. In

By Michele S. Katz, Founding partner, Advitam IP, LLC

www.advitamip.com

Three . . . Two. . . One. I breathed deep.

Suddenly, the “ON AIR” sign flicked on. My heart

pounded as we went live at WGN, a kingpin of

Chicago talk radio. Intellectual property (IP) was

our topic. We never got to that, though.

a given day, we’re picking up groceries and

filing papers in court. Balance, by definition,

is the state where two things have equal

importance. Tell that to my daughter on a

day she forgot her homework or to a client

staring at a lawsuit. Work-life balance is a

moving target.

I am testimony to that. As a mother of three

children 13 and under, I hope to raise them

as people who care deeply about the world.

That takes time. I am also passionate about

IP law (I’ve crossed four continents in the past

year for Advitam IP). I am happily married,

which means that our relationship requires

attention too.

All this keeps me busy, but my desire to

make this world a better place stretches

my bandwidth even more: I founded a

mentorship program at Advitam IP to help

new lawyers and law students find their

way. I served as president of the Chicago

Area Chapter of the National Association

of Women Business Owners (NAWBO). I

conduct media interviews and speaking

engagements about business matters and IP.

While I don’t have all the answers, I do have

some triage “secrets” that have turned the

work-life paradigm into a happy life. Here

they are:

Ask for help.

I do not have a problem asking for help. If

this is hard for you, start small. Know your

trusted circle and ask. I do litigation and

transactional work. If I’m called into court, I

have to have reinforcements.

TRADEMARKS | PATENTS | COPYR

DOMAIN NAMES | LITIGATION | CUS

Collaborate with those

who share your mission.

My business partner, Richard Gurak, is a longtime

supporter of NAWBO, among other

groups. We support each other’s ambitions.

Embrace imperfection.

Real beauty has flaws. As women, we are

hard on ourselves. Give yourself permission

to be less than perfect. That should be the

new perfect.

Surround yourself with

women who have achieved

what you want to achieve.

NAWBO surrounds me with like-minded,

successful women. Its diversity gives me a

global perspective.

Adopt an all-in philosophy.

If you’re going to do something, give it

everything you’ve got. However, if it doesn’t

go as planned, be flexible. Listen for the

lesson and use it to grow, giving yourself

room to fail (which will likely lead to

something greater).

Perhaps the closing argument is:

Forget work-life “balance” and

accept work-life “imbalance.”

This truthful displacement

moves us closer to a fulfilling life.

The tools and strategies of which

are in our own hands.

36 37


MEXICO CHINA

Hackers. Counterfeiters. Squatters. When too much of daily professional life is filled

with the stress of IP portfolio management, many companies and entrepreneurs turn

to Michele S. Katz.

Calm. Focused. Thorough. Michele provides a calming approach to managing IP

assets. With nearly two decades of experience, Michele conducts trademark searches,

prepares opinions, and monitors trademarks to confirm that her clients’ intellectual

property rights are used properly and effectively. She manages copyright registration

portfolios in addition to familiarizing U.S. Customs with client designs in an effort

to stop counterfeit goods at U.S. borders. In the area of patents, Michele litigates

complex patent litigation matters including such varied products as textiles, hard

disk drives, airbag covers and interface transfer technology. She also manages patent

portfolios to ensure U.S. and foreign patent protection for clients.

Her client results have earned her recognition by Super Lawyers Magazine and Illinois

Leading Lawyers. In addition, she is a founding partner of Advitam IP, an

intellectual property law firm. She also is a past president of the National

Association of Women Business Owners (NAWBO), Chicago Chapter.

Bask in the calming influence of effective IP portfolio management.

Contact Michele today at MKatz@AdvitamIP.com or 312.332.7710

Learn more at www.AdvitamIP.com

A calming

influence

in a chaotic

IP world.

With more than 30 years’ experience

in the IP field and Managing Partner

of the firm since 2008, Laura Collada

is a true strategist and has acted

on several milestone cases. Laura

leads most of the firm’s large and

complex cases. Furthermore, Laura

has a high profile, both locally and

internationally. She is regularly

invited to speak for organisations

such as MARQUES, UIA, ASIPI, FICPI,

ABPI and INTA and is a renowned

teacher at several Law Schools.

She is very active in promoting the

Madrid Protocol and has lectured on

the topic domestically and abroad.

Laura’s practice covers the complete

lifecycle of IP rights. However, since

the recent dramatic changes to the

Mexican legal framework, she has

been increasingly dedicated to the

promotion of the MADRID system

among clients, as well as the new

opposition system that entered into

force. She also continues to design

strategies for clients as well as

litigating.

Laura is the only woman in Mexico who is

the Managing Partner of an IP law firm and a

three-time recipient of the Best IP Lawyer in the

Latin America Award of Euromoney’s Americas

Women in Business Law. She has written about

IP for national newspapers and international

IP magazines. Laura is also a Council Member

of MARQUES and project leader in the

International Trademark Team. Furthermore,

she leads the Madrid Protocol Committee

at ASIPI. She is Co-Chair of the Standing

Committee on Geographical Indications in

AIPPI, as well as a member of the Geographical

Indications Committee of INTA, and a member

of national and international professional

associations, including AIPF, ASIPI (Co-Chair of

the Geographical Indications Committee and

Special Commissions Coordinator of the Madrid

Protocol), AIPLA (member of the Board), ECTA

and PTMG.

Name: Laura Collada

Law firm name:

Dumont

Country: Mexico

Laura advocates for women’s equality by

seeking out female candidates and offering

top positions to female lawyers. She is involved

in several associations (AIPLA, UIA), creating

awareness by speaking out about “glassceiling”

issues at events, including the AIPLA

Women in IP event that took place at Dumont’s

office in Mexico City three years in a row (2016,

2017 and 2018).

Dumont, led by Ms. Collada, proposed to AMPPI

(AIPPI Mexican Chapter) to create a women’s

committee to empower IP women lawyers, to

research the sociological ground why there

are so few positions for women in executive

positions as well as to create awareness among

the firms on our field (IP). The creation of the

committee is a reality today. It started working

on March 2017, and Ms. Collada was the Chair

of the Women’s Committee for two years (2017-

2019).

She is ranked in CHAMBERS LATIN AMERICA

and CHAMBERS GLOBAL as leading lawyer; THE

LEGAL 500 LATIN AMERICA; as recommended

lawyer; IP STARS as Patent Star, Trademarks Star,

and Top 250 Women in IP; WORLD TRADEMARK

REVIEW 1000, as leading lawyer; EXPERTS

GUIDE, as Patents and Trademarks leading

lawyer.

Laura was invited to be part of the expert team

to work on the wording of the amendments

to the Mexican Industry Property Law. She

was asked to write, among all the experts,

the initiative of law as well as the exposition

of reasons. This project of amendments has

been introduced and presented to the Mexican

House of Representatives and turned into law.

As the only female Managing Partner of an IP

firm in Mexico, Ms. Collada acts as an icon to

women who wish to advance their careers in

this field. The women working at Dumont often

choose to stay long-term in order to improve

their knowledge and expertise here, since they

are met with far less bias than is often found at

other firms in Mexico.

This has made Dumont known as a firm in

which women are empowered, acknowledged,

and groomed as lawyers.

Position: Managing Partner

Website: www.dumont.mx

38

TRADEMARKS | PATENTS | COPYRIGHTS

DOMAIN NAMES | LITIGATION | CUSTOMS

39


MEXICO CHINA

As mentioned before, there is not

a universally accepted definition

for the term, but it always relates to

the use of art, imagery, symbology,

artifacts of cultural expressions

with significance to a minority or

dominated group by someone who

does not belong to that group.

So, it must be a goal to enhance

international instruments to protect

these cultural expressions. At a

national level, many countries

are doing an excellent job, but in

the meantime, we must appeal to

educate people on what cultural

appropriation is. It is not a trivial

issue.

Why is everybody

talking about

cultural

misappropriation?

It is an issue that has critics and

defenders and many blurry lines, and

depending on the author, it will be

related to white supremacy, western

world, xenophobia and such. We often

hear great arguments defending

one position or the other and more

frequently, arguments without any

knowledge or understanding of

what is essential to highlight. It is an

issue that needs context, as well as

relevancy to current culture. It is a

sensitive issue which depends on the

eye of the beholder.

Who owns culture?

In modern free society, it is supposed that

cultural exchange enriches our society. It is

a vital part of the culture and its grounds on

the cultural appreciation. However, there is a

very fine line between cultural appropriation

and cultural appreciation; they are entirely

different concepts.

As discussed by Laura Collada, Managing Partner, Dumont

www.dumont.mx

Cultural appropriation also called cultural

misappropriation is a concept that it is not well

defined and that when defined, pretty much depends

on the source, of which elements and political

position they are referring to phrase such a concept.

There are so many things that we “borrow”

from different cultures: Food, for example.

In the western world we like Asian food

or Mexican food and many times it is not

the real thing, it is inspired in a particular

cuisine; however, I genuinely believe that

cuisine exemplifies cultural exchange at its

best. Being a Mexican, most of the time, I

do not like the inspirations or the look-alike.

However, a part of my heart appreciates that

it is likable; thus, people try to imitate it or

are being inspired by it. Regardless of that,

in my country, it would never be considered

as original. The same happens with music

(and its performers: Katy Perry, Miley Cyrus,

etc.) as well with hair styles and hairdressers

(dreadlocks, braids, mohawks, etc.), fashion,

etc.

There is a very fine line between the critics

speaking about cultural misappropriation

and defenders talking about cultural

appreciation.

Every single year around Fashion week,

important fashion shows, award season,

and lately prom season, we hear about this

topic. The qipao dress, the Chinese bag, the

white singer winning R&B awards, Katy Perry,

Carolina Herrera using Mexican imagery,

Coachella and native American symbols,

UK chefs cooking authentic Asian food and

the list goes on and on. Not forgetting,

Halloween and the insensitive costumes!

So, what is it? Is it cultural appropriation or

just paying homage? As mentioned before,

the tricky thing to establish is that if it is

hurtful and offensive to ethnic minorities, it

should not be done. Nevertheless, expressed

like this, it seems only to be a moral issue, and

it is not. Usually, expressions of culture are

protected by intellectual property.

To define cultural appropriation, it means the

use of one culture and its defining elements,

by another culture. Oxford Reference defines

it as: “A term used to describe the taking

over of creative or artistic forms, themes,

or practices by one cultural group from

another. It is in general used to describe

Western appropriations of non-Western or

non-white forms and carries connotations

of exploitation and dominance.”

It is important to highlight, as a

foundation for making laws related to this

topic, that appreciation of culture requires

understanding and respect; appropriation

lacks those things. There must be certain

engagement with the culture to appreciate

it. Borrowing is not inherently wrong, and

cultures must not be reduced to stereotypes.

Some authors consider that trends are

not trends; they are someone’s culture.

Trends usually cherry-pick things from a

minority culture and make them socially

acceptable when the dominant culture

adopts it and finds it fashionable, cool,

innovative, inspirational, etc. Usually, this

cherry-picking will be profitable for the

trendsetter. Moreover, other authors speak

about assimilation, which in these cases is

not suitable. Assimilations most often are a

means of survival.

So, where do we stand?

It is difficult to say. Context, geography,

and current culture are important when

defining what to protect and how to protect

it. A free modern society promotes cultural

development and the enrichment of

culture; however, in a society like this, many

voices accompany it: freedom of speech,

indigenous rights, western supremacy,

and so on. Global modern world culture is

being created every single day, people share

their culture, and sometimes they give it up

(because of political, economic, etc. reasons)

but it transforms every day, regardless of the

reason. Perspective is valid.

So legally speaking, what

should be done?

It is not a trivial topic, and there are many

angles, many perspectives, there is no

way to please everyone. WIPO has been

working on the issue and recognises the

protection as sui generis. In 2008, The WIPO

Intergovernmental Committee on Intellectual

Property and Genetic Resources, Traditional

Knowledge and Folklore commissioned two

gap analyses on the protection of traditional

cultural expressions/expressions of folklore

and traditional knowledge. In 2017, the

WIPO General Assembly requested the

Secretariat to “update the 2008 gap analyses

on the existing protection regimes related

to Traditional Knowledge and Traditional

Cultural Expression. It is various works

advising policymakers. WIPO suggests

treating traditional cultural expressions as

intellectual property, where holders would

have the possibility to control access and

use of these rights by third parties, as well

as using intellectual property principles

and values to prevent unauthorised or

inappropriate uses by third parties (namely

misuse and misappropriation). It is a sui

generis protection adapted to respond to the

features and needs of these rights.

Protection would consist of:

Positive protection that will enable

the granting of rights that empower

communities/nations to promote and

control their uses by third parties and benefit

from their commercial exploitation as well

as defensive protection in order to stop

people outside the community/nation from

acquiring intellectual property rights over

these rights.

WIPO has also analysed and suggested

which are the key questions with the view

of developing an IP strategy regarding

the protection of traditional knowledge

and traditional cultural expressions. As an

advisor to policymakers, the lawmakers

should decide if it should be protected as a

sui generis intellectual property right, and

if so, define the objectives and the legal

means of their protection. This should be

done by identifying the traditional cultural

expressions and the holder’s interest,

assessing legal systems of protection and

considering as an option - sui generis, as

well as assessing the implementation. Also,

governments should identify the interested

parties surveying the cultural expressions

of the country as well as the indigenous and

local communities that hold, practice, and

maintain such rights. It should also assess the

expectations of using them as a vehicle for

economic development.

Also, we must highlight that between a sui

generis IP system and a traditional IP system,

there are most certainly gaps. Obviously,

without any harmonisation, there are at an

international level, obligations, provisions,

and possibilities to protect these rights. The

gaps refer to an unmet economic, cultural, and

social need. Moreover, there is a conceptual

divide. A traditional IP system would have

certain shortcomings; conceptions such as

ownership, fixation, originality, exclusive

rights are entirely different when referring to

traditional expressions. Cultural expressions

were created primarily for spiritual, religious,

tribal purposes which defer quite much to

the objectives of traditional IP. There could

indeed be other non-IP mechanisms such as

laws about cultural wealth, dignity, human

rights, heritage preservation, etc.

We must understand that cherrypicking

cultural elements from marginalised

groups without knowing or caring what the

significance is of such elements, might hurt

and affect that group. History shows that

people share their culture, and sometimes

they are forced to give it up, it can be

disempowering, dehumanising. It is essential

to take responsibility for your actions that

can cause harm to other people.

For example, I am Mexican, and I have never

understood why 5 de Mayo is celebrated

in the United States. It is celebrated by

drinking a lot, eating guacamole, wearing

huge sombreros and fake mustaches. It is not

Mexican Independence Day (September 16),

and that is a huge misconception, and most

Americans do not know what that holiday

commemorates. The date is observed to

commemorate the Mexican Army’s victory

over the French Empire at the Battle of

Puebla, on May 5, 1862. The victory of the

smaller Mexican force against a larger French

force was a boost to morale for the Mexicans.

A year after the battle, a more significant

French force defeated the army and Mexico

City soon fell to the invaders. What is the

reason to celebrate? It is said that at the

beginning of the last century some Mexican

consulates in the USA used to celebrate

and from there it picked up as something

to commemorate. Usually, it stereotypes

Mexicans and its traditions; it should not be

like that; this is my personal opinion. Same

happens with ninja or geisha costumes or

traditional tribal wear, such as penachos of

indigenous tribes, or some headdresses or

tribal Polynesian tattoos. Appropriation does

not go both ways.

We have to understand that what is trivial

for one person, might be very important

for someone else; each perspective is

valid. We should never invalidate, and we

should be cautious with creative licenses.

Sharing or borrowing is acceptable if we

understand the significance and value of

those cultural expressions and use them

properly. We should not create resent and

blurry, fine lines should be balanced.

So next time, appreciate cultural

expressions: you do not have to

own it, to do it.

Bibliography:

https://www.theatlantic.com/entertainment/archive/2014/05/

cultural-appropriation-in-fashion-stop-talking-about-it/370826/

https://aestheticdistance.com/blog/cultural-appropriation

https://www.bustle.com/p/7-things-you-might-not-realize-arecultural-appropriation-that-are-60679

https://www.lawliberty.org/2019/02/26/cultural-appropriation/

https://www.wipo.int/tk/en/folklore/

https://www.wipo.int/tk/en/igc/issues.html

40 41

.


COSTA CHINA RICA

Name: Gabriela Bodden

Law firm name:

Eproint

Country: Costa Rica

Position: Partner

Website: www.eproint.com

Whilst taking an IP course in law school,

I discovered what would define me

professionally. I realised that individuals and

companies invested time and money into

creating products that, in turn, drove the

economy. My aim was to become a lawyer, to

distinguish myself and assist individuals and

companies in the adequate protection of their

IP rights.

I practiced as an attorney within the Legal

Department of Customs in Costa Rica for several

years, where I learned all aspects of border

protection, the different regimes that affect

the importation and exportation of goods.

During that time, I drafted many important

projects that are still today applicable in Costa

Rica within the General Customs Directorate.

This rich knowledge has become useful when

handling complex anti-counterfeiting cases.

Eproint is the company of which I am the only lady

partner. We were founded in the year 2000 by my

current partner Aaron, and I joined him in 2008. I

aimed to launch the Caribbean practice and to take

our international practice to the next level. Today

Eproint is one of the most important full IP service

law firms that offer a single point of contact for the

Caribbean and Latin America. We are, in fact, the

only service provider that has an actual physical

presence in the Caribbean, and this changes the

equation of being an intermediary.

I have been an active practitioner in the IP arena for

over 20 years. Luckily my expertise has permeated

all areas of this fascinating world of both industrial

and intellectual property with a particular focus

on anti-counterfeiting in the Caribbean and Latin

America (over 40 jurisdictions).

Besides having obtained a law degree, I also hold

a degree in business management, an LLM in

Intellectual Property, and have completed various

short specialisation courses such as with the

University of Barcelona.

The IP field is in flux, and I am heavily involved

with the AIPPI Regional Group (the Caribbean and

Central America) of which I am the Secretary, and I

regularly attend INTA, MARQUES, APAA, ASIPI and

other important events in the IP world.

Being key in the development of our business, I

have faced many challenges along the years, as

running a business can be risky as it entails the

unforeseen. Along the years, I have embraced our

challenges with a smile and extreme hard work in

order to guarantee success.

My focus as a professional is to be behind our

clients 100%, and I assure you that if you are a

company with ambition, I can help you fulfill it and

accompany you along the way!

I do not do this alone as I am surrounded by an

amazing team of committed professionals, loyal to

our clients’ projects, and together we establish a

work environment and culture that encourages our

team members to deliver a high-quality service,

along with legal and technical solutions.

I focus on excellence, and this is reflected by the

extensive portfolio of clients that I represent, and

with thanks to them, I have been continuously

ranked by Legal 500, Chambers and Partners and

WTR1000 as a leading professional in Latin America

and the Caribbean.

Chambers and Partners highlights:

“…commended by clients for her grasp of IP

matters, as one highlights: “I was impressed

by her knowledge and enthusiasm; she’s

professional and international in her outlook.”

Her main areas of activity include trademark

filings and enforcement actions…”

Legal500 comments as follows: “… The practice is

co-led by the ‘extremely flexible, committed and

supportive’ Gabriela Bodden …”.

WTR100 comments: Eproint has the broadest

geographic footprint of any firm in the WTR

1000 Caribbean section; it has offices in Belize,

the Cayman Islands Costa Rica, the Dominican

Republic, Guatemala, and Honduras …

proactive, ultra-responsive, efficient, and

solutions-oriented, Gabriela Bodden has a

profound knowledge of international trademark

law…”

Currently, the majority of my work is still purely

client-facing, business development and in the

management of the group that assists me and

despite the success of my firm, I don’t get carried

away as I know we are only as good as our last job.

42

43


ARGENTINA

CHINA

Name: Melisa Litvin

South America

Law firm name:

Litvin Marzorati Legalis

Country: Argentina

Position: Founder Partner

Website: www.lmlegales.com.ar

Sponsored by

Melisa Litvin, the founder partner of LITVIN

MARZORATI LEGALES, is one of the preeminent

IP-service law firms in Latin America with a

long-established reputation for superior legal

work.

Melisa was associate in the intellectual property

department of the firm Allende & Brea for 7 years

and years ago, with drive and passion created her

own intellectual property firm, Litvin Legales, and

today with the addition of new partners renamed

Litvin Marzorati Legales.

Melisa has been practicing intellectual and

industrial property law for over 17 years and

has experience in all areas of IP law including

trademarks, patents, trade secrets, e-commerce,

copyright, unfair competition, franchising, domain

names, and litigation.

Melisa received her law degree as well as her

postgraduate certification in high-technology law

from Universidad Torcuato di Tella, city of Buenos

Aires. Melisa has completed numerous specialised

courses in the Intellectual Property arena both

in Argentina and abroad. She also encourages

her team to remain educated and informed on

innovations in Intellectual Property.

She advises large, medium, and small companies

permanently or acts as special counsel in various

commercial transactions carried out in Argentina

and abroad. Melisa also litigates and counsels her

clients. She handles matters involving trademark,

copyright, trade secret, and patent litigation

being an expert in Argentinean and international

trademark protection and always preparing

license and technology transfer agreements.

Melisa is also a pioneer in Argentina working with

entertainment and media companies which rely

on the latest online technologies to distribute

and market products and services, as well as

advising internet and technology companies in

transactions related to the distribution, licensing

and use of digital content and the enforcement

of intellectual property rights in the digital

environment.

Regarding IP Litigation, Melisa has represented

clients across a wide range of industries.

Melisa has a long tradition in the area of

Intellectual Property that dates back to the very

foundation of the firm — consisting of highly

experienced attorneys and agents who provide

an outstanding track record of experience, skill,

efficiency, and counsel.

Melisa maintains a robust global presence,

regularly attending several international IP

Congresses, including INTA, ASIPI, and MARQUES

meetings. As a member of INTA’s Public and

Media Relations Committee, Melisa understands

the importance of maintaining professional

relationships with lawyers and firms worldwide.

You can read in Legal500 that Litvin Marzorati

Legales receives rave reviews for its ‘outstanding

service,’ ‘business-oriented legal advice’ and

‘great ability to structure cost-effective IP

strategies.’ Trademark matters are a notable

sweet spot, with founding partner Melisa Litvin

lauded as a ‘trademark expert.’

Most recently, Melisa Litvin was nominated

for the Chambers Women in Law Awards 2018

for Argentina Lawyer of the Year. She has also

featured in several articles in the Argentinian

magazine Noticias, where she addresses current

issues in Intellectual Property Law and educates

businesses on the importance of proactively

protecting their intellectual property assets.

It has been a constant working path for her in the

face of adversity, not only because she is a woman

and a mother of three. She has always known

how to achieve a balance between her personal

and professional life. For her, one of the keys is to

have efficient and reliable team-work. For Melisa,

relations with her employees and her clients are

very important.

International rankings and publications continue

to show that LITVIN MARZORATI LEGALES is

one of Latin America’s leading law firms in the

intellectual property practice area. Melisa Litvin

continues maintaining a strong global presence

building professional relationships with lawyers

and firms worldwide.

LITVIN MARZORATI LEGALES is very proud

of its IP professionals, who in addition to their

recognised work for clients, maintain a leadership

role in the local and international intellectual

property community

Furthermore, LITVIN MARZORATI LEGALES and

especially, founder partner Melisa Litvin continues

to be recognised in the leading legal directories

such as Chambers, Legal500, WTR1000, with

nominations to both, Chambers Women in Law

and Luxury Law Awards.

44

45


COLOMBIA

Name: Claudette Vernot

Law firm name:

Estrategia Juridica

Country: Colombia

Position: Director & Attorney at Law

Website: www.estrategiajuridica.co

Claudette Vernot has focused her career on studying and improving brand

protection programs and IP litigation strategies in Colombia. After receiving

her Law Degree from the Universidad Externado de Colombia, she completed

a postgraduate diploma in the University Pantheon Assas in Paris. She is the

Chair of the Anti-counterfeiting Sub-Committee for the Latin-American and

Caribbean region in INTA and is also a member of ACPI, IPCA, and APRAM

associations.

Ms. Vernot is an expert in the protection of trademarks throughout Latin America and Central

America. She advises several companies at the regional level in the definition of strategies to

protect trademarks and enlarge markets while providing solutions to fight contraband and

counterfeit. Ms. Vernot was Regional Outside Counsel for five years, assisting the General Legal

Counsel in the fight against the Illegal Trade for the Company PMI, specifically covering the

Latin American Region.

INTELLECTUAL

PROPERTY

brands patent

trademarks invention

licensing copyright

protection

BRAND PROTECTION AND ENFORCEMENT

IN COLOMBIA

Corporate Law

Our firm is experienced in

the handling of any sort

of corporations. It also

has the capacity to

incorporate companies

in Colombia and abroad.

Commercial Law

The department of

Commercial and Corporate

Law at ESTRATEGIA JURIDICA

offers comprehensive

advisory service in those

aspects typical of companies

or corporations.

Intellectual Property Law

ESTRATEGIA JURIDICA provides

review, evaluation, assesment

and management of the

intellectual property rights of

our clients.

Competition Law

The attorney at ESTRATEGIA

JURIDICA have specialized

training in the fields of unfair

competition and restrictive

competition practices.

Bogota D.C, Colombia Calle 90 # 12 - 28 (110221)

Tel: (57 - 1) 638 10 71

E-mail: estrategia@estrategiajuridica.co

www.estrategiajuridica.co

Criminal Law

ESTRATEGIA JURIDICA has

the capacity to advise

clients in all those issues

regarding possible legal

infractions covered by our

criminal ordainment.

Litigation

ESTRATEGIA JURIDICA

enjoys ample expertise in

the search of solutions

regarding processes in

the area of contentious

administrativa, civil and

commercial law.

Claudette Vernot was the pioneer lawyer in Colombia for IP criminal cases

for brands such as Louis Vuitton, Levi’s, Nike, Adidas, and Microsoft. New

actions such as Customs Border Measures and Consumer law were part of

the latest strategies for brand holders.

She began programs for training Customs officers, members of the Police

force, and different agencies in 1999.

Her experience in the Intellectual Property field makes her one of the

most recognised attorneys in Colombia. She has trained her team to

understand that the client is a business partner and that they must

collaborate to find strategies to protect their IP Portfolio. She works for

several brand holders, advising the Latin American Region in order to

find legal strategies against transnational counterfeiters. She focuses her

programs in the main Ports of the country and has actively collaborated

with The National Tax and Customs Direction in the modifications to

Customs Law related to border measures in the country.

She has worked as a professor in the area of Commercial Contracts

related to Industrial Property Rights, Copyrights and New Technology at

Universidad Externado de Colombia.

Ms. Vernot is fluent in Spanish, English, French, and Italian.

Ms. Vernot first embarked in her practice in IP Law in a French Company -

SODIAL in Paris. This was followed by working for three years in a Bogota

law firm - Cavelier Abogados. Ms. Vernot then founded her own practice,

Estrategia Juridica, in 1998.

Estrategia Juridica’s primary focuses include the litigation of IP cases,

Consumer Law, Unfair competition, Brand Protection Programs, and the

Enforcement of IP rights.

Practice areas include Brand Protection, Criminal and Civil Law,

Trademarks, Patents, Copyrights, Consumer Law, and Data Protection.

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UNITED CHINA KINGDOM

led to the development of COBOL, an initial highlevel

programming language which is still in use

today. While working on the Mark II computer,

Hopper and her associates found a moth stuck

in a relay; disrupting communications. This has

been suggested as the first instance of literal

‘debugging.’

Contrastingly, figures show that fields such as mechanical elements and engines, pumps and turbines

are some of the least represented by women, a trend which has been apparent since 2000. Although

the share of women inventors in mechanical elements and engines, pumps and turbines were joint

lowest in 2018 out of all the fields, both of these have shown exponential growth in women inventors

rising by 69 and 63 percent respectively, which may indicate that government legislation and STEMencouragement

is having a positive effect on gender representation equality in these areas.

Women

of science

By Freya Shepherd, Member of the Biotech team at Patent Seekers

www.patentseekers.com

Bio: Freya Shepherd (Biomedical

Science (Clinical Biochemistry)

MSc) is an established member

of the Biotech team at Patent

Seekers (A leading patent research

company based in the UK and

Canada). She has worked on

patent search cases from standard

Toe-in-the-Water and Patentability

searches, through to complex

Freedom to Operate and Invalidity

searches. Her specialisms are

therapeutics, surgical devices,

pharmaceuticals, and gene

modification.

Freya is passionate about women

in science and intellectual

property and relished the

opportunity to write an article

for the inaugural edition of the

Women’s IP World.

“A ship in port is safe, but that is

not what ships are built for. Sail

out to sea and do new things.”

— Grace Hopper

Women inventors, scientists, and engineers

have discovered countless revolutionary and

life-changing inventions that have caused

unprecedented breakthroughs in the history

of the world. Why is it then that when we are

asked to name a famous inventor, it is Thomas

Edison, Benjamin Franklin or Alexander

Fleming who comes to mind? These men

undoubtedly made gigantic steps for mankind

and science, and we are still very reliant on

their inventions today. However, is their work

any more noteworthy than that of Stephanie

Kwolek, the inventor of Kevlar, whose groundbreaking

work has protected countless army

and police personnel across the world? Or

that of Hedy Lamarr, a Hollywood actress

who invented a secret communication system

used by the US navy in order to send covert

messages to sea?

Over time, women inventors have become more

documented and well-known. However, not

nearly enough tribute, recognition or honour has

been accredited to some of the greatest minds

who have produced some of the most innovative

ideas - without which we would not be in the

advanced scientific place we are today.

Some of the most influential inventions to

reach our markets have come from the minds

of female inventors; however, innovation and

design have traditionally been viewed as maledominated

environments. In recent years,

significant efforts have been made to address

this imbalance by promoting STEM (science,

technology, engineering, and mathematics)

subjects to women in education and to introduce

government-led legislation to ensure men and

women are equally represented in the workplace.

This article will explore some of the most

significant inventions of the last 150 years and

the female minds behind them, and using patent

statistics, will explore how the current patent

landscape is progressing towards an equally

represented field.

One woman who was arguably far too

advanced for her scientific day, so much so

that it was near 100 years until her ideas were

fully understood and benefited from, was Ada

Lovelace - a mathematician, scientist, and world’s

first computer programmer. In the 1840s, in

collaboration with Charles Babbage, Lovelace

suggested to Babbage that she should work

out a language for the analytical engine that

Babbage was creating, based on her advanced

knowledge of mathematics. The language she

created (“Ada”) is now considered to be the first

computer program. She predicted that such a

language would be able to compose complex

music, produce graphics, and could be harnessed

for both practical and scientific use – ideas

exponentially ahead of her time. Whilst Ada

eventually received recognition for her computer

language “Ada” it took a long time for her

significant contribution to be recognised.

Rear Admiral Grace Hopper was an American

computer scientist, receiver of the Presidential

Medal of Freedom and one of the very few women

to ever reach the rank of Rear Admiral. After

joining the US Navy during the Second World War,

Hopper was assigned to work on a new computer,

called the Mark I. By the 1950s, she was at the

forefront of computer programming. As one of the

first programmers of the Harvard Mark I computer,

she was a pioneer of computer programming and

invented one of the first linkers (originally called

a compiler). She promoted the idea of machineindependent

programming languages, which

Hedy Lamarr was not your average 1940s

Hollywood film star; she developed a secret

communications system which would later be

used by the US Navy. Born in Austria, where she

began her Hollywood career - which included a star

on the Hollywood Walk of Fame - she then moved

to the United States where she met composer

George Antheil. Together they developed a radio

guidance system which used frequency hopping

spread spectrum technology to overcome the

possibility of interference. Their invention was

granted a patent in 1942 (US2292387A) and is

patented under her married name, Hedy Kiesler

Markey, however, the technology was difficult to

implement at the time, and the Navy did not like

to use ideas from outside the military. In 1962, a

current updated version of their invention finally

appeared on Navy ships.

Although the Navy was slow to implement the

technology, various spread-spectrum techniques

are incorporated into Bluetooth technology and

are similar to methods used in legacy versions

of Wi-Fi. After 50 years, the Navy gave her

recognition for her ingenious invention which

included an induction into the National Inventors

Hall of Fame, in 2014.

The National Inventors Hall of Fame, which works

in collaboration with the United States Patent and

Trademark Office (USPTO), honours the history of

innovation with its some 581 inductees. However,

only 39 of these are women – does this reflect

the recognition women inventors have been

given throughout history? The National Science

and Technology Medals foundation follows suit

with a staggering low number of 61 out of 707

of its inductees being women. This is not a true

reflection of how many of the innovative ideas we

rely on today that were developed by women.

The Patent Corporation Treaty yearly review

(2019), published by the World Intellectual

Property Organisation, looks into current trends

of those patenting under the act. This year it

published that in 2018, women accounted for

17% of all inventors listed in PCT applications.

Fields of technology related to the life sciences,

such as biotechnology and pharmaceuticals,

have comparatively high shares of women

among inventors. Women account for over half

of contributions in the biotechnology field in

2018, a figure which could be suggested will rise

as figures have done so year on year since 2000

although more women than men are now going

to university (in the academic year 2016/2017),

ten percent less women than men are studying

scientific subjects which could indicate that the

climb to equality might be slowing down.

Figure 2 – Percentage increase in the share of applications with at least one women inventor by technology, from the period

2000-2018. Source: WIPO statistics database.

However, not all great inventions have come from women who studied at higher education level or

those who studied scientifically. For instance, Josephine Cochran invented the dishwasher - a socialite

with no formal education who invented the first useful dishwasher in 1886 out of necessity to prevent

her servants from breaking her fine china. Cochran went on to found her own company to manufacture

her dishwashers, which eventually became KitchenAid.

The gender gap is still widespread. Even in progressive economies, there are still relatively low shares

of PCT applications by women inventors, for example, in 2018, in the United Kingdom, only 26% of PCT

applications had women inventors. Women may still be coming up against the notorious ‘glass ceiling.’

However, the landscape is undoubtedly improving; in all but one of the top 20 contributors, there have

been Figure impressive 2 – Percentage improvements; increase in the share Sweden of applications and Finland with at least have one increased women inventor their by figures technology, by over from the 100 period percent

in the 2000-2018. last eighteen Source: WIPO years. statistics This database. suggests that although there is still a gap across the globe; the level of

women inventors has risen, and this will likely continue.

Figure 3 – Share of PCT applications with women inventors for the top 20 origins (2018) with the percentage difference

between figures in 2000 compared to 2018 (value on the right). Source: WIPO statistics database.

Figure 3 – Share of PCT applications with women inventors for the top 20 origins (2018) with the percentage difference

between figures in 2000 compared to 2018 (value on the right). Source: WIPO statistics database.

In conclusion, the patent world is progressively recognising more women inventors,

although this progression is more evident in some subjects more than others, and in

some countries more than others. The drastic increases over the last eighteen years

are encouraging and have led to a varied landscape from which we can conclude

that women will in time play a more significant role in innovation, engineering, and

design but at what point men and women become equals on this level is unknown.

Note In order to attribute gender to inventors’ names recorded in PCT applications,

WIPO produced a gender–name dictionary based on information from 13 different

public sources. Gender is attributed to a given name on a country-by-country basis

because certain names can be considered male in one country but female in another.

[from World Intellectual Property Indicators]

* Quote originally attributed to John Augustus Shedd, although adopted as a motto

by Grace Hopper.

Figure 1 - Comparison between the two highest and two lowest fields of technology for shares of applications with

at least one women inventor. Source: WIPO statistics database.

48 49


UNITED CHINA KINGDOM

Name: Ann Chapman-Daniel

Company name:

Minesoft

Specialist global search services for patent attorneys,

universities, technology companies and SMEs

Country: United Kingdom

Position: Co-Founder &

Managing Director

Website: www.minesoft.com

Patentability/Novelty Search

Infringement/FTO/Clearance

Invalidity/Patent Busting

State of the Art

Patent Mapping/Landscapes

Patent Monitoring

Patent Status

Competitor Analysis

Head Office:

Newport, UK

Tel: +44 (0)1633 816601

Email: mail@patentseekers.com

North America Office:

Toronto, Canada

Tel: +1.416-847-7309

Email: NA@patentseekers.com

Before starting Minesoft, the online

patent software company, a love of

language and literature inspired Ann

Chapman-Daniel to choose publishing

as a career at International Thomson’s

Marketing Group in London. Partly

due to her knowledge of German,

Chapman-Daniel was asked to work on

their international sales & marketing

team (when they first moved into the

online database business in the 1980s),

launching Derwent World Patents Index

online. Although she left the IP industry

for a time, Chapman-Daniel returned

to patents and sci-tech publishing with

France Telecom Group (now Questel-

Orbit). Here she worked as Director and

Managing Director for 3 years before

taking the leap with husband, Ophir

Daniel, to start their own business:

Minesoft.

Minesoft has since gone through 20 years

of innovation and development – an

achievement in itself. In 2003, Minesoft and

RWS launched PatBase, a new searchable

database of patent documents designed

by experts in the complex art of patent

information research. Since the first critically

acclaimed public demonstrations in 2003,

PatBase has gone on to attract over 80,000

users worldwide.

Over the years, Minesoft has expanded

its suite of products to include a range

of alerting and tracking tools, chemical

searching, and more. Most recently

launching IPShare, a new collaboration tool

aimed at IP law firms to work together on

projects and share insights with clients, and

Pat-KM, a workflow-based patent knowledge

management system.

Ann and Ophir started the company around

their kitchen table and have grown the

company every single year for 21 years, now

with clients and offices all over the globe –

in every corner! With leading corporations,

patent offices, and law firms among its

customers, Minesoft has come a long way

from its humble beginnings. It has achieved

this without taking on outside investment

but instead in always being forward-thinking

in growing the company’s network and

locating new partners.

A testament to Minesoft’s ongoing

innovation and the dedication of the

development, sales and support behind the

scenes, has been winning the Queen’s Award

for Enterprise in 2009 and again in 2015. At

the end of 2018, Ann Chapman-Daniel took

home the award for Female Entrepreneur

of the Year in the Regional Chamber of

Commerce business awards and was more

recently named Information Professional

of the Year by the German publication,

PASSWORD.

With Minesoft going from strength to

strength in the 20 years since the company

was first founded, Ann Chapman-Daniel

plans to continue travelling widely to

learn about our globe and help develop

new technologies for the future; she looks

forward to spending much time both sides of

the Atlantic and Mediterranean Seas.

50

www.patentseekers.com

51


Unilever, Nestlé, and Coca-Cola were some

of the well-known corporations that were

recently named and shamed by international

development agency, Tearfund. Contributing

3 million tonnes (Coca-Cola), 1.7 million tonnes

(Nestlé) and 610,000 tonnes (Unilever) of plastic

packaging in 2018. All 3 companies have since

pledged to drastically reduce their plastic

footprint over the next 5-10 years. Coca-Cola’s

World Without Waste strategy, for example,

aims to collect a bottle or can for each one sold

by 2030. This is good news for Norway-based

company Tomra, which dominates the market

for vending machines that collect containers for

recycling (shares in Tomra have unsurprisingly

tripled over the past three years!).

Meanwhile, other companies like BP are trying to

find fixes internally, BP has described their new

chemical recycling process as a “game-changer”

and plans to commercialise it by 2025.

By interrogating clean and comprehensive

patent data, it’s easy to see which companies are

putting their money on the table and investing

in this area, rather than just ‘talking the talk’.

Using a commercial database with integrated

analytics, like PatBase, makes it easier to visualise

and examine these larger datasets to better

understand the technology landscape.

What is Solid Waste

Management?

Solid waste management is the handling of

discarded materials; including paper, plastic,

glass, electronics, food, chemicals, etc.

UNITED CHINA KINGDOM

Taking out the trash:

big industry starts clearing up the mess

made by our ‘ throwaway’ society

Written by Moira Sivills, Business Development Executive,

& Caitlin Kavanagh, Marketing Executive, Minesoft - www.minesoft.com

Over recent years, the public’s awareness of the impact

of pollution and climate change has grown. As a result

of this, big industry has been forced by governments

and consumers alike to step up its game in reducing

plastic usage, finding ways to recycle potentially

toxic items like chemicals, aluminium or plastics, and

mitigating their own carbon footprint.

Although we have always produced waste, the rapid growth of the world population, currently at 7.7

billion, coupled with societies becoming richer and more consumeristic has given rise to a ‘throwaway’

culture. To protect the public and the environment from the harmful side effects of waste, research and

development into solid waste management is crucial to establish new production and consumption

patterns.

In the following sections, PatBase Analytics V2 is used to show the key trends in climate mitigation

technologies related to solid waste management, especially over the period 2012 to 2019. The dataset

used consists of CPC classification codes such as waste collection, transportation, transfer or storage,

waste processing or separation, landfill technologies, bio-organic fraction processing and reuse,

recycling or recovery technologies. This search produced 142,642 results as of August 2019.

China leading the way in solid waste management technologies

An initial ‘Years by Jurisdiction’ analysis was carried out to visualise patenting activity by country over

the last 25 years. Patent activity from 1995 was on a slow upward trend with Japan being significantly

ahead of other jurisdictions by 2000. The rise in the number of patent filings can be explained by the

emergence of the United Nations Framework Convention on Climate Change (UNFCCC) in 1992. They

raised concerns worldwide over the necessity of uniting and combatting human interference

with the climate system. This led to more and more ‘green technologies’ coming out of the research

labs and being integrated into society.

Figure 1: Solid Waste Management, Recent 25 Years Analysis by jurisdiction

However, since 2010, China’s share of the market has increased exponentially, surpassing Japan, as the

leading innovator in this technology area. Being a global manufacturing powerhouse, China generates

more waste than any other country; this is likely due to China’s growing consumerism. For example,

consider the popular Chinese food delivery apps, MeiTuan, and Ele.me, these platforms on average

conducted 34 million daily deliveries in the first half of 2018 – the level of plastic waste from all those

orders would be huge. In order to offset their increasing waste production, several waste management

companies have been coming up with new ideas; hence, we can observe the surge in the number of

new patent families.

Not only does China produce the most waste, they also import a lot of waste from other nations.

However, as of January 2018, China’s National Sword policy came into effect restricting imports of 24

different types of waste material. The effects of the ban could be a catalyst for change, an opportunity

for countries in the West to come up with breakthrough green technologies instead of ‘dumping’ their

waste in developing nations. We may see a rise in innovation and a subsequent increase in the number

of patent filings from other jurisdictions in the coming years.

The GDP gap hindering green growth

Narrowing the search to the most recent 5 years, we can view the geographic breakdown in figure 2.

Figure 2: Solid Waste Management, World Map Chart

R&D budgets are rising, but the share devoted to the environment remains stagnant. Low patenting

activity in countries like Brazil, South Africa and India, which account for less than 1% of the world’s

environmental technologies, suggests opportunity for inward technology transfer and diffusion. The

lack of priority amongst the top filing countries suggests little transferal of patents have occurred

outside the top filing jurisdictions. This is unsurprising as effective waste management is expensive,

often accounting for 20%-50% of municipal budgets, making it unaffordable for developing countries.

Looking further at the citation network provides an interesting picture. Studying the structure of the

citations network can further our understanding of how innovation knowledge is connected and

passed on between different assignees.

Figure 3: Solid Waste Management, Citation Network

Taking a closer look at these assignees, mainly

global corporations appear to dominate in Solid

Waste Management, indicating their interest in

applied research.

United States Gypsum has 51,893 forward citations,

and Haliburton Co has 49,367 forward citations,

from here the number of forward citations for

the following 8 assignees in the top 10 drastically

decreases. The number of forward citations

is a useful predictor of patent value as a large

number of forward citations suggests industrywide

investment; indicating in this instance

that valuable patents are owned by a select

few assignees and knowledge sharing seems

exclusive within a single jurisdiction – the US.

The role of universities and research centres role

appears negligible, suggesting lack of incentive

for directing innovation towards environmental

objectives. It is essential to narrow the gap

between emerging and developed nations to

increase international technology transfer, as well

as increasing incentive and funding opportunities

for more research centres to be actively involved

in climate change technologies.

Landscape analysis

The 3D landscape map in PatBase Analytics V2

groups patents according to semantically derived

concepts – the height of the hill signifies number

of families relating to the concept in question,

e.g., carbon dioxide.

Figure 4: Solid Waste Management, Landscape map

Studying the landscape in figure 6 shows

there is potential white space in this field. For

example, there could be room for development

in the concepts close to the most popular solid

waste management concepts: ‘Carbon Dioxide’

and ‘Portland cement’, like ‘Waste Container’,

‘Processing Plastic’ or ‘Packaging Technique’.

Recent investment into these areas include

TOMRA, an advanced sensor-based sorting

technology which can optimise sustainability

by increasing the yield of recycled waste and

Vegware, plant-based biodegradable packaging

which emits less carbon and is completely

disposable. Further analysis into these identified

concepts could help investors to expand their

solid waste management exposure, becoming

a market leader and encourage global

sustainability.

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, included in all

PatBase subscriptions at no extra cost. 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 decision makers in a

boardroom environment, even those without

patent know-how!

52 53


Don’t miss

the obvious...

SOUTH CHINA AFRICA

Name: Lee-Ann Picoto

Company name:

Dantofon

Country: South Africa

Position: Co-Founder &

Strategic Operations Manager

...or the obscure



Identify potential partners and licensing opportunities

Monitor market trends and key competitors

Avoid infringement and parallel development

with Minesoft’s web-based patent solutions

analytics V2

Visit www.minesoft.com today to keep your business on track

“In the right hands, data can be powerful,

provide more knowledge than we could

ever imagine and be the catalyst to

greatness and success in every way. In

today’s world, the smallest ideas can

become the greatest innovations. One

idea with a slightly different perspective

on market trends or top players in your

industry could spark a global novelty

that could see your idea go from just

that, an idea, to a global sensation. This

is something that motivates me each

day, seeing people grow not only as

individuals with this knowledge but as

companies, utilising this information to

be nothing short of SUCCESSFUL”.

My name is Lee-Ann Picoto, the Co-Founder

of Dantofon, an IP Consultancy company

with a very uniquely personal touch at the

root of its core. A proud and devoted wife

and mother of two beautiful children. Family

is of great importance to me and keeps me

grounded and gives me purpose. Born and

bred in sunny South Africa, I love the beauty

of this world we live in. I have been fortunate

enough to travel and work abroad, which

truly opened my eyes to truly fascinating

aspects of the diverse cultures of this world.

Travel is something I hope to continue doing

until I’m old and grey (Well old, the grey was

inevitable). Pinterest fanatic and hopeless

romantic. Music and dancing are essential to

my sanity.

I have always had a thirst for knowledge. I

have interests in just about anything that has

depth to it; from philosophy to psychology. I

have studied everything from psychology to

teaching; however, my true passion is seeing

people succeed. I am a true advocate for

women in business and technology. I have

been fortunate enough to speak and work

with so many beautifully intelligent women

globally who have inspired me beyond

words. Thankfully, times have changed,

and women are soaring in any industry

they set their sights on. More and more

women realise that success is not just having

a leadership position but being leaders

who have the sensitivity and patience to

empower others. This is an important role

and one that could make the difference in a

person’s life and career.

My role at Dantofon has taken on a life of its

own. Being able to speak to tech-minded

individuals, IP attorneys, Academia, Startups,

and SME’s means each day is a new

and exciting one. My goal is to assist as

many people or companies as possible

in utilising IP to serve their best interests.

Whether it be utilising patent data, Trade

Secret Management, IP Risk Management,

and Analysis or auditing of these. Also, using

platforms that could assist any of the above.

I look forward to eventually speaking to

more people about the importance of IP and

the great value it has in this ever-changing

and innovating world we live in. I look

forward to empowering and inspiring more

beautiful minds as so many of you do.

I am truly honored and excited to be

representing South Africa in the Innovation

sector of Women’s IP World and look forward

to meeting so many more inspiring women.

54

g l o b a l p a t e n t s o l u t i o n s

55


SOUTH CHINA AFRICA

Innovation IN IT’S MODERN

MEANING IS A NEW IDEA, CREATIVE

THOUGHTS, NEW IMAGINATIONS IN

FORM OF DEVICE OR METHOD.

Research & Development

Dantofon provides patent intelligence services as well as a global search and analytical platform

providing updated, comprehensive, and accurate IP information for global innovators, academia,

R&D staff as well as IP Firms. Dantofon assists corporates in keeping track of the latest technology

development, mitigating patent infringements and innovation, technology concepts, technology cycle

analysis, risks, grasping the R&D trends of competitors and realising the business value of Intellectual

Property.

Dantofon and its partners are the leading IP information providers, focusing on deep integration and

value mining of IP data.

Strategy

By making IP and analysis accessible and usable

for non-IP experts, Dantofon provides IP,

Innovation, R&D and all technical teams with a

new source of information for use during research

and to construct and implement processes and

strategies that compliment your business goals.

Portfolio, Workflow and

Process Management

Organisations are now finally beginning to

integrate their IP strategy with their innovation

and business strategy to create better alignment

and more efficient technologies. To endure the

harmonic integration of protectable IP and the

Written by Lee-Ann Picoto, Co-Founder,

Dantofon

We couldn’t have a more apt description of the

meaning of innovation and the applications

or methodology of it. Even the synonyms

‘alteration’, ‘transformation,’ ‘metamorphosis’

and ‘renovation’ invoke the exact reason we do

what we do. This is what inspires us to reach more

companies, law firms, tech-minded individuals,

and academia. There is nothing more exciting

than seeing what might have seemed like a

small idea turn into a disruptive one that leads to

success. There are certainly ideas that with a bit

of tweaking or a change in perspective could be

the necessary change to bring about that truly

disruptive idea. We want to see our clients realise

their potential and assist with their growth, by

offering the information and consultancy from

ideology stage to getting to the patenting stage,

Where the IP Law geniuses take control.

A bit about us. Dantofon is a Global IP Consultancy

Group that is powered by our global partners

incoPat for our IP analytics and is in collaboration

with Chawton Innovation Services for Trade

Secret Management tools and services including

IP Risk Management and auditing.

Our Founder, Shane Picoto, with 16 years in the

industry, noticed a gap in the market. Techminded

clients, with no interest in IP or had no

time to have to learn how to use a tool to have

the global data at their disposal. In South Africa, it

could take up to 3 years for a patent to be granted!

IP attorneys could have spent hours and hours

doing searches on an idea that could be irrelevant.

Our Global partner, incoPat, had the tool we could

work our magic with, with the know-how of our

Founder, it made for one powerhouse of a team.

“Innovation in its modern meaning is a new idea,

creative thoughts, new imaginations in form of

device or method. Innovation is also often viewed

as the application of better solutions that meet new

requirements, unarticulated needs, or existing

market needs”.

Our Co-Founder, Lee-Ann Picoto, has been predominantly involved in the educating of individuals

or companies wanting to learn more about Trade Secrets, the management of this with the platform

created by her mentor Donal O’Connell (The Hazel Tool). Another platform for IP Risk Management

(the Alder Tool) as well as the auditing of these forms of IP. Lee-Ann has noticed that there is a lack

of knowledge of these forms of IP and the need to protect these, as we can tell by the series of Trade

Secrets stolen over the last few years. Lee-Ann is inspired to empower women in the tech industries as

well as those in academia and IP Law by using these platforms to better serve them on their journey to

success or lend a helping hand. There has, without a doubt, been an increase in the scope of women in

these industries, and this is something that resonates deeply with her.

Trade Secret Return on Investment Calculator Tool

Dantofon prides itself in offering its assistance in a custom way dependent on the clients’ needs. Some

clients prefer to have these tools in house. Others prefer to work on a project to project basis, and

then there are those who would rather use the consultancy side, which provides all they need to move

forward with their requirements.

This allows for the tracing of the technology development trends, seeks and decides the R&D direction,

evaluates S&T achievements, raises the starting point for research projects, grasping innovation

layouts, competitive industrial situations, digs high-value innovative technologies to provide reference

for innovation decision-makers.

Dantofon is able to set up surveillance around any tech space or assignee to receive the latest updates

according to the user’s setting including legal status, patent family, citation information, patentee,

litigation events, re-examination invalidation to help keep track of the latest patent changes and

development of technologies or competitors.

Commercialisation

Dantofon is able to provide insight into newly protected inventions, able to assist with potentially

coming up with new ideas in relation to possible cross-application technologies, tech scouting and

potential leads for collaborations.

There are three main commercialisation options.

- In the Spin-Off scenario, the university keeps most control and owns,

manages, and finances the technology.

- If a start-up is founded, the IP is licensed, while control and funding

come from outside the University.

- Commercialisation in TTO’s alternatively, the IP can be licenced to an

established company.

Whichever scenario Dantofon can assist.

Searches and Analytical Tools

Market and Competitor

Research

Successful market and competitive intelligence

will leverage all the data that is available in

order to provide the most complete picture

upon which to base decisions relating to market

opportunities and company strategies. By

aggregating all the data available in relevant

patents, IP analysis provides an efficient way of

uncovering information relating to these areas,

while often uncovering new facts that could be

vital in assessments or business negotiations.

Dantofon provides the analytical and search tools to support your innovations and strategy as well as

the experience in the search operators, complex query construction, CPC, IPC and truncation to ensure

the results are always relevant.

R&D vision, it is important to encourage a culture of

collaboration and transparency. Cross-functional

partnerships and divisional collaboration should

be encouraged, sharing observations with your

colleagues, and work off the same dataset.

Capture and manage what you find, including

your IP portfolio, competitor’s portfolio, market

intelligence, and general technology searches.

Should any assistance be needed regarding

Process Management, Dantofon can assist.

IP Firms benefits to

having these platforms

IP firms would not only be able to benefit from

the vast array of information, but these would be

added services you could provide to your clients

should they not want to research at ideology

stage. A benefit as far as the tools for Trade secrets

and IP Risk is that you are then able to either

manage the client’s IP portfolio and due diligence

or perhaps offer the auditing as a service. One

thing that we have noticed in South Africa is that

there are more IP Firms, turning to us to create

service offerings within Innovation.

Should you ever have any need for the above

offerings, please do not hesitate to contact Lee-

Ann Picoto dantofon2018@outlook.com or +27

(0) 81 058 7113. We look forward to taking this

journey with you. Moreover, to the ladies in any of

these industries, keep doing what you are doing!

You are all an inspiration to our company and

many ladies around you.

56 57


UNITED CHINA KINGDOM

Name: Lisa Lovell

Specialising In:

Your Upper Hand in Innovation, Strategy and IP Management

Company name:

Brand Enforcement UK LTD

Country: United Kingdom

Position: CEO

Website: www.brandenforcement.co.uk

o

o

o

o

o

o

o

Commercialization

Searches and Analytical tools and Trade Secret

and IP Risk Management tools

IP Strategy

Market and Competitor Research Intelligence

Portfolio, Workflow & Process Management

Innovation and R&D

Technology Transfer

Shane Miguel Picoto

FOUNDER & IP DIRECTOR

Contact:

Tel+27 (0) 81 058 7113

Email: dantofon2018@outlook.com

Cape Town, South Africa

Lee-Ann Picoto

CO-FOUNDER & COO

Since entering the world of Intellectual

Property in 1998, Lisa qualified as a

Solicitor in 2002, Lisa Lovell has over 20

years’ experience in this niche legal field.

She has written extensively on the

subject of intellectual property theft for

various publications including; World

Trademark Review, Trademark World,

Copyright World, Entertainment Law

Review, Home Entertainment Week,

Licensing Today Worldwide, Total

Licensing, Toy News, World Tobacco, and

Global IP Matrix. Lisa was the Editor of

the bi-annual special supplements on

Intellectual Property published in The

Times and a contributing author to the

Handbook of European IP Management,

published by Kogan Page in 2007.

Lisa has spoken at various events including

The EUIPO’s Growing Business with IP

(Milan), the Intellectual Property Crime

Congress (IPCC) (Brussels) and World

Tobacco (Bali, Mexico, and Macau).

Incorporated in March 2003 to exploit

a clear gap in the market, Brand

Enforcement UK Ltd (BEUK) was set up as

an independent specialist legal consultancy

and anti-counterfeiting service provider

with experience in all aspects of both

the criminal and civil enforcement of

intellectual property rights (IPR).

CEO of BEUK, Lisa runs various international

test purchase programmes for many of

the world’s leading brands, spanning

across many industries including fashion,

electronics, printer consumables,

e-cigarettes, medical devices, eyewear, and

fragrances.

Lisa provides her clients with law

enforcement liaison support in the UK,

gathers evidence by conducting test

purchases of physical goods and acts as

a product expert for many of her brand

owner clients.

Once the evidence has been examined

and determined as counterfeit, Lisa then

produces the relevant expert and continuity

witness statements where required. She

then engages with the relevant Trading

Standards (TS) authorities and offers further

support in gathering further physical

evidence and/or intelligence as to the

supply of the counterfeit goods.

With 20 years’ experience in the British

Army, Lisa was a member of the Royal

Military Police and did an operational

tour of Iraq in 2004 (Op Telic). A trained

Military Diver, Lisa participated in Operation

Cockney triangle, a diving expedition in the

Bermuda Triangle. Lisa has also participated

in the British Army Skiing Championships

and has conducted many different exercises

in many different countries, including two

Exchange Programmes in both Indiana and

Michigan in the USA.

Due to the experience gained in her military

career, Lisa also conducts investigations

on counterfeit targets, including not only

the individuals behind it, any Company

information, and details of any addresses

the business is operating from. If Trading

Standards decide to bring a prosecution on

behalf of the client, Lisa supports them with

whatever they need in order to achieve this.

If Trading Standards decide not to bring a

criminal prosecution, we then work with

the brand to establish a different course of

action which may include a private criminal

prosecution or civil enforcement.

Lisa also attends raids on behalf of her

brand owner clients and also training

events where Customs, police and Trading

Standards Officers are provided with

examples of product, both counterfeit and

genuine and are hopefully then enabled to

conduct their own product identification on

the ground.

58

59


Bobbie Carlton, founder of Carlton PR

& Marketing, Innnovation Nights and

Innovation Women, has been called

Boston’s Innovation Den Mother and

the Startup Fairy Godmother. She’s an

award-winning marketing, PR, and social

media professional. Bobbie regularly

speaks on marketing, public speaking,

and women’s issues. Her humorous

approach and fiery “let’s make

something happen” brand is supported

by the real-world results she helps drive:

1400+ new products launched, $3B in

funding, 3 million monthly views, and

1000+ women speaking at conferences

and events.

Currently a “parallel” entrepreneur (instead

of a serial entrepreneur), Bobbie has

spent the last 10 years building her own

businesses as well as supporting client and

community efforts. Previously, in addition

to working with several Boston-area PR

and marketing firms, she headed global

PR at Cognos and PTC, both publicly held

enterprise software companies. In 2006 she

switched gears, joining a startup focused

on supporting self-esteem and positive role

models for preteen girls through a social

network and book series.

In 2008, she started her own company…the

first one.

• Carlton PR & Marketing is a boutique

agency servicing a wide variety

of startups and small companies,

providing support for PR, content

creation, social media marketing, and

marketing programs.

Name: Bobbie Carlton

Company name:

Carlton PR & Marketing. Innovation

Nights, Innovation Women

Country: U.S.A.

Position: Founder

U.S.A.

Website: www.carltonmarketing.com

www.innovationwomen.com

www.innovationnights.com

• Mass Innovation Nights (MIN) is a social

media powered new product showcase

and networking event. MIN has

launched more than 1400 new products

for free. These startups have received

more than $3 billion in collective

funding. When coupled with Bobbie’s

PR work, she figures she’s helped launch

more new products than any other PR

person on earth.

• Innovation Women is an online

“visibility bureau,” helping drive

visibility for entrepreneurial, technical,

and innovative women through

speaking engagements. Bobbie’s goal is

to eradicate “Manels” (all-male panels)

and get 2400 additional women onstage

a month. (This number should get

us to gender-equity on-stage. Currently,

more than 70 percent of all conference

speakers are men.)

In 2010 she was called one of the “ten

Bostonians who have done the most for the

startup community.” She’s also received

numerous professional awards: Marketing

Sherpa Viral Campaign of the Year, several

PRSA Silver Anvils, Mass High Tech Luminary

Award, Boston Business Journal Woman

to Watch, PR News Gamechanger award

and Boston’s “50 on Fire.” See her TEDx talk

for the Innovation Nights and Innovation

Women stories.

“ We provide legal consultancy in all areas

Areas of expertise

of business law”

- Trademarks / Designs / Patents

- Copyrights / Domain names

- IP Portfolio Strategy, Filing, Prosecution & Management

- Enforcement / Unfair Competition

- Litigation / Alternative Dispute Resolution

- Anti-counterfeiting

- Licensing & Consulting

- Commercial and Company

Campoamor, 18

28004 MADRID – SPAIN

Tel.: +34 91 310 63 63

shernandez@santiagomediano.com

Silvia Hernandez

Founding Partner

Acknowledged by WTR 1000

CHAMBERS & PARTNERS - IP STARS

NexLaw Advocates is a law firm licensed to practice

law in the United Republic of Tanzania and Zanzibar

since 2007.

Our IP services include

• Trade and Service Marks (Tanzania and ARIPO),

• Competition Law,

• Patents and Design Rights,

IP Audit and Due Diligence,

IP Licensing and Technology Transfer,

• Copyright, Media and Entertainment,

IP Litigation,

• Domain management services and online brand

protection services.

NexLaw Advocates,

Patents and Trademark Attorneys,

4th Floor, PPF Tower, Ohio Street/Garden Avenue,

P.O.BOX 75578 DAR ES SALAAM, TANZANIA

Tel: +255 22 2135677 | Fax No.: +255 22 2135678

E mail: info@nexlawadvocates.com

Webpage: www.nexlawadvocates.com

pgg®

Propiedad Intelectual / Paula Guerrero Guerrero

Intelectual Property Managing Attorney /

Abogada

MARCAS | DERECHOS DE AUTOR | PROTECCION DE DATOS |

LICENCIAMIENTO | LITIGIO

TRADEMARKS | COPYRIGHTS | DATA PROTECTION | LICENSING

| LITIGATION

Colina de los Acónitos No. 41-202C, Fracc. Bulevares, Naucalpan, Estado

de México, 53140 México (+5255) 2580.3366 (+52155) 5432.6646 |

pgg@pgg.mx | www.pgg.mx

60

61


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Northon's Media PR & Marketing Ltd

Conference & networking seminar

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Make sure to subscribe to The Women's IP World Annual on our website to

keep up to date with our progress regarding our event schedule and location.

For further information on sponsorship, exhibiting & branding opportunities

surrounding this new event please contact us at info@womensipworld.com

or call +44 (0)203-813-0457

www.womensipworld.com

62 63


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