Read online - IPPro The Internet



Read online - IPPro The Internet
Brain pains
Editor: Mark Dugdale
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Tel: +44 (0)203 750 6022
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Science and innovation are making incredible leaps forward, so much so that scientists from
Ohio State University claim to have grown a nearly complete human brain—in a dish. The
brain, which equals the maturity of a five-week old fetus, is the size of a pencil eraser. It has
an identifiable structure and contains 99 percent of the genes present in the human fetal
brain, according to its ‘growers’.
The brain has a spinal cord, all of the major regions, multiple cell types, signaling circuitry,
and even a retina. Rene Anand, professor of biological chemistry and pharmacology at Ohio
State University, converted adult skin cells into pluripotent cells, which are immature stem
cells that can be programmed to become any tissue in the body, to grow the brain.
He said: “We’ve struggled for a long time trying to solve complex brain disease problems
that cause tremendous pain and suffering. The power of this brain model bodes very well
for human health because it gives us better and more relevant options to test and develop
therapeutics other than rodents.”
Scientists hope that the system will enable ethical, rapid and accurate testing of experimental
drugs before the clinical trial stage, and advance studies of genetic and environmental
causes of central nervous system disorders.
Anand is yet to have his method peer reviewed because he has filed an invention disclosure
with Ohio State University, so until it is scrutinised by other scientists, it’s unclear whether
this is an actual breakthrough. But the possibilities are intriguing—in a decade that has
brought us further expansion of the internet, the exploration of Pluto, driverless cars and
solar-powered planes, we would be forgiven for thinking we’ve had our lot. But a scientist
just grew a human brain—in a dish. Innovation is showing no signs of slowing down, and
just like Anand’s method for growing a human brain, it needs protecting more than ever.
With that in mind, we present this year’s IPPro The Annual. It covers intellectual property
topics such as online brand protection, new gTLDs, and pharmaceutical research and
development in detail, and provides a bird’s eye view of key jurisdictions around the world.
Office fax: +44 (0)20 8711 5985
As ever, we always welcome your feedback, so don’t hesitate to drop us a line.
Published by Black Knight Media Ltd
Provident House, 6-20 Burrell Row
Beckenham, BR3 1AT, UK
Mark Dugdale
Company reg: 0719464
Copyright © 2015 Black Knight Media Ltd.
All rights reserved.
Latin America is waiting
AIPPI president Felipe Claro discusses
issues the association has faced in the
last 12 months, and what it plans to do
during its annual congress in October
2015 and beyond
Give and take: enforcement’s
unintended consequences
Platform and brand owners can take an
unexpected hit from social media site
takedown disputes, say Susan O’Neill
and Janie Thompson on behalf of INTA
Backing the profession
CIPA’s Lee Davies recaps what was a very productive 12 months for the institute
Dealing with digital identity theft
Nathalie Dreyfus of Dreyfus explains the
importance of owning a trademark to
protect a brand’s rights on the internet,
and the various methods for doing so
Top tips for TLDs
Bart Mortelmans of offers
advice for protecting trademarks online
Growing into its own
The new gTLD programme continues to develop and mature, according to Anthony
Beltran of 101domain
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patent database
Deciding when to decide
The lessons learned from the AIA
aftershock prove that ongoing cooperation
and partnership is the best way to achieve
an organisation’s goals, says Matthew
Sekac of Park IP Translations
Perfecting patents
Experts discuss how best to translate a
patent, and what to look for in a partner
One fell loophole:
protecting clinical data
There are evident loopholes in Mexican
legislation regarding IP rights and clinical
data protection framed in the scope
of sanitary regulatory affairs. Soledad
Betanzos-Lara of Goodrich, Riquelme y
Asociados reports
As queasy as 1, 2, 3
Obtaining supplementary protection certificates
in Poland is not as simple as do re mi, says
Magdalena Tagowska of Patpol
Innovation game:
a new series
Where are the next innovations
going to come from? Experts take
a look
OAPI: effective
trademark protection
Vanessa Halle of Nico Halle & Co Law
Firm offers some useful tips for brands
protecting and enforcing their trademark
rights in Africa
When only a wrecking ball will do
The digital space can be a free-for-all for phony operators, so how do you catch the
fake-happy counterfeiters? Experts from WebTMS and share how to limit
the damage caused by online infringers
Closing borders to fakers
and pirates
Amaka Okafor of Stillwaters Law outlines
the importance of an effective border
control regime to fighting counterfeiting
and piracy
Game-changing decisions on
trademarks continue
The Turkish Constitution and trademark
law are at odds, but the courts are
making attempts to clear up the disputes,
says Oktay Simsek of Destek Patent
The Kit Kat case:
a break between the law and commercial reality?
Experts from Christodoulos G. Vassiliades & Co. LLC examine the ways in which Europe
and the UK have recently approached shape trademarks
Service providers
A selection of providers in intellectual property
AIPPI president Felipe Claro discusses issues the association has
faced in the last 12 months, and what it plans to do during its annual
congress in October 2015 and beyond. Tammy Facey reports
What has taken place over the past 12 months for
the AIPPI? What have your members been focusing
on in terms of intellectual property?
We have been following the trademark changes in Europe through
the trademark package initiative and have been participating in
patent harmonisation studies in different jurisdictions.
We are closely following the plain packaging debate before the
World Trade Organization (WTO), where AIPPI (the International
Association for the Protection of Intellectual Property) will deliver a
presentation on IP as a trade resource during the public forum in
Geneva at the end of September 2015. As WTO director Fernando
Azevêdo said: “Trade should provide a seat for everyone at the table”.
AIPPI also recently participated in a multi-jurisdictional copyright
book project that will be available soon.
Our observer status before Office for Harmonization in the Internal
Market (OHIM) has been both demanding and rewarding, and we
plan to return to Alicante in the future.
Given that your next congress is in Brazil, what can we
expect on the agenda for your Latin American members?
AIPPI is a global association that covers more than 120 jurisdictions.
Our national groups, committees and individual members produce
about 100 proposals for consideration in a given year. From those
we identify four key topics that span the breadth of IP issues that
are highly relevant for the IP community. These topics are chosen
for detailed analysis and debate, leading to AIPPI resolutions. We
also select a diverse range of topical panel sessions for our annual
educational programme.
This year, at our congress in Rio between 10 and 14 October 2015,
we will debate trade secrets, free riding (trademarks), copyright
exceptions and inventorship of multinational inventions. We are
also taking into account several topics of interest proposed by the
Brazilian group, so our panels will include sessions on plant variety
protection and green technology. No one wants to be on the outside
of green technology and climate change issues. Even the Pope is
interested in climate change.
How do you filter the proposals, to only end up with
four IP issues?
The first point is that in any given year there will always be more than
four IP issues that AIPPI feels need to be addressed. As mentioned,
the four issues selected annually form the basis of AIPPI’s resolutions.
The power of these resolutions is that they represent the consensus
view of AIPPI, having been studied by the national and regional
groups, debated by experts and passed by vote at the executive
committee. So the selection process is important.
Topics of relevance to the IP issues facing the world today are proposed.
Our programme committee meets to analyse all proposals and shortlists
them for consideration by the reporter general team and ultimately
approval by the bureau. This rigorous process ensures that relevant
and diverse topics are selected for AIPPI’s resolutions. Similar rigour is
applied to the selection of topics for the educational programme run at
every congress, ensuring a balance of matters of global interest as well
as topics of special interest for the region where the congress is held. We
hope that this year we will attract more Latin American attendees keen to
address IP issues they have in the region.
We see that there is not much innovation protection in this part of
America: only 2.5 percent of all patent applications come from Latin
America. This number should rise in the future. We need to create
more awareness of how to protect new technologies. Latin American
people are innovating, but are not always ready or knowledgeable
on how to protect their innovations. This needs to change.
At the same time, there is a kind of anti-IP sentiment, especially
among young people, who ask: “why should I pay for this?” This is
particularly true in the virtual environment, because sometimes IP is
reduced to just vibrations that travel through the air (books, games,
apps, music, pictures, and movies). Even money is transformed into
a fingerprint scan. So they ask: “Why it is so easy to get a file, but
at the same time I am restricted from using it?”
Would education practices raise awareness of IP
and help Latin America become more innovative?
Absolutely. IP awareness programmes are most welcome in the Latin
America region. This should be done at all levels: schools, children,
commerce, judiciary, and so on. Today, we no longer have local
markets in the old sense. Even the smallest markets are affected
by global IP rules and principles. In many cases the customer is the
smartphone that dictates to its holder how and what to buy.
How well positioned are IP systems in Latin America
to encourage innovation in the life sciences?
Culturally, innovation protection is a bit slow in Latin America. Only
during the last few years are innovators realising they can protect
their inventions with a patent or other means of protection. Typically,
the order was to create and publish and do nothing. Innovators are
now realising they can create, protect and then publish.
Efforts are being made in this vein with universities taking the lead
in developing innovation centres, shaping IP policies and spreading
the message to create and protect. It is happening now and it will
create an impact in the near future.
I am optimistic about this. Latin American governments are
also offering tax incentives for start-ups, so it would have
a positive effect, even if it means there is more to comply
with. IPPro
There is a kind of anti-IP sentiment, especially among young
people, who ask: ‘why should I pay for this?’ This is particularly true
in the virtual environment
Felipe Claro, President, AIPPI
Backing the profession
CIPA’s Lee Davies recaps what was a very productive 12 months for the institute
The 12 months over 2014 and 2015 were the first in the Chartered
Institute of Patent Attorneys’s (CIPA) history that the positions of
president and vice president have both been held by women. While a
mark of progress today, we hope that in the near future, the same will
be completely unremarkable.
Also remarkable this year has been CIPA’s lobbying efforts. We have
lobbied at home and abroad on critical issues such as the drafting
and implementation of the Intellectual Property Bill, the unitary patent
and the Unified Patent Court (UPC) and the consequences for UK
PLC of a patent litigation system that was potentially damaging to the
UK profession and the UK’s business interests.
We also built on our relationships with other key stakeholders such
as the IP minister, Baroness Neville-Rolfe, the UK IP Office (IPO) and
the EU Commission. The IP minister delivered the keynote speech
at the CIPA Congress, spoke alongside our president at a policy
roundtable on cyber crime and was guest speaker at the inaugural
meeting of a CIPA initiative to make the IP professions more inclusive
and accessible to all, regardless of background.
Ahead of the UK General Election, we produced our first ever
manifesto, An Economy of Ideas. Through our manifesto, we implored
all political parties to see the IP system as not only a mechanism
for protecting innovation, but also a significant means through which
businesses maximise the return on investment.
Months later, we continue to lobby the government to maintain the
virtuous circle through which investment in new ideas is protected,
leading to profits that can be reinvested in new and exciting projects.
To accompany the manifesto and further illustrate the virtuous IP
circle, we produced an animated video, also called An Economy of
Ideas, which we launched on World IP Day (the video can be viewed
on our website on YouTube).
Significant attention has also been paid to the internal workings of
CIPA. Andrea Brewster, 2013 and 2014 vice president and newly
elected president for 2014 and 2015, embarked on a meet-themembers campaign. Brewster visits CIPA members in their own
offices around the UK, to find out how best CIPA can serve them.
In the same vein, our officers were set the challenge of describing
the unique benefits of being a member of CIPA in three to five
words. And when dealing with patent attorneys, three to five words
can only translate into four words! “Status, Influence, Learning and
Community” (SILC) formed the core of our three-year strategic plan.
Intellectual Property
in an Innovative World
These four SILC headings have helped CIPA to align and prioritise its
activities with a clear focus on what the institute should be doing for
the people it represents. We have already made significant strides in
delivering its objectives.
Internal changes throughout the past year have reflected the foremost
importance of serving members as well as possible. The Informals
(the trainee arm of CIPA) felt isolated and unsupported. We have
brought it closer. Now a formal CIPA committee, it has access to all
of the institute’s support mechanisms, but the trainee attorneys also
retain independence to decide their own programmes and set their
own budget.
Similarly, IP administrators, so vital to CIPA’s work, also sat on the
fringes of the institute, either as associates with few clear membership
benefits, or not joining at all. A new committee has been set up to look
after their interests, its aims being to provide them with a voice at
CIPA, professional recognition and influence, and a clearer career
development pathway. A review and update of the existing—widely
respected—patent administrators’ course, and the introduction of
advanced training modules, is being overseen by the new committee.
compliance with Privy Council requirements for the format of byelaws for chartered bodies.
The last 12 months have also been a busy year for CIPA’s many
committees. An internal governance committee has been established
to ensure that the institute has in place robust governance
procedures and leads on all finance, employment and general legal
matters. A new education and professional standards committee
has also been set up, and is providing CIPA with additional focus on
educational matters.
It is tasked with developing a long overdue set of professional
standards detailing the skills and knowledge required for a twentyfirst century patent attorney, out of which CIPA is building a vibrant
education programme.
The joint business practice committee spent much of its time
focusing on the impact of IPReg’s new client account requirements
on patent and trademark firms. It also spent considerable energy
lobbying against IPReg’s determination that the Money Laundering
Regulations 2007 apply to patent attorneys.
CIPA sought to be as constructive as possible,
however, the committee fears that the Nagoya Protocol
has the capacity to cause severe difficulties for both
academic and industrial researchers
Lee Davies, Chief executive, CIPA
Following the successful introduction of a course covering formalities
skills, CIPA has set up the IP administrators group (IPAG), membership
of which is open to all members of CIPA who have an interest in IP
administration. IPAG runs CPD qualification lectures and holds social
events. It also publishes a newsletter, The PAN, which is produced
each month.
Embracing better technology is also all part and parcel of the ‘improved
service’ CIPA model. We have introduced live web broadcasts from
the CIPA Hall and venues around the country to bring high quality
debate and information to a wider audience of our members and the
outside world.
A resurgent trademark committee provided detailed comments
to Office for Harmonization in the Internal Market in response to
its strategic plan consultation. The committee conducted a survey
of the CIPA membership to gain a better understanding of what
support members who work in the trademark environment want
from the institute. Some 457 members responded to the survey, a
20 percent response rate. The committee discussed the results and
was encouraged that support from CIPA on trademark issues is still
wanted by the membership.
It wasn’t just CIPA’s technology that required modernisation. CIPA’s
bye-laws were unfit for purpose and needed substantial updating.
As a professional body incorporated by Royal Charter, the bye-laws
describe how CIPA is governed, structured and organised to deliver
the objects set out in the charter.
The life sciences committee turned its attention to the European
regulation to enforce the Nagoya Protocol, providing a consultation
response which was well received by the Department of Food and
Rural Affairs. The institute sought to be as constructive as possible,
however, the committee fears that the Nagoya Protocol has the
capacity to cause severe difficulties for both academic and industrial
researchers. CIPA also published a position paper on the subject,
which was well received by government and other major stakeholders.
A working group was set up to consider possible amendments in
greater detail and to prepare a draft set of bye-laws for discussion.
After consulting members, the revised bye-laws will then be
finalised after having been checked by specialist counsel for
This year, the patents committee has had one big item to consider—
the unitary patent and UPC. Here there is great crossover with one
of CIPA’s busiest committees, the litigation committee. When the UK
IPO issued a technical review and called for evidence concerning
secondary legislation to implement the Unitary Patent Regulation
and UPC Agreement, a joint working group of the two committees
prepared CIPA’s response.
representatives of the China IP Society in October, and a group from
the Department of Science and Technology and other technologybased institutions in Guangxi Zhuang Autonomous Region.
The design and copyright committee led the institute’s work on
examining the consequences of criminal sanctions for design
infringement appearing in the IP Bill. The committee was central in
determining CIPA’s lobbying position as we met with Lord Younger,
Lord Clement-Jones and Lord Stevenson to set out our concerns.
Members of the committee met members of the Japan Patent
Attorneys Association during the Asian Patent Attorneys Association
(APAA) Congress in Toronto. CIPA members attending the APAA’s
meeting hosted a reception in Malaysia for members of the Institute
of Patent and Trade Mark Attorneys of Australia and were invited to
a lunch with members of the Taiwan Patent Attorneys Association.
The international liaison committee has also had a very busy year.
Members attended a reception hosted by Institute of Trade Mark
Attorneys at the British Consulate-General in Hong Kong during
International Trademark Association Annual Meeting, to which
members of the All-China Patent Attorney Association (ACPAA)
were also invited. A delegation visited Montreal in June 2014 at the
invitation of the Intellectual Property Institute of Canada (IPIC,) to
take part in discussions with IPIC council and to give a CPD seminar
to IPIC members.
CIPA’s charitable work also continued throughout 2014 and 2015. We
co-founded Professions Week with several other leading professional
bodies, helping young people to get the very best careers information,
advice and guidance. Battle of the Bands made a welcome return to
the CIPA social calendar. Hosted by Radio 1 DJ Scott Mills, the event
saw patent attorneys perform their very best numbers in the aid of
Generating Genius, which helps young people from disadvantaged
backgrounds realise their potential by pursuing science, technology,
engineering and mathematics subjects.
In September 2014, a delegation from the ACPAA was welcomed by
CIPA in Oxford, where they were treated to dinner at the Malmaison
Hotel (formerly a prison!), followed the next day by a meeting with
committee members and a CPD seminar, both held in beautiful
autumnal surroundings at Worcester College.
CIPA is determined to continue to transform itself into a modern
organisation that, as well as providing first-class services to its
members, amplifies its external voice and educates business and the
wider world on the importance of protecting IP.
Members also welcomed several different groups from China to
London, including: a group of judges from Yunnan Province, a group
from Anhui Provincial IP Office, representatives of the Work Safety
Department of the China National Space Administration in September,
With a new website due to go live later in 2015, a major public
event planned in partnership with the Science Museum and other
developments in the pipeline, the coming year will only see CIPA
growing in status and influence. IPPro
Stillwaters Law Firm
2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, Nigeria
Tel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860
Fax: +234 (0) 1 460 5470
Email: [email protected]
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,
corporate and commercial, taxation and litigation. The firm operates from the commercial cities of
Lagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professional
excellence, outstanding result and realize they both require creativity and hard work. We strive to gain
every legal advantage for our clients while upholding the principles behind the practice of law. Over
the years, we have acquired considerable experience and an enviable reputation for rendering quality
legal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,
private companies, financial institutions, government institutions, industrial medium size businesses
and individuals. Our practice is adequately equipped and well positioned to meet the challenges of
legal practice in an ever-changing technological age.
People . Integrity . Service
Trademarks Patents Designs
Copyright Anti-counterfeiting
Border Enforcement Measures Domains
Data Protection IP Litigation
IP Due Diligence Annuities
Transfer of Technology Piracy
Licensing Distributorship Franchising
Customs Related Assistance
Registrations Renewals Assignments
Give and take:
enforcement’s unintended consequences
Platform and brand owners can take an unexpected hit from social
media site takedown disputes, say Susan O’Neill and Janie Thompson
By now, social media takedown policies are no secret to most brand
owners as they are an often-used tool for a trademark or copyright
holder to request the removal of infringing content such as trademark
misuses, posts, videos, images, handles, or other pages from social
media platforms. Recent litigation, however, suggests that platform
and brand owners should exercise caution in initiating takedown
procedures as plaintiffs are now naming both in lawsuits, alleging
unwarranted takedowns.
Social media platforms have been accused of failing to follow their
own policies and procedures and taking down content without cause.
In Barshack v Twitter (6 May 2013), for example, the Barshacks filed
suit in the US District Court for the District of Idaho against Twitter after
the Barshack handle “@SunValley” was revoked and given to the other
defendant, Sun Valley Company.
The Barshacks alleged that Twitter did not follow its own takedown
policy because it did not give them an opportunity to defend
themselves or clear up any misunderstandings before revoking the
handle. Consequently, the Barshacks sued Twitter for breach of
contract and breach of the covenant of good faith and fair dealing,
and sought an order to return their Twitter handle, an injunction
The Barshacks alleged that Twitter did not
follow its own takedown policy because it did not give
them an opportunity to defend themselves or clear up
any misunderstandings before revoking the handle
Susan O’Neill, Internet committee member and partner, INTA and Hanson Bridgett LLP
prohibiting Sun Valley Company from using it, as well as attorneys’
fees, costs, and other expenses.
Fortunately for platform owners, the court granted Twitter’s motion to
dismiss on 19 September 2013, holding the breach of contract claim
could not be sustained under the express language of Twitter’s service
terms and “the implied covenant [of good faith and fair dealing] cannot
be used to imply a contractual obligation that conflicts with the express
terms of the contract”.
Similar allegations against a social media platform were raised in
Complexions v Complexions Day Spa and Wellness Center and
Facebook (18 February 2011).
In that case, plaintiff Complexions filed suit against Facebook in the
District Court for the Northern District of New York because Facebook
took down Complexions’s business page after Complexions Day Spa
and Wellness Center sent a takedown notice.
Among other claims, Complexions sought injunctive relief to restore its
Facebook page, and alleged that the Facebook page was a valuable
asset to its business and its loss resulted in sales and marketing
potential losses that could not be fully remedied by money damages.
The court, however, never reached the merits of the case, because
Complexions voluntarily dismissed the action with prejudice.
In both Barshack and Complexions, the brand owners that filed the
takedown complaints at issue were also named as defendants and
several other lawsuits have similarly been filed against brand owners
that requested takedowns.
In Elizabeth Ordonez v Icon Sky Holdings (30 August 2011), for
example, the District Court for the Southern District of Florida granted
damages and injunctive relief to dancer and choreographer Ordonez
after Icon pursued unwarranted takedown requests.
Ordonez, who used the stage name Elizabeth Sky, claimed that Icon
committed acts of tortious interference with contractual relationships
between herself and social media sites by making misleading
complaints of trademark infringement over her use of the stage name
Elizabeth Sky and related social media profiles.
Additionally, Ordonez claimed that Icon engaged in deceptive and
unfair trade practices by sending messages misrepresenting that she
was committing fraud and by taking over her social media profiles and
Twitter handle. After Icon failed to appear in the case, the court entered
judgement in favour of Ordonez.
The court held that she had contractual relationships with the social
media sites based on the “terms of use” and Icon interfered with
those relationships by making complaints that resulted in Ordonez’s
accounts getting cancelled. Ultimately, the court granted injunctive
relief, $81,000 in damages, and attorneys’ fees and costs.
Failing to investigate before requesting a takedown may pose an
additional risk for brand owners. In Kim v Coach, the plaintiffs, who
were selling Coach merchandise on eBay, filed a class action in the
District Court for the Western District of Washington against Coach
for failing to perform a reasonable investigation to determine if
products advertised on eBay were in fact counterfeit before initiating
the takedown process. According to the plaintiffs, Coach’s complaints
Brand owners should consider how
best to deliver their message to the alleged infringer,
particularly if the individual is a fan or
supporter of the brand
Janie Thompson, Associate, Hanson Bridgett LLP
led to their ads being removed from eBay and their accounts being
disabled. The plaintiffs further alleged that Coach sent letters to them
claiming that they were infringing Coach’s trademarks and demanding
payment to settle the issue.
Based on these alleged facts, the plaintiffs filed claims for violations
of the Washington Consumer Protection Act, misrepresentation of
trademark infringement, defamation, and tortious interference with a
business expectancy.
Coach filed a counterclaim against the plaintiff’s attorneys for
defamation, and the parties ultimately stipulated to dismissal of the
case with prejudice.
Brand owners may also be accused of bullying after initiating a takedown
request or other litigation, as was the case in CrossFit v Alvies (22
January 2014). Plaintiff CrossFit filed a trademark infringement suit
in the District Court for the Northern District of California alleging that
defendant Jenni Alvies infringed its trademark through her use of a
blog at and her use of a ‘CrossFit Mamas’
Facebook page. Alvies accused CrossFit of being a cyberbully and
counterclaimed for declaratory judgment of non-infringement, as well
as unfair competition and false advertising.
One of the allegations stated that CrossFit improperly invoked the Digital
Millennium Copyright Act in its takedown notice to Facebook because
Crossfit’s claims were based on trademark rights and not copyright.
When CrossFit filed a motion to dismiss and argued that they similarly
would have succeeded in a trademark takedown request, the court
declined to “hypothesise about what Facebook would or would not
have done if it had received a trademark takedown notice regarding
Alvies’s Facebook page”.
The court further declined to determine in a motion to dismiss that
Alvies’s Facebook page constituted infringement. Alvies’s other
claims were dismissed with leave to amend. Ultimately, the parties
settled and stipulated to a final judgement.
In light of this recent litigation, social media platforms may be more
cautious in implementing their removal policies. Similarly, brand
owners may be more cautious when evaluating an infringement
accusation before requesting takedowns. In addition, brand owners
may want to be more creative in approaching the issue, especially in
less clear-cut cases.
For example, brand owners should consider how best to deliver their
message to the alleged infringer, particularly if the individual is a fan
or supporter of the brand. In some cases, it may be helpful to see
what can be done through direct communication with the individual or
on a business-to-business level.
Hopefully, with creativity and open dialogue, brand owners can
resolve any issues in a way that works for all of the parties involved—
without any unwanted litigation. IPPro
Just as in the real world, distinctive signs have a major economic value
on the internet. These signs are subject to numerous infringements on
the web due to this economic value.
Historically, on Web 1.0, infringements essentially related to domain
names. Cybersquatting is one such example. This involves a third
party, acting in bad faith, taking undue advantage of the “first-come,
first-served’ principle, on which the registration of domain names is
based, in order to register trademarks on which they have no right, with
the intention of then reselling them to the actual trademark owners.
With the creation of the Google AdWords advertising programme in
the 2000s, a new type of trademark infringement developed on the
internet. This programme gave rise to significant disputes due to
certain websites using the trademarks of third parties as keywords to
direct internet users to their webpages. With the emergence of Web
2.0, today, the infringement of trademark rights can also be seen on
social networks.
Furthermore, on 26 June 2008, the Internet Corporation for
Assigned Names and Numbers (ICANN) confirmed its decision
to give to the public the possibility of creating new gTLDs. The
opening up of new generic extensions involves high economic
stakes. However, it also leads to an increase in cybersquatting
risks. Fortunately, trademark ownership constitutes an effective
tool to protect one’s rights on the internet.
Trademarks and extrajudiciary resolution
disputes relating to domain names
Extrajudiciary dispute resolution mechanisms are alternative methods
for settling disputes available to trademark owners. Such alternative
methods offer a number of advantages as they are transnational,
quick, relatively cheap and are entirely conducted online.
The most commonly used alternative resolution procedure is the
Uniform Dispute Resolution Policy (UDRP). This procedure is only
open to gTLDs, as well as to some country code TLDs. According to
Paragraph 4 of the UDRP, the procedure is only available for disputes
on the following conditions: (i) the domain name in dispute must be
identical or confusingly similar to a trademark in which the complainant
has rights; (ii) the third party must not have any right or legitimate
interest in respect of the domain name; and (iii) the third party must be
of bad faith.
Being a rightful trademark owner is important as the UDRP procedure
is only open to trademark owners. In this light, in a 2006 decision
involving Geopack, the complainant invoked as the basis for the
UDRP procedure its trade name Geopack and domain name, of which the respondent was aware.
The complaint was dismissed because the complainant was unable to
show that it was the rightful trademark owner.
While the UDRP policy provides that the complainant must be the
rightful trademark owner, it is however silent on what trademark
ownership means. Must the trademark be registered? It has been held
in several decisions that complainants do not have the obligation under
the UDRP policy to base their complaints on a registered trademark.
Complainants can therefore rely on trademarks that require no
registration formalities, such as common law trademarks.
To ensure equal treatment, according to case law, all complainants
can rely on a common law trademark. The complainant must then
show that the mark is connected to goods or services, ie, it fulfils its
essential function of indicating the origin of the goods or services. In
the 2000 Julia Roberts v Russell Boyd case, as well as that of Brad Pitt
v Mircea Roibu in 2010, it was held that even though the trademark is
not registered, a personality right can confer rights on a common law
trademark due to sufficient connection with the complainants.
To complement the UDRP procedure, ICANN set up the Uniform
Rapid Suspension (URS) procedure in order to enhance the
protection of rights with the advent of new gTLDs. This procedure
adopts the same conditions as the UDRP procedure, but it is quicker
and relatively cheaper.
The URS procedure was set up to quickly assist rightful owners
in cases of flagrant infringements. Indeed, URS complaints are
much shorter than UDRP complaints (URS complaints are limited
to 500 words while UDRP complaints are limited to 5,000 words).
However, this procedure does not allow for the transfer or removal
of the domain name but it only allows its suspension for the
period of one year. Once again, the procedure is only available to
trademark owners.
The use of alternative dispute resolution methods does not in any
way prevent trademark owners from going through the classical
judicial route in order to protect their rights on the internet.
Trademarks and Trademark Clearinghouse
In light of the infringement risks brought on by the creation of new
gTLDs, and in order to protect trademark owners, on 26 March 2013,
ICANN set up the Trademark Clearinghouse (TMCH). The TMCH is a
database of trademarks filed by their owners. Filing a trademark in the
TMCH has two major benefits.
Firstly, it allows the pre-registration of the trademark with the new
gTLDs for a specific period, called sunrise. Indeed, when launching a
new extension, the registry of the extension must provide a minimum
period of 30 days during which a trademark owner that filed the
trademark with the TCMH gets first priority to register a domain name
bearing this extension.
Secondly, once the sunrise period has elapsed, registering a trademark
in the TMCH allows the trademark owner to be notified about third
party attempts to register a domain name linked to the trademark.
This notification service is called the Trademark Claims Service. The
notification then allows the trademark owner to take action against
the registration of the domain name through the URS and effectively
protect its rights on the internet.
It is necessary to show trademark ownership in order to have access
to this system. The TMCH only accepts registered trademarks, courtvalidated trademarks and trademarks protected by applicable statutes
and treaties. As such, unregistered trademarks, including common law
trademarks, meet the eligibility requirements of the TMCH.
Trademarks and Google AdWords advertising
Trademark ownership can also come in very handy to protect one’s
rights in case of infringements through fraudulent use of a distinctive
sign as a keyword for referencing with Google ads. Since the Google
AdWords case before the European Court of Justice on 23 March
It is necessary to show trademark ownership
in order to have access to this system. The TMCH only
accepts registered trademarks, court-validated trademarks
and trademarks protectedby applicable statutes and treaties
Nathalie Dreyfus, Trademark attorney, Dreyfus
2010, it is now established case law that Google cannot be held liable
for trademark infringements as long as its role is only that of a passive
technical service provider. However, trademark owners can sue the
advertiser if it is impossible or difficult to distinguish the advertisements
from the natural results, which creates a risk of confusion for the
internet user.
In this light, in a case dated 29 November 2011, the French Court of
Cassation held the advertiser liable. The case centred on the issue of the
reservation by a competitor of the trademarks ‘Heden’, ‘Max-In-Power’
and ‘PCA France as keywords in order to redirect, via a sponsored
link, towards websites reselling electronic products marketed under
another trademark. It was impossible or difficult for the internet user to
know whether the products covered by the advertisement came from
the owner of the trademarks used as keywords or from an economically
affiliated company. It was consequently held that there was indeed
a risk of confusion and a fortiori, an infringement of the purpose of
indicating the origin of the trademark.
However, the main advantage of trademark owners in protecting their
rights against an infringement resulting from Google AdWords does
not lie with the courts but rather, in the online mechanism set up by
Google. Indeed, trademark owners can notify any infringement of their
rights to Google by filling out a trademark complaint form.
If the advertiser has no legitimate right, Google will remove the
fraudulently used trademark as a keyword from the Google Adwords
referencing system. In this way, the trademark owner benefits from
a quick, simple and free mechanism to protect itself against such
infringements on trademark rights.
Trademarks and social networks
Lastly, being a trademark owner is essential in order to protect oneself
in case of infringements on social networks. As these platforms
now serve as vital tools for professionals, the usernames on social
networks have acquired an economic value and so are often subject to
infringement. While each social network has its own operating method
and its own characteristics, they are all based on registration followed
by the allocation of a user account. The username is allocated to the
first person who requests it. With the reservation of a username being
free, usurpation is easy.
It is possible for a username to be unavailable for the legitimate
trademark owner because it was unduly registered by a third party. This
practice consisting of registering a username on which a third party
has rights is generally termed as ‘username squatting’. Fortunately,
social networks generally provide an online notification mechanism in
case of trademark infringement.
Article 1(a) of the Facebook Pages Terms states: “A page for a brand,
entity, or public figure may be administered only by an authorised
representative of that brand, entity or public figure.” In case of noncompliance with those terms and in particular in the case of username
squatting, an online mechanism allows the trademark owner to report an
infringement. In case of infringement, Facebook will cancel the username.
To conclude, with the significant development of the internet, it is vital
for brands to protect their digital identities. To this end, it is clear from
the above that trademarks are an essential tool that can prove to be
very effective against various types of infringements. IPPro
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Growing into its own
The New gTLD programme continues to develop and mature,
says Anthony Beltran of 101domain
It has been well publicised that the domain name industry, and the
Internet Corporation for Assigned Names and Numbers (ICANN)
specifically, has missed the mark in the first year of its much lauded
new gTLD programme. ICANN, the US-based organisation whose
responsibility includes developing policy and ensuring the operational
success of the global internet, estimated in early 2014 that its new
gTLD programme would generate 33 million new domain registrations in
extensions such as .guru, .club, .realtor, .nyc and more. ICANN revised
its estimates downward a year later to 15 million names.
my opinion of the success and long-term viability of the new gTLD
programme. My job is to market the value of domain names and to
promote and sell these names to customers around the world. But the
fact is, the industry has a long way to go until new gTLDs become a
fixture on the internet landscape. I’m going to break down some of the
areas in which the industry has fallen short, and the changes I see
happening today, which will help new gTLDs elevate to success.
Where did we land? Six million names or so—not impressive by
any measurement.
It took six years of industry policymaking from 2008 to 2014 until the
first new gTLDs under this programme were launched. The process
was arduous and involved many stakeholders and many trying times
of debate and negotiation. Once the green light was given, new
gTLD applicants quickly shifted their attention to getting their registry
As an executive of a domain name registrar that has invested heavily
in the new gTLD programme, I am of course going to be optimistic in
Public awareness
agreements signed and their extensions launched. It seemed that
actually marketing these hundreds of new products was an afterthought
at first. Back then, the attitude of many of the new gTLD applicants
was that if they put their TLD out, there was so much pent-up demand
that people would buy them by the hundreds of thousands.
Looking back, this was certainly not the case. What we saw was the
launch of the first groups of new gTLDs with lukewarm results. It became
quickly apparent that the only purchasers of these newly available,
‘highly demanded’ domain names were domain investors and to some
extent brand and trademark holders, if only from a defensive registration
position. This lukewarm response continued throughout 2014 with the
release of hundreds of new domain extensions, albeit with a few bright
spots, such as the great effort put forth by the .club registry, whose
volume of active registrations has reached nearly 300,000.
What happened? New gTLD registries pushed these new domain
names through registrars, relying on them to advertise and market all
of these new products through their normal channels. Once customers
saw these new names, they would buy, right? The flaw in this reasoning
was that registrars were primarily faced with the enormous burden of
simply launching this onslaught of new domain names. Launch process
were highly complex and filled with brand new legal, technical and policy
processes. We didn’t see much active advertising or marketing through
registrar channels as they were busy just keeping up.
To put things in proper perspective, the domain industry has seen 21
gTLDs launched since the internet was created 30 years ago. In 2014,
it saw 300 new gTLDs launched. At the time of writing, the total has
increased to more than 600.
Today, we are seeing registries approach their product launches in a
much different way. Strategy has shifted from relying on the registrar
channel to advertise and market all of these new products, to registries
actively promoting and driving customers through the registrar channel.
Registries are becoming much more aggressive in reaching their target
audiences in new and creative ways. Let’s take these as examples:
.Bank: at nearly $1,000 per year for a domain name, the .bank registry
has successfully worked with the American Bankers Association (ABA)
to generate a few thousand registrations. The registry generated
interest in, and positioned the value of, the .bank extension across the
banking industry, directing sales to accredited registrars. .Bank is a
unique TLD because it has very specific requirements geared towards
banking institutions and security. I expect to see this TLD build a very
nice and widely used space for itself over time.
.Sucks: if you have anything to do with intellectual property, you know
what this TLD is about. There has been a lot of controversy around
.sucks and the registry has led some pretty high-profile marketing
campaigns online and offline, making waves along the way. Whatever
your thoughts on .sucks, you cannot deny that it did a good job in
elevating the visibility of the TLD and the new gTLD programme in
general. Brand owners should pay attention to this one. this TLD is an interesting one managed by the registry
Afilias, operator of .info, .pro, and many more TLDs. The registry has
managed to build key partnerships within political communities as
well as sign up various US states to use their TLDs (for example, and in high profile political awareness
campaigns. With presidential elections starting to gain momentum in
the US, political parties are starting to oil up their marketing machines.
Using short, memorable domain names fit extremely well in these very
public efforts.
.Law: Mind + Machines, the registry behind the .law extension, recently
announced a partnership with ALM Media, a leading international legal
media company. As part of the partnership, ALM will roll out more
than 100 domain names with the .law ending across its existing web
properties and new product lines. It will also be marketing the .law TLD
throughout its channels to raise awareness in the industry. The TLD is
restricted to credentialed legal practitioners to provide a trusted space
for the legal community to connect with its clients.
Brand participation
To this point, we have not seen a lot of participation from .brand new
gTLD applicants. This has been by design for many of the 600 or so
companies that applied for their own TLDs. Early on, ICANN granted an
extension until 29 July 2015 for .brand applicants to sign their registry
agreements, which has delayed .brand adoption and has allowed
brands to defer costs and any decision making on their .brand new gTLD
strategies. Many brands have been using a wait-and-see approach to
determine what their next steps would be based on industry feedback
and public adoption of new domain names in general.
Now that the deadline is here, brands are being forced to make
decisions. Once registry agreements are signed, operating costs start
accruing for their TLDs. I expect to see much more activity in the .brand
sector of the new gTLD programme through the rest of 2015. When we
see larger consumer brands roll out their own domain extensions, new
gTLDs will certainly start making their way into the mainstream.
The best is yet to come
We are approaching nearly 400 new gTLDs available to the general
public, at the time of writing. More than half of these launches have
secured fewer than 5,000 registrations. Just over 100 have secured
more than 10,000 registrations. Some of the top TLDs in terms of
registration volume, such as .xyz, .science, .party, and .top, have been
sold for nothing, or next to nothing, and have generated very little
usage. Many others, such as .link, .click, and .property, have been
registered by the registries themselves so they don’t really count. This
is not an indicator of the overall success of the new gTLD programme.
As planned by ICANN, the domain extensions that have been widely
anticipated, as well as many restricted TLDs that are sure to find their
place in various industries across the globe, have yet to be released.
TLDs such as .web, .shop, .music, .film and .app will be rolling out
soon. You can bet that the companies that end up winning and
operating these domain extensions have big plans to push them into
the public mainstream.
Launches to watch in the near future include regulated extensions
such as .insurance and .film, which have the potential of gathering
wide-ranging support in their respective industries. These regulated
TLDs have the ability to reach consumers on a mass scale for specific
purposes, which is what is needed to create a healthy and thriving
domain space.
In summary, we are still very much in the early stages of the ambitious
new gTLD programme. The new gTLD programme continues to
develop and gain momentum and has a long way to go to reach full
maturity. Technology moves fast. Whether you are an IP practitioner
or brand owner, it is still important that you stay informed about the
developments in the space so that you may advise your clients or your
stakeholders properly without being left behind. IPPro
Whatever your thoughts on .sucks,
you cannot deny that it did a good job in elevating
the visibility of the TLD and the new gTLD programme
in general. Brand owners should pay attention to this one
Anthony Beltran, COO/CFO, 101domain
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Bart Mortelmans of offers advice for protecting trademarks online
Managing a domain name registration programme is an unenviable task.
Hundreds of extensions exist in various guises—country-codes, generics
and the old bastions of the internet, including .com—and knowing which
way to point your brand, or how to prioritise trademarks, can easily keep
you up at night.
Luckily, there are number of tips and tricks that you can learn that will
make any registration programme easier to manage.
spammer, who warns of a similar registration in an extension nobody
has ever heard of via email. Do not be fooled by these—trademark
owners don’t need registrations in these extensions, which are often
very remote and sparingly used country code TLDs. Of course, as a
trademark owner, you might be interested in launching in that particular
market in the future, but in that case, close the spam email and seek out
legitimate agents or registrars. The internet is full of phonies purporting
to offer domain name registration services.
First of all, plan extensively. There are many partners out there that will
assist with registrations, but they do not know your products, markets
or customers like you do, so put some thought into where you want
to register your trademarks. It’s also worth remembering that, with the
advent of new gTLDs, there are just too many extensions to make it
possible to protect your trademarks across the board. In the past, many
of our clients would register their trademarks in every TLD and countrycode TLD, but that is no longer a cost-effective solution but for a handful
of trademark owners.
If you notice that someone has actually registered your trademark
under an extension that you do not care about, you should address
this to them and let them know that they should not be doing it. A
standard letter via registered mail will suffice. These instances are not
worth an investment in dispute resolution. The minimum, a cease and
desist letter, is all that is required, because registrations in extensions
that no one uses should not keep you up at night. These domains are
often dropped when they the time comes for them to be renewed, so
you’ll be able to secure them anyway.
The most important extensions will be the ones where your customers
expect to find your brand. Many internet users, especially outside of the
A more proactive course of action would be to block domain names.
Donuts, the owner of almost 200 new gTLDs, offers the Domains
A common pest of trademark owners is the spammer, who
warns of a similar registration in an extension nobody has ever
heard of via email. Do not be fooled by these
Bart Mortelmans, Managing director and founder,
US, expect a trademark to be available in the country code TLD that
corresponds to his or her location. A Spanish internet user might expect
to see the website hosted on a .es domain. You should prioritise your
registrations that way—where you have customers, have a domain
name, because representation wherever you are present is vital.
Protected Marks List (DPML), which allows a single trademark to be
blocked from registration across dozens of extensions, for a reasonably
low fee. The DPML is particularly attractive if you want to employ a
broad strategy, otherwise you should stick to the extensions that are
important to your brand.
Equally important is use. We encourage clients to make sure they
use these domain names. Of course, a trademark owner can park a
domain, but why not put them to better use? If your main website is
under the .com banner, it makes sense to redirect your .fr domain to
your .com address, because a lot of French internet users will expect
to be able to access your website through their local, and most familiar,
country code TLD.
Finally, make sure that you are the actual owner of the domain name.
Often, particularly with small businesses, the wrong person registers
the domain name and the actual owner is not listed in Whois. Make
sure that does not happen. We have seen many cases where a domain
name is held for ransom when there is a dispute over invoices and
payments between the web designer and the business, for example.
Even though not directly related to the domain name, it can be used
as a bargaining chip.
Any registration programme becomes more complicated when new
gTLDs are added to the mix. Today, extensions are no longer limited
to country or memorable generic. Domains are available in hundreds
of extensions, many of them market-specific. The trick is to pick new
gTLDs that correspond to the markets in which you are active, much
in the same way as country code TLDs. For example, it makes sense
to register a domain in .bike if that is your main business, whereas a
building company would not benefit from a .bike registration.
When all is said and done, the most important trick is really the most
obvious—check the availability of the domain name. You must not
wait for your counsel to check whether a trademark is available before
launching a new product or in a new market, for example.
Our website has a search function that allows anyone to search for
domain names across TLDs—it’s that simple. Also, don’t be worried if the
.com is not available. A lot of .com domain names are reserved for sale.
Domain name enforcement
Managing a domain name enforcement programme is as daunting
as proactive registrations. A common pest of trademark owners is the
That might not be ideal, having to pay extra money for that online real
estate, but if you are going to go ahead with a product launch, then it
might be worth the extra expense. IPPro
When only a wrecking ball will do
The digital space can be a free-for-all for phony operators, so how do
you catch the fake-happy counterfeiters? Experts from WebTMS and share how to limit the damage caused by online infringers
Bart Mortelmans
Nick March
Managing director and founder
IP business development manager
Fakes are available online in increasingly large
numbers—who is producing these goods, and how
are they doing it on such a scale?
Nick March: Fakes appearing in the marketplace is not a new
problem. We’ve all seen market traders selling their fake shirts,
jeans and designer handbags and more.This has happened for
years on a smaller scale in the UK, and in much larger scales
abroad, in countries such as Thailand, with a large concentration
of fakes coming from Asia, in particular China.
With the huge increase in the number of people across the globe
getting connected to the internet, it’s no surprise that this has
bought fake consumer goods to the masses.
Organised crime syndicates are often behind the large-scale
production and distribution of fake items. For them it is a means of
creating large sums of money to be re-invested into illegal money
making avenues, to grow their illicit empires. A large majority of
fakes also originate from China, where labour is cheap and it is
not uncommon for the authorities to look the other way.
The internet plays a huge part in enabling these gangs to achieve
such a wide reach, with auction sites, social media and private
advert websites being top of the list. It’s not that these sites condone
this behaviour, it’s simply such a large undertaking to effectively
manage and track, although most well established websites have a
protocol in place for reporting offending products, which hopefully
leads to them being withdrawn from their respective marketplace.
Counterfeiting is a global problem, particularly for
international brands—how can legal counsel tackle
fakes produced abroad?
March: Depending on the budget available, there are a number
of steps that can be taken to increase damage limitation that are
beyond trademark, design and patent registration, which would be
the foundation of your intellectual property protection. Some of the
additional steps that can be taken are:
Customs recordals: lodge customs recordals with the local
authorities. If you’re concerned that fakes are making their
way into a particular jurisdiction, you could check to see if that
particular country has a customs recordal system in place.
This usually involves the formality of filling out forms that
state which products you would like them to look out for (be
it the design, brand name or both) and in some instances,
the actual trademark protection you have in place related to
these brands that you would like them to monitor. With the
formality lodged with customs officials, you will increase the
likelihood of fake products being questioned by officials, who
will contact you to check the authenticity of the product.
Private investigations: there are many companies that
specialise in the niche area of private investigations relating
to IP and you should use one based locally to the problem.
Depending on your budget, they can provide different levels of
data, including simply whether fakes exist, where are the fakes
made and the name of the producer. At the higher end, they
can also be quite cunning in their techniques and enquire about
potential orders so you can gauge the size of the operation.
Other information that can be acquired is how long the operation
has been running and if there are any affiliated companies,
which in all probability are also manufacturing fake products.
Watching service providers: most of the well-known
companies in this arena have already expanded their services
and branched out into this area, which in itself is rather telling
that a large problem exists in the first place. The services
offered tend to range from company to company but in essence
they will be able to perform a health check of your brand
online, ie, how many sites were found selling your product, list
all the sites and products, and so on. They can also continue
to monitor the presence of new fake products appearing in
any online marketplaces. As well as these channels, they
can also check for and monitor new domain names coming
into existence that are clearly infringing on the actual brand
owner’s rights. If domain names registered to counterfeit
manufacturers or indeed anyone else who is not the rightful
owner are found, the domain names are reported to the
brand owner. The brand owner will then have an opportunity
to object via various dispute resolution systems currently in
place. These were setup in order to help the rightful owners of
trademarks take ownership of their related domain names and
to ensure there are no other companies with similar domain
names trying to pass themselves off as legitimate.
How does online enforcement differ to offline
enforcement, and how should brands tweak their
strategies to suit each?
March: When discussing tangible products, the source or origin
of all counterfeits/fakes begins offline, ie, the manufacturing of
the product has to exist for there to be something to pass off as
something else.
large amount of attempts with different cards before a payment is
successful. If a couple of such ‘warning’ boxes are ticked, we will
not simply process the request automatically but first carry out a
manual verification.
This means that a very small number of legitimate registrations are
slightly delayed, but almost all registrations going through manual
verification turn out to be clear attempts to a phishing website online.
Next to that, there is not much a registrar can do before selling
a domain name, but there is also lot that can be done afterwards
and this is the difference between a trustworthy registrar and a
rogue registrar.
Because with most registrars, the registration process is fully
automated, there is no easy way to verify trademark infringements
up front. But if a registrar is known to instantly disable domain
names that turn out to be phishing or spammers, then that registrar
will be of no use to those criminals as the websites registered via
such a registrar aren’t active long enough to actually use them.
How should brands choose which domain names to
register or block?
Mortelmans: There is one golden rule: protect your brand under
the country code TLDs where your clients are located.
Since the introduction of the new gTLDs, for most brands it’s no
longer possible to simply protect their names under every single
TLD. Next to no more than a handful of large brands, such as
Apple and Google, no-one is doing that any longer.
If you’re selling bikes, for example, you’ll probably want your name
under .bike, but you probably don’t want it under .dental.
And then there are a large number of new gTLDs in between that,
which only the brand holder can decide are important or not.
What are the must-haves for any protection strategy?
So in essence, the root of the problem has to be extinguished at
source using people on the ground to physically see the problem,
report on the problem, and hopefully be part of a team to secure
the closure of the illicit locations that are producing large amounts
of fakes.
The online element is really just another avenue for the counterfeit
products to be exploited. As mentioned, this can be monitored
and managed to some degree of effectiveness, however, without
eradicating the source, it’s highly likely that new fake sites trying to
pass themselves off as legitimate will continue to reappear.
Rogue domain name registrars have been pinpointed
as a problem. What do they have to do before selling
a domain? What can brands do?
Bart Mortelmans: While it is not easy to catch criminal registration
requests before they are activated in the automated registration
process, we as a registrar have been able to successfully block most
requests with some simple verifications. It mostly comes down to
spotting strange behaviour in the order and payment process. That
can be stuff such as the country from where the order is placed
not corresponding with the country of the credit card, or seeing a
March: Brands must first establish the elements that require
protection. They then need to set a realistic budget depending
on the size and value of these elements, and prioritise their
importance geographically.
Brands can then set up tools to monitor their trademarks. They
must also routinely re-asses in order to maintain their focus on
what’s important.
Mortelmans: Make sure you have a trusted partner for your
domain name registrations that you can contact. You’ll know
which regions and markets are important for your brand, but your
registrar should be able to assist you with informing you about
which extensions are important for that region or market.
Pick a registrar that offers you all possibilities but doesn’t try to sell
you domain names you don’t need.
Make sure that the domain names you end up registering are
registered in your name and try to put them to actual use. If
you have the domain name, at least have it forwarded to your
website. IPPro
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Deciding when to decide
The lessons learned from the AIA aftershock prove that ongoing
cooperation and partnership is the best way to achieve an
organisation’s goals, says Matthew Sekac of Park IP Translations
As predicted, the first half of 2015 saw many in the patent industry
preparing for a historic spike in US-originating patent applications
that were due for Patent Cooperation Treaty (PCT) national phase
entry on or near 15 September 2015.
This was the consequence of an industry-wide rush to get new
applications on file before the rule changes in the America Invents
Act (AIA) went into effect on 16 March 2013. In early 2014, Park
IP Translations began sharing and preparing for this phenomenon
and its potential impact on the volumes of translation requests,
which we entitled The AIA’s Foreign Filing Aftershock.
The forecast received widespread attention across the industry,
including patent practitioners, trade publications and other
professional service providers. These historic circumstances
introduced a potential risk for patent applicants and language
Planning in advance provides the opportunity to build in a
comfortable buffer of time to ensure that unforeseen circumstances
do not have damaging consequences. Extra lead-time makes it
possible to implement a process with multiple checks that reduce risk
Matthew Sekac, Senior director of strategy, Park IP Translations, a Welocalize company
service providers around the world. Any provider that did not start
to prepare well in advance would create unnecessary risk and
potential financial losses for patent owners and legal practitioners.
In a 2015 survey, Park IP Translations asked a large sample of
patent professionals how much lead time they normally had to work
with when doing a foreign filing. More than half of respondents
reported that foreign filing decisions were made and instructions
sent less than 30 days before the applicable deadline for any given
application. A very small minority, only 2 percent of respondents,
reported they had 90 days or more of lead time.
The campaign to educate the market and clients started in 2014,
however, it stands to have a lasting impact on the patent and patent
translation industries. The bar has been set on how legal professionals
and language service providers must work together to ensure that
source of risk are identified early, requirements are understood, and
potential roadblocks or challenges are communicated and prepared
for well in advance. Constant communication, open feedback and
trusted partner values do matter and can avert hazardous outcomes.
An analysis of data on Park IP’s filing translation projects
corroborates these findings. The data reveals that most patent
professionals are instructed less than 30 days before the applicable
filing deadline, and at least for our casework, roughly one third are
instructed less than two weeks in advance.
Findings based on experience
Preparing for the inevitable
Direct customer experiences and business intelligence obtained
throughout the spike provided an enormous amount of valuable
data about how our clients work and what their processes look like
for making foreign filing decisions.
Understanding the circumstances under which patent professionals
operate is critical for patent service providers. Experience and data
on timing and deadline requirements must be part of the basis for
developing sustainable and effective service offerings that cater to
the needs of the client.
We were surprised at how widely approaches varied for both law
firms and corporations. Some were rigidly organised, timely and
efficient in their approach, while others were ad hoc, inconsistent
and usually last-minute.
When it comes to foreign patent filings, there is some cushion built
into the system. It is helpful that most PCT countries have grace
periods available for submitting translated applications after the
initial filing deadline. For many organisations, utilisation of these
extensions has become routine practice.
What we also found, less surprisingly, was that while the first
group of clients was readily able to take action and make
adjustments, the second group, while receptive to the information
and in agreement with our conclusions, struggled to alter or
accelerate internal practices.
When additional time is not available, scale from service providers
is critical. As an example, Park IP Translations has the flexible
capacity and the process expertise to organise and deploy large
teams of resources capable of executing very large volumes in
very short timetables.
For example, in a discussion with a patent paralegal at a large patent
filing organisation, there was natural agreement that the best course
was to act quickly. Unfortunately, they also expressed scepticism
that anything could be done to get filing decisions sooner.
Scaling capability is essential for helping clients out of some tight
spots. Park IP Translations has been able to deliver translated
materials under extremely challenging conditions for filing around
the world because of a robust, scalable operational infrastructure
and extensive experience managing rush projects. Sometimes this
The sentiment was that it made perfect sense to start early and
they appreciated the guidance and education, but it’s just too hard
to change the way things normally get done.
requires imagination and will, as in one particular engagement
where the final product was hand delivered to a patent professional
about to board a plane bound for another continent, with a filing
deadline mere hours after the flight’s scheduled landing.
These situations are not unmanageable, but they are also not
ideal. Once filing decisions are made, the process of foreign filing
a patent application requires the contribution of multiple parties.
The client initiates and oversees the process, often with the help
of outside counsel or another service provider, and executes the
required documentation. Translators prepare required translations.
Then patent agents prepare the filing documents and submit them
to the patent office with the support of their own staff.
Almost everyone with a role to play in that filing process will be
used to doing their part under pressure—and often routinely.
That’s just how business gets done in many cases. Unfortunately,
this also creates risk. Deadline pressure simply constrains the
ability of all parties to perform their role with maximum care, and
frequently generates additional expense.
It negates the possibility of building in buffers of time to
accommodate unforeseen circumstances. However adept we
have all become at managing these unplanned circumstances,
these conditions simply increase the likelihood of mistakes. And
in this business, even small mistakes can be very costly.
Plan ahead to get ahead
There are any number of reasons why organisations start the foreign
filing process close to the deadline. Foreign filing decisions often
have significant budgetary impact, especially for organisations
such as small biotechnology companies that might need to go out
and raise more than $100,000 just to apply for patent protection in
a half dozen foreign countries.
Understanding the costs is part one of the planning process. The
precise expenses over time may not be clear to decision makers,
which can complicate the cost-benefit analysis and obstruct efforts
to assess the relative priority of applications within a limited budget.
These decisions also frequently require the participation of multiple
stakeholders from different departments, or they might depend on
the results of an incomplete study or other ongoing research.
In many cases, the biggest reason is simply institutional inertia.
Information collected by Park IP Translations in preparing clients
for the AIA spike in 2015 suggests that frequently the only barrier to
starting the foreign filing process early is the ‘get started’ meeting.
At many organisations, the meeting does not usually happen until a
month before the filing deadlines, and not for any particular reason.
Most of the filing decisions are actually pretty straightforward. As
one department head recently suggested: “The filing decisions
on most of our applications that are already made, they’re just in
peoples’ heads.” And the process cannot get started until what is
‘in peoples’ heads’ is formally discussed and put on paper.
Why is it normal to wait until the last 30 days? The most common
response from the groups we have talked to is simply that “they
have always done it this way”. There are many patent professionals
that are almost unfailingly diligent about instructing new foreign
filings well ahead of the applicable deadlines. Perhaps they benefit
from some structural advantage. It should be noted that they come
from organisations both big and small across a diverse array of
industry sectors. Their real source of success is the series of
proactive initiatives they have undertaken to improve internal
procedures for managing their foreign patent filings.
Decide now, wait later
It’s as simple as it is daunting. Organisations that act in advance
are predominantly the organisations that choose to act in
advance—and then follow through. Make no mistake, they benefit
from it. These organisations don’t rack-up late filing charges and
they avoid fees for expedited services.
By starting the conversation early, they can gather information
from service providers and other partners to inform their budget
impact assessments.
Planning in advance provides the opportunity to build in a comfortable
buffer of time to ensure that unforeseen circumstances do not have
damaging consequences. Extra lead-time makes it possible to
implement a process with multiple checks that reduce risk.
These are also the organisations that have the easiest time
avoiding risk from sudden spikes in volume requirements, whether
the source is internal or exogenous. The lessons learned from the
AIA aftershock prove that ongoing cooperation and partnership is
the best way for all to achieve their respective goals—on time and
in all languages. IPPro
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Perfecting patents
Experts discuss how best to translate a patent, and what to look for in a partner
Caroline Chenique
Matthew Sekac
Group business development director
RWS Group
Senior director
Park IP Translations
Maria Nilova
Ina Bjerre Larsen
Managing partner
Patentica LLP
Sergey Sokolov
Mark Dugdale
Key translation specialist
Patentica LLP
IPPro The Internet and Life Sciences
What is the demand like for patent translations compared
to a decade ago?
Caroline Chenique: The number of patent applications has increased
over the last decade and with it the number of international filings
requiring translations. Looking at European patent applications
between 2005 and 2014, numbers have increased by 18 percent,
climbing from 128,665 in 2005 to 151,981 in 2014. The figures
from the World Intellectual Property Organization (WIPO) show an
even more dramatic increase with Patent Cooperation Treaty (PCT)
national phase entries in the world shooting up by 93 percent from
292,800 in 2003 to 565,500 in 2013.
Today, the demand for translations remains strong. The number
of US and European filings in Asia has increased vastly in
the last 10 years, coupled with the soaring number of patent
applications coming out of China. RWS Group has been active in
China and Japan for many years with large teams of translators,
checkers, project managers and business developers based
in our Tokyo and Beijing offices catering for both foreign and
domestic clients.
But it is not only the numbers of patents being filed that is affecting
demand, but also patent legislation. The America Invents Act (AIA)
gave patent owners much to consider. The switch from first-toinvent to first-to-to file in March of 2013 is still a challenge felt by
applicants as they rethink how to approach their filing strategies.
At the moment, there is a spike in the demand for translations due
to the very large number of cases filed before the AIA came into
force and that are due to enter the PCT national phase. We are well
equipped to deal with this increase, but obviously the earlier our
clients place their orders the better.
In Europe, upcoming changes associated with the unitary patent
is the main topic concerning professionals. Once the agreement is
officially implemented, a significant change in how to file throughout
Europe will be felt. That said, we don’t anticipate such an immediate
effect on translation demand as the London Agreement had in 2008,
where in certain countries translation requirements were minimised
or waived.
Maria Nilova: Based on our practice, demand for patent translations
has grown exponentially. Nowadays, many companies, from small
start-ups to multinational corporations, are becoming extremely
concerned about cost efficiency while wanting high quality services,
in particular for patent translations. Traditionally, an applicant keen
to obtain patent protection in a foreign country would fully delegate
all prosecution, including preparing a patent translation, to a local
patent agent. While no-one doubts the quality of this approach,
it is well known how expensive this could be, especially in cases
of multi-country national entries, which are common not only for
multinational businesses but also emerging and promising new
technologies. In all of these cases, it is of primary importance to
provide high quality, affordable patent translations. That is why in
roughly 30 percent of cases, applicants opt for a translation agency
rather than a patent firm.
Matthew Sekac: Demand has grown considerably since 2005.
Trends in demand for patent translations are driven predominantly
by trends in international patent filings, and the trend over the past
decade has been consistent growth. For example, statistics available
from WIPO indicate that PCT national phase entries in non-English
speaking jurisdictions grew by nearly 50 percent between 2005 and
2013 (the most recent year for which data is available).
The data suggests an increasingly global economy with international
organisations focused on developing and protecting their IP on an
increasingly broad scale, with developing economies playing an
increasingly important role in global IP strategies. Between 2005
and 2013, national phase filings in lower and upper middle-income
countries grew by 80 percent. Filings grew by 59 percent in Asian
countries and 57 percent in Latin America and the Caribbean. Trends
such as these are major contributors to the growth in demand for
patent translations.
Another important trend in the market has involved an increasing
level of attention being paid to patent translations, by Western
patent practitioners in particular. Historically, translation fell within
the (nearly) exclusive domain of foreign patent agents. This is an
unavoidable peripheral expense—a single, off-the-radar line-item
buried in a sea of invoices, which was just been part of the cost of
doing business. More and more organisations are now taking a hard
look at line-items such as translation and realising how dramatically
they can add up to growing expenses.
Beyond cost analysis, the internet makes it possible to build a global
network of qualified resources that were once accessible only to
local patent firms in each country. This creates an opportunity for
global organisations to consolidate their translation needs through
dedicated service providers with centralised operations, legal
expertise and uniform quality assurance systems. The result is
improved international patent quality and reduced cost of ownership.
Ina Bjerre Larsen: The overall volume of straightforward patent
prosecution translations (such as application texts for national
filing) has definitely decreased compared to a decade ago—and
probably will in the future, too, due to the unitary patent and general
harmonisation. However, since the market for IP translation services
has changed immensely, the demand for IP-related translations
continues to be high. this relates to IP litigation, opposition, and
mergers and acquisitions and other transactional translations that
originate in our clients’ respective business environments, including
domain names and trademarks.
What is the talent pool like in this area? Are more
bodies needed?
Sergey Sokolov: The market for patent translation in Russia and the
Commonwealth of Independent States countries, including Ukraine,
is immense. Based on our experience, workable high quality patent
translations come from patent firms. General practice translation
agencies in our region, even well renowned ones, generally cannot
satisfactorily cope with patent translation, especially in languages
other than English.
Our translations are hand-made through a three-stage process,
therefore developing a ripe product. We presume other patent firms
follow the same routine. We suppose that translation agencies
specialising in patent translations would create an excellent and
very sophisticated business niche in the coming years due to
growing demand in professional patent translations. Unfortunately,
there are few, if any, educational facilities for patent translation in
Russia to teach the confluence of jurisprudence, linguistics, and a
relevant applied science.
Sekac: From a macro viewpoint, the talent pool in this area appears
mostly adequate to accommodate demand. Generally speaking, the
work is getting done. One important feature of this market niche is
that the aggregate supply of patent translator man-hours is not as
fixed as in other areas.
To accurately render the complex technical material contained in
patent applications, translators must have an advanced level of
competency in their field. They need to be experts. Much of the
work in other translation industry segments is done by professionals
who are translators by trade. Many of the best patent translators are
also researchers, technicians, technical or scientific consultants for
patent firms, or work as patent examiners or even patent agents.
The result is a certain flexibility in the overall supply that can help
absorb fluctuations in demand.
I should emphasise that while many patent translators do not
dedicate their entire work day to translation, they are no less
capable as a result. On the contrary, active professional activity
within their field serves to strengthen, reinforce and maintain their
ability to absorb and engage the material they translate.
There is a trade-off. Skilled patent translators sometimes resist the
use of technology or updated methodologies that require an initial
investment of time to learn. If the worldwide pool of patent translators
has any notable shortcoming, it would be defined as a certain
reluctance to modernise. For patent translation organisations,
technology will be increasingly important to quality and capacity
management as demand continues to grow. This includes an
evolving suite of CAT (computer-aided translation) tools, workflow
management systems, and other productivity-enhancing technology
that requires utilisation by translators to achieve its potential.
Alan Kay
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We have made great progress on this front through proactive
engagement, support, and well-funded training initiatives. We are
prepared, equipped and excited about the future.
Linguistic competency: a basic requirement for any type of translation.
Patent translators must have advanced competency in at least two
languages, and should only work into their native language.
Larsen: Given the Zacco patent translation team’s history—we
actually grew after the London Agreement in Denmark/Sweden
and gained valuable experience in handling the same situation
in Norway, while others downscaled their translation businesses
considerably, or shut them down altogether. We are fortunate that,
today, we employ the best IP translator pool in Scandinavia with a
huge amount of combined experience and skill.
Technical competency: in order to completely and accurately
render the meaning and intent of a patent application in another
language, it requires expertise in the technical field of the invention.
They are a highly adaptive and resilient team and they work
extremely efficiently with state-of-the-art tools. The resilience of
the Zacco translators to changes in the IP services market enables
us to cover current needs quite well—even to the extent that, in
principle, we deliver from day-to-day or even on the same day for
validation translations.
Patent-specific competency: translators also require a firm grasp
of the complex and nuanced language used by patent practitioners.
Patent applications are extremely demanding legal instruments that
are structured carefully in light of a specific set of rules and conventions
governing the legal impact of particular terms and formulations.
However, our business develops constantly—due to changes in the
IP environment, but also due to changes in the businesses whose IP
Zacco handles, so new talent is generally always in demand here.
Chenique: We’re always on the lookout for new translators and there
are frequently opportunities to join our in-house team as well as to
become one of our freelance staff.
We are quite unique in the patent translation business with a large
team of translators based in our offices, in addition to a network of
freelancers backed by our team of in-house linguists who are tasked
with the word for word checking of translations. We certainly think
that more patent translators and checkers are needed, but it’s tough
to recruit the people who meet our exacting standards.
The best patent translators often have additional experience working
as lab technicians, researchers, engineers, patent attorneys, agents
or patent examiners.
It’s not sufficient to know the language and know the technology.
Patent translators must also understand the nuanced language of
patent law to accurately and completely render their source text.
Larsen: First and foremost, the perfect patent translator must be
acutely aware of his/her responsibilities as to the maintenance and
safeguarding the IP rights of any Zacco client.
This means that, apart from the obvious master’s degree in business
languages, he/she must know IP well enough to provide exactly what
the Zacco client needs at any point in time, be it translations for litigation,
In China, for example, we’ve put a programme in place to work
very closely with several local universities. We take on interns
who receive onsite training and who, if they are successful, go
on to join our team. It’s proving a very effective way to recruit
and train our staff in China and to meet the high demand for
translations into Chinese.
“The law is reason unaffected by desire.”
What skills must the perfect patent translator possess?
Sekac: Patent translators are human beings, so none will ever be
perfect. The best patent translators make the fewest mistakes. They
also have the skills, credentials and specialised expertise necessary
to avoid the worst kind of mistakes. For patents, these are mistakes
that materially affect patentability, the scope of coverage, or the
viability of enforcement.
These errors are usually the result of a translator’s failure to fully
grasp the nature of the technology or the application’s carefully
structured language.
The most successful patent translators have years of experience.
We normally require at least six years of experience translating
patents within a particular technical field. They are proficient users
of an array of scientific information resources, such as technical
dictionaries and glossaries.
They should possess three distinct layers of advanced competency,
which are critical to accurately translating patent language:
life sciences
unfair competition
data protection
filing, or for information only, and he/she must always be acutely aware of
reliability in delivery and quality.
The application of a linguistic mindset in combination with business
awareness is absolutely imperative to providing quality and creating
value in an IP environment.
Nilova: First and foremost, a technical background in at least one of
the professional areas, such as mechanics, electronics, chemistry,
pharmaceuticals and biotechnology.
Secondly, a translator needs industry- or scientific-experience, as well as
any practice that provides a general understanding of the professional
language and its usage. Every professional area has its own jargon.
Thirdly, a profound knowledge of patent terminology is needed, as
is a good understanding of the general structure of both a patent
application and legislative regulations in different countries, as well
as patent language nuances.
Chenique: The perfect patent translator is quite a rare bird as he or she
must be a subject specialist, with a degree in engineering or in science
in order to be able to understand and translate the technologies that our
clients cover in chemistry and life sciences, electrical, electronics and
physics, mechanical and engineering.
In addition to their technical qualifications, our translators also
obviously have to be linguists capable of translating a foreign
language into their mother tongue.
Trim: 92(W) x 120mm (H)
The third prerequisite is to be able to translate the source text as
drafted, to comply with the specificities of patent language, and most
importantly, to translate without either broadening or narrowing the
scope of the patent.
Ultimately, though our translators are a key part of a team of
professionals who ensure that our clients receive only the highest
quality, we have the following systems in place to ensure quality:
ISO 9001-certified procedures with proofing of all translations by
a checker; project managers troubleshooting for any potentially
unclear terms in the source text; and ensuring compliance of
translations with the specifications of local patent attorney firms and
the national patent offices.
The quality of a translation can make or break a patent
application—but how are you keeping costs down
without compromising on quality?
Sokolov: Our experience shows this can be achieved through our
three-stage process. Firstly, by employing highly educated exindustry professionals with a profound knowledge of the profession,
keeping in mind today’s inventions deal with cutting edge
technologies. They do the primary translation.
Secondly, by training professional patent agents having very good
native language skills and possessing good knowledge of patent
terminology. They do the proofreading of the primary translations.
Thirdly, by having a patent attorney review the claims. As a result,
we differentiate between industry knowledge and patent skills,
combining them and taking the best of both worlds.
Less work would definitely mean compromised quality. We realise
that compromised quality cannot be permanently sold as a firstrate product. When under pressure we focus on vital parts of an
application to still provide the best possible solution within the
constrained budget or restricted timeframe.
Larsen: Obviously, this aspect became increasingly important
during the recent financial crisis—everybody was affected by this.
Translation is now a commodity and it is consequently subject to
fierce competition.
However, it is imperative to keep in mind that the quality of a
translation can make or break an IP right. It goes without saying
that we cannot compromise on quality and delivery, but at Zacco
we apply an overall very cost-conscious mindset that allows us to
operate quite well in our segment, which is not a discount segment
as we truly believe in the value created by our unique IP product
and our unique IP competences.
An example of this is that we find it very important to also give full
attention to the source text and to report on anything that seems
amiss—a service that is included in our translation fee and which
will, obviously, save money in the long run. IP competence and
translation skills combined may greatly reduce the costly fuss that
might otherwise occur.
We also do our utmost to ensure that Zacco clients get exactly
the product they request—to allocate the correct resources staffwise and time-wise. A translation order is always analysed before
embarking on the job, to identify the intended IP use and what
resources are needed to reflect the value of the translation to
our client and to safeguard the scope of its rights. If in doubt, we
ask. Finally, Zacco’s internal handling and administration is at a
minimum, since the Zacco team can deliver within all combinations
of the official European patent and Scandinavian languages.
Chenique: Having our own team of translators in combination
with a network of tried and trusted freelancers who receive high
volumes of work from RWS has been instrumental in ensuring we
not only offer the highest quality, but also are cost-effective.Our inhouse tools and systems also boost productivity and quality. RWS
Group’s own patent database, PatBase, for example, ensures
that our translators use the most appropriate terminology for a
particular applicant or field.
In addition, streamlined work flows, centralised project management
and leading edge translation technology are all factors that enable
us to provide the top quality for which RWS Group is renowned, as
well as competitive pricing. Our clients face relentless pressure on
their costs and we have to constantly find new ways of guaranteeing
quality and delivering additional economies.
The end-to-end solution that we now offer for foreign filing, thanks
to our acquisition of inovia, the world’s number one filing platform
for PCT national phase entries, is an example. Together with inovia
we bring our clients the best in patent translation combined with the
best in filing, and all for a great price that is difficult to beat.
Sekac: Scale is one of the straightforward ways to keep costs
down without compromising quality. At Park IP Translations, we
have been very successful at leveraging our growth to build a lean
and robust production infrastructure. We have established strong
relationships with capable and reliable partners, affording us
dedicated and flexible capacity with room to grow further. We
have also negotiated competitive buy rates that reflect our
volume without putting our partners in a compromising position.
Ultimately, keeping costs down without compromising on quality
means prioritising quality. Volume gives you leverage over your
suppliers. They will go a long way to avoid losing your business, if
they depend on it. We have found that the best partnerships are truly
partnerships—mutually beneficial relationships that can be counted
on to serve their purpose.
Technology is also key, such as translation memory (TM). When
used effectively, TMs can significantly boost translator productivity
and generate escalating cost savings as the database of translated
material is built up over time.
Patents don’t offer the biggest opportunity for leveraging previously
translated material, however, it does help in some cost savings. TMs
can also improve quality by streamlining terminology management
and improving the consistency of translated language.
Technology drives every facet of our process. We have a talented
team of full-time developers that allows us to really empower
imagination. We have developed cutting-edge tools for measuring
productivity, managing quality, forecasting, interacting with clientside users and systems, and automating production workflows.
These tools make our services smarter, with lower costs, at higher
quality levels, and with data to back it up. IPPro
J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
One of the oldest and leading IP companies in Bulgaria
Professional, cost effective services and quality advices
Areas of practice:
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PO Box 1152, BG-1000 Sofia, Bulgaria
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
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Bob Stembridge
Lawrence Liberti
Senior analyst
Thomson Reuters IP & Science
Executive director, Centre for
Innovation in Regulatory Science
Thomson Reuters
Dr Kirk Gallagher
Mark Dugdale
D Young & Co
IPPro The Internet and Life Sciences
Who will be developing the next new drugs and therapies,
and in what areas will these innovations happen?
Bob Stembridge: We do have quantitative ways of showing which new
drugs and therapies will be making a big impact on the market. Our
recent 2015 Drugs to Watch report highlights 11 potential blockbuster
drugs that we forecast to earn more than $1 billion by 2019. It’s set to
be a massive year with eight more blockbuster drugs expected than in
2014. It’s leading some commentators to raise the question of whether
we are seeing a renaissance in big pharma.
According to the figures from earlier in 2015, drugs predicted to pass the
$3 billion mark with 2019 sales forecasts include: Bristol-Myers Squibb
and Ono Pharmaceutical’s melanoma drug Opdivo (nivolumab) at $5.68
billion; Regeneron Pharmaceuticals and Sanofi’s Praluent (alirocumab)
for hypercholesterolemia at $4.41 billion; and Novartis’s Entresto (LCZ696) for chronic heart failure at $3.73 billion.
In terms of innovative areas, new advances are happening in
immuno-oncology, a rapidly evolving field for drug development.
The aforementioned Entresto from Novartis represents a first-inclass heart failure drug that has recently received Food and Drug
Administration (FDA) approval. Other trends include innovation in
treating cholesterol and the entry of more convenient all-oral regimes
for hepatitis C virus.
Simultaneous to all this is the rise of biosimilars. Although it is not an
exact copy, a biosimilar is highly similar to an approved biologic and
is developed on a designated biosimilar regulatory path. While the
world’s first official biosimilar was approved by the EU back in 2006,
it has taken up until March 2015 for a biosimilar to receive regulatory
approval in the US.
There are many players innovating in this area, with Pfizer, Eli Lilly,
GlaxoSmithKline, Amgen, Biogen Idec, Merck and Sanofi among
those entering the biosimilar space. A few are doing it on their own,
some are partnering, and others are investing in joint ventures or
biosimilar developers. They see biosimilars as a new revenue stream
to help offset losses for blockbuster drugs and biologics that recently
have come off patent.
Another advantage is that biosimilars are offered at lower prices than
the original. Remsima, an infliximab biosimilar, is famously almost 70
percent cheaper in Norway. Reduced pricing means that biosimilars can
be available to more patients than the original, expensive biologics ever
could and is a great benefit to healthcare providers in many countries
that are under ever-increasing financial strain.
Kirk Gallagher: For some time now, big pharmaceutical companies have
been increasingly looking to smaller biotechs, start-ups and academic
departments to provide innovation in the life sciences. The smaller
organisations are often better positioned to undertake highly specialised,
higher risk research that may prove disruptive in a particular field.
However, they are less well financed and remain reliant on the larger,
more established pharma companies to fund the later stages of drug
development and clinical trials. This dynamic environment has resulted
in an increasing number of collaborations and licensing deals, with many
acquisitions taking place around particularly promising technologies.
Hot areas for innovation at the moment include immune-based therapies,
where the body’s own immune system is harnessed to fight diseases
such as cancer (immuno-oncology) and which may prove to be curative
for previously intractable fatal or chronic diseases.
In addition, gene therapy is beginning to fulfil its promise despite
significant early setbacks that many thought would completely undermine
the field. Gene therapy is a powerful therapeutic approach that enables,
for example, the editing or deletion of defective genes in an organism, or
the introduction of new genes to provide a targeted effect. High-profile
recent developments include the restoration of vision in patients with
previously incurable hereditary diseases.
Cell-based therapies, such as stem cell therapy and autologous cell
therapy, are also becoming more prevalent. Autologous approaches are
advantageous, because a patient’s own cells are removed, treated and
then transplanted back, which avoids the risk of provoking an immune
response. Notably, these cell-based methods often draw heavily on gene
therapy approaches and may find utility in treating neurodegenerative
diseases such as Parkinson’s, or spinal cord injury.
Significant breakthroughs have also been made in gene editing
techniques, which further increase the power of gene therapy as a whole.
Using new editing technologies, DNA may be precisely inserted, replaced
or removed from a genome using artificially engineered nucleases such
as transcription activator-like effector nucleases (TALENs) and the
CRISPR/Cas system. These approaches show promise for the treatment
of diseases such as HIV and sickle cell disease, and prevention of
mitochondrial disease by destroying mutant mitochondria.
How well positioned are IP systems around the world
to encourage innovation in these areas?
Stembridge: Pharmaceutical research has always been a costly and
risky business. A Tufts Center for the Study of Drug Development
report, issued in November 2014, indicates that after discovery and
development of a drug, it now often takes more than a decade to gain
marketing approval at an estimated cost of over $2.5 million. But that
is but a fraction of the overall average cost of getting a drug from labtop to patient at an eye-watering estimated $359 million, according to
the California Biomedical Research Association. Add to this that only 10
percent of candidates make it to human testing, and only one in five of
these are ever approved for human usage, and the business risk is clear.
Global intellectual property systems are designed to address this risk by
enabling sufficient protection to provide opportunity to realise suitable
returns over the lifetime of the protection before drugs come off patent
and generic competition ensues.
As in all areas of the law, this is a difficult balance to achieve and in
practice has led to some imperfections, which are in a continual process
of review and adjustment to correct each swing of the pendulum.
Conventional IP systems provide for patent protection of 20 years from
the date of filing. Given that the total time for development and approval
of a new drug is now somewhere north of 12 to 15 years, there is scant
time to left realise realistic returns on investment.
In recognition of this, various systems exist globally to compensate
for regulatory delay and provide additional protection after expiry of
the patent. In Europe, this is known as a supplementary protection
certificate (SPC). An SPC normally has a maximum lifetime of five years,
but that can be extended to five-and-a-half years in certain specific
circumstances. SPC protection is available in all EU countries, although
there is no Europe-wide registration system and application has to be
made in each individual country.
Equivalent systems are also available in the US (patent term restoration,
providing from one to five years), Japan (five years), South Korea (up
to five years) and other countries. Notably, patent term extensions for
regulatory delay are not available in China and much of South America
(Chile being the exception).
In the area of genetic medicine, there was a period during which
protection for specific genes from the human genome was available
in the US, but this has effectively now been reversed by the 2013 US
Supreme Court ruling in the Molecular Pathology Association v Myriad
Genetics case that human genes cannot be patented.
IP systems around the world continue to evolve to ensure the balance
between incentivising and rewarding innovation and providing costeffective treatments for diseases globally is maintained.
Gallagher: The European Patent Office (EPO) has a well-developed
and relatively positive approach to innovation in these fields. As a result,
it is generally possible to obtain useful patent protection covering these
highly innovative technologies in Europe. Controversy does remain,
however, particularly in fields that are seen by some as interfering with
the fundamental mechanisms of life. Developments in jurisprudence are
continually working towards balancing support of the industry, and the
associated worldwide health benefits that this may bring, with potential
moral and ethical concerns.
A prime example relates to the patenting of stem cells. Current EPO
guidelines follow the approach of the Court of Justice of the European
Union (CJEU) in the Brüstle case: to be patentable in Europe, a stem
cell invention should not be directed to a human embryo, nor should
the subject matter of the patent have required the prior destruction of a
human embryo at any time in the past. However, inventions relating to
adult stem cells or human induced pluripotent stem cells (where adult
cells are ‘reprogrammed’ to take on pluripotent capabilities so they can
be used as a source of stem cells for therapeutic use) are still patentable.
A more recent decision from the CJEU has clarified that parthenotes
(activated unfertilised oocytes that may be used for the production of
human stem cell lines) are not excluded from patentability. Although a
parthenote is capable of developing into a blastocyst-like structure, it
cannot develop into a human being because it lacks paternal DNA, and
is therefore not considered to be a “human embryo” under European
law. This decision has been welcomed by those working in the field as
providing clarity on the patentability of certain stem cell types and may
extend the scope of patentability in the field of stem cell research.
Although not without fault, European patent practice is generally
supportive of developments in the life sciences and provides reasonable
certainty to applicants.
In stark contrast, the US patent system is currently going through a very
challenging period for life sciences applicants in the wake of the Myriad
and Mayo Supreme Court decisions.
The Myriad decision (June 2013), which concerned the patenting of
human genes, is particularly relevant. In Myriad, the Supreme Court
held that human genomic DNA is not patent eligible, because the
same gene occurs in nature. However, non-naturally occurring cDNA
sequences were held to be patent-eligible matter. The US Patent and
Trade Office’s (USPTO) interpretation of this decision went further than
this seemingly narrow finding, with the office issuing a set of guidelines
in March 2014 that truly changed the fundamentals of what is patentable
in the biotechnology field.
The guidelines essentially excluded from patentability any naturallyoccurring substance, regardless of its isolation, purification or utility,
unless it was “significantly different” to what was found in nature. After
receiving a great deal of criticism, the USPTO issued revised guidance
in January 2015, which somewhat reversed its position, and provides a
more lenient test for patent eligibility.
The new USPTO guidance first asks whether a claim is “markedly
different” from a natural product. Under this test, a difference based on
function, or a chemical, physical or biological property can lead to patent
eligibility. Even if a claim fails this test, it may still be patent eligible if,
under a second test, the claimed subject matter provides “significantly
more” than a naturally occurring product. From the specific examples
given in the guidance, it is clear that “significantly more” will be assessed
more leniently than the approach stipulated in the previous guidance.
Further guidance has just been issued (July 2015) that will hopefully
provide further clarity. However, there is a still a great deal of uncertainty
as to how best to obtain US patent protection for innovation in the
biotechnology field, and applicants are facing serious difficulties in
the prosecution of currently pending cases. This can only be seen as
detrimental to technologies with the potential to revolutionise healthcare.
Patent practice is developing quickly in China. However, there is
generally a high burden set for life sciences applicants in providing data
in patent applications at the filing stage. The Chinese patent office often
requires granted claims to be limited to the reported working examples
and as a consequence it can be difficult to achieve a commercially useful
scope of protection based on early data. With reference to the state of
the industry discussed above, this can prove particularly problematic for
small biotechs and academic applicants who may file early and in very
new technologies with the aim of securing investment. Some success
can be achieved by providing later data to support broader claims,
however, this is an area where a more open-minded support of earlystage innovation would be beneficial.
How can regulations be strengthened/relaxed to
encourage innovation in new drugs and therapies?
Lawrence Liberti: Timely access to safe and effective new medicines of
societal value is a goal of medicine developers, regulators and payers.
More flexible regulatory approaches, prompted by the need to accelerate
reviews of novel HIV therapies in the 1980s, have been formalised
in many jurisdictions, providing options to accelerate the regulatory
review process, particularly in response to unmet medical needs. These
streamlined yet robust pathways form an important part of accelerating
pharmaceutical innovation.
We characterise these priority and accelerated approaches as
facilitated regulatory pathways (FRPs), ie, those designed to facilitate
the availability, review and/or approval of medicines where there is an
unmet medical need by providing alternatives to standard regulatory
review routes. FRPs are increasingly commonly used in the US (for
example, breakthrough therapy designation, or accelerated approvals)
and growing in Japan and to some extent Europe.
In this manner, drug development is expedited, and in best cases, patient
access to medicines. Most recently, in the US, the 21st Century Cures
Act has been designed to provide for a variety of procedures to stimulate
innovation, tied in part to expedited access to important new medicines.
Initiatives to investigate adaptive licensing schemes are being piloted by
the European Medicines Agency (EMA) and others to characterise best
practices in expediting patient access to medicines.
FRPs may increase the communication and level of commitment
between the developer and the agency, can give a larger role to effects
on surrogate end points, and may move some of the burden of evidence
generation from the pre- to the post-authorisation phase. Effective use
of these modalities can improve the efficiency of the innovative medicine
development process.
We reviewed approvals of new active substances (NASs) by the FDA,
EMA, and Japanese Pharmaceuticals and Medical Devices Agency
(PMDA) between 2005 and 2014 in order to evaluate companies’ use
of the different FRPs available and the role they play in expediting
the approval of new medicines. Data for 825 NAS approvals between
2005 and 2014 were collected from the public domain. The number of
NASs approved was 281, 242 and 302 for the FDA, EMA and PMDA,
respectively. Priority reviews made up 47, 7 and 28 percent of the NASs
approved by the FDA, EMA and PMDA.
Comparing priority with standard review approval speed, FDA priority
reviews were faster (243 days) compared to the standard (456 days)
in 2014. EMA priority reviews were faster (264 versus 432 days), as
were PMDA priority reviews (275 versus 359 days). Therefore, in
2014, the median approval times for priority reviews were very similar
across the agencies.
Over the last decade FRPs have played an important role, particularly at
the FDA and PMDA in accelerating the approval of innovative medicines,
thereby enabling treatments for diseases to be made available to
patients in a timely manner, including orphan diseases, where little or no
effective treatment options exist. The continued refinement of FRPs will
contribute to innovative ways of accelerating the development of safe
and effective medicines.
Gallagher: As previously discussed, smaller life sciences businesses
are increasingly relied on as the ‘engine houses’ of innovation.
The emergence of governments that want to build science/tech hubs
should be encouraged, and innovation can be strengthened by increasing
tax breaks and funding opportunities for innovative businesses.
The provision of improved financial support will allow small life sciences
businesses to survive longer on their own before needing to find a
commercial partner.
This will provide vital time for the companies to develop their ideas to
a sufficient extent to convince potential investors. With the increasing
complexity of many modern therapeutics, more time is often vital to
optimise technologies to a satisfactory level.
In addition, governments and regulatory bodies need to continue to
keep up with the fast pace of developments in the life sciences field. The
technologies under development show vast potential, but at the same
time are highly complex and may present significant safety, moral and
ethical issues. Mis-regulation may result in the premature implementation
of developments with adverse consequences, which may erode public
trust. These complexities should not be avoided, but need to be tackled
promptly and decisively.
By way of example, cell-based therapies present many regulatory
challenges. Despite a rich pipeline of autologous cell therapies in
clinical development, to date few have made it onto the market.
This may partly be because the technology faces substantial regulatory
challenges. Cell therapies are highly complex products and accordingly
it is difficult to assure quality and apply the same requirements as
applied to a typical biologic.
Furthermore, the risk of the therapies is more akin to surgeries, such as
transplantations, than to a typical drug. New regulatory frameworks are
urgently needed to support and ensure safety in these areas.
Although not strictly regulatory, improved education of academics and
small businesses in the importance of their IP would also be desirable.
For example, although many academics are often keen to publish
ground-breaking results as quickly as possible, if patent filings are not
made in time these publications will likely jeopardise patent protection.
As a result, new technologies may be neglected because investors will
likely not wish to back them if others can later freely enter the market
without undertaking any of the costly development work. Grace periods
of a limited time frame are provided in some countries that provide a
safety net against such damaging disclosures by inventors.
However, these provisions are not uniform worldwide and are notably
absent in Europe. Although discussions are taking place regarding the
introduction of a grace period in Europe, no agreement has currently
been reached. Progress in harmonising the application of grace periods
would provide welcome certainty to applicants and reduce the loss
of rights caused by the assumption of this safety net being available
everywhere. IPPro
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The pharmaceutical industry is a very important element of Polish
economy. In 2013, the Polish pharmaceutical market was placed
as the sixth among the largest markets in Europe with the annual
turnover amounting to approximately €4.4 billion (IMS Health
2013). Poland has also been named as one of the ‘pharmerging’
markets, which by 2017 is expected to exhibit significantly higher
growth rate than mature markets, such as the US, Japan, France,
Germany and Spain (IMS Pharmerging White Paper, 2013), even
though the pharmaceutical market value, per capita, did not
exceed €115 in 2013.
This economic importance of the pharmaceutical sector has also
been reflected in intellectual property rights prosecution and
their enforcement in Poland. Patent term extension has become
one of the most important aspects of IP right protection for
pharmaceuticals in Poland.
Patent protection guarantees 20 years of market exclusivity for a
medicinal product, covered by a patent, starting from the filing date
of the patent application. The only way to extend patent protection
for a medicinal product is to apply for the grant of a supplementary
protection certificate (SPC).
The idea of patent term extension is relatively new in the Polish
patent law system. The SPC is a protection right granted in all
EU member states, including Poland, for medicinal and plant
protection products based on the following EU regulations:
Regulation (EC) No 469/2009 of the European Parliament
and of the Council of 6 May 2009 concerning the SPC for
medicinal products, which has replaced Council Regulation
(EEC) No 1768/92; and
Regulation (EC) No 1610/96 of the European Parliament and
of the Council of 23 July 1996 concerning the creation of an
SPC for plant protection products.
This specific form of protection was also implemented in the Act
of 30 June 2000 on Industrial Property Law (Journal of Laws, No
119, item 1117, 2003 with later amendments) in 2002 and became
a part of the Polish legal system after Poland’s accession to the
EU in 2004.
The SPC was introduced for medicinal and plant protection
products due to the fact that the length of time of effective patent
protection for these products is shorter, since they cannot be
introduced into the market directly. These products can only
be sold after a marketing authorisation is obtained. In order to
obtain such a regulatory approval, time-consuming studies and
long administrative procedures are required. These procedures
significantly limit the duration of the monopoly resulting from the
patent protection alone. Therefore, the SPC aims to compensate
the patent owner for the lost time of patent protection.
The introduction of the SPC has increased IP protection of medicinal
products by awarding additional protection, which begins after patent
expiry. This extra protection lasts up to five years. The protection for
medicinal products resulting from the SPC can be extended even
further for an additional six months (ie, paediatric extension of the
SPC), however, only if specific requirements indicated in Regulation
No 469/2009 and related to paediatric clinical trials are fulfilled.
Many interpretational issues regarding the SPC requirements
defined in Regulation No 469/2009 has been raised by different
courts and authorities in EU member states. These issues resulted
in abundant judgements of the Court of Justice of the EU (CJEU),
whose aim has been to clarify the requirements for SPC grant and
ensure their uniform application throughout the EU. Although the
CJEU judgements have, in general, settled many questionable
issues, they have often raised further questions regarding the
SPC and its grant conditions. This demonstrates that matters
concerning the SPC are not always very straight forward and
require additional explanation to accommodate new types of
medications that have been recently developed.
A lot of different questions are raised at the national level during
the prosecution of the SPC applications by the national authorities.
The Patent Office of Republic of Poland (PORP), which is the
competent industrial property office for the examination of SPC
applications, as well as SPC paediatric extension applications,
in Poland, has developed quite an overzealous substantive
examination procedure.
One of the most problematic issues in Poland is the requirement of
protection of the product, ie, the protection of the active ingredient of
the medicinal product, by a patent in force. Of course, many aspects of
this problem have already been addressed in judgements of the CJEU.
However, the PORP still, somehow, manages to find new obstacles
relating the scope of patent protection and thus the SPC itself.
For example, in one of the recent cases, an SPC application was
rejected because the basic patent, ie, the patent selected as the
basis for the SPC application, referred to a chemical compound
as such (without making a reference to any physical form of
the compound of the invention), whereas the first marketing
authorisation referred to a specific physical form of that very
chemical compound.
In particular, the summary of product characteristics (SmPC), a
legal document approved as part of the marketing authorisation
of every medicinal product, which contains information for health
professionals on how to use the medicinal product safely and
effectively, mentioned a specific crystalline form of the compound
covered by the basic patent. Since the specification of the
basic patent did not comprise any information with respect to
that crystalline form of the compound of the invention, the SPC
application was rejected.
For the assessment of the SPC requirements, the PORP did not
consider the fact that the basic patent conveyed protection for
the active ingredient in any form, since it contained a product
claim for the new chemical entity. However, the case has not been
yet finally resolved, as an appeal has been lodged against this
rejecting decision.
Another issue that arises from time to time during examination of
SPC applications before the PORP is the issue of the first marketing
authorisation. According to current practice, the SPC application
can be rejected if a similar medicinal product is already on the
market, even though the PORP is unable to present the marketing
authorisation for the product it juxtaposes as allegedly similar and
already placed on the market.
The SPC application can also be rejected if the product comprises
a combination of active ingredients (A+B), and an earlier marketing
authorisation for one of the products was obtained (A) with the
SmPC indicating that it is possible to use this product (A) in a
combination therapy with the other product (B). In this case, the
PORP has indicated that a mere fact that a combination therapy
is mentioned in the SmPC of an earlier marketing authoriation is
enough to question the marketing authorisation for the product
comprising both active ingredients A and B. However, this decision
of the PORP was reversed by the Regional Administrative Court.
In general, during SPC examination the PORP seems to examine
criteria that do not correspond to those named in Regulation No
469/2009. The PORP often refers to patentability criteria, such as
sufficient support and obviousness, which should not be examined
at all during prosecution of an SPC application.
The problems also arise during examination of the request for
paediatric extension of the SPC. Frequently, the PORP reexamines validity of the already granted SPC before it makes a
decision with respect to paediatric extension. In one of the cases, a
request for paediatric extension was rejected, because, according
to the examiner, the SPC did not meet the transitional provisions
governing the SPC grant. The PORP did not take into consideration
the fact that in order to raise such an objection, the SPC should be
invalidated, whereas the paediatric extension should be granted
since all of the requirements for such an extension were fulfilled.
Another significant problem is the requirement for too much
documentation when the paediatric extension is to be granted,
based on a mutual recognition procedure instead of a central
EU procedure. The PORP requires copies of all marketing
authorisations from all member states, including the SmPC.
Moreover, the PORP can raise an objection with respect to a
national marketing authorisation, if the PORP suspects that it is
not the current marketing authorisation. At the same time, the
PORP is not familiar with the practice of local authorities that issue
the marketing authorisations in every EU member state.
It is also very difficult to convince the PORP’s examiner that
in the mutual recognition procedure, the statement indicating
compliance with an agreed completed paediatric investigation plan
will not necessarily be issued by the European Medicines Agency.
Therefore, obtaining an SPC extension is much easier based on
the marketing authorisation granted in the centralised procedure.
Finally, it needs to be emphasised that the practice developed
by the PORP with respect to SPCs has also influenced the
examination of patent applications. Nowadays, the PORP very
often refers to the judgements of the CJEU related to SPCs
while examining the patentability of pharmaceutical inventions.
Moreover, the PORP also often refers to the preamble of the
SPC regulation, wherein it is indicated that all the interests at
stake, including those of public health, in a sector as complex
and sensitive as the pharmaceutical sector, should be taken into
account. This argument is very often used to restrict the scope of
protection of pharmaceutical patents.
Therefore, in addition to the problematic issue that result from the
SPC regulation itself, in Poland we have to deal with additional
problems that are very surprising and don’t result from ambiguity
these regulations, but rather from the PORP’s viewpoint that it is an
authority responsible for keeping the balance between the interests
of all parties, including public health and the pharmaceutical sector.
However, it should be underlined that this alleged responsibility
does not result from any regulations and so makes SPC and patent
prosecution in Poland quite challenging. IPPro
During SPC examination the PORP seems to examine criteria
that do not correspond to those named in Regulation No 469/2009.
The PORP often refers to patentability criteria, such as sufficient
support and obviousness, which should not be examined at all
Magdalena Tagowska, Patent attorney, Patpol
One fell loophole: protecting clinical data
There are evident loopholes in Mexican legislation regarding IP rights
and clinical data protection framed in the scope of sanitary regulatory
affairs. Soledad Betanzos-Lara of Goodrich, Riquelme y Asociados reports
“So, here I am. A brand new drug molecule, thoroughly researched
and developed, for more than 10 years. Many monetary expenses
and time investment have been put together to push me forward.
I have been thoroughly clinical-trialled and proven to be safe and
effective and a bunch of clinical-related data has been generated
in the process. I have been named ‘the innovator’.”
“Naturally, now is the time to market me, in order to reach the
target patient population that I was developed for, and so, help
to improve people’s health. But hang-on: before this happens, I
need to go through strict sanitary regulatory approvals, qualify for
intellectual property protection, and somehow secure the clinical
data generated.”
“Only that one thing concerns me. I’ve heard that at some point,
others will try to supersede my identity with the aim of also
improving people’s health, but at a lower cost than mine. And
that maybe, for being approved, they will be authorised to use my
clinical data. I know they call themselves ‘generics’.”
“What is then out there that will secure IP and sanitary protection
for me, while guarding my clinical data for the longest possible
time before the entry of these generics?”
This stream of consciousness, pondered by a new and innovative
drug molecule—if indeed this was possible—probably depicts the
fears that all innovative pharmaceutical companies have. So, how
do jurisdictions protect both an innovator’s IP rights and clinical
data, and maintain a sanitary regulation intelligibly linked with
these, while still providing affordable and high-quality medications
for the population?
This is not an easy question to answer and the approaches can
be diverse. The regulatory frameworks needed for intertwining
IP rights, clinical data protection, sanitary regulatory affairs and
access to medicines, do not exist everywhere in the world.
Mexico has achieved much in this respect, although some areas of
opportunity are still to be covered. IP rights protection, enabled by
the Mexican Institute of Industrial Property (Instituto Mexicano de
la Propiedad Industrial, IMPI), is linked to the sanitary regulatory
affairs of the Federal Commission for Protection against Sanitary
Risk (Comisión Federal para la Protección contra Riesgos
Sanitarios, COFEPRIS), via the so-called Linkage Gazette: a
biannual publication from IMPI in which patents in-force covering
allopathic medicines, second-medical uses, and formulations
thereof, are disclosed.
Seeking IP protection for a new molecule via patenting is standard
in Mexico, as long as the patentability requirements set out by
IMPI are met. Via this procedure, the innovator will benefit from
20 years of protection for the active ingredient, during which, no
other party can exploit the same molecule for any given purpose,
being this a second medical use, a pharmaceutical composition,
or a process.
Simultaneously (but not always), the innovator may apply for a
marketing authorisation for its drug, through the local sanitary
authority. In Mexico, if the application is successful, a renewable
five-year marketing authorisation for the drug will be issued.
In this context, under the current Mexican legislation, a generic
company may apply to COFEPRIS for a marketing authorisation
for a product that falls within the scope of a patent listed in IMPI’s
Linkage Gazette, within three years (for allopathic drugs and up to
eight years for biocomparables) prior to the expiration date of the
corresponding Mexican patent, according to the Bolar exception. It
is worth noting that the marketing authorisation will not be issued
by COFEPRIS until the Mexican patent in question expires.
Curiously enough, the timeframes for both procedures do
not always match. The timeframe for obtaining a marketing
authorisation normally lasts between three to six months and
up to one year, whereas a patent application will normally take
longer, approximately four years, on average. Therefore, there is
a mismatch between the time that the innovator can benefit from
having an active ingredient monopoly and the time during which it
can generate revenue from the monopoly.
These guidelines were drafted with the
intention to be in line with the minimum time term set
by NAFTA and advise that a marketing authorisation
holder will have a five-year exclusive right
Soledad Betanzos-Lara, Lawyer, Goodrich, Riquelme y Asociados
So far, so good. However, since 2008, the Mexican regulation was
amended to include a requirement for the approval of generic drugs
before COFEPRIS on the sole basis of interchangeability tests.
That is, generic companies may obtain marketing authorisation
for a generic product by merely providing dissolution profiles or
bioavailability studies.
As the reader might infer, this intrinsically means that a generic
product applicant indirectly benefits from the safety and efficacy
studies already carried out by the innovator, which, in part, might
explain why generic products are almost always cheaper than their
innovator counterparts.
These facts uncover a clear disconnect between IP rights, sanitary
regulatory affairs, and clinical data protection, not in the sense that
there is a breakage in the confidentiality of clinical data, but in the
lack of observance to international related treaties to which Mexico
is bound.
Considering that the Mexican Constitution positions a hierarchy
of international treaties approved by the Mexican Senate over
Federal Laws, clinical data protection in Mexico should in theory
be strictly subject to either of the following two legal international
dispositions: the North American Free Trade Agreement (NAFTA)
and Trade-Related Aspects of IP Rights (TRIPS) Agreement.
Indeed, these are back by further local legislation, including the
Mexican IP Law, Mexican Health Law, Mexican Health Products
Regulations, and the Mexican General Health Law Regulations for
Health Researching.
On the one hand, while the Mexican IP Law establishes that
undisclosed information in an application for marketing authorisation
shall be regarded as a trade secret, it also states that information
submitted in order to obtain an authorisation to produce or market
chemical products shall be protected according to the international
treaties to which Mexico is a signatory.
On the other hand, as part of these two treaties, a minimum fiveyear term of indirect reliance on data protection/exclusivity would
be expected to circumvent prejudicial commercial use of the
confidential information made available by the innovator to the
local sanitary regulatory authority, COFEPRIS.
However, there are no provisions in any of the local Mexican
regulations containing a ‘non-reliance’ period as established in
international treaties such as NAFTA and TRIPS. This means that
during a data exclusivity period, the innovator’s pre-clinical and
clinical trials data should not be referenced in the regulatory filings
of another company (typically a generic company) for the same
drug substance.
This period, according to Article 1711 of NAFTA, shall begin from
the date on which the marketing authorisation is granted to the
requesting party. NAFTA’s wording is subject to interpretation
as regards to a reliance on the product safety and efficacy data
contained in the dossier, because Section 6 of Article 1711 reads:
“Each party shall provide that for data subject to Paragraph 5 that
are submitted to the party after the date of entry into force of this
agreement, no person other than the person that submitted them
may, without the latter’s permission, rely on such data in support
of an application for product approval during a reasonable period
of time after their submission.
For this purpose, a reasonable period shall normally mean no less
than five years from the date on which the party granted approval
to the person that produced the data for approval to market its
product, taking account of the nature of the data and the person’s
efforts and expenditures in producing them. Subject to this
provision, there shall be no limitation on any party to implement
abbreviated approval procedures for such products on the basis of
bioequivalence and bioavailability studies.”
In an attempt to provide for this missing link, in 2012, COFEPRIS
published on its website a memorandum providing guidelines
for observing the absent regulatory data package exclusivity
agreement. These guidelines were drafted with the intention to be
in line with the minimum time term set by NAFTA and advise that
a marketing authorisation holder will have a five-year exclusive
right, during which its clinical-related information cannot benefit
or be used to support a third-party application for registration of
a generic drug. Nevertheless, generic companies are invited to
provide their own standard clinical trials to obtain the corresponding
marketing authorisation if they so wish.
Theoretically, this sounds very promising. Practically, not
much has been achieved: not a single relevant case in Mexico
entreating international data protection treaties has been filed
as of today.
Mexico has accomplished enormous advances in this respect,
although there are still some evident loopholes in the Mexican
legislation regarding IP rights and clinical data protection framed in
the scope of sanitary regulatory affairs. Considering the imminent
global tendency towards stronger and harmonised IP protection,
Mexico will have to make its legislation fit. IPPro
a break between the law and commercial reality?
Experts from Christodoulos G. Vassiliades & Co. LLC examine the ways in
which Europe and the UK have recently approached shape trademarks
But following a series of decisions, beginning with the one from the
UK IPO and leading up to a referral by Justice Richard Arnold to
the Court of Justice of the EU (CJEU), it seems that this is more
than a mere feud between chocolate giants. The courts seem be
making a bold statement about registering shapes as trademarks,
thereby clarifying that although the same criteria apply, the extent
of their application differs. This is in line with a more general trend
towards giving applicants of shape trademarks a “harder time”
when applying for such registrations.
Indeed, it can be argued that the decisions reached so far were
taken (as far as distinctiveness is concerned) because of Nestlé’s
inability to present palpable evidence that the Kit Kat’s shape
(without the word mark) has been sufficiently branded, advertised
and recognised among the relevant public.
Nonetheless, it seems that the landmark principle that this case
establishes is the extension of Article 3(1)(e)(ii), specifically the
term ‘technical result’, beyond the function of the goods to the
manner in which they are manufactured.
On 8 July 2010, Nestlé submitted an application to the UK IPO
for the registration of its four-finger shape as a trademark. The
application, which was only considered on absolute grounds, was
accepted ex-officio.
Cadbury opposed the decision of the UK IPO by arguing the
following, which may be divided into two main grounds:
Ground one: Article 3 (1) (b), (c) and (d) of the Directive
2008/95/EC; and a lack of acquired distinctiveness as per
Article 3(3).
Ground two: Article 3(1)(e)(i); and/or Article 3(1) (e) (ii).
Both parties presented expert evidence in support of their
arguments. Seemingly, the most contributive of these experts
were: the senior project engineer for Cadbury, Mark Robertson,
and Philip Malivoire for Nestlé, who was responsible for the two
surveys conducted in 2007 and 2012, respectively, on behalf
of Nestlé.
Robertson said there are two main means of producing
confectionary: enrobing and moulding. He rejected enrobing as
a means of achieving Kit Kat’s shape on the basis that it “does
not provide a sufficiently strong base or attachments between the
individual fingers”.
He then proceeded to explain that the release of chocolate moulded
products required sloping sides with minimum angle of 8 to 10
degrees (Kit Kat having a 14 degrees angle). He also explained
that the grooves indicated to the consumer where to break the
bars. It was, nonetheless, submitted on cross-examination that the
initial concept of a new product is produced by the marketing team.
Robertson was found by the IPO as a credible and honest witness,
with the latter adding considerable substance to his submissions.
The fact that almost the entire shape of Kit Kat was explained
in simple technical terms was a blow on Kit Kat’s case, at least
in relation to the second ground. As far as the first ground is
concerned, the blow came from Nestlé itself.
Malivoire conducted two surveys for Nestlé; one in 2007 and the
other in 2012. The first survey was found as non-compliant with
the criteria set out by the court in recognising such surveys. The
most important factor for non-compliance was the high degree
of speculation in which the person answering the question
embarked upon.
The second survey was accepted as evidence. It showed at least
half of the respondents recognised Kit Kat’s shape.
However, neither this nor the fact that Nestlé heavily invested in
promoting the product, assisted Nestlé’s case, and justifiably so.
The ground
of acquired distinctiveness
suffered a big blow, which
Nestlé could have avoided
in commercial terms,
if the commercialisation
and the branding and
marketing strategy
for Kit Kat was more
consistent throughout
the years and more
in line with their ultimate
purpose, namely that of the
registration of Kit Kat as a
shape mark
Christodoulos Vassiliades, Managing partner, Christodoulos G. Vassiliades & Co. LLC
Cadbury’s opposition to the decision of the UK Intellectual Property
Office (IPO) to accept the registration of Kit Kat’s shape as a
trademark was seen, by many, as the cherry on top of a war without
a herald, especially following the opposition by Nestlé of Cadbury’s
application to register its Dairy Milk colour, purple, back in 2014.
Especially as far as Kit Kat’s branding is concerned (in relation to
the four-finger shape), the same could not be proved in numbers.
Nestlé was only able to provide that between the years of 1996 and
2007, it spent between £3 and £11 million per annum promoting
the Kit Kat product in the UK alone—most of which was directed
toward the four-finger version.
However, presented with the relevant evidence, the examiner could
not identify the shape mark that was the subject of the application.
Further, between 2008 and 2010, Nestlé spent between £850,000
and £4.4 million in promoting the products, again without being
able to determine the percentage of that expenditure dedicated
in the promotion of the shape in question (2010 being the year in
which Nestlé applied for registration of the shape trademark).
Although it remained indisputable that the market share of Kit Kat
was between 1 and 2 percent of the chocolate market during that
period (a percentage, which, if taken in context, is considerably
high), the ground of acquired distinctiveness suffered a big blow,
which Nestlé could have avoided in commercial terms, if the
commercialisation and the branding and marketing strategy for Kit
Kat was more consistent throughout the years and more in line with
their ultimate purpose, namely that of the registration of Kit Kat as
a shape mark.
The UK IPO based its decision on the strict letter of the law,
therefore deciding that Kit Kat’s shape could not be registered due
to both grounds: the first, because acquired distinctiveness could
not be proved; and the second, because the shape of Kit Kat was
dictated by the natural shape of the goods and by the technical
results it produced (although the registration for the shape mark in
relation to cakes and pastries was accepted).
Justice Arnold, although clearly in favour of the decision of the
UK IPO, seemed eager to clarify three main questions, which he
referred to the CJEU:
In order to establish that a trademark has acquired a distinctive
character following the use that had been made of it within
the meaning of Article 3(3) of the directive, is it sufficient
for the applicant for registration to prove that at the relevant
date, a significant proportion of the relevant class of persons
recognise the mark and associate it with the applicant’s goods
in the sense that, if they were to be asked who marketed the
goods bearing that mark, they would identify the applicant; or
must the applicant provide that a significant proportion of the
relevant class of persons rely upon the mark (as opposed to
any other trademarks that may also be present) as indicating
the origin of the goods?
Where a shape consists of three essential features, one of
which results from the nature of the goods themselves and
two of which are necessary to obtain a technical result, is
registration of that shape as a trademark precluded by Article
3(1)(e)(i) and/or (ii) of the directive?
Should Article 3(1)(e)(ii) of the directive be interpreted as
precluding registration of shapes that are necessary to obtain
a technical result with regard to the manner in which the
goods are manufactured as opposed to the manner in which
the goods function?
As with the previous decisions on this matter the advocate
general’s opinion on the first question was clear: “The function of
a trademark is an essential element of its distinctive character.”
Therefore, it is not enough to associate a shape mark with another
trademark of the same trade origin. The shape mark needs to be
able to function as a trademark, ie, lead the consumer straight to
the trade origin and not to another trademark (in this case, to the
word mark Kit Kat).
This, as the very essence of trademark law, seems to have been
applied in a very firm manner. The advocate general’s application
of this principle to combined trademarks and to trademarks existing
in conjunction with other trademarks was stated as follows:
trademarks that are used in combination or in conjunction with
other trademarks—and have acquired distinctiveness as a result—
may be individually registered, provided that they are capable
of functioning as a trademark (individually), ie, are capable of
distinguishing the goods of one undertaking from those of another
and therefore used as a batch of origin (which was essentially a
reinstatement of advocate general Juliane Kokott’s opinion in
Nestlé (C-353/03)). After all, the decision does not deviate from the
common standard practices, namely that despite the many functions
of a trademark, the only function that is officially recognised is the
denotation of origin. Nonetheless, in a commercial context applied
specifically to the merits of this case, one could argue differently.
The overall impression drawn by the decisions mentioned above
is that the shape mark was or could easily be associated with
Kit Kat, albeit not directly with Nestlé. However, for a chocolate
giant such as Nestlé, which holds 1 to 2 percent of the chocolate
market in the UK, the association of Kit Kat with Nestlé, and as
a result, the shape mark with Nestlé, cannot be but a simple
mathematical equation.
In light of the above, one would wonder whether the strict
application of the letter of the law was intentional or due to a
number of contributing factors: the first being the lack of supporting
evidence in relation to distinctiveness, and the second, the need to
make sure that shapes are limited to design protection (which, after
all, is only limited to 25 years of protection).
If the first ground is taken in isolation, and considering the bold
example of the Coca-Cola bottle, one could argue that commercial
considerations do step in, or are at least considered along with
legal as well as policy considerations in finding distinctiveness
(provided that such commercial considerations are well supported,
which was not the case here). But if this case is perceived in its real
context, Article 3(1) (e)(i) and (ii) seem to have been the main factors
used to determine the outcome.
The advocate general here found that two grounds, namely shapes
dictated by the nature of the goods and shapes that are necessary
to obtain a technical result, cannot be applied cumulatively,
although they can be applied separately to the same mark.
As far as the nature of the goods is concerned, the advocate general
clarified that Article 3(1)(e)(ii) is not and should not be limited to the Lego
(C-48/09) and Philips v Remington cases (C-299/99).
Rather, the interpretation approach adopted was purposive
rather than literal meaning that the public interest behind this
provision dictates that a technical result could result from both:
the function of the goods as well as the manner in which these are
manufactured. So long as any one of these is applied, the shape
mark should not be registered.
As a result of the application of both grounds:
The basic rectangular slab was held to fall within Article
The presence of breaking grooves was held to fall within
Article 3(1)(e)(ii);
An angle of more than 8 to 10 degrees fell within Article 3(1)
(e)(i) and the depth of the same within Article 3(1)(e)(ii); and
The number of breaking grooves and fingers was held as
been determined by the desired portion size.
Therefore, in contrast to the acquired distinctiveness ground,
the first ground serves as an important public interest function.
It prohibits the protection of technical solutions or functional
characteristics, which would and should normally be protected
under patents or designs, and for whatever reason they
cannot, from being protected as trademarks (exclusively and
permanently). Further, it provides a ‘fair trade’ defence to
competitors in the sense that it protects competitors from being
deprived of technical solutions that the consumer may seek or
demand to see in their products.
Admittedly, the opinion of the advocate general was expected
and, as with the rest of the decisions on this matter, is well
supported. Now it remains to be seen whether or not the CJEU
will follow the leads of the preceding judgements, although it is
highly unlikely that the EU’s highest court or the national court
will rule to the contrary. IPPro
It provides a ‘fair trade’ defence to
competitors in the sense that it protects them from
being deprived of technical solutions that the consumer
may seek or demand to see in their products
Ourania Vrondou, Advocate and head of intellectual property department,
Christodoulos G. Vassiliades & Co. LLC
OAPI: effective trademark protection
Vanessa Halle of Nico Halle & Co Law Firm offers some useful tips
for brands protecting and enforcing their trademark rights in Africa
With the marked increase in trademark registrations at the African
Intellectual Property Organization (commonly known by its French
acronym OAPI), one can assume that most brand owners are
aware of the importance of protecting their trademarks.
OAPI is an organisation comprised of 17 member states: Benin,
Burkina Faso, Cameroon, the Central African Republic, Chad,
Comoros Islands, Congo Brazzaville, Cote d’Ivoire, Equatorial
Guinea, Gabon, Guinea Bissau, Guinea Conakry, Mali, Mauritania,
Niger, Senegal, and Togo.
An application filed at OAPI is protected in all 17 member states.
Once filed at OAPI, a brand owner has the exclusive right to exploit
its trademark, as well as prevent third parties from making use of
identical or similar trademarks for similar goods or services without
authorisation. The maintenance and protection of a trademark can
take multiple forms.
through a process known as ‘restoration’. This procedure must be
brought within six months of the grace period elapsing, and no
later than two years of the renewal date.
As per Article 21(6) of Annex 3 of the Revised Bangui Agreement
(RBA), where a mark has not been renewed, it can only be registered
for the benefit of a third party in respect of identical or similar goods
or services when three years from the renewal date have elapsed.
However, note Article 25(4) of Annex 3 of the RBA, which further
states that third parties that start to use the mark after it has not
been renewed will have the right to continue doing so.
With these two seemingly paradoxical articles, brand owners are
encouraged to renew their trademarks within the deadline, rather
than delay and renew during the grace period or via restoration.
This is because allowing the trademark to lapse creates loopholes
for infringers to exploit, as they have the option to simply use the
trademark, rather than register.
Renewals and related procedures
The main form of maintaining a trademark is by renewal. A
trademark is valid for 10 years from the filing date, and is preserved
indefinitely through successive renewals done every 10 years.
When the trademark is not renewed within the 10-year deadline, it
can be renewed within a six-month grace period.
If this six-month period elapses and the trademark has still not been
renewed as a result of circumstances beyond the control of the
brand owner, there is a final opportunity to restore the trademark,
Opposition actions
Upon registration of a trademark, it is published in the OAPI
official bulletin. An opposition action must be brought within six
months of this date. This option allows a brand owner to oppose
the registration of a mark that is similar or identical to its own and
relates to the same goods or services, where such a similarity is
liable to mislead or confuse the public.
This could be seen by some as an average means of protection
at OAPI because it does not reject trademarks on grounds of
similarity—an interested party must oppose the trademark.
Furthermore, an applicant can commence commercialisation of a
trademark immediately upon filing at OAPI.
When the timeframe from filing, registration, and eventual
publication is taken into account, a period of at least two years
can be envisaged. Also, during an opposition proceeding, the
applicant of the allegedly infringing trademark has the right to
continue exploitation until a decision is issued by OAPI cancelling
the disputed trademark.
It could be validly argued that the allegedly infringing party will
have had at least two years to exploit the disputed trademark, to
the detriment of the brand owner.
Cancellation action
Cancellation actions can be brought before the civil court, when a
registered mark has not been used on the territory of at least one
OAPI member state for an uninterrupted period of five years.
One important aspect of the OAPI system is that use of a brand in
at least one OAPI member state satisfies the requirement of use.
Brand owners are therefore not compelled to exploit their brands in
all the 17 member states.
The burden of proof regarding use of a mark rests with the owner
of a mark, and use by another person shall be recognised as use,
subject to endorsement by the owner. Note that for use by another
party to be enforceable in OAPI, it has to be recorded in the special
register of marks.
Invalidity action
Invalidity actions are brought before the civil courts at the request
either of the Office of Public Prosecution, or any interested party.
The grounds for bringing this action are the same as that required
for an opposition action (before OAPI). The only difference seems
to be the absence of the requirement to bring the action within six
months of the publication date in the OAPI official bulletin. The
presumption of lengthy trials before the civil courts of the member
states sometimes deters brand owners from using this route.
It is therefore advised that in order to avoid going through the
courts, brand owners should use a professional monitoring service
to reliably and promptly inform them when a similar or identical
trademark is published, so that an action can be brought before
OAPI (as an opposition action), which though lengthy is relatively
faster than court.
Infringement action
Infringement proceedings are brought by the brand owner before
the civil courts and judged as summary proceedings. Note that for
infringement seizure, security is always required of foreigners.
In order for an infringement seizure to be effective, brand owners
are advised to seize at the port of entry, ie, before the articles are
disseminated into the market.
Once the infringing products are circulated further in the territory
or sent to other member states, it becomes more complicated
and costly to monitor and bring infringement actions in several
member states.
It is therefore important to deal with these matters in a timely and
prompt manner, as well as retain a reliable and diligent lawyer in
the relevant member state to guide and assist during the seizure
proceedings. IPPro
One important
aspect of the OAPI system
is that use of a brand in
at least one OAPI
member state satisfies the
requirement of use.
Brand owners are
therefore not compelled
to exploit their
brands in all the 17
member states
Vanessa Halle, Director, intellectual property, Nico Halle & Co Law Firm
Any brand owner wishing to effectively protect its trademark
using this route should retain a reliable and professional watch
service to monitor the registry and inform on any similar and or
identical trademarks.
Closing borders to fakers and pirates
Amaka Okafor of Stillwaters Law outlines the importance of an
effective border control regime to fighting counterfeiting and piracy
Counterfeiting and piracy are presently acknowledged as great global
threats to creativity. Counterfeiting is the act of unlawfully imitating
or reproducing items/works protected by the law of trademarks,
patents, or copyright, while portraying them as originals. This is
usually represented in goods illegally bearing registered/wellknown trademarks. Piracy, on the other hand, is the unauthorised
reproduction and distribution of such protected items/works without
necessarily representing them as original. This is more common in
copyrighted works, for example, the reproduction and sale of books
or CDs containing video recordings.
Nigeria, like many other states, has various laws and regulatory
measures against counterfeiting. Nevertheless, this illegal trade
has not only grown over the years but has metamorphosed into a
formidable, sophisticated, and largely ignored sector. For instance in
Nigeria, pirated items are presently being sold openly on the streets.
The International Federation of Phonographic Industry (IFPI), upon
research conducted in 10 individual music markets including the UK,
Germany, and the US, reported that approximately 20 billion songs
were illegally downloaded in 2005. On 19 and 21 March 2015, it
Due to the transnational nature of counterfeiting, one of the most
effective ways to control it is to employ an effective border control
measure to prevent the importation and circulation of these counterfeits.
Enforcement of IP at Nigeria’s international borders is undertaken by
several regulatory bodies which include: the National Agency for Food
and Drug Administration and Control (NAFDAC), Nigerian Customs
Service (NCS), Standards Organization of Nigeria and the Nigerian
Copyright Commission. These bodies are governed by various national
and international laws/treaties and they include: the Customs and Excise
Management (Disposal of Goods) Act (CEMA); the Trade Related
Aspects of IP Agreement popularly referred as the TRIPS Agreement;
and the Paris Convention for the Protection of Industrial Property.
TRIPS Agreement
The TRIPS Agreement was established primarily to address the
insufficiency of the international IP enforcement regime. A significant
innovation of this agreement is the introduction of border measures.
The agreement allowed genuine manufacturers or right holders,
reasonably suspecting the importation or exportation of pirated/
counterfeited versions of their works, to make applications to the
appropriate authorities (administrative or judicial) for the seizure of
such counterfeits at borders by customs officials.
Nigerian Customs Service and other agencies
Customs is principally the ‘gatekeeper’ of every nation. Being the
agency in charge of all goods entering, transiting and leaving the country
through the international borders, its role in combating smuggling, and
more specifically, counterfeiting, can never be overemphasised.
In discharging this function the Nigerian Customs Service (NCS) has
an enforcement, investigation, inspection, and intelligence department,
which, among others, organises all anti-smuggling measures at
international borders. It should be noted that irrespective of the NCS’s
corroboration with various agencies in this regard (as will be examined
shortly), the service performs the lead role.
The NCS sets out various guidelines to assist in implementing its mandate.
In 2010, the Presidential Task Force for 100% Inspection was established
to prevent the importation of contraband goods and ensure the complete
inspection of all consignments selected for physical examination. It
involves a strategy where inspections are intensified on consignments
with more tendencies to default, than on every shipment.
was recorded that US Customs and Border Protection (CBP) officers
seized more than $430,000 of counterfeit perfumes at the Champlain
Port of Entry and $65,200 dollars in fake $100 bills coming from
Ecuador at John F. Kennedy International Airport. More recently, on
17 July 2015, it was reported that CBP officers seized more than
1,100 pieces of fake designer jewellry valued at approximately
$562,729 (manufacturer’s suggested retail price) at the port of
Louisville, Kentucky. The Business Action to Stop Counterfeiting and
Piracy (BASCAP) has estimated the value of these illegal trades to
be globally worth $1.7 trillion.
It is therefore incontrovertible that counterfeiting is a global issue.
However, what is worrisome is that Nigeria has become a dumping
ground for counterfeit goods and a safe haven for perpetrators of
this vice, a situation that can largely be attributed to the lack of
sensitisation and weakness of the Nigerian intellectual property
enforcement regime.
The NCS has additionally established an independent unit, the Customs
Intelligence Unit (CIU), with trained officials who are responsible for
obtaining and gathering information necessary to combat counterfeiting
and piracy.
A very significant development is the NCS’s partnership with other
federal agencies such as the Standards Organization of Nigeria (SON),
National Agency for Food and Drugs Administration and Control
(NAFDAC), National Drug Law Enforcement Agency (NDLEA) and
Nigeria Copyright Commission (NCC), in carrying out joint inspection
of cargo at borders.
For instance, it was reported in 2012 that with the combined efforts
of the NCC and NCS, 13 containers stacked with pirated items were
confiscated at different seaports in Nigeria. Similarly in January 2015,
it was reported that more than 19 containers, containing counterfeit
pharmaceutical and medical products, worth more than N 270 million
($13.5 million) were impounded at the Apapa Ports in Lagos, Nigeria,
by NAFDAC officials along with the NCS.
Challenges in the border control regime
instance, at the just concluded World IP Day seminar (April 2015)
sponsored and widely publicised by the IP Committee of the Section
of Business Law branch of the Nigerian Bar Association, where
information and knowledge about IP protection is shared, only a few
rights holders were present
The various strategies employed to prevent the importation of
counterfeits seem insufficient in light of the prevailing circumstances.
Some of the key challenges encountered in the enforcement of these
measures are worthy of mention.
The fight against counterfeiting is largely multifaceted with border
control being just one arm. Still, it is more effective to seize a
consignment of counterfeit or pirated goods at borders or in transit
than after circulation of the goods in the market. Providing a successful
An improved coordinated border management scheme
is highly recommended between the relevant agencies to
improve communication and facilitate more efficient risk
management procedures
Amaka Okafor, Associate, Stillwaters Law
Low integrity among the staff of most of the key agencies involved in
this process is one of the greatest challenges faced in the enforcement
of border measures. Integrity is not only limited to bribery and corruption
but also includes the inefficacy of the services provided. This has
resulted in the loss of public trust, non-compliance by stakeholders,
unnecessary obstacles in the supposedly normal processes, loss of
trade and investment, consequential revenue loss, and much more.
The NCS also presently operates under the CEMA, which is
largely outdated and fails to provide adequate legal frameworks
for the discharge of its functions. There is no legal basis for the
implementation of major international agreements to which Nigeria
is a signatory. Unlike Nigeria, states such as Australia, Canada, New
Zealand, South Korea, Switzerland, Turkey, South Africa, Indonesia
and the US have included similar provisions in their substantive IP
laws and/or have enacted special laws, too. The Canadian Combating
Counterfeit Products Act and the South African Counterfeit Goods Act
are a few examples in this regard.
As a result, modern techniques and enforcement procedures such as
the TRIPS Agreement provisions on border measures, which have
gained tremendous success internationally, have not been effectively
implemented in Nigeria.
The collaboration of the NCS with other federal agencies is unarguably
very beneficial for the purpose. However, this strategy has been heavily
criticised for amounting to a needless duplication of process, resulting in
unnecessary delays and a reduction in the efficiency of these agencies.
The ignorance and/or unwillingness of rights holders to enforce their
IP and explore available remedies are also part of the problem. For
border control system would go a long way to curbing counterfeiting
and piracy as the large number of counterfeits currently being flooded
into the country would be contained.
To achieve this, the gaps in the present border control regime must
be addressed. There is an eminent need for: an overhaul of the
current NCS legislation; an improvement in the funding and training
of the relevant agencies and their officers; provision of regulatory
and supervisory measures to checkmate corruption and integrity
issues; the creation of massive public awareness campaigns on the
dangers of piracy and counterfeiting, the existence of IPRs as well
as the remedies and enforcement measures available; adequate
sensitisation of stakeholders such as the officers of the relevant
agencies; and the adoption of the single window system, which
requires customers to deal with a single agency at customs rather
than different agencies, to curb unnecessary delays.
In the alternative, an improved coordinated border management scheme
is highly recommended between the relevant agencies to improve
communication and facilitate more efficient risk management procedures.
The importance of coordination of border control measures in this regard
can never be overemphasised. Nevertheless, this strategy is more likely
to succeed if it goes beyond federal agencies to include other relevant
stakeholders such as manufacturers, right holders, exporters, importers,
carriers, and so on.
Such coordination, if achieved, will go a long way to addressing most
of the hiccups encountered in the present regime and ultimately
strengthening Nigeria’s stance in combating counterfeiting and the
importation of pirated materials. IPPro
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Game-changing decisions on trademarks continue
The Turkish Constitution and trademark law are at odds, but the courts are
making attempts to clear up the disputes, says Oktay Simsek of Destek Patent
The Constitutional Court has recently cancelled two important
provisions of Trademark Decree Law No 556, which was issued in
1995 and governs trademarks in Turkey, because terms prescribed
in two of its articles violate the property rights of the individuals.
The recent decisions of the Constitutional Court (2015/49 and
2015/46), which were issued in May 2015, in respect of freedom of
conscience and religion, property rights and freedom of expression
issues, are quite resounding and have a direct and substantive
impact on the lives of individuals and society. Intellectual
and industrial property rights have been also affected by the
Constitutional Court’s approach.
The first case is related to assignment matters. In Turkey, it was
previously not possible for rights holders to assign one trademark
while keeping other identical or confusingly similar trademarks.
The Turkish Patent Institute would invite the assignor to assign
its other identical or confusingly similar trademarks within two
months to make it possible to record the assignment in the
trademark registry.
That is based on the principle of single ownership of a trademark
in Turkish practice. Essentially, it was not possible to for two
identical or confusingly similar trademarks to be recorded in the
registry under different owners. According to Article 16(5) of the
Trademark Decree Law No 556: “While a registered trademark
being transferred, if the same holder holds another identical
or confusingly similar trademark registration for identical or
confusingly similar goods and services such, as to mislead the
public, those trademarks should be also transferred.”
The first case was brought by the Ankara Third Court of Intellectual
and Industrial Property Rights on the following observations:
Property rights and basic rights and freedoms cannot be
the subject of decree laws in the Turkish Constitution, and
this is a matter for trademark rights, which are a kind of
property right.
The limits of Article 16(5) are not clear, objective or
equally applicable.
The article has a function surpassing its aim (ratio logic) since
it grants large power to Turkish Patent Institute on a relative
matter, namely deciding on the similarities of the goods and
services, which means an interference with the rights for the
freedom of contract.
The article is in conflict with basic rights and freedoms and the
free market economy, since the state authority is overruled on
the decision to whom a trademark will be granted or assigned.
The subject matter is not prescribed in the contemporary
trademark law and EU Trademark Directive, a reference
source for the present decree law while it was being drafted,
do not comprise a limitation of this kind.
The currently applied single ownership principle in the
trademark law is not in compliance with the modern trademark
system and it remains ‘archaic’ since the registrability or
assignability of a trademark is conferred on the public authority
rather than on the trademark owner.
This cancellation has opened a path for right holders to assign their
rights for one or some of their trademarks while keeping others
under their ownership.
In Turkish trademark practice, a letter of consent, co-existence
agreement or any other authorisation, is not allowed for registering
an identical or confusingly similar trademark due to the single
ownership principle. This hinges on Article 7(1)(b) of the same
decree law, ie, any identical or confusingly similar trademark is
not allowed for any identical or confusingly similar goods by the
Turkish Patent Institute at the first instance of examination.
The cancellation of Article 16(5) has made it possible to overcome
provisional refusals by way of the ‘assign and assign-back strategy’.
In other words, the party affected by the provisional refusal can,
for awhile, have the rights of the trademarks indicated as grounds
for refusal based on the agreement and assign them back after
registering its own trademark.
In another case, the Constitutional Court has cancelled Paragraph
1(i) of Article 7, which covers absolute grounds for refusal.
Article 7(1)(i) states that a well-known mark within the meaning of
Article 6 of the Paris Convention, unless authorised by its owner,
are not allowed to be registered.
subject of decree laws in the Turkish Constitution and this is a
matter for trademark rights, which are a kind of the property rights.
The article has a function surpassing its aim (ratio logic) since
it grants large power to Turkish Patent Institute on a relative
matter, namely deciding on the similarities of the goods and
services, which means an interference with the rights for the
freedom of contract.
Any examination under Article 7(1)(i) would be performed on
the basis of the subjective view of the examiner in charge. A
subjective approach cannot be accepted for absolute grounds
and the matters are a subject of Article 8, where the relative
grounds are considered after publication and in view of the
observations and evidence provided by the parties.
Any ex-officio refusal under Article 7(1)(i) would damage the
essence of the rights, exceed the limits, and restrict individual
rights and freedoms in a democratic state.
The Constitutional Court has discussed the matter, deciding that
Article 7(1)(i) should be cancelled due to the fact that decree laws
cannot restrict property rights according to the constitution.
The Turkish Patent Institute has not applied Article 7(1)(i) in too
many of its decisions until now. In any case, the Turkish Patent
Institute will not refuse well-known trademarks on absolute
grounds any longer.
Well-known trademark holders should be more attentive about
monitoring identical or confusingly similar trademarks to have a
chance of filing oppositions within three months after publication.
The cancellations of the provisions of the two articles in question
have also started a debate on the destiny of Article 7(1)(b),
which has been criticised for its subjective and obsolete nature
in view of the requirements of the modern commercial life and
freedom of contracts.
Based on this, the Turkish Patent Institute would refuse applications
for well-known marks from third parties.
Taking into account that the Constitutional Court has cancelled
other articles of the decree law in the past, it appears that more
articles will be under attack for cancellation in the near future.
The case was brought to the agenda of the Constitution Court by the
Ankara Third Court of Intellectual and Industrial Property Rights with a
cancellation request with the following remarks:
Property rights and basic rights and freedoms cannot be the
While the new draft trademark law has been pending in parliament
since 2009, these recent rulings show how necessary it is to
introduce it without further delay, so that uncertainties plaguing
trademark matters can be clarified. IPPro
Well-known trademark holders
should be more attentive about monitoring identical or
confusingly similar trademarks to have a chance of
filing oppositions within three months after publication
Oktay Simsek, Head of foreign affairs department, Destek Patent
An interview with Hugo T Berkemeyer
What is your firm’s background?
Since its foundation in 1951, Berkemeyer Attorneys and
from Paraguay has provided expert legal services to
clients at an international and local level, gaining a global reputation for
quality, expertise and professionalism. Our firm provides legal advice on
virtually all areas of law.
As one of the largest and most prestigious law
firms in South America, what number of active
cases do you currently have in in your IP practice?
Our practice also comprises intellectual property: trademarks,
patents, the life sciences, copyright protection, utility models,
industrial models and designs, domain names, franchising,
enforcement, unfair competition and civil law, IP litigation, and
sanitary registrations.
At Berkemeyer Attorneys and Counselors we pride ourselves
on our ability to meet clients’ needs directly, providing
professional and practical advice of the highest quality,
employing teamwork and collaboration to render the services
in a thorough yet timely manner.
How long have you been using the Patricia® software?
Over 3,000 cases.
What advice would you give to other large IP firms
considering change?
Regarding advice for other companies, Patricia® is recommended
and useful for the daily internal work, especially related to the
control of the processes.
In what way is Patricia® fundamental to ensuring/
assisting your ongoing business success and
how is it capable of helping you to monitor and
improve levels of service to clients?
Patricia® helps us to perform better administration of the cases
which leads to a better control of the processes, including the due
dates of trademark and patent maintenance payments. It helps us
to provide faster and efficient answers to our clients.
We implemented the Patricia® software in 2011.
Which software did you use before and how does
it compare?
Patricia® replaced our in-house system which helps us in the daily
work due to the functionalities that allow us to do way more than
just docketing.
One of the main messages about how Patricia® differs from typical
‘docketing’ systems is how it is so much more than just docketing.
Patricia® is a full practice management solution. Which other
areas of your practice, in addition to docketing, does Patricia®
help you with?
Patricia® replaced an in-house developed system which
covered the basic needs regarding patents and trademarks. Its
functionalities allowed us to improve and expand the offered
services to our clients, and to improve the internal process as well.
It enhanced the control of the processes step by step in attention
to due dates, costs, invoicing, related documents, etc. and overall
the ease of the system to follow.
Although a growing company, Patrix has been eager
to ensure that we always remain approachable at
all levels. How do you find interacting with the
Patrix team, from support up to the owner level?
The team always provide a fast response to any inquiries from
our users, which is very important when they have any issues
to resolve.
If you could give us one sentence which
encapsulates your understanding of Patrix and
Patricia® and what it does for your business,
what would it be?
Good! Patricia® has become a very useful tool in the daily
improvement of our work. It supports us in the control and
optimisation of our available resources.
Would you swap Patricia® for any other IP
We would not swap Patrix/Patricia® for any other IP software.
Extended DMS
When your needs for document management
surpasses the functions featured in the standard
Patricia® document tab, we are happy to offer you
the Patricia® Extended DMS. Efficient document
management made accessible.
Think of all the hours spent looking for the right documents.
Now think about all the time you could save if searching for information was swifter and handling your documents was more
efficient. Discover the potential of Patricia® Extended DMS.
Sophisticated search
Patricia® Extended DMS features a full-text search function that
allows you to search for content within each document – or
across the entire case document tree. Scanned PDF images can
be transformed into text, and added to the search index. This
means you’re also able to find scanned PDF documents by searching for text they contain.
powerful preview
Bringing traditional case management into the digital world, the
preview function lets you flick through documents and view their
content – just like browsing through a physical case file. A quick
and intuitive way of finding and reviewing case documents.
>> Find your document fast, see what it contains and compare it
to other versions. Take complete control of your case documents
with Patricia® Extended DMS. <<
Not only does this feature allow you to track previous versions of
documents without needing to access backup systems, it also
lets you see the difference between versions. Documents can include a history of which user edited the document and on what
Patricia® Extended DMS also features advanced email sending
capacities: select your documents by checking their boxes and
send them via email, directly from within Patricia®. You can also
create PDF letters with your company’s letterhead (or other
templates) directly from within Patricia®.
Work where you want to
business as usual
Offline Work Mode lets you work on case documents outside the
office. You can synchronize a case document folder before leaving the office, and work on the documents while you’re away.
Then, when your laptop next connects to the office network,
the Patricia® Extended DMS automatically synchronizes any local
changes as a new version of the document to the server.
Last but not least: you can continue using Patricia® just the way
you’re used to. The advanced functionality of the Patricia® Extended DMS can be accessed when needed, but administrative staff
can continue using the standard Patricia® document tab without
needing to learn all the new features.
Secure signatures
The Patricia® Extended DMS allows application of secure digital signatures. A specified security model ensures that defined
templates can only be signed by the person responsible – not by
other Patricia® users.
EuropE TEl: +46 31 50 77 60 Fax: +46 31 50 77 66
uSa TEl: +1 703 879 48 60 Fax: +1 703 997 25 79
E-mail: [email protected] WEb:
With equal knowledge of IP and IT, Patrix provides world class IP Management Software with proven
results. We have over 20 years of experience working with a wide international client base from large
law firms and corporations to individual practices and smaller firms.
Black Knight Media
Tired of keeping these turning on your own?
So are we
To find out more about IPPro Connects, contact: [email protected]
Company description
101domain is the trusted provider of corporate domain and brand protection services for many of the
world’s leading organisations.
101domain, Inc
Tel: +1 760 444 8674
[email protected]
With a broad service suite of management and detection solutions, domain strategy creation and acquisition experience, 101domain has succeeded in fortifying, securing, and expanding brand owners’ online
presence for over 10 years.
For corporations, navigating and managing the challenges of brand abuse and misuse on the internet can
be a full-time effort. Trust 101domain to provide world-class support and expert guidance in minimising
both the time and investment required to protect your online assets.
Company description
Tel: +44 203 393 4858
[email protected]
At, we feel that protecting your brand online shouldn’t cost you an arm and a leg. We
offer a fusion between a normal domain registrar and a high-profile online brand protection service.
Contrary to most brand protection services, we have normal end-user registration fees, but offer high-end
professional support. We prefer a personal approach, so brand protection clients most often have their
own account manager with us, but due to our clear focus on domain names, all our staff members have
a thorough understanding of all of the ins and outs of domain name registrations.
Founded in 1999, we have 16 years of experience in domain name registrations and we know the domain
name market inside out. We offer every possible extension, and those that are otherwise hard to obtain.
Next to every-day domain name registrations, we also offer advice on online brand protection and
assist with purchasing a domain name or with gaining control over a domain name that’s infringing
your trademark. When needed, we partner with a outside intellectual property firms to manage dispute
resolution cases or other legal actions, but we can successfully solve most cases without having to
involve expensive lawyers, which keeps your costs low.
We assist with centralising and optimising domain name portfolios. Due to our experience and many local
contacts, we can bypass local presence requirements in almost all countries with such strict registration
conditions, making otherwise impossible registrations possible. And we know all of ins and outs of
the different transfer procedures. If a transfer is stuck because the losing registrar, for example, isn’t
cooperating, most often there are other ways of getting the transfer done.
Company description
Christodoulos G. Vassiliades & Co. LLC
Tel: +357 22 55 66 77
[email protected]
Christodoulos G. Vassiliades & Co. LLC is one of the leading law firms in Cyprus with expertise in
corporate law, commercial law, trusts, mergers and acquisitions, and intellectual property law. Beyond the
legal services offered, our firm also provides a full range of corporate administration and trust services.
We are committed to professionalism and excellence in everything we do. We fully appreciate the
diversity of legal and commercial needs clients have and are able to offer high standards of personalised
advice in order to meet all our clients’ needs.
The firm’s zeal towards innovation led to the founding of its IP department in 2008. Acknowledging the
pivotal importance of protecting IP rights, we have established a team of enthusiastic IP experts, ready
to assist with any type of right.
Our key specialisations include community trademark services such as registration, renewals and
oppositions, as well as international trademark services, namely registrations via the Madrid system.
We pride ourselves in our effectiveness, efficiency and organisation, while recognising the need of our
clients to remain ahead of important deadlines and obligations that constantly arise when maintaining
IP rights.
Our firm’s success in IP is to a great extent attributed to its circle of associates who share our passion for
excellence, accuracy and promptness. This allows us to rely on and refer to them any matter requiring
local counselling and representation. As a result, our firm may assist in any IP matter, not only confined
within Cyprus and Europe but internationally as well.
Company description
D Young & Co
Tel: +44 (0)20 7269 8550
[email protected]
D Young & Co’s life sciences team is one of the leading intellectual property practices in Europe. Clients
choose D Young & Co for IP services confident in the knowledge, experience and dedication that has
characterised our work throughout our firm’s history.
A depth of experience in all technical disciplines
Attorneys in the life sciences team are highly qualified in a wide range of academic and technological fields,
including biotechnology, chemistry, immunology, molecular biology, antibody technology, diagnostics,
personalised medicine, stem cell technology, vaccines, food chemistry, optics, medical technology and
pharmaceuticals. Many of our attorneys have practical experience working in academic environments, in
the UK and European Patent Offices, and as in-house counsel for major companies. Our attorneys are
able to use this experience to deliver strategic advice to clients, when and where it is required. A firm that
is at the leading edge for patent prosecution.
We are especially proud of our extensive experience before the EPO opposition division and technical
boards of appeal. We regularly handle important and valuable contentious matters both for patentee
and opponent, particularly in the fields of biotechnology, pharmaceuticals and petrochemicals. Clients
value our commercial approach in guiding them through increasingly technical and complex regulation to
ensure their IP rights are protected.
A client base that is diverse and international
D Young & Co has an enviable track record of working with academic and research institutions and
spin outs, all of which have been at the forefront of innovation and life-changing discoveries. As well as
servicing clients from all over the UK, we directly advise pharmaceutical, chemical and biotechnology
companies across continental Europe, the US and Japan.
A record that speaks for itself
We are proud of the fact that D Young & Co is one of the very few IP firms to be ranked ‘top tier’ by all the
independent major UK legal directories. These rankings are based on independent client feedback and
this is what really counts.
Company description
Dennemeyer & Associates
Tel: +352 27 6115 100
[email protected]
Dennemeyer & Associates is the premier resource for global intellectual property law services—worldwide.
For more than 50 years, Dennemeyer & Associates has been providing the full range of legal services
relating to the core of your intellectual property management: your intellectual assets. Our lawyers offer
world-class expertise in the following areas of IP law: patents, trademarks, designs, copyrights, domain
names, IP contracts, licensing and recordals.
Working in unison with Dennemeyer Group, a leading IP service provider, we offer a worldwide single point of
contact for the full range of IP services, from legal services to comprehensive outsourcing solutions like portfolio
services, cutting-edge software solutions, IP consulting, temporary staffing or full outsourcing of entire departments.
Our main services include:
Prosecution: searching, drafting applications (patents, utility models, designs, trademarks), monitoring third
party applications, patent mapping, freedom-to-operate studies, filings, replies to office actions, translations,
oppositions and appeals, European patent validations, grant and registration procedures, recordals, oral
proceedings, intellectual property docketing, foreign filing and a web-based platform for PCT nationalisation,
European patent validations and translations.
Litigation: nullity actions, cancellation proceedings, court actions, counterfeits and cross-border action.
Licensing law: licence contracts, coexistence agreements, copyrights.
We have offices in seven countries: Luxembourg, Germany, the US, Japan, Poland, Romania and
Australia. We have established a worldwide network of highly experienced professionals enabling us to
cover almost all jurisdictions of the world in terms of prosecution and contentious work. We offer complete
cost transparency and efficiency because we file and prosecute directly with many national patent and
trademark offices.
Our experts are qualified to work for you in the following technical and scientific fields, among many others:
biochemistry, chemistry, pharmaceuticals, electrical engineering, electronics, mechanical engineering, IT and
telecommunications. Whatever your industry, we are able to provide support in all technical areas and we
continue to expand our service offerings, adapting to customers’ needs and providing cost-efficient solutions.
Company description
Destek Patent
Tel: +90 224 270 6600
[email protected]
Destek Patent has been a major force in intellectual property management and protection in Turkey, and
has been providing a full range of IP services, including patents, trademarks, domain names, industrial
designs and licensing, for both Turkish and overseas clients since 1983.
The firm is a member of LES, AIPPI, INTA, MARQUES, PTMG, GRUR, EPI, VPP and TOBB.
We understand clients’ needs and expectations on expert counselling, fast response, clear
communication and cost effective quality IP services, an independent indicator of which is our high
clients’ satisfaction rate.
Company description
Dreyfus & associés
Tel: +33 1 4470 0704
[email protected]
Founded in 2004 by Nathalie Dreyfus, Dreyfus quickly became one of the top intellectual property law
firms in France. The Dreyfus team is well equipped to assist companies with particular expertise in IP/
IT matters in France, the EU and worldwide.
In an increasingly complex economic and legal environment, it has become imperative to efficiently
protect, enhance and defend the essential assets of a company. The Dreyfus purpose is to support its
clients with all the flexibility and reactivity that its structure allows, while offering the most up-to-date
skill-sets, especially regarding international issues in the field of new technologies.
When confronting problems, Dreyfus assists its clients in decision-making processes concerning the
management and valorisation of their IP titles in the business realm and on the internet.
With a worldwide network, Dreyfus will represent companies in arbitration centres and courts all over
the world in disputes concerning trademarks, designs, patents, copyright, domain names, new gTLDs,
social networks, Google AdWords and IT.
Advising major traditional industrial actors as well as small and medium-sized firms impacted by the
rise of e-commerce and the increasing use of trademarks on the web, Dreyfus has mastered all the
issues related to the online presence of companies.
In addition, Dreyfus has established the Dreyfus IPweb internet platform, an intuitive and interactive
tool. This platform aims to consolidate and summarise all the information available to Dreyfus clients.
The firm’s expertise, investment and creativity ensure optimal management of trademarks and domain
name portfolios. Dreyfus is probably the most advanced French firm in the area of the management
and protection of IP rights.
Company description
Goodrich, Riquelme y Asociados
Tel: +52 55 5533 0040
[email protected]
With more than 75 years of experience, Goodrich, Riquelme y Asociados has a long tradition of standing
alongside its clients when helping them make their business objectives a reality. By means of a cross
practice among service areas and industry teams, our carefully trained lawyers achieve an innovative
approach towards the rendering of contemporary legal services tailored to the demanding business
community worldwide.
We pride ourselves in knowing what drives key industry sectors and are able to provide on a daily basis,
the best creative and cost-effective business solutions beforehand. Our clients are medium-size, as well
as leading global companies of numerous nationalities and economic sectors.
Company description
Gorodissky & Partners
Gorodissky & Partners, the leading Russian intellectual property law firm, provides a full range of
intellectual property services, including prosecution and enforcement of IP rights. It has the largest IP
practice in Russia and among top 10 in Europe.
Tel: +7 495 937 6116 / 6109
[email protected]
The firm’s main office is in Moscow, and it has branch offices in St. Petersburg, N. Novgorod, Krasnodar,
Samara, Ekaterinburg, Perm, Kazan (all in Russia), Technopark Sarov and Kiev (Ukraine).
The firm provides clients and associates with professional and cost-effective services in wide variety
of practice areas: patenting, inventions and utility models, trademarks, service marks and appellations
of origin, industrial designs, plant varieties, copyright, technology transfer and licensing, IP valuation,
litigation, domain names, and due-diligence, as well as patent searches, notarial services, translation of
patent and scientific-technical documents.
Gorodissky & Partners’s lawyers and patent/trademark professionals have significant experience
in litigating IP matters before the civil courts and in arbitration proceedings. They have successfully
represented foreign and domestic clients in a number of landmark cases related to the infringement of
patent and trademark owners’ rights in Russia and abroad.
Many of the firm’s lawyers and patent/trademark attorneys are post-graduates with advanced technical
and legal degrees. They regularly attend IP courses and work with foreign law firms worldwide, they
are frequent speakers at international IP conferences, and also authors of many publications in IP
professional magazines.
Gorodissky & Partners has an extensive national and worldwide experience in IP issues, including those
arising in the post-Soviet territory (the Commonwealth of Independent States countries and Baltic states).
The firm is responsible for around half of the foreign patent applications and one third of the trademark
applications filed in Russia every year. The clients of Gorodissky & Partners range from major domestic,
foreign and international companies to small and medium-sized businesses.
Company description
Tel: +33 1 84 17 45 32
[email protected]
IPzen is a new intellectual property and management software. Designed by trademark attorneys for
trademark attorneys, it is a modern web-based tool. It is cloud-hosted and available as a software-as-aservice solution. It will allow you to securely access your data from anywhere only by using a browser. IPzen
includes all the features required by trademark attorneys—and even more. It is a modular system available
in both enterprise and law firm editions, as well as a service in a shared environment.
IPzen is an internet platform that aims at consolidating and summarising all information that IP law firms
or organisations use to process. As a modular system, IPzen is also comprised of a docketing system,
trademark management software, domain name management software, a diary to track deadlines and a
monitoring module consolidating the entire trademark monitoring results.
The Law Firm Edition includes specific features to control information published to clients and therefore
guarantees confidentiality. Information may be published for client allowing users to access their data
online and to save time on reporting. IPzen enables records traceability and instructions received by
email and/or directly via the platform. Rights management is particularly fine-tuned, especially in limiting
users’ access to certain folders or trademarks.
IPzen services
Harbor Technologies offers outsourcing services for the monitoring and management of intellectual property
rights. These services are possible through the IPzen Ssoftware, which enables our clients to easily access
their data and focus on legal matters rather than on the administrative tasks of portfolio management.
Company description
Julian Varbanov & Partners
J. Varbanov & partners
Tel: +359 2 986 5125
[email protected]
J. Varbanov & partners is one of the oldest and leading intellectual property firms in Bulgaria. We provide
professional and cost-effective services and quality advices on all aspects of industrial property matters
for the territory of Bulgaria as well as for the EU.
Our team is dealing with establishment, protection and enforcement of industrial property rights derived
from patents, trademarks, and industrial designs, including validation of European patents in Bulgaria.
Our staff is made up of Bulgarian and European patent, trademark and design attorneys with great
experience. We do filings and representations before the Bulgarian Patent Office, OHIM, WIPO and EPI
We represent clients before custom authorities in connection with the application of boarder measures
and all kinds of anti-counterfeiting activities. We are members of INTA, ECTA, EPI, UNION of European
Practitioners in Industrial Property, AIPPI and PTMG.
Company description
Nico Halle & Co. Law Firm
Tel: +237 33 42 64 79
[email protected]
Founded by its senior managing partner, Nico Halle in 1986, Nico Halle & Co. Law Firm is bilingual
(English and French), and one of the oldest intellectual property firms licensed by the African Intellectual
Property Organization (OAPI) to provide IP services in Africa. In order to provide integrated, cross-border
services to meet our clients’ domestic, regional and global needs, our firm works in partnership with other
renowned law firms in several countries across the globe.
Noted for our diligent, expeditious, ethical, and professional services, and with a prolific and committed
team of over a dozen IP attorneys and professionals, we provide comprehensive premium IP protection
services in patents, trademarks, industrial designs, utility models, domain names, unfair competition, and
plant varieties, as well as coordinating multi-jurisdictional disputes in parallel proceedings.
Our main services for Patents, trademarks, utility models and industrial designs include:
Acquisition and maintenance: searches, registration applications, translations, grant and registration
procedures, recordations, and renewals and annuity.
Litigation: drafting and oral submissions for restorations, oppositions and claim to ownership actions,
nullity actions, cancellation proceedings, appeals, counterfeits, and cross-border actions.
We represent a diverse clientele that is made up of the biggest and leading brands in industries including,
but not limited, to biotechnology, pharmaceuticals, mechanical and electrical engineering, apparel
and allied corporations, fashion accessories, liquor, food and beverages, consumer goods, banks
and accounting, computer software, telecommunication, electronics, cosmetics, telecommunications,
telemarketing, entertainment, and media.
Company description
Park IP Translations, a Welocalize company
Tel: +1 212 581 8870 7722
[email protected]
Park IP Translations, a Welocalize company, provides translation, litigation and filing solutions for patent
and legal professionals. We protect our clients’ most valued assets and global brands in nearly every
jurisdiction in the world. We provide complete translation services in more than 157 languages and filingready documentation for more than 60 countries. We are a leader in patent prosecution and validation,
litigation language services, patent translations and filing.
We also provide general legal services for all types of corporate and legal documents. Park IP has 13
global locations in the US, Europe and Asia. Park IP delivers the highest quality translation as a result of
our ISO 9001:2008 certification.
Park IP Translations, a Welocalize company, is a world leader in expert legal translation and foreign filing
language services. Welocalize, founded in 1997, offers innovative translation and localisation solutions.
Translating nearly one billion words a year, Welocalize and Park IP Translations provide specialised
services to thousands of multinational corporations and global law firms.
According to Common Sense Advisory, Welocalize is the fourth largest language service provider in the
US and ninth largest in the world.
Company description
Patricia is widely regarded as the most user friendly, powerful and versatile intellectual property management software available today.
Tel: +46 31 50 7760 / +1 703 879 4860
[email protected]
From the CEO through to the support staff, the Patrix team has extensive previous IP experience having
each worked in the corporate and/or practice areas of IP. You can therefore be sure that they fully understand your requirements at every level.
Patricia is an enterprise-wide solution that provides you with swift and secure access to your case data
and automatic tracking of IP lifecycles, including laws/regulations, standard forms, time and cost registration, invoicing, customisable reports, document creation, document management, and powerful batch
processing functionality. Patricia is designed to easily accommodate and harmonise your best practice
and procedures including collaboration both inside and outside of your organisation.
Created by IP professionals for IP professionals, Patricia is a fully customisable IP management system
uniquely delivered on Windows and web platforms or a combination of both.
Company description
Pointer Brand Protection
Tel: +31 20 30 319 35
[email protected]
Pointer Brand Protection offers a full online brand protecting solution. Our monitoring and enforcement
anti-piracy software covers social media, online marketplaces, domains, web shops and download
platforms. With our advanced and customised filters, we detect, prioritise and act against counterfeits
and other brand abuses.
Innovation within our company is one of our key successes. We protect brand owners better by
implementing the newest technologies, methods and legislations. We do this not only with our software
development, internal processes and projects, but also by knowing what new platforms and tools
counterfeiters are using.
Our strategy is to collect all online sales and content and prioritise the biggest infringers. Our dedicated
brand protection analysts take immediate action against infringements from our customised brand
protection dashboard. With an investigative perspective, we protect brands better online.
Company description
RWS Group and innovia
RWS and inovia are the world’s leading experts in intellectual property translations and foreign patent
filing. For more than 70 years combined, we have led the industry and helped more than 10,000 clients
protect their IP and enforce their IP rights around the world.
Ensure top quality;
Cut costs and save resources; and
Simplify and streamline.
Company description
Stillwaters Law Firm
Tel: +234 1 454 7179
[email protected]
Stillwaters is a leading law firm in Nigeria that specialises in intellectual property, technology transfer,
distributorship or franchising, licensing, boarder enforcement measures, customs-related assistance,
regulatory compliance, litigation, company and commercial law, and tax. The firm operates from the
commercial cities of Lagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Duala in
Professionalism, flexibility and innovation are the hallmarks of our practice. We value professional
excellence, outstanding results and realise they both require creativity and hard work. We strive to gain
every legal advantage for our clients while upholding the principles behind the practice of law. Over the
years, we have acquired considerable experience and an enviable reputation for rendering quality legal
services in our areas of specialisation.
Practice representative clients include more than 660 foreign multinationals, publicly quoted companies,
financial institutions, industries, small- and medium-size businesses and private entrepreneurs. Our
practice is adequately equipped and well positioned to meet the challenges of legal practice in an everchanging technological age.
Company description
WebTMS Ltd
Tel: + 44 118 958 2002
[email protected]
WebTMS Limited and Intellectual Property Online have been providing and developing trademark
management systems since 1997 and have regularly appeared at the top of independent user surveys
of trademark management software. Additionally, we have over 500 unique clients globally, based on all
continents using our flagship product: WebTMS.
WebTMS is a comprehensive trademark management suite that builds on record keeping and
docketing to support efficient trademark management with modules for every type of IP. As well as our
award winning WebTMS software, the team are also renowned for their excellent customer support,
expertly managed migration/conversion projects, and industry knowledge. We also listen to our clients’
feedback about our software to continually develop and progress the software to constantly meet
clients’ expectations and needs.
WebTMS offers software subscriptions, hosted systems, and installed systems, so you can choose the
best solution for managing your trademarks and related IP data. Our software is used by brand owners
(including many companies from the top 100 most valuable brands), law firms (including a number of the
largest international law firms), and trademark attorneys (from all around the globe). However, we have a
solution for everyone regardless of your portfolio size. Some clients have under 100 records, others have
in excess of 300,000 records. We also cater for everything in-between.
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