C NTENTS 6
Armengaud Guerlain
8-9
Dannemann Siemsen
10-11
Haynes Boone
12
Jagshaw Baker
13
Katz Law Group
14-15
Lex Orbis
16
Olaniwun Ajayi LP
17
PellisĂŠ abogados
18-19
SPA Ajibade & Co
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CATHERINE MATEU ARMENGAUD-GUERLAIN Partner 01 47 54 01 48 http://armengaud-guerlain.com c.mateu@armengaud-guerlain.com 12, avenue Victor Hugo – 75116 Paris
Education Catherine Mateu is a lawyer at the Paris Bar since 1999 and has been certified by the French Bar Council in Intellectual Property. She holds a post-graduate degree in French and European Business Law from the Université de Nancy II, an L.L.M. in Common Law from the University of East Anglia in Britain, a DESS in Industrial Property from the Université de Paris II, and a DEA in Private International Law from the Université de Paris I
Bio Catherine Mateu is a partner at Armengaud & Guerlain and a Certified Intellectual Property Specialist Lawyer in Paris.. She is fluent in French, Spanish, English, and Basque. Ms. Mateu is an active member of several intellectual property law associations, including the AIPPI and INTA, where she holds several
committee leadership positions. She also frequently speaks at various intellectual property conferences. Her practice serves clients ranging from inventors, non-profit organisations, and local start-ups to multi-national corporations, and focuses on finding timely and cost-effective solutions to a wide array of patent, trademark, design infringement, and licensing matters.
The Firm Armengaud & Guerlain, founded in 1993, is a law firm fully specialised in intellectual property (patents, trademarks, designs and models, and copyright) and the related issues of unfair competition, consumer law, advertising rights (particularly comparative advertising), and the Internet. Reflecting its wellrecognised expertise, the firm has worked with a wide variety of French and international clients,
from artists and inventors to bluechip companies, governments, and state-owned enterprises. In addition to French, the firm’s daily working languages include English and Spanish. Armengaud & Guerlain works with a network of foreign colleagues selected for their high level of technical expertise and their use of work methods identical to Armengaud & Guerlain, thereby enabling the firm to treat files simultaneously in several countries. Each file is treated in a collaborative manner. The firm places particular emphasis on maintaining lasting, high-quality relationships with its clients, combining competence and reactivity. Due to its well-recognised expertise, the firm has been able to appear systematically for decades in rankings of top law firms established by specialised publications WTR, IAM, Who’s Who, The Legal 500, Chambers, Les Décideurs, Managing Intellectual Property and IP Stars.
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Dannemann Siemsen Ivan B. Ahlert Partner Tel: +55 21 2237-8700 ahlert@dannemann.com.br www.dannemann.com.br Rua Marques de Olinda 70, Rio de Janeiro, RJ, 22251-040, Brazil
Biography Degree in Mechanical Engineering by Federal University of Rio de Janeiro. Guest researcher at the Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich (1994). Languages: Portuguese, and English, and working knowledge on German, Spanish and French. Main activities: advising, and assisting in administrative prosecution and litigation involving patent law, design law, and unfair competition. Joined Dannemann, Siemsen, Bigler & Ipanema Moreira in 1981. Teacher at the Industrial Property Training Course of ABAPI, guest teacher at other courses. Technical assistant and expert of the judge in court actions related to patent infringement and unfair competition. Author of several amendments to the Bill of the new Industrial Property Law. Representative of ABPI, ABAPI and FICPI in working sessions at WIPO concerning the PLT, the SPLT and the PCT reform. Member of FICPI (currently vice-president of the CET, Study and Work Commission), AIPPI, LES, ICC, ABPI (former chair of the Patent
Commission) and ABAPI. The author has several articles published on patent topics in Portuguese in national periodicals, books and newspapers and in English in international magazines such as IIC, Managing Intellectual Property, and Latin American Law & Business Report.
The Firm Dannemann Siemsen is the result of the consolidation of the firms of Carl Buschmann, founded in 1900 and succeeded by Luiz de Ipanema Moreira, and Eduardo Dannemann, which was founded in 1919. In 1947, the attorney and industrial property agent Peter Dirk Siemsen and the industrial property agent Catharina Bigler became collaborators of the firm of Eduardo Dannemann, and in 1953, went on to found Dannemann, Siemsen & Co. In 1958, the firms of Luiz de Ipanema Moreira and Dannemann, Siemsen & Co. merged to form Dannemann, Siemsen, Bigler & Ipanema Moreira. In 2000, the year that marked the firm’s centennial , the Dannemann Siemsen Institute and the firm Dannemann, Siemsen
Advogados were created. Our firm has 54 partners and over 800 employees providing swift and accurate services both in Brazil and abroad. We have offices in the cities of Rio de Janeiro, Sao Paulo and Brasilia. Our Documentation and Information Centre contains more than 9,600 books, 600 periodical titles, 35,000 indexed articles and 467 laws in the areas of intellectual property (30% of the entire collection), general law, commercial law, civil procedural law, information technology, biotechnology, in addition to reference works. In order to best serve its clients the Dannemann Siemsen firm has a worldwide presence, with more than 400 overseas associates. Dannemann Siemsen works actively to protect our client’s Industrial Property rights, and also takes care of the management of our client’s portfolio of intangible assets with national and international authorities, allowing our clients to focus on achieving results.
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Our fields of operation include: Biodiversity Biotechnology Design Domain Names Franchising Geographical Indications IP valuation and IP portfolio management Licensing Patents Plant Varieties Software Trade Names Trademarks Traditional Knowledge Transfer of Technology Unfair competition
What should we expect from re-elected President Dilma Roussef in terms of IP protection in Brazil? Writing still under the fresh impact of a re-election that was undesired by about half the Brazilian voters, more precisely 48,36%, many questions remain in the air. Mrs. Rousseff ’s acceptance speech placed emphasis on the need to seek dialog and reconciliation. She announced that she will foster economic activity in all sectors, especially in the industry, and she promised to promote urgent initiatives to resume economic growth, which should be just 0.27% this year, according to market estimates. Mrs. Roussef also admitted
her responsibility to construct a modern and more productive country, which is more devoted to science and innovation. Will this speech translate into actions? Probably this will depend on a combination of two elements: (1) the reelected president’s ability to nominate ministers that will be able to implement proper policies and (2) the ability of a now reinvigorated opposition to use its political capital to push for needed changes. In any way, continuity of the government suggests that we will not witness sudden changes in the IP panorama. This is good news in some aspects, and bad news in others. Paradoxically, it was during the recent period of successive mandates of representatives of the Labour Party (PT) that the Brazilian Patent Office (INPI) was finally authorized to hire new patent examiners, after a very long period with a stagnated or even slightly decreasing number of examiners. The patent team has about doubled, and new hiring of examiners was already approved by the Government. On the other hand, the net result of the increase in examiners was not yet felt in terms of a decrease in the delay in examination, which is currently far above historical and reasonable levels. Some among the new examiners were assigned to administrative duties, including the development and implementation of
an electronic patent filing system, which is now operative, with clear gains in terms of efficiency. The recently appointed president of INPI, Mr. Otavio Brandelli – former chief of the IP division of the Ministry of Foreign Affairs – has commanded patent examiners to resume their regular duties in patent examination, and a consequent increase in the speed of examination is now expected. The negative impact of the patent examination backlog is also reduced by the fact that a patent applicant may request expedited examination if he/she is aware of the unauthorized use of the claimed inventions by third parties in Brazil. In such cases the applicant may send a warning letter to the potential infringer, and later submit to INPI a copy of the warning letter together with any available evidence, along with a request for accelerated examination. Usually a first office action will be issued a few months after the request for accelerated examination has been approved. On the downside, IP protection – specially in the pharmaceutical field – has been under strong scrutiny in recent years, as indeed it is the case in several other countries. The fact alone is not of particular concern, except that in some aspects ideology has been playing a role where technical and legal considerations should prevail. One example is the interference of the National Agency of Sanitary Surveillance
(ANVISA) in patent examination. The allowance of patent applications in the pharmaceutical field is subject to ANVISA’s acquiescence. However, despite an opinion issued in 2009 by the Attorney General of the Union - AGU (Case 00407.005325/2008-71) to the effect that it is not ANVISA’s role to perform the examination of patentability requirements, that agency continues to perform substantive examination of patent applications, with a clear political bias, and causing legal uncertainty. Yet, in the enforcement front our daily practice shows that generally judges have a proIP approach, and in more blatant cases of infringement preliminary injunctions can be granted inaudita altera parte, although admittedly this is not the prevailing situation.
The Brazilian Industrial Property Law provides some useful legal resources for patent owners , such as the express provision of infringement by equivalence and contributory infringement. Considering the current
scenario, should foreign applicants continue to file patent and trademark applications in Brazil? Despite the obviously self-serving aspect of my reply, my answer would be yes, having in mind that IP rights have a long duration compared to occasional fluctuations in the economic and political environments. According to data available at the website of the World Bank (http://data.worldbank. org/country/brazil) Brazil is an upper middle income country with a current GDP (2013) of US$ 2.246 trillion, placing the country among the 10 largest economies in the world, and with a population of slightly more than 200 million. While the economic growth for 2014 is estimated to be somewhere between 0 and 1.5%, the World Bank forecasts growths of 2.7% and 3.1% for 2015 and 2016, respectively, reflecting
expectations of an increase in the economic activity in the years to come. Therefore, the importance of the Brazilian market should not be shadowed by hopefully only transitional uncertainty about the country’s immediate future.
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Intellectual Property Our goal is to help you realize and protect the value invested in the development of products and brands. We help companies of all sizes ensure they have proper intellectual property protection.
What Sets the Haynes and Boone IP Practice Apart The Haynes and Boone approach to intellectual property protection is to provide our clients with an all-encompassing solution to protecting tangible assets and highly visible brands. All of our intellectual property attorneys treat their client’s problem as unique and realize that in patent and trademark protection, there is no such thing as a «one size fits all» approach. Every company’s technology is different and every brand is unique. All patent attorneys should have technical backgrounds and ours do; however, we go a step further than most firms as more than half of our lawyers worked as engineers, software programmers or in a technical sales capacity prior to becoming patent attorneys. This means that our lawyers not only understand the complex legal aspects of intellectual property law but also the business roles that innovators play in leading companies. Our trademark attorneys are all adept at managing the largest trademark portfolios and well versed at addressing the dynamism in trademark and copyright law created by the Internet. The outsourcing and technology transactions attorneys also bring technical experience to an area often overlooked by non-IP attorneys. We pay special attention to the IP and technology issues associated with innovative business process outsourcing transactions.
How the Haynes and Boone IP Practice Can Help You
Haynes and Boone, LLP Jeffrey Wolfson Partner and Head, Patent Prosecution Practice Group Tel: 202.654.4565 jeff.wolfson@haynesboone.com www.haynesboone.com 800 17th Street, NW, Suite 500 Washington, DC, 20006-3962
Clients get a tightly integrated efficient group of IP attorneys with Haynes and Boone. Our goal is to provide each and every client with exceptional and efficient service, an unparalleled understanding of the law and the knowledge and advice of a trusted business advisor.
Patents Over the past 5 years the firm filed more than 9,000 patent applications worldwide in a variety of technologies including medical devices, semiconductors, nanotechnology, oil well technology, wireless technology, software and telecommunications networking equipment – to name just a few. The benefit of our patent practice to the client is the goals we establish before drafting each patent. We focus on writing solid claims and the ideas that you, the client, are trying to protect with each and every patent. Should a patent we prosecute ever end up in a dispute we want you to have the strongest protection possible.
Trademarks The trademark attorneys at Haynes and Boone work closely with in-house lawyers and marketing personnel to design carefully crafted brand protection strategies. Our lawyers are experienced in counseling companies on the best strategies to protect their trademarks on a worldwide basis. Additionally, we help in pre-launch clearance and trade dress issues. Not only can they help protect trademarks before the USPTO, our lawyers work to protect trademarks on the Internet. We have handled hundreds of domain name disputes as well as keyword advertising claims and other instances of trademark abuse on the Internet.
Technology Transactions Our technology transactions lawyers address the intersection of technology and contracting. In many technology transactions the transfer of knowledge involves agreements that include patents, copyrights and software. Our lawyers in this area work on licensing agreements to complex business process outsourcing arrangements.
International The IP attorneys at Haynes and Boone routinely provide strategic counseling and management for international clients looking to secure intellectual property rights in the United States. Our attorneys understand the most optimal structures and procedures for protecting such intellectual property rights across a global portfolio.
Industry Focus Our lawyers provide value by knowing their client’s industry and business strategy. We want to visit your facilities, talk to your innovators and see your ideas in action. We feel these types of experiences allow us to write better patents, draft better trademark applications and create
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better technology contracting arrangements. Our lawyers wrote some of the early patents involving nanotechnology and MEMS. We have other lawyers who are active in the pharmaceutical and biotechnology fields who understand ANDA filings and chemical compounds. We also work with software, including the open source model. No matter what industry you are in, we have lawyers who understand it and will work hard to make sure that they understand how your technology fits into the bigger picture of your business.
Handling Disputes at the US PTO - Patent Review and Trademark Cancellation Proceedings We both pursue and defend against objections to patent and trademark filings before the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board of the U.S. Patent & Trademark Office. An effective Inter Partes Review proceeding, interference action, or Trademark Cancellation proceeding depends on investigation strengths and techniques that we have developed during many actions before the Trial and Appeal Boards. Often we are able to determine that a rival claim seeks to expand and support its claims by relying on materials developed after the filing date, leading to a rejection of the opponent’s claim. In other instances we can demonstrate that the claims of other parties are incomplete, or that former employees’ claims are invalidated by the terms of their employment.
Intellectual Property Litigation No matter the forum, Haynes and Boone will protect its clients’ intellectual property from infringers and defends its clients from infringement or misappropriation claims. We have represented IP clients in federal and state courts and in the dispute-resolution forums of the U.S. Patent and Trademark Office (“USPTO”), as well as in international tribunals.
Our definition of success is to achieve client business objectives. That can mean aggressive representation at trial, strategic settlement negotiations or alternative dispute resolution that achieves competitive goals without the expense of litigation.
A Well-Rounded Team Approach At the core of our IP litigation team are true patent lawyers who have undergraduate and graduate advanced technical degrees and are licensed to practice in the USPTO. They work closely with trial lawyers - many of whom are also licensed patent lawyers - who use their technical knowledge and advocacy skills to clearly and concisely present their client’s case to judge and jury. Together the members of this multidisciplinary practice can leverage and enforce IP assets and rights throughout the world, representing clients as plaintiffs and defendants in controversies over: •
Patent, trademark and copyright infringement
• Trade secret misappropriation •
Interferences, oppositions and re-examinations
•
Technology contracting
•
Solid Technical Foundation
Unlike boutique IP litigation specialists, our IP litigation group is positioned to protect clients’ intellectual property assets across a full spectrum of technologies and applications. Our lawyers have worked as patent examiners at the Patent and Trademark Office, and as engineers or in-house counsel with leading technology companies. Our trial lawyers are also technologically savvy, and can break down complex concepts for judges and juries alike. Multinational corporations, emerging companies and established mid-sized business all
depend on Haynes and Boone IP litigators to fully understand their technologies. That knowledge enables us to create an effective defense for the IP rights of any product.
Defending Rights to Trade Secrets Disputes over non-compete agreements often pit employers against each other. We have handled litigation representing both employees’ former and new employers, and are skilled at securing and resisting temporary restraining orders (TROs) and permanent injunctions to protect employer interests in either type of case. Our lawyers can effectively deal with trade secrets involving both hard (for example, in semiconductor fabricating equipment) and soft (such as software for processing everything from customer orders to income tax returns) technologies.
Copyright and Trademark Litigation In addition to complex patentinfringement litigation, Haynes and Boone also regularly handles litigation involving trademark- and copyright-infringement claims. Haynes and Boone has successfully represented both plaintiffs and defendants in bench and jury trials, and before federal and state courts.
Defending Competitive Advantage Companies make major investments of time and money in developing patents, trademarks, and other intellectual property assets. Haynes and Boone’s IP litigators know that creating competitive advantage depends on making the risks and rewards of intellectual property development pay off for our clients. We are skilled at finding the most creative ways to help them exploit and protect their intellectual property assets and advantages.
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Richard Penfold Partner, Head of Intellectual Property JAG Shaw Baker +44 203 598 3070 www.JAGShawBaker.com info@JAGShawBaker.com Berners House, 47-48 Berners Street W1T 3NF
Bio Richard is Head of Intellectual Property at JAG Shaw Baker. Richard has more than 20 years of experience advising clients how to protect, exploit, enforce and manage intellectual property and technology assets, having qualified as a solicitor in England in 1994. Richard’s experience covers a broad cross section of intellectual property and technology matters involving, among others, trade marks, patents, data protection, cybersquatting, licensing and franchising, copyrights, design rights, database rights, personality and image rights and advertising and marketing regulatory issues. Prior to joining JAG Shaw Baker, Richard was a partner at Harbottle & Lewis, DLA and latterly was head of Brown Rudnick’s European Intellectual Property practice. Richard is recommended in Chambers UK 2013 for intellectual property and in Thomson Reuters’ UK Super Lawyers publication 2013.
Other Practice Areas We provide strategic commercial and corporate legal advice on UK and European corporate financing, IP, commercial contracts, technology, data protection, due diligence, litigation and general counsel matters. Practical business guidance and collaborative advisor to entrepreneurs, companies and investors in their business transactions and relationships with commercial and corporate partners.
IP / Brand protection Commercial contracts Technology agreements Data protection Terms & conditions M&A and exits IPO Formations and company administration Financing transactions Debt and equity Shareholder agreements Due Diligence General Counsel
The Firm About JAG Shaw Baker Founded in 2013, JAG Shaw Baker is a strategic law firm that advises entrepreneurs, companies and investors in high-growth markets including the Life Science, Clean Tech and Digital Technology sectors. We provide a collaborative culture that gives our clients access to exceptional commercial legal advice, deep industry expertise and an understanding of how to build a business from inception through successful exit. From startup, scale-up or speed-up to high growth, late stage, M&A, postIPO, our UK and US lawyers have extensive expertise in representing UK and European companies on quality transactions with US and European investors and strategic buyers. Clients include Transferwise, Soundcloud, Bioven, Fon, Alere, Fidelity Investments, Index Ventures and Genii Capital for the acquisition of Renault Formula 1. For more information visit our website at http://www. jagshawbaker.com or follow us on Twitter @ Jagshawbaker.
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Julie A. Katz Katz Group LLC Owner 1-857-3101 www.katzgroupllc.com Julie@katzgroupllc.com 1711 N. Hermitage Ave., Chicago, Illinois 60622 USA
Julie A. Katz, JD, has 25 years of experience in the field of litigating and prosecuting intellectual property spanning various technologies, industries and consumer markets. Her practice includes international IP portfolio management & consulting, copyright protection, patent infringement litigation, trade dress protection, trademark protection, trade secret protection, IP litigation, e-discovery, alternative dispute resolution, US PTO Trademark Trial and Appeal Board proceedings, strategic branding & re-branding, IP Audits, domain name disputes, domain name acquisition, IP investigations, IP licensing, U.S. Customs. Julie has extensive knowledge about protecting trademarks and copyrights through the US Customs and Border protection system designed to stop counterfeits and parallel imports from entering the US. All of the aspects of Julie’s practice involve focus on identifying, defining, and maximizing her
client’s intellectual property rights. As part of this practice, she routinely works with the US PTO and Copyright Office; prepares trademark and packaging risk assessments regarding use and registration; counsels and monitors portfolios to confirm that the IP is used properly and effectively; negotiates and drafts licenses and other transactional agreements relating to IP whether obtained domestically or internationally; creates enforcements programs and procedures that promote effective use of IP and policing against improper use by others; and works with her clients to establish internal policies for them to avoid conflicts with and respect the IP rights of others. In the area of litigation, Julie’s trademark litigation experience has extended from toys to kitchen appliances; copyright litigation concerning video game rights, computer software and toys; patent litigation involving antibiotics, hard disk drive motors, and audio equipment. She
has extensive experience litigation Hatch-Waxman Act/ANDA patent infringement actions involving prescription pharmaceutical drugs, including successfully invalidating the patent on Floxin Otic® (ofloxacin) (Daiichi Sankyo Co., Ltd. v. Apotex, Inc. et al., 501 F.3d 1254 (Fed. Cir. 2007). Julie works with clients to protect trade secrets through preemptive litigation strategies and copyright registration where appropriate. In the area of contentious trademark disputes, Julie has won 100s of proceedings before the Trademark Trial and Appeal Board. She has also won many victories for trademark owners through ICANN’s domain name dispute resolution procedures. Prior to founding Katz Group, Julie was a partner at the independent intellectual property law Welsh & Katz, Ltd. and the general practice firm Husch Blackwell, LLP.
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MANISHA SINGH LexOrbis Founding Partner +91 11 23716565 www.lexorbis.com Manisha@lexorbis.com 709-710 Tolstoy House, 15-17 Tolstoy Marg, New Delhi- 110001, India
Keeping an eye on forum shopping
Forum shopping refers to the practice adopted by some litigants of having their case heard in the court which is most likely to provide a favourable judgment. In India, so-called forum shopping is not permitted as such. However, the existence of tangled procedural laws makes forum shopping in IP cases in India quite common. Legal framework In India, an action must be filed at the forum that has jurisdiction over the suit under the provisions of the trade mark legislation or other IP legislation, or in accordance with the Code of Civil Procedure (CPC). The general rule of jurisdiction stipulates that a suit is best filed where the defendant is based or where the cause of action arises.
However, section 134(2) of the Trade Marks Act, 1999 and section 62 of the Copyright Act provide an exception to section 20 of the CPC and give an option for rights holders to file suit in a court in the jurisdiction where the rights holder is based, irrespective of where the defendant is based or where the cause of action arose. Section 134(2) in The Trade Marks Act, 1999 provides: For the purpose of clauses (a) and (b) of sub-section (1), a ‘District Court having jurisdiction’ shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Section 62 of the Copyright Act provides for jurisdiction of the court over copyright infringement matters. It says:
Section 20 of the CPC provides for this, stating: Every suit shall be instituted in a court within the local limits of whose jurisdiction — (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises.
1. Every suit 1 or other civil proceeding arising under this chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction. 2. For the purpose of sub- section (1), a ‘district court having jurisdiction’ shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution
Manisha Singh and Zoya Nafis of LexOrbis discusses how the Indian Supreme Court has handled the unfair practice of forum-shopping in Indian IP cases
of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.
These provisions were incorporated to act as exceptions to the general rule and to enable the right holder to file a suit at a place of their residence or where they work for gain. But these provisions are often misused by the right holders for their own advantage, defeating the honest intention of the legislature in drafting these provisions. For instance, for quite some time, right holders have preferred to file trade mark and copyright infringement suits at the Delhi High Court, as it is known for granting ex parte injunction orders. Since cases like this drag on for years and years in India, plaintiffs are mainly interested in securing a temporary injunction and the Delhi High Court has been liberal in granting ex parte ad interim injunctions. Further, because of the large number of filings of IP cases before the Delhi High Court compared to other courts in the country, its judges and lawyers have acquired expertise in handling such matters. The practice of forum shopping in IP cases is now quite prevalent in India. The defendants are often harassed by the plaintiffs, who chose to file suits at distant places, taking advantage of the exceptions to the CPC as per the Copyright Act and Trade Marks Act. Recently, the Supreme Court of India (SC) came to the rescue of harassed defendants and clarified the position in regard to these provisions.
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Indian Performing Rights Society v Sanjay Dalia In Indian Performing Rights Society v Sanjay Dalia & Anr, the SC elucidated the issue. The SC expounded on the position of filing trade mark and copyright infringement suits in the appropriate forum in its verdict of the appeal filed by the Indian Performing Right Society Limited (IPRS). In the appeal, the appellant filed a suit in the High Court of Delhi relying on the above-mentioned provisions. The appellant claimed that the branch office of the plaintiff was situated in Delhi, while the entire cause of action, according to the plaintiff, had arisen in Mumbai, Maharashtra, where the head office of the plaintiff was also located. The defendant objected to the filing of the suit before the Delhi Court and questioned the territorial jurisdiction of the court. The Single Bench and Division Bench of the High Court upheld the objection and held that the suit should have been filed in the court at Mumbai where the head office of the plaintiff was located and where the cause of the action took place. Following this, an appeal was filed by the plaintiff at the SC against such orders. The case highlighted the need to interpret section 62 of the Copyright Act, 1957 and section 134(2) of the Trade Marks Act, 1999 with regard to the place where a suit can be instituted by the plaintiff. The Supreme Court thoroughly dealt with the issues involved in the case and clarified the position in regard to territorial jurisdiction in IP cases. The court observed that the intendment of section 62 of the Copyright Act and section 134 of the Trade Marks Act was an additional forum in the form of a district court within whose limits the plaintiff actually and voluntarily resided or carried on business or personally worked for gain. The purpose of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business or has branch
offices and not to empower the plaintiff to harass the defendant by filing suits at far-off places. The expression ‘notwithstanding anything contained in the Code of Civil Procedure’ in section 62 of the Copyright Act and section 134 of the Trade Marks Act does not oust the applicability of the provisions of section 20 of CPC. It was clear that an additional remedy had been provided to the plaintiff so as to file a suit where he was residing or carrying on business. Section 20 of the CPC enables a plaintiff to file a suit where the defendant resided or where the cause of action arose. Sections 20(a) and (b) usually provide the venue where the defendant or other resided, carried on business or personally worked for gain. Section 20(c) of the CPC enables a plaintiff to institute a suit where the cause of action wholly or in part, arose. The Explanation appended to Section 20 CPC provided that a corporation should be deemed to carry on business at its sole or principal office in India or in respect of any cause of action arising at any place where it had a subordinate office. Therefore, a corporation can be sued at a place where its sole or principal office is, and where the cause of action wholly or in part arose, where it has also a subordinate office. The SC stated that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in a purposive manner. This means that a suit can be filed by the plaintiff at a place where he was residing or carrying on business or personally worked for gain. To file a suit, it is not necessary to go to the place where the defendant was residing or the cause of action wholly or in part arose. However, if the plaintiff was residing or carrying on business at a place where cause of action also took place, wholly or in part, they must file a suit at that place. They cannot rely on the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act to file a suit at a farther place just to harass the defendant.
in Heydon’s case (the interpretation of the provisions has to be such to prevent mischief while deciding this case). As per this appeal, if the interpretation of the appellant had been accepted, then any branch office of the company could be used for bringing the jurisdiction to far-off places to harass the defendant. The avoidance of counter mischief to the defendant was also necessary while giving the remedy to the plaintiff under the provisions in question. The court also rejected the contention of the plaintiff, that the Delhi High Court has handled vast numbers of IP matters in the country, and so has acquired expertise in handling such disputes. As the bulk of such litigation is filed at Delhi and lawyers available at Delhi have expertise in such matters, it would be convenient to the parties to contest the suit at Delhi. Such aspects are, however, irrelevant for deciding the territorial jurisdiction. It is not the convenience of the lawyers or their expertise which decides territorial jurisdiction. Therefore, the SC dismissed the appeal.
Decentralising IP cases By narrowing the options available to determine the place of institution of a suit by the plaintiff, the Supreme Court has ensured that the plaintiff is given the convenience to file a suit at their place of residence or where they works for gain, provided the interest of the defendant is also safeguarded and the defendant is not harassed unnecessarily at the hands of the plaintiff. The decision will decentralise the trying of IP suits and enable other Indian courts and lawyers to gain relevant expertise.
The SC used the principle explained
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John Onyido, Esq. Partner and Head Intellectual Property and Technology Law Department SPA AJIBADE & CO. [Legal Practitioners, Arbitrators & Notaries] +234.803.220.4371; +234.815.119.1865; +234.1.460.5091. www.spaajibade.com jonyido@spaajibade.com Suite 301 SPAACO HOUSE, 27A Macarthy Street, Onikan, Lagos, Nigeria.
Education LL.B., (University of Benin); BL (Nigerian Law School); LL.M., (Corporate & Commercial Law), University of Lagos; M.I.L.D., (International Law and Diplomacy) University of Lagos; LL.M. (Intellectual Property Law) Cardozo School of Law, USA.
Biography BAR ADMISSIONS/ LICENSURE: Solicitor and Advocate of the Supreme Court of Nigeria Admitted to practice Law in the state of New York Admitted before the New York Southern and Eastern District Courts Admitted to practice before the US Court of Appeals for the Second Circuit Admitted to practice before the US Supreme Court PROFESSIONAL MEMBERSHIP: American Bar Association (ABA) Nigerian Bar Association (NBA) International Trademark Association (INTA) Practice Areas: Arbitration and Dispute Resolution; Corporate Finance and Capital Markets; Real Estate and Succession; Energy, Natural Resources and Infrastructure, Taxation.
The Firm S.P.A. Ajibade & Co. is a leading Corporate and Commercial Law firm based in Nigeria. Established in 1967, it has been at the forefront of developments in commercial practice in Nigeria and has continuously rendered sound technical advice and tailored customer solutions to its local and international partners across Africa, Europe and the Americas. To our clients, S.P.A. Ajibade & Co. is a reliable partner and trusted counsel in various transactions and dispute resolution processes. We see our duty to our client as that of not just providing excellent technical advice, but also providing solutions that address and enhance a client’s purpose and business objective.
Insolvency Sub-Committee of the Nigerian Bar Association’s Section on Business Law (NBA-SBL), as well as the National Executive Committee of the Nigerian Bar Association (NBA). It is also a founding member of the Capital Market Solicitors Association (CMSA) and a member of the CMSA’s Executive Committee. We are also represented on the Council of the NBA’s Section on Business Law.
Our IP Practice Our Intellectual Property unit is involved in the maintenance, protection and enforcement
Over the last four decades, S. P. A. Ajibade & Co. has garnered an impressive track record of providing first class specialised services in the areas of Commercial Dispute Resolution, Capital Market Law and Practice, Corporate Finance, Corporate Structuring and Restructuring and Real Estate and Probate. Our successes in providing solutions have been a source of satisfaction and pride to clients and have been positively acknowledged by counter parties. Referrals from clients and counter parties constitute a good portion of our new briefs. We are licensed by the Securities and Exchange Commission (SEC) to provide legal advisory services in relation to the Nigerian capital market. S. P. A. Ajibade & Co. is represented on the Rules and Regulations Sub-Committee of SEC’s Capital Markets Committee, the Banking, Finance and
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of our clients’ industrial and intellectual property rights either in isolation or as an offshoot of related transactional matters. Some of these areas include: Entertainment and Media, Art, Sports, Trademarks, Copyright, Patents and Trade Secrets as well as licensing and ancillary international trade law issues. We are particularly skilled in all maintenance work at the Nigerian Trade Marks and Patents Registry involving the application for, publication, registration and renewals of trademarks. We also undertake the assignment of such marks and the recordation of Registered User Agreements to third parties or subsidiaries. Our expertise also extends to the filing, prosecution or defense of our clients’ applications in opposition proceedings before the Registrar of Trademarks. In the area of enforcement, our Firm’s Intellectual Property unit in tandem with the Dispute Resolution Department is versed in the prosecution and/or defense
of Copyright, Trademarks and Patent infringement actions at various levels. We can obtain exparte, interlocutory, Anton Piller or Class injunctions depending on the exigencies of an action as well as instigate anti-counterfeiting proceedings under the Nigerian Merchandise Marks Act. Our Firm handles applications for the issuance of product licenses before the National Agency for Food and Drug Administration and Control (NAFDAC) and can advise on transfer of technology requirements within the Nigerian investment climate, through the National Office for Technology Acquisition and Promotion (NOTAP). Our E-Commerce practice is budding apace with the industry in Nigeria and as we continue to build capacity in the area, our lawyers assist clients to understand the impact of E-Commerce and related issues on their businesses and work with them to develop legal strategies they need to address
this impact effectively. Our Firm provides strategic advice to its web-based business clients on the risks and opportunities entailed in the steadily increasing number of state and federal laws, rules and regulations governing consumer oriented retail and business-tobusiness electronic commerce. As one of Nigeria’s leading business law practices, our practice is well positioned to support internet based companies on matters relating to Intellectual Property and new technologies, Intellectual Property content regulation and website management, data protection, encryption and privacy, electronic contracting, protection of domain names, jurisdictional issues, online marketing and the valuation of related Intellectual Property portfolios together with the licensing of such rights. We collaborate with other affiliate firms in sub-Saharan Africa to provide IP related services within the OAPI and ARIPO regional bodies at competitive costs.
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in the Acquisition, Assignment and Licensing of IP rights as well in enforcement. Some of our notable experience is in the area of;
The Adunola Plot L2, Close 401 Banana Island, Ikoyi, Lagos Tel: +234-1-2702551 Fax: +234-1-2642553
OLANIWUN AJAYI LP’S INTELLECTUAL PROPERTY PRACTICE Olaniwun Ajayi LP (OALP) is a leading commercial law firm with world class delivery of and standards of effectiveness in legal services. The firm has established a reputation for more than five decades and is fast becoming a leading force within the Nigerian Intellectual Property Law and Creative Industry. Our Intellectual Property Practice is particularly skilled in servicing local and foreign businesses and individuals in the management and protection of their IP and other proprietary rights. As is our wont in various areas of the law, OALP is now at the forefront of moving the frontiers of the law on protection of proprietary rights such as image rights, domain name rights and intricate facets of trademarks such as position, colour and shape. We have an in-depth knowledge of commercial law, trademarks law as well as contractual arrangements and international business transactions, which provides us a holistic approach to work; we value the importance of commercial awareness and are not legalistic about issues. This, coupled with our inter relationship skills with regulatory authorities; stand us in good stead to meet our clients’ needs. Our team members have the requisite transactional experience
1.1 Litigation – infringement, passing off and counterfeit claims in respect of registered trademarks, copyright and designs, as well as revocation of trademarks and nullification of registered designs. A notable matter is the reported case at the Court of Appeal, Ferodo Ltd v Ibeto Ind Ltd [1999] 2 NWLR Part 592, a trademark infringement and passing off action; 1.2 Criminal Raids – police raids further to Statute, NAFDAC regulations and the Standard Organisation of Nigeria; 1.3 Trap Purchases – in respect of various business products 1.4 Trademark Oppositions – The head of IP Practice (Mrs Toyosi Alabi) has managed in her IP career, a portfolio of 800 trademark opposition matters. 1.5 Quasi-Judicial Enforcement – actions for Revocation of Company Name Registrations at the Corporate Affairs Commission as well as Objections at the Trademarks, Patents and Designs Registry.
and access to law and practice in various jurisdictions. As a Firm that is committed to providing quality services for its clientele, OALP is consistently evolving cost minimizing techniques to meet with client expectations, in tandem with this objective.
OALP has been at the forefront of servicing commerce and industry for many decades, and having worked on large and complex deals, we are able to refract with eagle lenses, those factors that count in ensuring success as a world class organization. Our team synergises with the Entertainment, Media and Leisure practice of the Firm in advisory and protection of their image and other rights in the exploitation of their talents and property. Our Firm has offices in Lagos and Abuja, and alliances with magic and silver circle firms worldwide, resulting in extensive opportunities
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David Pellisé Urquiza Owner Pellisé abogados 0034-934393207 www.pellise.es pellise@pellise.es Avda. Diagonal, at. 1ª, Barcelona (08029), Spain
Pellisé Lawyers is a law firm which is highly specialized in intellectual property and unfair competition. We handle inventions –especially patent planning, litigation and enforcement-, as well as trademarks, designs, unfair competition, copyrights and competition law. Our law firm has a 25 years long career of rigorous work and outstanding professional achievements. Our clients range from small and medium size companies to major players –public and listed companies (IBEX 35, NYSE, SIX and OMX among others) as well as private companies–. For those issues that require collaboration with scientists, technical experts and professionals from other disciplines, we pay special care to select the ideal qualified person, taking into consideration each individual case, and we maintain the necessary coordination and involvement in the work. Our professional guarantee lies on the lasting trust of our clients. With the confidence that we will not fall short of your expectations, we offer our professional services. Do not hesitate to contact us.
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