2015 Globa lIP Directory by Ctc Legal Media

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2015 GLOBAL

IP DIRECTORY GLOBAL REACH, LOCAL KNOWLEDGE

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Editor’s welcome W

elcome to The 2015 Global IP Directory. Within the next 160 pages you will find the contact details of the world’s leading IP law firms. For ease of reference this directory is broken into the following 4 geographical regions, and then into countries:

Africa | Asia | Europe | The Americas

2015 GLOBAL IP DIRECTORY Editor editorial@patentlawyermagazine.com Publishing Director Chris Dooley chris@ctclegalmedia.com Advertising Enquiries Omin Limbu omin@ctclegalmedia.com Subscription Enquiries subscription@patentlawyermagazine.com Accounts Enquiries accounts@patentlawyermagazine.com

This publication is designed to support those international IP law firms who want to actively promote their expert Intellectual Property services and gain new business, which is why we do not distract the readers with pages of free text based entries. Don’t forget all the entrants information can also be found on our flagship magazines (The Patent Lawyer & The Trademark Lawyer) websites www.patentlawyermagazine.com and www.trademarklawyermagazine.com The CTC Legal Media team would like to thank all the entrants for their support in compiling this inaugural issue of The 2015 Global IP Directory. The CTC Legal Media Team Chris Dooley – Publishing Director, chris@ctclegalmedia.com Omin Limbu – Publishing & Marketing Consultant, omin@ctclegalmedia.com Cathy Heys – Group Editor, editorial@ctclegalmedia.com Carla Ottley – Finance Director, carla@ctclegalmedia.com

Published by: CTC Legal Media, 23 Hedgers Way, Kingsnorth, Ashford, Kent TN23 3GN, United Kingdom Tel: +44 (0)20 7112 8862 Fax: +44 (0)20 7084 0365 Design and Repro by: Design and Printing Solutions Ltd, 11 Millstream Green, Willesborough, Ashford, Kent TN24 0SU Printed by: Headley Brothers Ltd, The Invicta Press, Queens Road, Ashford, Kent TN24 8HH Whilst every effort has been made to ensure that the information contained in this journal is correct, neither the editor, contributors or CTC Legal Media can accept any responsibility for any errors or omissions or for any consequences resulting therefrom. © CTC Legal Media 2015, and contributors. The contents of this journal are protected under the copyright law of the United Kingdom, the Berne Convention and the Universal Copyright Convention. Any unauthorised copying of the journal may be in breach of both civil and criminal law. Infringers will be prosecuted.

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Mission statement The Patent Lawyer and The Trademark Lawyer educate and inform professionals working in the industry by disseminating and expanding knowledge globally. They feature articles written by people at the top of their fields of expertise, which contain not just the facts but analysis and opinion. Important judgments are examined in case studies and topical issues are reviewed in longer feature articles. All of this and the top news stories are brought to your desk via the printed magazine or the website http://www.patentlawyermagazine.com/

2015 GLOBAL IP DIRECTORY

Regions and Countries covered by

The 2015 Global IP Directory

The Americas Aruba - p126 Brazil - p129 Bolivia - p133 Canada - p135 Chile - p138 Guatemala - p140 Guyana - p142 Mexico - p145 Peru - p156 The Bahamas - p160 Trinidad & Tobago- p162 USA - p164 Venezuela - p167

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Europe

Hungary - p71 Iceland - p76 Bosnia & Herzegovina - p54 Italy - p78 Kosovo - p80 Bulgaria - p57 Latvia - p82 Croatia - p59 Macedonia - p84 Czech Republic - p62 Montenegro - p86 Finland - p66 Poland - p89 Greece - p68

Romania - p96 Russia - p100 Serbia - p103 Slovenia - p107 Sweden - p109 Switzerland - p111 United Kingdom - p113 Ukraine - p120

Asia

Africa Nigeria - p11

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China - p17 India - p19 Indonesia - p29 Malaysia - p31 Nepal - p34 Pakistan - p37 South Korea - p41 Sri Lanka - p43 Vietnam - p49

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COUNTRY HEADING

Index of advertisers

Aegis Law Firm ....................................14 Alfa Patent ..........................................83 Al-Rahim Trademark & Patent Attorneys ..40 Anand & Anand ...................................25 Angulo, Castro Y García IP Consultancy 157 B & R Latin America IP LLC ................134 Backström & Co Ltd, Attorneys at Law ....67 Badertscher Rechtsanwälte Ag/ Attorneys at Law ................................112 Barreda Moller ...................................158 Batavia Patent Agent ............................30 Becerril, Coca & Becerril, S.C. ................................146, 147, 148, 149 Bereskin & Parr ..................................136 C & L Attorneys ..................................150 Cabinet Doina Tuluca IP ........................98 Cabinet Enpora ....................................97 Cabinet Oproiu.....................................98 Cameron & Shepherd Attorneys at Law .143 Caribbean IP – Katherine Van Deusen Hely, P.L.L.C. ............................................163 Century Group ...................................127 Chandrakant M Joshi ...........................27 China Truer IP .....................................18 CPA Global ..............................28, 70, 88 Detech & Associates .............................50 Diligens IP ..........................................98 Dreon IP ...................................130, 131 6

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Duane Morris LLP ..............................165 Dumont Bergman Bider & Co., S.C. .....151 ECV & Asociados ................................170 Estrategia En Propiedad Intelectual Sa De Cv ........................................................152 Fenix Legal ........................................110 Global Law Associates .........................35 GLP....................................................79 Goodrich, Riquelme Asociados.........2, 153 Gorodissky & Partners ........................101 Grischenko & Partners ........................121 HFG Law Firm .....................................18 HGF IP Specialists .............................119 Higgs & Kelly .....................................161 Hoet Pelaz Castillo & Duque ................................124, 125, 168, 169 Inaga Asesores & Consultores ..............171 Integral Intellectual Property Inc. .........137 Intelbiro d.o.o. ....................................55 Irin Patent ...........................................58 J Varbanov & Partners...........................58 Jalife Caballero ..................................152 JD Sellier & Co ..................................163 Johansson & Langlois .........................139 Julius & Creasy ..................44, 45, 46, 47 Karanovic & Nikolic ..............................55 Ken Ahia & Associates ..........................15 Kim & Chang .......................................42

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COUNTRY HEADING

KIPA AB ............................................110 KNJ Associates ....................................48 Lex Orbis IP Attorneys...........................26 Lex Synergy Domain Name Specialists ................................................119, 166 Lexincorp ..........................................141 Liapunov & Co ...................................101 Luiz Leonardos & Advogados ...............132 M. Amin & Company ............................39 MarQonsult IP .....................................32 Marquesa Trademark Search Systems ....................................................9, 118 Merida & Asociados ...........................141 Mikhailyuk, Sorokolat & Partners..........102 Minesoft Global Patent Solutions ................................114, 115, 116, 117 NetNames ...................................36, 122 Olivares ............................................154 Paciﬁc Patent Multiglogal ......................30 Pakherenko & Partners........................121 Papula Nevinpat ..................................67 Patent & Trade Mark Agency Mihailovic ................................................104, 105 Patentservis Praha ..............53, 63, 64, 65 Patice IP Legal .....................................77 Patpol .................................................95 Peksung ..............................................18 Pinheiro Palmer Advogados .................132

Polservice Patent & Trademark Attorneys Ofﬁce ..................90, 91, 92, 93 Producta Ltd .56, 60, 81, 85, 87, 106, 108 R. William Wray & Associates ..............137 RWS Group .......................................119 Savvy Juris .........................................40 SBGK Attorneys at Law .......72, 73, 74, 75 SKRINE .............................................33 Smart & Biggar .................................136 SS Rana & Co ..............20, 21, 22, 23, 24 Sterne, Kessler, Goldstein & Fox ...........165 Stillwaters Law Firm .......................12, 13 The Chambers Of Kamarul Hisham & Hasnal Rezua ...................................33 Thomson Reuters .........................51, 128 Traset .................................................94 Tuca Zbârcea & Asociatii ......................98 United Trademark & Patent Services ....................................................38, 39 Vakhina & Partners .............................102 Vayanos Kostopoulos Law Firm .............69 W.A. Mendez & Asociados S.R.L. .........134 Werner, Juk, Baudelio & Cia ...............155 Winco ................................................50 Wizecounsel Law Firm ..........................15 You Me Patent ....................................42 Zamﬁrescu Racoti & Partners ................99 Zestad – IP Law Company ..................121

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Marque

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Africa

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Nigeria

Lagos is the most populous city in Nigeria, the second fastest-growing city in Africa and the seventh in the world. The population of Lagos according to the Lagos State Government was 17.5 million.

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Stillwaters Law Firm PEOPLE | INTEGRITY | SERVICE

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STILLWATERS is an award winning leading law firm in Nigeria that specialises 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 Duala 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 the 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 over 660 foreign multinationals, public 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. IP PRACTICE AREAS Searches to registration, renewals, assignments, agency, distributorship, franchising, mergers, transmissions, oppositions, piracy, passing-off,infringement, licensing, transfer of technology, patenting, annuities, designs, IP due diligence, boarder enforcement measures, anti-counterfeiting, custom related assistance, anti-piracy, arbitration and litigation.

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, +234 (0) 1 460-5470, +234 (0) 803-324-8860 Email: info@stillwaterslaw.com Website: www.stillwaterslaw.com

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COUNTRY HEADING

Aegis|

LAW FIRM

ABOUT US Located in Lagos, Nigeria commercial capital, AEGIS is a commercial law firm providing comprehensive legal services to a wide range of clients including but not limited to individuals, banks and financial institutions, oil and gas companies, telecommunications companies, maritime companies, multinationals, government ministries and agencies. We are active in the area of litigation, arbitration, telecommunications, maritime, oil and gas, secured transactions, project finance, syndicated lending, security documentation, mergers and acquisitions, asset finance and general commercial practice. We adopt a multifaceted approach in providing solutions to our clients’ needs. Our approach is underscored by our belief that there are different perspectives to solving a problem. We are a law firm with a strong international outlook. We continue to improve our knowledge of international law. We strive to cultivate the tools and resources that would satisfy our international clients and enhance their business. Our philosophy is centered on ensuring that our clients receive qualitative legal services that cannot be compared with our competitors. Our teams of dedicated professionals are always ready to attend to our clients’ needs round the clock. We make it our primary goal to satisfy and exceed our client expectations. We have a team of dedicated and passionate lawyers who have the requisite skills and qualifications to deliver the kind of legal assistance that satisfy our clients. As a law firm, we demand the best from our lawyers by ensuring that we in place a rigorous internal control audit system that ensure that only the best product emanate from our office. We do not compromise our commitment to details and have a passion for excellence. At AEGIS, we ensure that our lawyers have a duty to uphold the ethics of the profession and the highest standard in the legal profession. We believe that as legal practitioners, we can only provide the best for our clients when we uphold the highest ethical standard in the legal profession.

Plot 6B Bendel Close Off Aboyade Cole Street Victoria Island, Lagos Tel: 08128346520, 07051919198 Mobile: 07036993808 Email: aegis@aegislawﬁrm.com.ng www.aegislawﬁrm.com.ng 14

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NIGERIA

PRACTICE AREAS: · Intellectual Property (Search, Registration, Opposition, Enforcement & Litigation) -Trademarks - Patents - Designs - Copyrights · Commercial Litigation · Banking and Financial Advisory Services · Real Estate · Product Registrations (NAFDAC) · Company Secretarial (Pre and Post-Incorporation)

KEN AHIA & ASSOCIATES is a leading Intellectual Property Law Firm in Nigeria with highly dedicated and articulate lawyers. The firm has requisite skills, capabilities, and experience in registration, protection and prosecution of Trademarks, Patents, Copyrights, Industrial designs and other Intellectual Property related matters.

KEN AHIA & ASSOCIATES Plot 14, Block 109, Henry Ojogho Crescent, Off George Enenmoh Crescent, (3rd Roundabout), Lekki Phase 1, Lagos, Nigeria. Tel: +234 802 337 6602, 809 582 1852, Mobile: +234 809 582 5656, 805 552 5141 E-mail: Info@kenahialaw.com kenahia@yahoo.com Website: www.kenahialaw.com

We cover the whole range of IPR services, including: Searches, filing and prosecution of trade marks, patent and designs, renewal of industrial property rights, transfers of IP rights, watch services, IP due diligence, infringement/passing off, regulatory matters (NAFDAC and SON), domain name/internet matters etc. Contact details: 61, Otta Road, Orile-Agege, P.O. Box 55165K, Ikeja, Lagos, Nigeria Tel: +234-1-7658948 / 7017920656 Email: ip@wizecounzel.com / wizecounzel@yahoo.com

2015 GLOBAL IP DIRECTORY

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Asia

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China

The Great Wall of China is a series of fortifications made of stone, brick, tamped earth, wood, and other materials, generally built along an east-to-west line across the historical northern borders of China to protect the Chinese states and empires against the raids and invasions of the various nomadic groups of the Eurasian Steppe.

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CHINA

Advocate the difference(*) I Shanghai â&#x20AC;&#x201C; Beijing â&#x20AC;&#x201C; Guangzhou www.hfgip.com hfg_china@hfgip.com (*) The image to the left contains few anomalies. Visit our website to find out more.

Peksung, a boutique IP firm, offers a full spectrum of premium intellectual property services in prosecution and litigation for domestic and overseas clients. Peksung is home to a diversified team consisting of reputable and dedicated patent attorneys, trademark attorneys and attorneys-at-law that bring together academic, industrial and professional experience.

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PEKSUNG INTELLECTUAL PROPERTY

908 Shining Tower, 35 Xueyuan Road Haidian District, Beijing 100191 P.R.China Te l : + 86-10-8231-1199 Fax: + 86-10-8231-1780 + 86-10-8231-1782 Email: mail@peksung.com

Website: www.peksung.com

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COUNTRY HEADING

India

The Taj Mahal is a white marble mausoleum located in Agra, Uttar Pradesh, India. It was built by Mughal emperor Shah Jahan in memory of his third wife, Mumtaz Mahal.

Sponsored by

SS Rana

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S.S. Rana & Co. / India

India and the National IP Policy Vikrant Rana from S.S. Rana & Co. discusses India’s draft National IP Policy and the way forward.

ith the motto of “Creative India, Innovative India” the six member IPR Think Tank recently released its first draft on India’s National Intellectual Property Rights Policy. Soon after the new central Government, led by Prime Minister Narendra Modi came into power, the IPR Think Tank was constituted last year with the objective that includes drafting India’s IP policy, identifying areas in the IPRs where study needs to be conducted and to furnish recommendations in this regard to the Ministry and to keep the Government advised on the best practices to be followed in Indian Intellectual Property Office in order to create an efficient and transparent system of functioning in the said offices. Under the chairmanship of Retd. IPAB Justice Prabha Sridevan the comprehensive policy is drafted on the lines of 'Make in India', 'Digital India', ‘Skill India’ and 'Smart

Résumé Vikrant Rana, Managing Partner, S.S Rana & Co. Vikrant is the managing partner of S.S Rana & Co., a premier Intellectual Property Law Firm of India. He is an Advocateon-Record with the Supreme Court of India (2006) and is a registered patent agent. For over a decade, Vikrant has been providing practical legal advice to many Fortune 500 companies and some of the world’s most esteemed corporations on securing, protecting, and enforcing their IP assets in India and world over.

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Cities' slogans. The IPR draft states to inspire India to take a lead in various fields of human accomplishments. It enumerates policy measures to make the IP Systems more inclined towards the local needs of our country, which at the same time are directed towards stronger and more holistic enforcement of the rights. It states that “in future negotiations in international forums and with other countries, India shall continue to give precedence to its national development priorities whilst adhering to its international commitments and avoiding TRIPS plus provisions”.

Features of the National IP Strategy The draft proposes its objectives in following categories - IP Awareness and Promotion, Creation of IP, Legal and legislative framework, IP Administration and management, Commercialization, Enforcement and Adjudication, and Human Capital Development so as to realize the full potential of IPR for India’s socioeconomic growth and to address issues of sustainable development, inclusive growth and formulation of the policy objectives that would be the pillars of the envisaged IPR strategy. The draft then elaborates on the steps that it intends to take to achieve its objectives in the aforementioned seven categories.

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“

To impart predictability, transparency and efficiency in the administration and enforcement of IP laws.

”

IP Administration and Management The policy proposes administrative measures that Office of Controller General of Patents, Designs, and Trademark (CGPDTM), Office of Registrars of Copyrights, and other nodal agencies needs to take for “efficient, expeditious and cost effective grant and management of IP rights”

IP Awareness and Promotion:

Commercialization of IP

The draft proposes adoption of nationwide campaign to raise IPR awareness in all sectors of society. It intends to initiate customized programs for “the specific needs of industries, MSMEs, R&D institutions, science and technology institutes, universities and colleges, inventors and creators, entrepreneurs”.

Among other measures the policy proposes establishment of an “IP Promotion & Development Council (IPPDC) as the nodal organization for the promotion, creation and commercialization of IP” and enumerates several steps by way of which it intends to attain its objective of connecting “investors and IP creators”.

Creation of IP In this section the policy suggests measures that are to be taken to promote creation of IP in India. It states that those IP are to be brought in limelight which are “India’s special strengths and where India has future potential.” It highlights the importance of MSME sector in India that accounts for about 45 percent of India’s manufacturing output but have limited IP assets as their IP mostly pertains to “utility models” which are not accorded protection in India. The policy suggests new law on Utility models in India to recognize “petty patents”.

Legal and Legislative framework In order to “to impart predictability, transparency and efficiency in the administration and enforcement of IP laws”, the draft proposes review of the existing IP laws so that it can be updated and any anomaly and inconsistency can be removed.

Enforcement and adjudication: The draft proposes IP Enforcement and adjudication by sensitizing people on the value of IP, it also proposes measures for strengthening the existing enforcement measures, measures for facilitating IP dispute resolution.

Human Capital Development This section proposes strengthening human resources, and establishing as well as expanding institutes and IPR cells for “teaching, training, research and skill building in IP”.

Major Considerations The draft observes the trend of patent filing in India where that over 75% of patent filings are by foreign entities and recommends adoption of concerted action to increase filings by Indians.

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Trends of Patent Applications Filed in India: (2007-13) Year Applications Filed Residents Non-Residents 2007-08 35,218 6,040 29,178 2008-09 36,812 6,161 30,651 2009-10 34,287 7,044 27,243 2010-11 39,400 8,312 31,088 2011-12 43,197 8,921 34,276 2012-13 43,674 9,911 33,763 In addition to measures such as creating target specific awareness programs for industry and R&D sectors, the draft suggest adoption of new law on Utility Models so as to accord protection to those inventions which may not be patentable under the Indian Patent Act, but are novel, inventive and utilitarian in its own spheres. It is pertinent to mention that in 2011, the Department of Industrial Policy and Promotion had issued the discussion paper on Utility Models with the objective of developing a suitable framework to protect the same. The draft paper had then pointed out that in China, Korea, and Taiwan, domestic applicants comprise more than 97% of the applicants for utility models, on the contrary the foreign filing figures were not that encouraging in countries like Australia and Brazil. However despite of the several comments forwarded to Government by stakeholders from research, academia and industry there hasn’t been any development on the Utility Model law in India. However if implemented, it would be interesting to see what parameters government would propose with respect to patentability criteria, substantive examination and registration procedure. Similarly the legislative route and infringement as well as enforcement measures are other such issues which would require careful deliberations.

“

However such policies and legislative frameworks needs to be analyzed and reviewed periodically to formulate a comprehensive Indian IP system in pace with the global developments.

”

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It would also be interesting to observe the management of IP Promotion & Development Council (IPPDC) that is proposed to serve as the nodal organization for the promotion, creation and commercialization of IP assets. While providing "window services to entrepreneurs, startups and manufacturing units for IP awareness, protection and utilization" is a welcome step, the IP Office may itself consider taking steps to abridge the gap between the right holders and the industry. This can be achieved by establishing a cell where innovators and right holders seeking to commercialize their invention by way of licensing, cross licensing, assignments, merger/sale or acquisition can approach and register their asset. The IP Office can either publish the said information on their website or in the weekly journals.

Conclusion The draft though comprehensive misses out on certain issues such as pharmaceuticals and compulsory license. It is not clear as to what would be the government stance on such issues and what steps it would take to ensure access of medicine by all and to avoid misuse of patent rights by right holders. Nevertheless India has been bringing in several policy reforms - both in administration and statutes from time to time which includes India’s recent accession to Madrid Protocol, ratification of the Marrakesh Treaty 2013, and India’s designation of the International Search Authority and International Preliminary Examination Authority. However such policies and legislative frameworks needs to be analyzed and reviewed periodically to formulate a comprehensive Indian IP system in pace with the global developments.

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INDIA C H A N D R A K A N T M. J O S H I LEADING INDIAN IPR LAW FIRM (Established in 1968)

Address: 5th & 6th Floor, Vishwananak, Chakala Road, Andheri (East), Mumbai-400 099, INDIA. Phones: +91-22-28380848, 28205425, 28324920 Telefax: +91-22-28380737, 28389839 Contact Person: Email: cmjoshi@bom3.vsnl.net.in Mr. Hiral Chandrakant Joshi chandrakantmjoshi@vsnl.net Website: www.cmjoshi.us Areas of Practice: Patent & Trade Mark Search. Patent and Trade Mark Watch, Registration, post registration, infringement etc., Translation of Patent Specification, Franchise and Joint Venture Agreements, Cyberlaw, Mergers & Acquisition.

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COUNTRY HEADING

Indonesia

The National Monument is a 132m tower in the centre of Merdeka Square, Central Jakarta, symbolising the fight for Indonesian independence. It is the national monument of the Republic of Indonesia, built to commemorate the historic struggle.

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INDONESIA

BATAVIA PATENT AGENT Address: Lintas Melawai Bldg., 1st Floor, Unit C, Jalan Melawai 22, Jakarta 12160, Indonesia Telephone: +62 21 7260 555 Fax: +62 21 7231 691 Email: info@bataviapatent.com Website: www.bataviapatent.com Contact: Mr. Kusno Hadi Kuncoro, Mr. Iwan Darusuryoatmodjo We represent foreign clients for patent, trademark and design.

PACIFIC PATENT MULTIGLOBAL Address: DIPO Business Center 11th Floor, Jl. Jend. Gatot Subroto Kav. 51-52, Jakarta 10260, Indonesia Telephone: +62 21 2986 5888 (Hunting) Fax: +62 21 2986 5858 Email: pacific@pacificpatent.com / pac86@indosat.net.id Website: www.pacificpatent.com Contact: Lanny Setiawan

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COUNTRY HEADING

Malaysia

Shanti Hesse / Shutterstock.com

The Petronas Towers, also known as the Petronas Twin Towers are twin skyscrapers in Kuala Lumpur, Malaysia. According to the Council on Tall Buildings and Urban Habitat (CTBUH)'s official definition and ranking, they were the tallest buildings in the world from 1998 to 2004 and remain the tallest twin towers in the world.

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MALAYSIA

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MALAYSIA

SKRINE

Your Trusted Legal Partner Since 1963 Chambers Asia - Pacific 2011 - 2015 Band 1 Firm for Intellectual Property Managing Intellectual Property Global Awards 2014 - Intellectual Property Firm of the Year Who's Who Legal Malaysian Law Firm for the Years 2008 - 2011, 2013 & 2014 Areas of Specialisation

Trade Mark Applications and Prosecutions, Licensing/Technology Transfer, Patent Applications and Prosecutions, Industrial Design Applications and Prosecutions, Copyright, Technology, Multimedia and Telecommunications (TMT), Trade Secrets, Intellectual Property Dispute Resolution, Domain Name Disputes, Franchise.

Contact persons Charmayne Ong co@skrine.com

Khoo Guan Huat kgh@skrine.com

Unit 50-8-1, 8th Floor, Wisma UOA Damansara, 50 Jalan Dungun, Damansara Heights, 50490 Kuala Lumpur, Malaysia. T: +60320813999 F: +60320943211 E: skrine@skrine.com W: www.skrine.com

THE CHAMBERS OF KAMARUL HISHAM & HASNAL REZUA Address: P-2-26, Plaza Damas, 60 Jalan Sri Hartamas 1, Kuala Lumpur, 50480, Malaysia Telephone: +603 6201 3566 Fax: +603 6201 4566 Email: mail@chambers-khhr.com Website: www.chambers-khhr.com Contact: annisa@chambers-khhr.com

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Nepal

Kathmandu Durbar Square is the plaza in front of the old royal palace of the then Kathmandu Kingdom. It is one of three Durbar Squares in the Kathmandu Valley in Nepal, all of which are UNESCO World Heritage Sites.

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NEPAL

GLOBAL LAW ASSOCIATES Address: PO Box: 57, 4th Floor, Radhakuti Arcade, Putalisadak, Kathmandu, Nepal. Telephone: +977 1 4438722 Fax: +977 1 4419675 Email: info@globallawnp.com Website: www.globallawnp.com Contact: Janak Bhandari The leading IP law firm in Nepal with highly experienced team of Attorneys/ professionals for protection and enforcement of IPRs.

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Pakistan

Patrick Poendl / Shutterstock.com

The Faisal Mosque is the largest mosque in Pakistan, located in the national capital city of Islamabad.

Sponsored by

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PAKISTAN

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South Korea

Syaheir Azizan / Shutterstock.com

The N Seoul Tower, officially the YTN Seoul Tower and commonly known as the Namsan Tower or Seoul Tower, is a communication and observation tower located on Namsan Mountain in central Seoul, South Korea. At 236m, it marks the highest point in Seoul.

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SOUTH KOREA

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Sri Lanka

erandamx / Shutterstock.com

Dambulla cave temple also known as the Golden Temple of Dambulla is a World Heritage Site in Sri Lanka, situated in the central part of the country. This site is situated 148 km east of Colombo and 72 km north of Kandy.

Sponsored by

Julius & Creasy

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Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has established itself on rich tradition and the highest professional principles. Julius and Creasy’s wealth of expertise and experience in a wide range of specialized fields of Law enables it to offer innovative legal and business solutions to a diverse, sophisticated and high profile clientele. Our firm from its inception has been involved in intellectual property work. We are presently handling over 30,000 files of which about 10,000 are current and intellectual property involves both contentious and non-contentious matters. We file a large number of trademark applications for overseas clients being instructed by our associates in several countries including UK, European Union, USA, India, Singapore, Hongkong, Australia, New Zealand, Japan and Korea. In contentious matters we represent clients both at the National Intellectual Property Office in opposition proceedings and in infringement proceedings before Courts, Infringement proceedings are instituted in the Commercial High Court and where necessary criminal proceedings are also instituted in the Magistrate’s Court. Although our practice is to a great extent trademarks we have substantial portfolio of patents as well. A large part of this portfolio is related to PCT applications filed in Sri Lanka, We also file number of design applications for overseas clients in Sri Lanka and for Sri Lankan clients overseas through our associates in various countries. We also advise Sri Lankan and overseas company on copy right issues including reviewing of copyright agreements and advise publishers both in Sri Lanka and overseas. Dr J M Swaminathan, holder of LL.B (Ceylon), LL.M, M.Phil Colombo, LL.D (Honoris Causa) and Mrs. Anomi Wanigasekera, holder of LL.M (Wales) and Diplomas in Intellectual Property Law, International Trade Law, Banking and Insurance Law of Institute of Advanced Legal Studies of the Incorporated Council of Legal Education are in charge of the Intellectual Property Division of our firm. Mrs. Kanchana Senanayake, holder of LL.M (University of Colombo) and Mrs. Marie Fernando, holder of LL.B and LL.M with a Distinction (University of Colombo) are professional associates in the Firm’s Intellectual Property Division.

Tel: 94 11 4335159 Fax: 94 11 24466 663, +94 11 2435 451 Email: jacey@sltnet.lk; pts@juliusandcreasy.lk Internet: www.juliusandcreasy.com 44

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Julius & Creasy HEADING / Sri Lanka COUNTRY

PROTECTION OF WELL-KNOWN TRADEMARKS NOT USED EXTENSIVELY NOR REGISTERED IN SRI LANKA Anomi Wanigasekera, Partner, Julius & Creasy

ri Lanka is a party to both Paris Convention and the TRIPS Agreement. Well-known marks receive special protection according to Article 6bis1 of the Paris Convention and Article 16(2)2 and (3)3 of the TRIPS Agreement. Following these in Sri Lanka the Intellectual Property Act No. 36 of 2003 has made the following provisions in respect of well-known marks. Section 104 (1) The Director General shall not register a mark (d) if it is identical with, or misleadingly similar to, or constitutes or translation or transliteration or transcription of a mark or trade name which wellknown in Sri Lanka for identical or similar goods or services of a third party, or such mark or trade name is well known and registered in Sri Lanka for goods or services which are not identical or similar to these in respect of which registration is applied for, provided in the latter case the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well known mark and that the interests of the owner of the well known mark are likely to be damaged by such use. The important aspects of these provision may be briefly referred to as follows(i) A mark which misleading similar or constitutes a translation, transliteration, or transcription of a well-known mark or trade name is inadmissible. (ii) The mark or trade name concerned must be well-known in Sri Lanka. (iii) The Act is silent about the use of the mark or trade name concerned. 104(e) which infringers other third party rights or is contrary to the provision of Chapter XXXII relating to the prevention of Unfair Competition. The Criteria to determine whether a mark is well known is contained in Section 104 (2) as follows.– Section 104 (2) (2) The following criteria shall be taken into account in determine whether a mark is well known:-

(i)

particular facts and circumstances relating to each mark; (ii) any fact or circumstances from which it may be inferred that the mark is well known; (iii) the degree of knowledge or recognition of the mark of the relevant sector of the public; (iv) the duration, extent and geographical area of use of the mark; (v) the duration, extent and geographical area of promotion of the mark, including advertising or publicity and the presentation at any fair or exhibition of the goods or services to which the mark applies; (vi) the duration and geographical area of the registration or the application for registration, of the mark, to the extent that they reflect use or recognition of the mark; (vii) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognized as being well known, by the Competent Authority; (viii)the value associated with the mark; (ix) the criteria specified in this subsection to determine whether mark is well known or not shall not be exclusive nor exhaustive; (x) for the purpose of this subsection – (a) “Competent Authority” means an administrative, judicial or quasi-judicial authority which is competent, to determine whether a mark is well known mark or to enforce the protection given to well known mark; (b) “relevant sector of public” includes:(i) actual or potential consumers of the types of goods or services to which the mark applies; (ii) persons involved in channels of distribution of the types of goods or services to which the mark applies; (iii) any person or a body of persons dealing with the type of goods or services to which the mark applies; Unregistered marks are afforded protection under 160(2(b) of the Act under Unfair Competition.

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COUNTRY HEADING Unfair Competition is defined as any Act or practice carried out or engaged in the course of industrial or commercial activities that is contrary to honest practices4. Section 160 (1) (a) Any act or practice carried out or engaged in, in the course of industrial or commercial activities, that is contrary to honest practices shall constitute an act of unfair competition. (2) (a) Any act or practice carried out or engaged in, in the course of industrial or commercial activities, that causes, or is likely to cause, confusion with respect to another’s enterprise or its activities, in particular, the products or services offered by such enterprise, shall constitute an act of unfair competition. (b) Confusion may, in particular, be caused with respect to – (i) a mark, whether registered or not; (ii) a trade name; (iii) a business identifier other than a mark or trade name; (iv) the appearance of a product; (v) the presentation of products or services; (vi) celebrity or a well known fictional character. The Proprietor of a Trademark can restrain by injunction the use in Sri Lanka of a Trademark which is identical or similar to a well known Trademark. The traditional tests followed by the Sri Lankan Courts is to first consider the extent of the similarity of the goods or services in issue and of the likelihood of confusion separately. In that the first stage the Court would determine whether the goods or services are similar. The trend in the U.K. and European Community is to assert globally taking into account all relevant factors including the degree of similarity of the marks in issue. The degree of the similarity in the goods and services and the likely perception of the mark in the minds of the average consumer. It may be observed that there is no specific requirement in the Act that the mark should be used in Sri Lanka. There are no cases to report on well-known and famous marks in Sri Lanka. An Order has been made by the Director of Intellectual Property under the provisions of the Repealed Code of Intellectual Property Act No. 52 of 1979. Section 100(1)(d) of the Repealed Act directed against the registration of a mark which is misleading similar to a well-known mark or a trade name. The Director of Intellectual Property recognized “Chanel” as a well-known Trademark. The Applicant applied to register the trademark Chanel with a device in respect of pharmaceutical substances. Chanel Ltd of England 46 46

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opposed the said registration on the ground of its similarity to their well-known mark Chanel. Chanel is registered in Sri Lanka in classes 3, 18, 25 & 14 and not in class 05. In the course of the submissions the Counsel for the opponents cited the “Famous and well-known marks” by Fredrick W. Mostart (1997) Butterworth which sets out the factors which serve as guidelines in determining whether a trademark is famous or well-known. (i) the degree of recognition of the trade name; (ii) the extent to which the trade name is used and the duration of such use; (iii) the extent and duration of advertising and publicity accorded to the trade name; (iv) the extent to which the trade name is recognized, used, advertised and enforced geographically or if applicable, other relevant factors which may determine the trade name’ geographical reach locally, regionally and worldwide; (v) the degree of inherent or acquired distinctiveness of the trade name; (vi) the degree of exclusivity of the trade name and nature and extent of use of the same or a similar trade name or mark by third parties; (vii) the nature and scope of the business activities in relation to which the trade name is used; and (viii) the extent of the commercial value attributed to the trade name The mark Chanel was referred to as an internationally well-known and famous mark. The order was made in favour of the Opponents refusing the applicants mark for Chanel in Class 05.

Unfair Competition The law relating to protection against Unfair Competition has been greatly expanded covering all acts and practices which are contrary to honest practices. These provisions are very much wider than were available in the repealed Code. Section 160 on Unfair Competition provides as follows – Section 160 (1) (a) Any act or practice carried out or engaged in, in the course of industrial or commercial activities, that is contrary to honest practices shall constitute an act of unfair competition. The Sections also covers acts which could potentially cause confusion damaging or diluting one’s goodwill, misleading advertisements or promotions which discredit competitors and disclosure of undisclosed information.

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In particular the following constitute Unfair Competition. 1. Confusion; 2. Damaging anotherâ&#x20AC;&#x2122;s goodwill; 3. Any act or practice which misleads or is likely to mislead the public in respect of another enterprise or its activities; 4. Any false or unjustifiable allegation in the course of industrial or commercial activity which discredits or is likely to discredit anotherâ&#x20AC;&#x2122;s enterprise; 5. Any act or practice in the course of industrial or commercial activity that results in the disclosure, acquisition or use by other of undisclosed information without the consent of the person lawfully in control of that information; and 6. Any act or practice in the course of industrial or commercial activity will be considered Unfair Competition if it consists or results in Unfair Commercial use of secret test other data, the collection of which involves considerable effort and which has been submitted to a competent authority for the purpose of obtaining approval in the marketing of pharmaceutical, agricultural or chemical products which utilize new chemical entities or disclosing of such data, except where necessary to protect the public.

COUNTRY HEADING

6bis of the Paris Convention 1 The countries of the Union undertake, exoffcio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. 16(2) of the TRIPS Agreement 2 Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 16(3) of the TRIPS Agreement 3 Article 6bis of the Paris convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use. 4 Section 160 of the Intellectual Property Act No. 36 of 2003

Mr. J.M. Swaminathan, LL.D (Honoris Causa), LLB (Ceylon), LLM Phil (Colombo) Attorney-at-Law, President Partner of Messrs. Julius & Creasy

Mrs. Anomi Wanigasekera, LLM (Wales), Attorney-at-Law is the Partner in charge of the Intellectual Property Group and holds Diplomas in Intellectual Property Law.

Mrs Kanchana Senanayake, LL.M (Colombo), Attorney-atLaw is an Associate of the Intellectual Property Group and holds Post Attorney Diploma in Intellectual Property Law.

Mrs Marie Fernando, LL.B & LL.M (Colombo), Attorney-at-Law is an Associate of the Intellectual Property Group and holds Diploma in International Relations.

Mrs Sandamali Kottachchi, LL.B (Colombo) Attorney-atLaw is an Associate of the Intellectual Property Group and holds Diploma in Forensic Medicine & Science.

Miss Kanishka Talagala, LL.B (Honours) (University of London), Attorney-at-Law is an Associate of the Intellectual Property Group and has experience in Intellectual Property.

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SRI LANKA

KNJ ASSOCIATES Address: 1 Skelton Place Colombo 5 Telephone: +94 777 915433 Fax: +94 112 055274 Email: info@knjassociatessl.com Website: www.knjassociatessl.com Contact: K.N.Jayasooriya AAL We have a strong legal presence in the area of IP. Our Attorneys act directly before the Sri Lankan IP Office for patent, trademark and design matters.

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Vietnam

Photographic Art Viet Nam / Shutterstock.com

The Ho Chi Minh Mausoleum is a large memorial in Hanoi, Vietnam. It is located in the centre of Ba Dinh Square, which is the place where Vietminh leader Ho Chi Minh, Chairman of the Communist Party of Vietnam from 1951 until his death in 1969.

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VIETNAM

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Thomso Thomson reu

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“CONFIANZA” “VERTRAUEN” “ಙ௵” “CONFIANCE” THE WORLD’S LEADING IP DECISION MAKERS TURN TO US FOR ONE REASON TRUST. IP Services from Thomson Reuters. Good decisions require reliable intelligence. That’s why more IP decision makers rely on us. We empower you to build and protect your valuable assets with services that span the full IP lifecycle. Our blend of global expertise, resources and technology translates to results you can act on with certainty. In any language, we’re the name you can trust. For more information, visit go.thomsonreuters.com/TrustIPS

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Europe

Sponsored by

SBGK

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SBGKHEADING / Hungary COUNTRY

Firm

matters in front of national IP Office, EPO, and OHIM; IPR enforcement matters (civil litigation, oppositions, domain name disputes); advising and contract drafting in international licensing, franchising and technology transfer matters; IP portfolio management; annuities fee payment, trademark screening, freedom to operate search, anti-piracy campaigns. Besides our strong IP practice we help foreign investors in setting up their business in Europe and provide them with all necessary legal Team SBGK’s attorneys at law and patent attorneys services in company establishment, Merges attend international seminars and conferences & Acquisition, employment law matters every year to stay ahead of the competition. and in other various commercial They are frequently invited to speak as guest transactions. lecturers at Hungarian and international Network events, the results of which are numerous SBGK as the leading IP law firm in publications in international professional Hungary, offers not only its professional journals and bulletins. SBGK also organizes services, but is also proud to boast a broad conferences, round-table discussions and network of international contacts, among international symposia in Hungary. SBGK’s which are well known national and attorneys at law are entitled and qualified to international firms with attorneys at law represent its clients before the Office of and patent attorneys guaranteeing high Harmonization for the Internal Market quality services. SBGK attorneys at law (OHIM) and the General Court and the Court of Justice of the European Union (for and patent attorneys are members and example representation in the first preliminary hold various positions in international ruling referral to the CJEU in a trademark intellectual property organizations, such in matter from Hungary). Similarly, SBGK’s AIPPI, INTA, FICPI, ECTA, MARQUES, patent attorneys are also all registered as UNION, PTMG, LES Int., EPI. European patent attorneys, thus allowing Gateway to Europe them to represent before the European Patent SBGK is looking forward to broaden its Office (EPO) as well as before OHIM. professional network and conclude future In 1969 three renowned patent attorneys and along with a few other prominent attorneys at law established the Patent and Law Office for International Affairs, the legal predecessor of SBGK. SBGK was the first private firm which combined the knowledge of attorneys at law and patent attorneys. For almost a half of a century SBGK held its market leading position in providing quality service in intellectual property law.

Services

The co-operation of patent attorneys and attorneys at law allows SBGK to represent its clients in complex intellectual property law matters. SBGK offers its services in: patent, industrial design and trademark prosecution

partnerships with foreign patent and trademark attorneys and represent clients from oversees and Europe in international IP matters. SBGK is capable of providing one stop shop services for European patent, PCT, CTM and RCD applications.

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45 Years In The Business

The founders of our office established a unique private firm in a political and economic era considerably different from today. We have maintained our independence and high quality services during the many changes in Hungary. I am very proud to be the president of our office since the year 2000 and that we have acquired a reputation not only in IP, but in business law and unfair competition law as well.

The new Civil Code of Hungary entered into force on March 15, 2014, bringing enormous changes to the lives of companies and their business relations. We are keeping you informed on these changes continuously.

The SBGK team is happy to assist you regarding your inquiries in all matters pertaining to civil law and intellectual property.

Dr. Katalin Szamosi - President

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Attorneys at Law

COUNTRY HEADING

Patent Attorneys

Dr. Katalin Szamosi, Managing Partner Email: szamosi@sbgk.hu Practice areas: advising and contract drafting in technology transfer matters, strong focus on contentious patent, trademark, industrial design, copyright related matters, representation in front of General Court of European Union, arbitration in domain disputes, mediation, advising consumer protection and antitrust matters.

Zsolt Szentpéteri, Co-managing Partner Email: szentpeteri_zs@sbgk.hu Practice areas: advising in patent prosecution and infringement matters, special focus on inorganic and organic chemistry, polymer chemistry, food chemistry, pharmaceutical chemistry, biotechnology.

Dr. Gabriella Sasvári, Partner Email: sasvari@sbgk.hu Practice areas: strong focus on trademark prosecution matters in front of national IP Office and OHIM, IP portfolio management, trademark screening and advising, trademark infringement and enforcement matters (oppositions, border measures, and domain name disputes).

Katalin Mészárosné Dónusz, Partner Email: donusz@sbgk.hu Practice areas: preparing national, European and PCT patent applications subject to common mechanical arts in vehicle, building and toy industry. Trademark and industrial design prosecution matters in front of national IP Office and OHIM. Advising in patent litigation matters.

Dr. Péter Lukácsi, Partner Email: lukacsi@sbgk.hu Practice areas: advising and representation in various IP related matters, international franchising and licensing agreements, global IP portfolio management, IPR enforcement, strong focus on trademark, industrial design and copyright infringement as well as antitrust and competition law matters.

Ádám Szentpéteri, Senior Patent Counsel Email: szentpeteri@sbgk.hu Practice areas: advising in patent prosecution and infringement matters, technology transfer agreements; special focus on biotechnology, pharmaceutical chemistry, microbiology, freedom to operate and patent search matters.

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Iceland

Hallgrímskirkja (Church of Hallgrímur) is a Lutheran (Church of Iceland) parish church in Reykjavík, Iceland. At 73m (244 ft.) it is the largest church in Iceland and the sixth-tallest architectural structure in the countryafter the longwave radio mast - Hellissandur.

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ICELAND

Full IP service, including Madrid protocol cases, national EP validations, trademark filing and registrations and IP litigation opinions. Lyngháls 4, P.O. 10101, 130 Reykjavík, Iceland Telephone: +354 588 1817 Fax: +354 588 0044 Email: mail@patice.com

www.patice.com

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Italy

The Colosseum or Coliseum, also known as the Flavian Amphitheatre is an elliptical amphitheatre in the centre of the city of Rome, Italy. Built of concrete and stone, it was the largest amphitheatre of the Roman Empire, and is considered one of the greatest works of Roman architecture and engineering. It is the largest amphitheatre in the world.

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Untitled

COUNTRY HEADING

different issues. one simple solution.

Since 1967 GLP has been offering a complete range of services to protect intellectual property, by providing strategic consultancy, filing patent applications, registering trademarks, designs and models in more than 160 countries all over the world. Our Clients range from artisans to some of the top Companies on the Forbes 500 list, for whom we provide initial consultancy and support in lawsuits, both as plaintiff and defendant, throughout the world. The quality of our services and our ability to achieve our Clients’ high objectives make us recognized leaders in this field on a worldwide level.

your European IP partner

GLP S.r.l. Via L. Manara 13 20122 MILANO ITALY

GLP S.r.l. Viale Europa Unita 171 33100 UDINE ITALY

Tel +39 02 54120878 Fax +39 02 54121214 E-mail glp.mi@glp.eu

Tel +39 0432 506388 Fax +39 0432 507735 E-mail glp@glp.eu

other offices: PERUGIA · ZÜRICH · SAN MARINO

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Kosova

milosk50 / Shutterstock.com

The Sinan Pasha Mosque is an Ottoman mosque in the city of Prizren, Kosovo. It was built in 1615 by Sofi Sinan Pasha, bey of Budim. The mosque overlooks the main street of Prizren and is a dominant feature in the town's skyline.

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Produc

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Latvia

Lisa A / Shutterstock.com

The Freedom Monument is a memorial located in Riga, Latvia, honouring soldiers killed during the Latvian War of Independence. It is considered an important symbol of the freedom, independence and sovereignty of Latvia.

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LATVIA

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Macedonia

Samuil's Fortress is a fortress in the old town of Ohrid, Republic of Macedonia. It was the capital of the First Bulgarian Empire during the rule of Samuil in the Middle Ages.

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Montenegro

Lake Shkodër - also called Lake Scutari, and Lake Shkodra - lies on the border of Albania and Montenegro, the largest lake in the Balkan Peninsula. It is named after the city of Shkodër in northern Albania.

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THE WRONG APPROACH CAN PUT YOU AT RISK. Letting just anyone manage your IP portfolio can be dangerous.

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CPA Global is a registered trademark. © CPA Global 2015.

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Poland

volkova natalia / Shutterstock.com

The Royal Castle in Warsaw is a castle residency and was the official residence of the Polish monarchs. It is located in the Castle Square, at the entrance to the Warsaw Old Town.

Sponsored by

Polservice

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POLSERVICE PATENT AND TRADEMARK ATTORNEYS OFFICE 73 Bluszczańska Street, 00-712 Warsaw, Poland Phone: (+48) 22 44 74 600, Fax: (+48) 22 44 74 646 Postal Address: P.O. Box 335, 00-950 Warsaw, Poland e-mail: ip@polservice.com.pl www.polservice.com.pl

POLAND

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POLSERVICE is one of the biggest patent and COUNTRY trademarkHEADING attorneys firms in Poland. The firm has been operating on the market since 1964. POLSERVICE currently employs 43 patent and trademark attorneys (including 33 European patent attorneys) specialised in various areas of technology, law and economy, and teams of experienced lawyers and professional translators. AREAS OF PRACTICE

INTERNATIONAL EXPERIENCE

POLSERVICE provides a variety of services

POLSERVICE is proud of representing more than

in all fields of industrial and intellectual property

2650 clients from more than 70 countries, being

protection for companies and individual clients

both worldwide corporations and local SMEs.

from all over the world. The main fields of activity

Additionally, POLSERVICE has been cooperating

include:

with the most renowned patent and trademark firms in all European countries, the United States

• patents, utility models and industrial designs

of America, Canada, South and Central America,

• trademarks, trade names, geographical

Asia, Australia and Africa, which enables the firm to provide efficient legal protection for its clients

indications • Internet domain names

all over the world.

• patent and trademark searches

In each case the firm looks for the best solution

• new plant varieties

to satisfy its clients. An individual and creative

• copyrights and combating unfair competition

approach to all tasks, supported by profound

• licence agreements and exclusive rights transfer

legal and technical knowledge, has earned

• litigation, enforcement and dispute resolution

POLSERVICE the trust of the clients.

• anti-counterfeiting and anti-piracy actions • monitoring and payment of renewal fees.

POLSERVICE and its attorneys are members of many international organizations gathering companies and individuals dealing with intellectual

POLSERVICE attorneys represent clients before

property protection: AIPPI, INTA, ECTA,

the Polish Patent Office, the European Patent

LESI, UNION, MARQUES and EPI. The firm’s

Office (EPO), the Office for Harmonization in the

attorneys, apart from fulfilling their everyday

Internal market (OHIM), as well as before civil,

duties, attend numerous meetings, conferences

administrative and arbitration courts. They also

and trainings held in Poland and abroad, also

cooperate with Customs and prosecution authorities.

as lecturers or moderators. As a result of their continuous involvement, many of the firm’s attorneys serve as leaders of these organizations or their respective committees. Both Polish and international IP magazines ranked POLSERVICE as one of the top trademark and patent firms in Poland.

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How to challenge monopoly? Oliwia Czarnocka, Polservice Patent and Trademark Attorneys Office reviews different options provided by Polish Industrial Property Law to challenge competitive patents.

ne method to counteract monopoly is to carefully monitor inventions applied for by our competitors. If we take a closer look at the market, it turns out that our competitors tend to file applications that are particularly unfavourable for our company. There are several possible ways to deal with this problem.

Before the Patent Office issues a decision One option that can be used as soon as the information about the submitted invention has been published by the Polish Patent Office is to submit our opinion on the

Résumé Oliwia Czarnocka, Polish Patent and Trademark attorney, professional attorney before the OHIM. Graduated with M. Sc. degree from the Faculty of Electronics and Information Technology at the Warsaw University of Technology. Participated in research works on electronic materials. Completed post-graduate studies at the Industrial Property Law Department of the University of Warsaw. She joined Polservice in 2006. She deals with a broad range of IP issues and specialises in invention protection matters, particularly in the area of IT.

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invention, i.e. the so-called third party observations. Third parties may review a patent specification starting from the date a notice of the patent application is published. Importantly, their observations on the patentability of an invention maybe submitted until the issuance of a decision granting the patent. Observations by third parties must be filed in the Polish language and this applies also to the cited publications. One advantage of this solution is that the Polish Patent Office does not charge any fee for submitting observations against the grant of a patent. It is necessary to remember, however, that the person who has submitted such observations does not become a party to the proceeding and his opinion is not always taken into account by the experts of the Patent Office. The Office may inform the applicant about third party observations, but even if it does so, such third parties will not be informed of the applicant’s reaction. If strong evidence can be provided against the grant of a patent, it is worth considering actions that can be taken to challenge it in accordance with Polish law. However, like every legal solution, the option of filing third party observations may have some disadvantages. One risk it entails is that such observations may be

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passed to the applicant, who will consequently limit the scope of his invention to such an extent that the cited documents challenging the invention will no longer pose a threat to the patentability of the solution. Moreover, the applicant, having been informed of the potential problem with his application, has an opportunity to work out in advance a suitable strategy of defence against the cited prior art. That is why one should always carefully consider whether such an early disclosure of evidence and documents against a submitted patent is really advantageous. The EPO provides Internet access to documents being exchanged between the EPO and the applicant or his representative. Unfortunately, this is not possible at the Polish Patent Office. Case files, i.e. all correspondence with the Polish Patent Office as well as subsequent versions of claims filed by the applicant are only available to the applicant and his representative, prosecution agencies and courts, and other persons who have the applicantâ&#x20AC;&#x2122;s written consent. In practice it is only possible to get acquainted with the original version of the specification and claims as filed with the Patent Office at the filing date, and with an amended version of claims, if such version was submitted, but on in the case the amended claims were filed at least one month before the publication date of the application. Subsequent amendments made in the application are not published. In the case of subsequent opposition proceedings, if any, the information on amendments made in the claims by the applicant, allows the opposing party to raise an objection as to the broadened scope of protection.

After the Patent Office issues a decision

HEADING granted patent isCOUNTRY invalidated without further proceedings. One advantage of an opposition action is that it may be started by anyone since there is no requirement to prove a legal interest. Importantly, an opposition may only be filed against a patent granted by the Polish Patent Office, but not against a European patent validated in Poland. When the 6-month period for filing an opposition has expired, the last resort is to file a request for revocation. Like in the opposition procedure, a fee must be paid and evidence must be provided against the patent. It should be noted that in the case of revocation procedure it is necessary to prove a legitimate interest in filing the request. This requirement is the most frequently challenged issue in revocation cases, since a successfully proven lack of a legitimate interest finalizes the proceeding and the patent is not further assessed as to the merits, irrespective of how many drawbacks it may have. A good argument that demonstrates the existence of a legal interest is the fact of receiving a cease and desist letter from the Patentee. If you have received such a letter and you are able to provide any evidence that may challenge the patented solution, you are strongly recommended to file a request to revoke. The request to revoke may be filed against a patent granted by the Polish Patent Office and a validated European patent. In the conditions of fierce market competition, patent protection is one of key elements of company strategy. Therefore, it is worth keeping your eyes open for your competitorsâ&#x20AC;&#x2122; activities to be able to counteract their strategy by means of solutions envisaged by the law.

An opposition proceeding is an option that may be used where a patent has been granted despite earlier actions against it. An opposition must be filed within six months from the publication date of the granted patent. Unlike third party observations, the opposition procedure requires payment of an official fee and submission of evidence proving that the solution fails to meet the conditions necessary to grant a patent. Moreover, the time limit for starting the procedure is relatively short. The Patent Office appoints a term for the Patentee to file a response to the opposition (it is usually 2 months). If the Patentee fails to respond, the Office assumes that he agrees with the submitted opposition and the

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The office dates back to 1990. Three years later, in 1993, Polish patent attorneys did regain, after many years, the right to act in their own name before the Polish Patent Office. 25 years may seem not a lot, but in the realities of our country such a period of professional experience is significant. If you ask if patent protection in Poland is effective, we say yes.

PATENT PROTECTION OF GOODS AND TECHNOLOGIES

TRADE MARKS’ PROTECTION

LITIGATION IN THE FIELD OF INDUSTRIAL PROPERTY PROTECTION

CREATION TODAY, PROTECTION TOMORROW

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tel/fax +48 58 345 76 32

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Romania

The Romanian Athenaeum (Romanian: Ateneul RomĂ˘n) is a concert hall in the center of Bucharest, Romania and a landmark of the Romanian capital city. Opened in 1888, the circular, domed, ornate building is the city's main concert hall and home of the "George Enescu Philharmonicâ&#x20AC;? and of the George Enescu annual international music festival.

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ROMANIA European Patent & Trademark Attorney Judicial Expert & Authorised Assessor

Doina Tuluca

Widely recognized as a reputed patent and trademark specialist, with over 18 years of experience in the IP ďŹ eld, my areas of expertise include dispute resolution with respect to patents (mechanical, electro-mechanical, optics and measuring equipment), trademarks and copyrights. Former President and Vice-President of the Romanian Chamber of Industrial Property and Trademark Attorneys and a member of EPI, ECTA, FICPI, AIPPI and INTA.

Cabinet Doina Tuluca Intellectual Property Consulting Bd. Lacul Tei 56, bl. 19, sc. B, ap. 52, sector 2, 020392 BUCURESTI, ROMANIA Email: dtuluca@doinatuluca.ro Tel: +40 752 211 769 Fax: +40 318 037 805

CABINET M. OPROIU Address: Popa Savu Street No. 42, Ground Floor P.O.Box 2-229, Bucharest Romania Telephone: +40 21 260 28 33 Fax: +40 21 260 28 35 Email: raluca@oproiu.ro Website: www.oproiu.ro Contact: Raluca Vasilescu (Mrs.), Patent and Trademark Attorney Acquiring IP rights in Patents, Trademarks, Designs in Romania and before OHIM and EPO.

Tuca Zbarcea & Asociatii, 4-8 Nicolae Titulescu Ave., America House, West Wing, 8th Floor, Sector 1, 011141, Bucuresti, Romania Tel: +40 21 204 8890 Fax: +40 21 204 8899 Contact: Ciprian Dragomir, Partner, ciprian.dragomir@tuca.ro

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ROMANIA

ZAMFIRESCU RACOŢI & PARTNERS ATTORNEYS AT LAW Address: 12 Plantelor Street, 023974 District 2, Bucharest, Romania Telephone: +40 21 311 05 17 / 18 Fax: +40 21 311 05 19 Email: office@zrp.ro Website: www.zrp.ro Contact: Călin-Andrei Zamfirescu, Senior Partner, calin.zamfirescu@zrp.ro Cosmin Vasile, Managing Partner, cosmin.vasile@zrp.ro

Discover how The Trademark Lawyer Magazine can benefit you – claim your FREE sample copy

Claim your FREE sample copy! Don’t miss out email chris@ctclegalmedia.com to request your FREE copy today!

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Russia

The Cathedral of Vasily the Blessed, commonly known as Saint Basil's Cathedral, is a church located in the Red Square of Moscow, Russia.

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RUSSIA

RUSSIA, UKRAINE, KYRGYZSTAN and CIS/Ex-USSR

Vakhnina & Partners Bld. 6, Preobrazhenskaya Pl., Moscow, 107061, Russia

Trademarks Patents Designs Utility Models Domain Names

Tel: +7495-231-4840 Fax: +7495-231-4841

E-mail: mail@vakhnina.ru http://www.vakhnina.ru

VAKHNINA and PARTNERS Address: Bld. 6, Preobrazhenskaya Pl.,Moscow, 107061, Russia Telephone: +7 495 231 4840 Fax: +7 495 231 4841 Email: mail@vakhnina.ru Website: www.vakhnina.ru Contact: Tatyana Vakhnina, Dr. Alexey Vakhnin Our team comprises highly-qualified patent and trade mark attorneys and specialists, professionals, lawyers and technical experts with academic credentials.

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Serbia

Goran Bogicevic / Shutterstock.com

St George's Church known also as Oplenac Church and Oplenac Mausoleum, is the mausoleum of the Serbian and Yugoslav Royal House of Karađorđević, located on top of the ‘Hill Oplenac’ in City of Topola, Serbia.

Sponsored by

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Slovenia

Postojna Cave is a 20,570m long karst cave system near Postojna, Slovenia. It is the second-longest cave system in the country as well as being one of its most popular tourism sites. The caves were created by the Pivka River.

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Sweden

The Stockholm Palace, or ‘The Royal Palace’ is the official residence and major royal palace of the Swedish monarch. Stockholm Palace can be found on Stadsholmen which is located within the Old Town region of Sweden’s capital city, Stockholm. It neighbors the Riksdag building.

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SWEDEN

.fenixlegaL

INTERNATIONAL PATENT AND LAW FIRM

Patents Trademarks Designs Internet Law Domain Name Disputes Copyright Mediation Business Law Stureplan 4C, 11435 Stockholm, Sweden info@fenixlegal.eu www.fenixlegal.eu

Postal address: P O Box 1065, SE-251 10 Helsingborg, SWEDEN Visiting address: Drottninggatan 11, SE-252 21 Helsingborg Tel: +46 (0)42 400 0331 Mobile: +46 (0)732 011 931 Fax: +46 (0)42 13 34 90 Skype ID: erik_kipa E-Mail: erik@kipa.se

KIPA® AB - Your Guide in the IP Jungle® Brief History: KIPA is a European Intellectual Property (IP) company founded in 2006 to provide highly specialized professional IP advice to the medical device industry. KIPA has earned a reputation as one of the best IP firms in this field. Now we provide IP services for diverse clients involved with innovations in a variety of technologies including automotive industry, alternative fuels, biotech, chemistry, etc. Who We Are: KIPA employs experienced professionals authorized to represent clients to the European Patent Office (EPO), the Swedish Patent Office (PRV), and the U.S. Patent and Trademark Office (USPTO), including former examiners from all three of these patent offices. Our trademark and design specialists are authorized to prosecute community trademark and design applications before the Office for Harmonization of the Internal Market (OHIM). What We Do: We get to know our clients, their technologies, their needs, and their goals; then we deliver. We use our knowledge of trade secrets, patents, designs, trademarks, oppositions, litigation, and enforcement of rights, to develop targeted, global IP strategies customized to each client’s specific needs and limitations. Our practitioners often work closely with carefully vetted associates around the globe to obtain IP rights for our clients around the world. We collaborate with selected attorneys in many nations to defend the IP rights of our clients and/or invalidate patents when our clients are accused of infringement. Avoiding litigation altogether saves money and frustration so we also perform Freedom to Operate, novelty, invalidity, trademark, and design searches, Due Diligence analyses, and patentability opinions. We always do our best for our clients and they reward us with long-lasting, mutually beneficial relationships and recommendations to their colleagues.

www.kipa.se

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Switzerland

The Matterhorn, Monte Cervino or Mont Cervin, is a mountain in the Pennine Alps on the border between Switzerland and Italy. Its summit is 4,478 metres high, making it one of the highest peaks in the Alps.

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SWITZERLAND

BADERTSCHER RECHTSANWÄLTE AG/ATTORNEYS AT LAW MÜHLEBACHSTRASSE 32 PO BOX 769 8024 ZÜRICH 48*5;&3-"/%

Mergers and acquisitions Allen Fuchs, Thomas Rinderknecht

Employment Markus Dörig, Philipp Schaller

Telephone: +41 44 266 20 66 Fax: +41 44 266 20 70

Energy Beat Badertscher, Allen Fuchs, Mischa Morgenbesser

Intellectual property Jeannette Wibmer

E-mail: info@b-legal.ch Website: www.b-legal.ch

Corporate and commercial Markus Dörig, Thomas Rinderknecht

Languages English, French, German, Hebrew, Italian, Spanish

Banking and finance Beat Badertscher, Markus Dörig

Other offices Zug

CATEGORIES OF WORK

Capital markets and IPOs Beat Badertscher, Jeannette Wibmer

Number of lawyers 27 Contact Dr Jeannette Wibmer (marketing partner), wibmer@b-legal.ch

Member "*11* *#" *OUFSOBUJPOBM 'JTDBM "TTPDJBUJPO */5" -&4 .4* *OUFSOBUJPOBM "-'" *OUFSOBUJPOBM

Administrative and public law Beat Badertscher, Allen Fuchs, Mischa Morgenbesser Technology, media and telecommunications Lorenzo Marazzotta, Jeannette Wibmer

Transport and insurance Thomas Rinderknecht, Alexandra Bösch Private banking Thomas Rinderknecht, Markus Dörig Tax Thomas Rinderknecht, Markus Dörig Real estate and construction Markus Dörig, Lorenzo Marazzotta Dispute resolution Beat Badertscher, Lorenzo Marazzotta Insolvency and corporate recovery Philipp Schaller

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United Kingdom

The Palace of Westminster is the meeting place of the House of Commons and the House of Lords, the two houses of the Parliament of the United Kingdom.

Sponsored by

Minesoft

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Patent information as competitive intelligence: Gaining commercial insight from patents

atent data is increasingly recognised by entities of all sizes â&#x20AC;&#x201C; from multinational corporations to SMEs and tech start-ups as an essential source of competitive intelligence. The systematic retrieval and assessment of patent information can help inform decisions and steer corporate strategy. In general, companies will seek knowledge about the industry they are active in e.g. technology trends, as well as specific information on competitors or potential partners within that industry. We look at why patent information is so valuable and how specialist patent information products and services can be used to extract knowledge and insights from patents through a combination of review, analysis and monitoring. A brief glance at the anatomy of a patent reveals why they are such a rich source of competitive intelligence. Three key strands of important information can be extracted from patent documents for analysis. Technical information is available from the description, providing details of the invention that can be understood by a person skilled in the art, and from the accompanying drawings in cases where the invention can be illustrated by way of a drawing (if the invention relates to chemical

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compounds for example, this may not be required). Classification codes assigned by examiners under the various national and international systems describe in detail the technologies covered by the patent and can indicate a competitorâ&#x20AC;&#x2122;s R & D focus or the fields of expertise of their inventors for example. Business information is provided in other bibliographic or reference fields included on the patent, such as the inventor and applicant name and filing date. Designated states listed on the patent for example could provide insight into foreign markets of interest. The third, and probably the most crucial aspect of a patent is the legal information revealed. The legal status of the patent is an extremely important component indicating what stage it has reached in its lifetime, whilst the claims define the scope of the protection provided or sought by the patent, and are vital to understanding if a product or process will infringe the patent, and will determine prosecution or litigation strategies. Any professional in the business of advising clients (whether external or in-house) on strategies to adopt to protect or enforce their patents will rely on one or more commercial patent databases for carrying out patent search and analysis, probably in conjunction with free online resources such as espacenet or the USPTO site. PatBase, produced by Minesoft in partnership with search and translation firm RWS Group, is a single, global patent database covering over 100 patentissuing authorities and containing over 100 million publications grouped into patent families. PatBase enables patent information professionals to both zoom in on certain elements of individual patents e.g. a keyword comparison of the claims of the application

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and grant, and zoom out to gain a perspective on wider trends in a technology area of interest or in the filing patterns of a key competitor from a subset of patent search results. The volume of patent data publicly available and the breadth of coverage of data in an aggregated database like PatBase (which currently contains in excess of 35Tb of data) is advantageous but also presents a challenge. In its report on IP Facts and Figures 2013 (published June 2014) WIPO estimated that 2.35 million patent applications were filed worldwide in 2012, representing the highest rate of growth recorded in 18 years.1 With the correct tools, however, this wealth of information can be retrieved, refined and translated into intelligence. Patent databases increasingly incorporate advanced analysis modules, or provide integration with offline third party patent analysis and landscaping software products and services such as BizInt or Intellixir. For companies wishing to take a close, strategic look at their own or their competitors’ patent portfolios, such tools are invaluable. In the last quarter of 2014, PatBase Analytics was launched in PatBase and PatBase Express (the enduser version of PatBase). The software module, which was developed in-house by Minesoft, has been designed to process large patent data sets at high speeds to produce clear, interactive graphs and charts. A customisable analytics dashboard and the ability to manage patent assignee groupings (to group together subsidiary companies for example) are amongst the features that enable PatBase users to manipulate, understand and effectively present the patent data they have retrieved from searches. Effective use of analytics software can produce an accurate description of key players in the market place, provide early warning on competitor strategies and general commercial activities and reveal white space opportunities. The ability to understand and exploit patent data to gain commercial insight is a recent and powerful new weapon in the armoury of patent lawyers and other patent information professionals. Cross-referencing with other useful patent-related resources presents an added layer of value for patent database users. Integrated links to external, complementary online information sources can broaden the scope of search. In PatBase for example, the inclusion of FDA Orangebook data and links to genetic and biological sequencing databases allows pharma industry users to perform a more exhaustive and extensive search in that sector. Beyond patent search and analysis, systematically monitoring published patent information is an important

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aspect of a competitive intelligence strategy. Current awareness alerts based on search queries can be set up on most patent databases to notify recipients of new patents filed in a certain technology area based on classification codes for example, or of new patent activity from an applicant or inventor of interest. Separate services also exist to automatically track specific elements of patent information, such as legal status and citations. Automating the process saves time and therefore cost, eliminating the need for navigating around different websites or resources to do weekly manual checks. Monitoring legal status events for patents of interest enables organisations to monitor competitor patent portfolios on a micro level – Minesoft’s Legal Status Tracker for example tracks changes published weekly on the European Patent Office’s comprehensive INPADOC legal status file, allowing users to keep a broad overview of changes matching legal status groups and countries, or to go into detail by carefully selecting country-specific EPO legal status codes (PRS codes). Patent information represents a deep pool of competitive intelligence and commercial insight that can be penetrated using the right tools and services to retrieve, analyse and track it. The technical, legal and business information contained in patents can be turned into actionable intelligence to help shape corporate strategy and steer clients in the right direction. 1

http://www.wipo.int/edocs/pubdocs/en/statistics/ 943wipo_pub_943_2013.pdf

For more information about Minesoft’s patent information solutions, go to www.minesoft.com where you can also download your free copy of an “Analytical Landscaping Case Study Using PatBase.” Katy Wood, the author of this article, is Global Marketing Manager at Minesoft. She can be contacted on katy@minesoft.com

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SEARCH with the trade mark & brand professionalsâ&#x20AC;&#x2122; choice

THE ADVANCED GLOBAL SEARCH SYSTEM BUILT AROUND YOUR NEEDS JUST SOME OF OUR FEATURES:

LET US IMPROVE YOUR TRADE MARK SEARCHING INSTANTLY

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UNITED KINGDOM

Intelligence is a team of experts

With expertise in science, law and business HGF can build teams around a clientâ&#x20AC;&#x2122;s business, product or service. Supported by our formalities and renewals teams, to ensure clients can always access support and advice when they need it. For further information please call Cristina Rivas Graver on +44(0)113 2330100 or email crgraver@hgf.com

hgf.com HGF Limited @hgf_ip

Domain Name Specialists T (617) 418-3502 E info@lexsynergy.com

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Ukraine

Kiev Pechersk Lavra or Kyiv Pechersk Lavra, also known as the Kiev Monastery of the Caves, is a historic Orthodox Christian monastery which gave its name to one of the city districts where it is located in Kiev.

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UKRAINE

ZESTAD – IP LAW COMPANY Address: 23-25 Klinichna Str., of. 77, 03110, Kyiv, Ukraine Telephone: +38 044 249 65 02 Fax: +38 044 273 30 78 Email: dmitry@zestad.eu Website: www.zestad.eu Contact: Dmytro Tristan (Dmitry@zestad.eu), Olena Zuieva (contact@zestad.eu) ZESTAD are rendering assistance to manufacturers and private persons both native and foreign in protection of rights on their intellectual property.

GRISCHENKO & PARTNERS Address: 37-41, Artema Street, 3rd floor, 04053 Kyiv, Ukraine Telephone: +380 44 490 3707 Fax: +380-44 490 3709 Email: patent@gp.ua Website: www.gp.ua Contact: Maya Lgova, Liudmyla Olishevych The firm renders a full range of IP-related services from registration to maintenance and enforcement, including dispute resolution and litigation.

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Aruba

The California Lighthouse is a lighthouse located near Arashi Beach on the northwest tip of Aruba. This lighthouse was named for the steamship California, which wrecked nearby on September 23, 1891.

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Brazil

Endless Traveller / Shutterstock.com

Christ the Redeemer is an Art Deco statue of Jesus Christ in Rio de Janeiro, Brazil, created by French sculptor Paul Landowski and built by the Brazilian engineer Heitor da Silva Costa, in collaboration with the French engineer Albert Caquot.

Sponsored by

Dreon

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BRAZIL

Pinheiro Palmer Advogados Address: Av Treze de Maio, 33, Bloco A, Sala 805, Centro, Rio de Janeiro, RJ, Brazil, 20031-920 Telephone: +55 21 2262 0279 Fax: +55 21 2524 5647 Email: info@pinheiro-palmer.adv.br Website: www.pinheiro-palmer.adv.br Contact: Cristina Pinheiro Palmer, Walter W. Palmer We provide legal services related to all aspects of IP protection and enforcement.

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Bolivia

Tiwanaku is a pre-Columbian archaeological site in western Bolivia, South America. It is the capital of an empire that extended into present-day Peru and Chile, flourishing from AD 300 to 1000.

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BOLIVIA

W.A. MENDEZ & ASOCIADOS S.R.L. PATENT & TRADEMARK ATTORNEYS Address: Av. 16 de Julio No. 1490 (El Prado), Edif. Avenida, Piso 3, Of. 302, P.O. Box 2684, La Paz, Bolivia Telephone: +591 2 2338540 Fax: +591 2 2390181 / +591 2 2390181 Email: wamendez@entelnet.bo / wamendez@acelerate.com Website: www.wamendez.com.bo Contact: Alvaro F. Siles Martin, Partner

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Canada

The CN Tower is a 553.33m-high (1,815.4 ft) concrete communications and observation tower in Downtown Toronto, Ontario, Canada. Built on the former Railway Lands, it was completed in 1976, becoming the world's tallest free-standing structure and world's tallest tower at the time.

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CANADA

Who do Canadaâ&#x20AC;&#x2122;s most innovative and successful businesses choose for IP protection? 1

Named 2014 Canadian Specialty IP Firm of the Year and 2014 Canadian Trademark Contentious Firm of the Year (Managing Intellectual Propertyâ&#x20AC;&#x2122;s 2014 North America Awards)

7KH RQO\ ĂŽUP FKRVHQ DW WKH WRS RI WKH rankings for Canadian IP Law in Ottawa, Toronto, Montreal and Vancouver (The Canadian Legal LexpertÂŽ Directory, 2014 Edition)

5DQNHG DV D %DQG ĂŽUP LQ &DQDGLDQ Intellectual Property law (Chambers Global â&#x20AC;&#x201C; The Worldâ&#x20AC;&#x2122;s Leading Lawyers for Business, 2014 Edition)

We have handled more patent and trademark applications than any other ĂŽUP LQ &DQDGD

U N PA R A L L E L E D I P /HDUQ ZKDW WKH PRVW VXFFHVVIXO EXVLQHVVHV NQRZ DQG ĂŽQG RXW KRZ Smart & Biggar can expertly assist you by providing sophisticated, practical and cost-effective intellectual property advice and protection. O t t a w a / To r o n t o / M o n t r e a l / V a n c o u v e r / C a l g a r y

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S M A RT- B I G G A R . C A

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CANADA

R. WILLIAM WRAY & ASSOCIATES

PATENTS, TRADE MARKS & DESIGNS Suite 310, 151 Slater St. Ottawa, Ontario Canada K1P 5H3

Tel: (613) 233-1322 Fax: (613) 230-5168 Email: email@wray-canada.com Web: www.wray-canada.com

DAVID M. WRAY, B.A., LL.B. , ELIZABETH P. MOORE, B.Sc. M.D., JOHN LAMB, B. Sc., (Mech. Eng.), PETER LAWRENCE, B.Sc., (Elec. Eng.), Founder of the Firm / Consultant R. WILLIAM WRAY, B.Sc., F.I.E.E. (Elec. Eng.) Our mission is to provide our clients with effective and efficient advice with respect to their intellectual property. Our IP firm provides a comprehensive service to companies,associates and inventors on all aspects of intellectual property including searches, preparing, filing and prosecuting applications, enforcing intellectual property rights, licensing, franchising and related matters. We believe that any advice which we provide, and any intellectual property protection which we obtain for our clients, should be worthwhile and complement our client's business objectives for their intellectual capital.

www.wray-canada.com

INTEGRAL IP Address: 4400 Bathurst Street, Suite 10, Toronto, Ontario M3H 3R8, Canada Telephone: +1 416 630 0071 Fax: +1 646 496 9101 Email: info@integralip.com Website: www.integralip.com Contact: Ms Miriam Paton, Registered Patent Agent Trust Integral IP to prosecute your Canadian patent applications. Benefit from expert professional advice, clear communication, and predictable costs.

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Chile

Palacio de La Moneda, or simply La Moneda, is the seat of the President of the Republic of Chile. It also houses the offices of three cabinet ministers: Interior, General Secretariat of the Presidency and General Secretariat of the Government.

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Johans

CHILE

SANTIAGO - CHILE

COUNSELORS - AT - LAW, IP LAW, PATENTS, TRADEMARKS, INDUSTRIAL DESIGNS, COPYRIGHT, DOMAIN NAMES, PROSECUTION AND RELATED LITIGATION, RENEWALS, SEARCHING AND WATCHING SERVICES, LICENSING, ANTI - COUNTERFEITING, UNFAIR COMPETITION, INFRINGEMENT LITIGATION. San Pío X Nº 2460, Suite 1101, Santiago - Chile P.O.Box 1834, Santiago - Chile Tel 562 - 2231 2424 Fax 562 - 2231 3434 email: mail@jl.cl

www.jl.cl

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Guatemala

Pacaya is an active complex volcano in Guatemala, which first erupted approximately 23,000 years ago and has erupted at least 23 times since the Spanish invasion of Guatemala. Pacaya rises to an elevation of 2,552 metresat its summit.

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GUATEMALA

Leading Central America one stop law firm, with 7 offices located in the major cities throughout the region, which provides high standard IP services, as well as other practice areas and industries. Address: 9 Avenida 14-78 z. 10, Guatemala, Guatemala, C.A. Telephone: +502 2246 3000 Fax: +502 2333 5980 Email: gonzalomenendez@lexincorp.com / groca@lexincorp.com Contact: Gonzalo MenĂŠndez / Gina Roca

www.lexincorp.com

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Guyana

COUNTRY HEADING

Kaieteur National Park is a national park located in the Potaro-Siparuni Region of Guyana. The park's boundaries and purpose are defined in the Kaieteur National Park Act, and was created to preserve the natural scenery, and its fauna and flora.

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GUYANA

Attorneys-at-Law Patent and Trade Mark Agents Partners: Hari N. Ramkarran SC, Josephine Whitehead, Rafiq T. Khan, Nikhil N. Ramkarran & Kamal Ramkarran

2 Avenue of the Republic, P.O. Box 10109, Georgetown, GUYANA, South America Tel: +592 226 2671 Fax: +592 226 7809 Email: csmain@cameronandshepherd.com Web: www.cameronandshepherd.com

Discover how The Patent Lawyer Magazine can benefit you – claim your FREE sample copy

Claim your FREE sample copy! Don’t miss out email chris@ctclegalmedia.com to request your FREE copy today!

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Subscribe now! A subscription to The Trademark Lawyer magazine will ensure that you and your colleagues have detailed information on all the most important developments within the international trademark law industry. The Trademark Lawyer magazine is dedicated only to the trademark industry and is written by trademark experts for trademark professionals worldwide. A subscription includes a hard copy and an electronic copy which can also be read easily on your iPad, iPhone or Blackberry. Tel: +44 (0)20 7112 8862 Fax to: +44 (0)20 7084 0365 E-mail: subscription@trademarklawyermagazine.com

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Mexico

The Angel of Independence, most commonly known by the shortened name El ﾃ］gel and officially known as Monumento a la Independencia, is a victory column on a roundabout over Paseo de la Reforma in downtown Mexico City.

Sponsored by

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Becerril, Coca & Becerril SC / Mexico COUNTRY HEADING

MEXICO: THE CHALLENGES OF THE INTELLECTUAL PROPERTY SYSTEM IN FACE OF HARMONIZATION Nuria Becerril, Becerril, Coca & Becerril SC, explains how Mexico's recent adoption of The Madrid Protocol fits with the country's ongoing drive for harmonization and efficiency.

exico is on board of the train of innovation, modernization and technological vanguard. As a country, Mexico is subscribed to multiple international treaties, including the most significant commercial alliances of the last twenty years â&#x20AC;&#x201C; the Trans-Pacific Partnership Agreement. Mexico is on a new scenario, where its role is to prevail as the main actor representing Latin America. Mexico is doing its homework: it is surfing on the crest of the wave, which has required making integral changes in structure, towards the within, but in the exterior as well. Nevertheless, the work is almost beginning. The mission of harmonization in aspects like economy, science, and technology is a long term task that requires a lot of work in the internal and economical aspects, to incentive science, to promote and support education, to open the doors to the innovation flux, to generate more economical enticements and supports additional to the ones that are already operating, to generate technology, to extract and manage the value of technological developments as armoured intangible assets, all prepared to compete in the national and the international technology markets. Protection and use of intangible assets as patents, trademarks and copyrights comprise essential pieces in the conformation of the platform that Mexico requires to remain as this

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significant and main actor in the Latin American region. However, time, technological advance, and global economy do not forgive: everybody is looking for everything to be less expensive and replaceable each time. This phenomenon is seen more in some particular sectors, as in Information Technologies. Technology moves and develops so fast that it drags the supply and demand to a rapid consumption behavior: what is original and innovative one day, loses these characteristics in a few months. The constant generation of new features in devices, applications, services, and strategies are todayâ&#x20AC;&#x2122;s target. A very high supply faces a very low demand in few months because something better and more innovative emerges. These events, which used to be sporadic and exceptional, are recurring more and more. Additionally, everybody looks for processes and procedures to be simpler and swift. This trend to simplification has made that products and services are closer to our hands and has as well made them totally and expeditiously replaceable. The Intellectual Property (IP) system in Mexico also faces these challenges. The Mexican IP system is subject to the trend of making every service related with the registration procedure cheaper but efficient and productive at the same time. The major users of the system seek to expend less by making it more

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efficient. But, how to do it if the investment in the involved innovation processes – the research and development required in generating the technology and resources to increase efficiency and save costs – is too high? The answer has been found in looking for ways that make the costs of protecting technology and ideas to become more affordable and in turn obtain protection to technological developments, products, services, and creations in a more efficient and achievable way. The harmonization or standardization of IP protection services that is taking place and that is being established has been critical for the IP system to continue its evolution. In turn, the advance in different sectors of technology gives support to the whole IP system, entering in a virtuous circle of requirement satisfaction: nowadays, we are able to file trademark applications on line; we are able to pay government fees for every type of formality through the Mexican Institute of Industrial Property (IMPI) internet portal; we are able to consult the official IMPI trademark and patent files from our computer or electronic device, wherever we are; we can search and consult a great series of patent and trademark databases from all over the world from our homes or offices, either if the office is our home or the nearest coffee place equipped with WiFi; and the list goes on and on… The ability to assemble all of these actions is supported by very large systems and data bases harmonized between each other, which allow performing every one of the above mentioned activities. With that, difficulties and challenges to protect ideas, creations, inventions, and technological developments - which are shared in the great virtual net of communication and information interchange that we call the Internet - emerge as well. To face and surf the crest of the wave of these issues, attempts like the Stop Online Piracy Act (SOPA) and the Digital Millenium Copyright Act (DCMA) have arisen. Similar law initiatives are being discussed in the Mexican congress in order to harmonize with the principles described in these legislations. Thinking over the whole landscape, a question reveals itself: will the global IP system be capable of going hand in hand with the advance and the trends towards simplification and harmonization of procedures and processes, or is it being left behind and is it losing the ability to protect and prepare the owners of ideas and technological developments for the competition in the worldwide market?

HEADING The answer to thisCOUNTRY question goes back to the actions that the World Intellectual Property Organization (WIPO) took to implement the Patent Cooperation Treaty (PCT), to which Mexico adscribed in 1994. The PCT began to be in force in 1995. The PCT provides a unified procedure for filing patent applications. This treaty allows to file patent applications in all the member countries through an International filing application that has an assigned price cap. To file a patent application through the PCT gave the advantage of saving costs by choosing designated countries to file the International patent application as a national phase instead of filing the application separately in each country chosen in a determined IP management strategy. The major advantage that the PCT treaty brought was the harmonization and standardization of procedures which ultimately allowed new ventures more time to locate strategic partnerships, funding, and markets, before their technology became public. Back to present, and following this guiding thread of satisfying the requirements of having a system that gave advantages in cost savings, filing strategy, and protection security, now to trademark registrations, Mexico joined the Madrid Protocol in February 2014. The Madrid Protocol confers advantages such as, cost saving by eliminating the high filing costs of making trademark filing in each desired country, and in the post-registration phase. The Protocol also allows for applications to be filed in additional designated contracting parties after the initial filing. Protection of a trademark can be secured within a shorter time than with national applications. Now the possibility that Mexico joins The Hague International Design System is being discussed. Mexico’s adscription to this system would allow the filing of until 100 Industrial Design or Utility Model applications through a single International Application through a designated WIPO International Office. It is crucial that Mexico keeps paving the road according with the conditions established in the international treaties to which it is adscribed. This preparation is what grounds Mexico’s position in the economic and technologic scenario, and what will promote development in this country. Perseverence and congruence is required. It is a long term task, indispensable, yes; complex, as well; maybe hard, but not impossible. Mexico has the capability and ability to complete this task.

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MEXICO

Our firm is highly regarded in practice and management of intellectual property in Mexico, United States, Latin America and Europe our area of practice covers all areas of exercise that make contact with the right property industry which involves not only our highly specialized in intellectual property registration but our legal vocation includes the fields of corporate and commercial law, administrative law, commercial, civil, criminal, tax, customs duty etc. when it hangs conservation, validity or ownership of Intellectual Property rights. Cruz Valle Verde N° 14-201 Naucalpan, Estado de México. CP 53110. México (55) 35-36-03-66 masmarcas@masmarcas.com www.masmarcas.com facebook.com/pages/masmarcascom twitter.com/masmarcas Gerardo López Cisneros Director General glopez@masmarcas.com

María Fernanda Menéndez Comunicación Corporativa mmenendez@masmarcas.com

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Goodric

COUNTRY HEADING

MEXICO

Industrial and Intellectual Property Litigation Licensing Enforcement Entertainment and Sport Law Copyrights Enrique A. Diaz

ediaz@goodrichriquelme.com

(5255) 5525 1422

Jaime Delgado

jdelgado@goodrichriquelme.com

(5255) 5207 5324

Juan Carlos Suarez

jcsuarez@goodrichriquelme.com

(5255) 5207 9261

Guillermo Sosa

gsosa@goodrichriquelme.com

(5255) 5207 7561

e-mail: mailcentral@goodrichriquelme.com website: www.goodrichriquelme.com Paseo de la Reforma 265, M2 Col. y Del. Cuauhtemoc, 06500 Mexico, D.F. Tel. (5255) 5533 0040, Fax. (5255) 5207 3150 2015 GLOBAL IP DIRECTORY

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Peru

Machu Picchu or Machu Pikchu is a 15th-century Inca site located 2,430 metres above sea level. It is located in the Cusco Region, Urubamba Province, Machupicchu District in Peru.

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PERU

ANGULO, CASTRO Y GARCÍA INTELLECTUAL PROPERTY CONSULTANCY – PATENT AND TRADEMARK REGISTRATION IN PERU Address: Edificio Reducto Business Centre Av. Paseo de la Republica 6010 Of. 303, Lima 18, PERU (SOUTH AMERICA) Telephone: +51 1 4469176 / +51 1 4469184 / +51 1 2429811 Email: hcastro@angulocastroygarcia.com Website: www.angulocastroygarcia.com Contact: Hernán Castro Angulo, Castro y García is an Intellectual Property, Competition, and Consumer Rights Consultancy, founded in Lima-Peru. Its main goal is to provide personalized advisory regarding trademarks, inventions, competitions, commercial advertising, and Company incorporation Legal regulations.

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The Bahamas

Government House is the official residence of the governor-general of the Bahamas. The property is built on a hill known as Mount Fitzwilliam and its construction was completed in 1806.

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THE BAHAMAS

HIGGS & KELLY Counsel & Attorneys-At-Law

Integrity and Excellence Since 1905 NASSAU CHAMBERS Kelly Building 384 Bay Street Nassau, New Providence The Bahamas

LYFORD CAY CHAMBERS Building No. 9, Pineapple House West Bay Street New Providence The Bahamas

POSTAL ADDRESS P.O. Box N4818 Nassau, The Bahamas

TELEPHONE 1-242-322-7511 facsimile 1-242-325-0724 EMAIL info@higgs-kelly.com

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COUNTRY HEADING

Trinidad & Tobago Englishman's Bay is a secluded beach on the leeward coast of Tobago, between Castara and Parlatuvier. Although the bay does not draw the large numbers of beachgoers that Tobago's western beaches do, it is considered of the island's most beautiful.

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TRINIDAD & TOBAGO

CARIBBEAN IP - Katherine Van Deusen Hely, P.L.L.C. Address: 224 Datura Street, Suite 513, West Palm Beach, Florida, USA Telephone: +1 561 283 1800 Fax: +1 877 586 8806 Email: Katherine@Caribbean-IP.com Website: www.Caribbean-IP.com Contact: Katherine V. Hely IP law firm providing efficient and effective trademark and other IP services across 25 Caribbean jurisdictions.

Address: Tel: Fax: E-mail: Website: Contact Persons:

P.O. Box 116, 129-131 Abercromby Street, Port of Spain, Trinidad, West Indies +1 868 623 4283/7 +1 868 623 4281 info@jdsellier.com; a’isha.waldron@jdsellier.com www.jdsellier.com Mr. Brien de Gannes and Ms. A’isha Waldron

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United States

The Statue of Liberty is a colossal neoclassical sculpture, which is located on Liberty Island the New York Harbor, New York City, USA.

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UNITED STATES

INTELLECTUAL PROPERTY AT

DUANE MORRIS

Duane Morris is recognized as one of the United States’ most-active law firms in terms of patent filing and protection. National publications U.S. News and World Report, Intellectual Property Today and IP Law360 have all ranked Duane Morris among the leading law firms handling intellectual property, patents and patent-related issues. Duane Morris LLP | 1075 Peachtree Street NE | Atlanta, GA 30309-3929

For more information, please contact: L. NORWOOD “WOODY” JAMESON Partner P: 404.253.6915 wjameson@duanemorris.com www.duanemorris.com

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Domain Name Specialists T (617) 418-3502 E info@lexsynergy.com

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Angel Falls is a waterfall in Venezuela. It is the world's highest uninterrupted waterfall, with a height of 979m and a plunge of 807m.

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