INTA

G UI DE

2011

I N TA R E P R E S E N T I N G T H E I N T E R N AT I O N A L TRADEMARK COMMUNIT Y SIN CE 1878

IN ASSOCIATION WITH

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CAN BE READ IN ITS ENTIRETY ONLINE PLEASE WWW.CORP-INTL.COM FOR PLEASEVISIT VISIT WWW.EMAG.CORP-INTL.COM FOR INFORMATIONON ONOUR OUR FREE MOREMORE INFORMATION FREEEMAG EMAG

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WELCOME INTERNATIONAL TRADEMARK ASSOCIATION REPRESENTING TRADEMARK OWNERS SINCE 1878 IN ASSOCIATION WITH

CorporateINTL

CONTENTS

04 Foreword 06 North America & The Caribbean 11 Central & South America 16 Europe 25 Africa & The Middle East 30 Asia & Oceania 38 Index

International Trademark Association

655 Third Avenue,10th Floor, New York, NY 10017-5617 USA T +1-212-642-1700 | F +1-212-768-7796 info@inta.org | www.inta.org

Corporate INTL

Charles House, 148/149 Great Charles Street, Birmingham, B3 3HT, UK T +44 (0) 121 236 0411 www.corp-intl.com

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REPRESENTING TRADEMARK OWNERS FOR MORE THAN 133 YEARS

Companies work hard to build reputation and trust with their customers. Registering and enforcing their trademarks help to assure that they, not an imitative competitor, will reap the rewards associated with the product. More importantly, trademarks allow the public to identify the type of good or service they are receiving with the company that supplies it. Laws that protect trademarks ultimately protect consumers from being confused about the source of the goods or services.

Working to promote and support the advancement of trademarks and intellectual property is the International Trademark Association (INTA). INTA is a not-for-profit membership association of more than 5,900 trademark owners and professional firms from more than 190 countries. The organization plays a major role in shaping global trademark policy and advancing the professional development of the trademark community.

INTA was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization “to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights.”

A truly global organization, INTA is headquartered in New York City with offices in Brussels, Shanghai and Washington D.C., and representatives in Geneva and Mumbai.

In January 2011, the organization rebranded itself, revealing a refreshed logo and a new slogan, POWERFUL NETWORK POWERFUL BRANDS®. INTA also launched a new website, which features additional online resources and My Powerful Network, a social network that is exclusive to members of the Association.

Networking Opportunities INTA member companies and firms find true value in the organization’s networking opportunities. The Association regularly holds conferences, roundtables and receptions throughout the year, giving its members from every corner of the globe an opportunity to meet colleagues and enhance their industry knowledge through educational discussions and presentations.

INTA’s Annual Meeting, the largest gathering of trademark professionals from across the globe, is a multi-day conference featuring networking events, educational sessions, receptions and an exhibition hall. Corporate legal teams utilize the Annual Meeting to meet with their outside counsel, network to find counsel, and take advantage of top-tier educational sessions and discussions on the latest issues that affect brand owners.

During the months leading up to the Annual Meeting, My Powerful Network became one of the key tools used by attendees to organize networking events and meetings. After the conference, users

04 POWERFUL NETWORKS POWERFUL BRANDS®

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JOIN THE LARGEST TRADEMARK COMMUNITY INTA is offering free member benefits for the rest of the year if companies pay their 2012 membership dues before December 31. When a company becomes a member of INTA, all employees at its location are entitled to INTAʼs benefits at no additional cost.

For more information, visit www.inta.org.

continued the conversations they started at the Annual Meeting by connecting with one another, joining groups and responding to discussion threads on My Powerful Network.

The 2011 Annual Meeting in San Francisco, California was the Association’s largest ever, attracting more than 9,100 trademark professionals from around the world. The next Annual Meeting will be held in Washington D.C. on May 5-9, 2012.

Shaping Trademark Policy Aside from the networking opportunities, trademark owners find great benefit from INTA’s influence on trademark policy. INTA regularly partners with governments, trademark offices and other organizations to promote the harmonization of trademark law and enforcement. For example, INTA is a strong supporter of the use of the community trademark in the EU and the signing of the Anti-Counterfeiting Trade Agreement, a multilateral trade agreement aimed at improving intellectual property enforcement against counterfeiting and piracy internationally.

INTA also assists governments and trademark offices around the world that are working to draft, revise or update trademark related policies. Its most recent resource for this group, the Model Free Trade Agreement (MFTA), was introduced in May 2011. The MFTA is designed to facilitate and enhance the Association’s contribution to the work of trade agreement negotiators with regards to the treatment of trademark rights.

Portal also has external resources, including links to countries’ national and regional trademark offices, searching and filing tools and fees, laws, regulations, case law and treaties.

Small business owners can access INTA’s “Trademark Basics: A Guide For Business,” which helps companies understand the importance of protecting their brands from imitators looking to confuse customers. It provides basic information on the use of trademarks, the different types of marks and how to establish rights to a mark.

INTA has advocated for stronger trademark protection policies on the Internet and has served as a leading voice for the trademark community in the ongoing debate over the evolution of cyberspace. For example, INTA represents the views of trademark owners within the Internet Corporation for Assigned Names and Numbers (ICANN) - the organization that coordinates the Internet’s domain name system. INTA’s efforts have helped to produce new trademark protection systems within ICANN’s controversial program for introducing new generic top-level domain names (gTLDs) to the Internet’s domain name system. And to help trademark owners prepare for the introduction of new gTLDs, INTA has developed resources such as webcasts, education programs, articles, fact sheets, and other resources for its members.

Global Trademark Research Some of INTA’s most valuable benefits for its members are its publications and research tools on trademark law. After its new website launched, these offerings became easier to access, saving members valuable time and money.

Trademark professionals can utilize 14 different resources ranging from publications such as The Trademark Reporter®, the world’s only scholarly journal dedicated solely to trademark law and related topics, to research tools such as the Country Portal, an online database on the organization’s country-specific content. Country

The Future While companies and firms derive extensive benefits from INTA’s current member offerings, aggressive plans are in place to further support trademark professionals and promote trademark law. INTA plans to continue to develop and advocate for positions on trademarks policy around the world, especially in Asia. This effort will only increase as the organization prepares for its first Annual Meeting in the continent, which will take place in Hong Kong in 2014.

The organization also plans to enhance its volunteer experience, including an expansion of its academic membership and to develop more programs to serve small and medium-sized enterprises.

In early January 2012 INTA will unveil its upgraded “Trademark Checklist,” a member benefit for corporate members. The Checklist is considered a top resource by major media outlets to ensure they refer correctly to trademarks and brands.

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NORTH AMERICA & THE CARIBBEAN 7 DOMINICAN REPUBLIC - BIAGGI & MESSINA 7 USA - DUANE MORRIS LLP

8 USA - CALIFORNIA - LARIVIERE, GRUBMAN & PAYNE, L.L.P. 8 USA - CALIFORNIA - HOLMES WEINBERG, PC 8 USA – ILLINOIS - HUSCH BLACKWELL LLP

Globalisation and the rapid proliferation of technology have elevated the importance of intellectual property protection for small and medium sized enterprises (SMEs). The intangible nature of intellectual property and the worldwide inconsistency of standard practices create challenges for US businesses wishing to protect their inventions, brands, and business methods in foreign markets.

The United States provides a wide range of protection for intellectual property through the federal

registration of trademarks and service marks; through federal patent protection and copyright protection; and, under state laws, through protection of trade secrets and marks. Federal protections extend only

9 USA - NEW YORK - FITZPATRICK, CELLA, HARPER & SCINTO 9 USA - NEW YORK - GIBNEY, ANTHONY & FLAHERTY, LLP 9 USA - NEW YORK - KATTEN MUCHIN ROSENMAN LLP

throughout the United States, its territories and possessions.

The ease of IPR enforcement depends on local law, the resources of the intellectual property

owner, the attitude of local officials, and many other factors. In the United States and many countries, intellectual property owners pursue infringement claims through civil litigation.

Internationally, avenues to address IP infringement vary by country, and will be dictated by local

law. As required by the TRIPs Agreement, criminal procedures and penalties in cases of willful

10 USA - NEW YORK - R. KUNSTADT, P.C. 10 USA - NEW YORK - SCULLY, SCOTT, MURPHY & PRESSER, P.C.

trademark counterfeiting and copyright piracy must also be available in WTO member countries. It is important to seek proper legal advice on any issues related to IPR enforcement.

“The ease of IPR enforcement depends on local law, the resources of the intellectual property owner, the attitude of local officials, and many other factors. In the United States and many countries, intellectual property owners pursue infringement claims through civil litigation.”

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BIAGGI & MESSINA

DOMINICAN REPUBLIC

Ana Isabel Messsina - Partner T: 809 535 1414 amessina@biaggimessina.com www.biaggimessina.com

Biaggi & Messina has evolved as one of the most complete and versatile firms in the Dominican Republic to serve the diverse legal requirements of local and foreign investors. Biaggi & Messina is a full-service firm and one of the oldest in its jurisdiction devoted to the protection of intellectual property rights hence its reputation as a leader in this field of practice.

In intellectual property matters the firm assists clients to safeguard their intellectual property rights in the Dominican Republic by providing guidance and strategic counseling to said end.

Biaggi & Messina provides services in all areas of intellectual property such as: patents, trademarks, copyright, trade secret and unfair competition, and assists clients with consumer protection legislation. The firm’s primary areas of practice include the following services: preparing, filing and prosecution trademarks, trade names and industrial designs; filing and prosecution of patent and utility models; management of intellectual property portfolios; drafting and negotiating intellectual property agreements; handling administrative actions at the Trademark Office such as opposition, nullity, cancellation and recovery actions; intellectual property litigation; border measures proceedings; marketing and advertising legal issues; food and drug regulations.

Ana Isabel Messsina, partner at the firm, commented: “We like to consider our firm as an associate of our clients’ interest by providing these services with transparency, efficiency and cost control in this changeable global economy.”

“We work together as a team in order to provide a timely and personalised service by specialised attorneys with vast experience in this field of practice, thanks to the implementation of cutting edge tools and the continuous training of all our members in the Dominican Republic and abroad.”

Part of the firm’s team members are intellectual property professors in renowned universities and writers of intellectual property articles in magazines dedicated to general law themes, and have been invited to speak as guests in intellectual property forums, always at the forefront of emerging issues.

“The longevity of this firm, our commitment to serve our clients’ interest and our rakings in prestigious publications evidence the confidence of others in our work,” said Ms Messsina.

DUANE MORRIS LLP

USA

Gregory P. Gulia - Partner T: +1 212 692 1027 GPGulia@duanemorris.com www.duanemorris.com

Duane Morris is continuously recognised as one of the top law firms handling trademark, copyright, patent, and related IP litigation in the United States.

Each year, the firm is among the top firms filing applications to register new trademarks and manages worldwide portfolios of trademark registrations.

Duane Morris IP lawyers advise on the most effective methods of establishing and developing IP holdings and protecting IP rights to help clients derive the greatest value from their most valuable assets.

The firm’s accolades include: • Ranked number 11 in the Top Trademark Firms list by IP Today • Top-five trademark litigation practice in the U.S. in 2009 as ranked by IP Law360 • Among the top-10 trademark filing firms by Trademark Insider • Among the top firms for patent litigation by IP Law360 and IP Law & Business Unlike IP boutique firms, Duane Morris is a fullservice firm with attorneys across myriad practice areas who support IP lawyers in litigation; tax; corporate law; customs enforcement; antitrust; employment; business and finance; international law; government contracts; bankruptcy; banking; personal financial planning; insurance; and securities law.

Duane Morris focuses on protecting the goodwill and brand value that its clients have developed through their trademarks and trade dress. The firm assists clients in a broad range of trademark, trade dress and unfair competition disputes involving consumer products trademarks, pharmaceutical trademarks, business names, fashion brands, and trademarks in virtually every other industry. The firm also handles Internet domain name disputes, trademark dilution matters, trademark counterfeiting and gray goods matters, and false advertising cases. Duane Morris represents clients’ interests in federal courts throughout the United States, the Trademark Trial and Appeal Board, the International Trade Commission, ICANN and WIPO. The firm continually pursues innovative strategies and technologies to address evolving client needs.

With the Duane Morris IP Portal, clients have anytime/anywhere access to a wealth of information on their IP holdings, including status updates on filings and alerts to upcoming deadlines.

With offices throughout the United States and in international locations, including three Asian offices and London, Duane Morris is ideally prepared to assist clients’ IP needs in the global market.

The intangible nature of intellectual property and the worldwide inconsistency of standard practices create challenges for US businesses wishing to protect their inventions, brands, and business methods in foreign markets.

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LARIVIERE GRUBMAN & PAYNE, LLP

USA – CALIFORNIA

David LaRiviere - Partner T: +1 831 649 8800 getinfo@lgpatlaw.com www.lgpatlaw.com

LaRiviere, Grubman & Payne, LLP is a full-service intellectual property law firm. Its distinguished team of lawyers develops and administers comprehensive, highly tailored, efficient IP portfolio management strategies for businesses in a broad scope of industries. Based in central California near the Bay Area, with agents in Europe, South America, Asia and Australia, LGP provides clients with a rare blend of local accessibility and exceptional service, combined with global reach and expertise.

LGP takes a practical, business-focused approach to IP law. “We take collaboration one step further, working with clients to develop creative, cost-effective IP management strategies that advance their business objectives,” commented partner David LaRiviere.

Strong working relationships yield the best outcomes. LGP lawyers and associates get to know clients and become immersed in their businesses and technologies, not just their cases. In turn, clients gain access to an LGP partner and an associate, backed by a dedicated team with a depth of relevant experience.

The firm’s Bangkok office specialises in anticounterfeiting protection and enforcement, leading the way for a network of agents around the globe.

This network enables the firm to provide the full scope of IP management services, prosecution, maintenance and enforcement to global business, whether based in the US or elsewhere.

In addition, LGP has expertise in electrical, electronic, electro-mechanical, mechanical, communications, software, chemical, biotechnology, computer systems and optical technologies, including laser technologies.

The firm’s IP department has the following practice areas: trademarks, copyrights, patents, licensing, trade secrets, unfair competition, litigation (in all the above areas), and related business matters.

Mr LaRiviere said: “Our services include prosecution of patent applications, preparation and administration of trademark and copyright registrations, maintenance of patent rights, enforcement and alternative dispute resolution, and litigation.”

LGP attorneys also prepare and negotiate contracts and licenses while ensuring tailored protection of IP portfolios appropriate to the circumstances.

“Delivering value to clients with consistency and reliability is our goal,” added Mr LaRiviere. “We do this by possessing the experience of people on the ground and on the streets all over the world.”

HOLMES WEINBERG, PC

USA – CALIFORNIA

Steven M. Weinberg - Partner T: +1 310 457 6100 smweinberg@holmesweinberg.com www.holmesweinberg.com

Holmes Weinberg, PC uniquely combines a traditional trademark and copyright law practice with an expansive practice in business and law related to entertainment, branding, advertising and media and online technologies. The firm represents famous trademarks and brands as well as celebrities and sports figures, the latter both in their careers and in the protection and branding of their names and personas.

“We are recognised for bridging brands, entertainment properties and celebrities with endorsements, sponsorships and other licensing activities and using technology and media, including online, mobile and other digital and broadcast media, for fully exploiting these properties domestically and globally. We are also vastly experienced in global trademark portfolio development and management as well as leading successful litigations in disputes relating to trademarks, copyright, unfair competition, entertainment, false advertising, trade secrets, personality rights, privacy, domain names and the internet, as well as oppositions and cancellations,” explained partner Steven Weinberg.

Partner Henry Holmes, a leading California entertainment transactional and litigation attorney with over 35 years’ experience, aligned client George Foreman with his famous Foreman Grilling Machine, the most successful sponsorship arrangement of its kind in history. The firm takes the same forward approach to the famous brands it represents, such as American Idol, The X Factor and the E. & J. Gallo family of brands. Partner Steven Weinberg has over the last 30 years represented many of the best known global brands in trademark, copyright, internet and licensing matters. Mr. Weinberg also was one of the first domain name dispute arbitrators through INTA. As a former INTA Board Member and Trademark Reporter Editor in Chief, Mr. Weinberg firmly believes that the “INTA is integral for professional development and networking and in the trademark world. I joined INTA in the early 1980’s. There is no better way for meeting trademark professionals from around the globe and participating in the global development of trademark law. I encourage all trademark professionals whether in-house or outside, to join and be active in INTA.”

HUSCH BLACKWELL LLP

USA – ILLINOIS

Julie A. Katz - Partner T: +1 312 526 1544 Julie.Katz@huschblackwell.com www.huschblackwell.com/IP

Companies, whether large or small, public or private, focused on emerging technologies or old-line industries, all aspire to maximize their profitability. All too often, in the hustle and bustle of running global organizations or the day-to-day operations of a street corner deli, opportunities go overlooked. That is where Husch Blackwell LLP comes in – working closely with clients to identify opportunities to create assets that help accomplish business and technology objectives.

After the merger with Chicago-based and internationally renowned IP boutique, Welsh & Katz, Ltd., Husch Blackwell’s IP department grew to more than 90 attorneys who focus on all aspects of intellectual property and technology law, including: Advertising & Marketing, Entertainment & Media, Food Law, Intellectual Property Counseling, Litigation, Patents, Technology & E-Commerce, Trademarks & Copyrights, Trade Secrets.

In addition, more than 45 of the firm’s intellectual property attorneys are registered to practice before the U.S. Patent and Trademark Office. Julie A. Katz, partner at Husch Blackwell, commented: “Our legal and technical knowledge enables us to guide our clients in transactions involving intellectual property acquisition, development, maintenance, protection, enforcement and commercialization.”

A leading legal intellectual property magazine Intellectual Property Today named Husch Blackwell as one of the “2011 Top Trademark Firms” in the country. The firm placed 8th on this year’s list, climbing from the 11th spot in 2010. The magazine determines its rankings according to the total number of issued registered trademarks that firms obtained on behalf of their clients. In 2010, Husch Blackwell trademark attorneys registered 536.

Julie A. Katz became a member of INTA in 1993, early in her law career. As she said INTA was and still is “the place to be if you are an IP professional”.

“The association’s programs are of the highest level of IP education, including ethics,” she said. “The conferences allow an unparalleled opportunity to meet, network and become friends with amazing IP people from around the world.”

Ms Katz added: “I continue to recommend that paralegals and other non-attorney IP professionals not only join, but become active in the organization. Through immersion comes the best that the organization has to offer in terms of education generally, high level issue spotting, networking, and making life-long friendships.”

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FITZPATRICK, CELLA, HARPER & SCINTO

USA - NEW YORK

Pasquale A. Razzano - Partner T: +1 212 218 2253 prazzano@fchs.com www.fitzpatrickcella.com

International brands are a companyʼs most valuable assets. From CANON® to FRIGIDAIRE®, from CALVIN KLEIN® to PADDINGTON BEAR®, clients have entrusted Fitzpatrick to protect and enforce their valuable intellectual property assets based on the firmʼs experience and skills.

Fitzpatrick’s experience in international trademark protection involves products and services spanning virtually every segment of modern industry and consumer products. The expertise of the firm’s Trademark Group in the laws of trademarks and unfair competition around the world enables it to assist its clients in the creative development, protection, enforcement and licensing of trademark rights.

In doing so, the firm also works closely with the leading trademark practitioners in each country of the world.

GIBNEY, ANTHONY & FLAHERTY, LLP

KATTEN MUCHIN ROSENMAN LLP

USA - NEW YORK

Brian W. Brokate - Partner T: +1 212 688 5151 bwbrokate@gibney.com www.gibney.com

Karen Artz Ash - Partner T: +1 12 940 8554 karen.ash@kattenlaw.com www.kattenlaw.com

Katten Muchin Rosenman LLP is a full-service law firm with more than 600 attorneys in locations across the United States and an affiliate in London.

Gibney, Anthony & Flaherty, LLP is a full service commercial law firm with 50 attorneys and offices in New York and San Francisco, and affiliated offices in London, Geneva and Zurich. Intellectual property rights are at the forefront of every business and protecting those rights is more important than ever before. As technology moves at lightning speeds, the law is adapting to keep up. Gibneyʼs Intellectual Property Practice Group takes every opportunity to stay one step ahead when it comes to securing and protecting clientsʼ intellectual property rights.

Gibney is particularly well-known for its specialty in handling anti-counterfeiting and antipiracy litigation matters. The firm has been featured on 20/20, CBS News, ABC News, and in Women’s Wear Daily and other publications due to its progressive efforts in the fight against counterfeiting, and Gibney was among the first law firms in the

“FITZPATRICKʼS EXPERIENCE IN INTERNATIONAL TRADEMARK PROTECTION INVOLVES PRODUCTS AND SERVICES SPANNING VIRTUALLY EVERY SEGMENT OF MODERN INDUSTRY AND CONSUMER PRODUCTS.”

U.S. to develop a program to protect and enforce intellectual property rights on the Internet.

Gibney’s IP partner, Brian W. Brokate, describes this unique aspect of the practice: “After identifying counterfeiting and infringing products, our team removes the violating content and works with private investigators around the country to locate infringers. We not only seek the immediate removal of auction listings and/or domain name transfers to our clients, but recover damages to offset our clients’ costs of enforcement. We report tens of thousands of trademark counterfeit-

“Our sophisticated docketing system and experienced support staff enables us to efficiently obtain and maintain comprehensive trademark protection in the U.S. and abroad for companies both large and small,” said Pasquale A. Razzano, partner at the firm.

Fitzpatrick has been an active participant in INTA, since its founding almost 40 years ago, in order to maintain its knowledge of current trademark issues around the world and to strengthen its contacts with its foreign colleagues. Fitzpatrick attorneys have served the INTA Board of Directors and innumerable committees as leaders in the worldwide trademark community.

ing and copyright infringement matters per year to domain name registrars and auctions websites and collect restitution on behalf of several brand owner clients.”

Intellectual property and how it relates to the internet is continuously evolving as the law moves to keep up with rapidly changing technologies. Gibney covers all areas of trademark protection, infringement, dilution, counterfeit sales and multiple other abuses on the Internet.

Gibney attorneys also protect trademark owners through website and auction site searches as well as domain name monitoring.

USA – NEW YORK

It strives to be a firm of first choice for clients seeking sophisticated, high-value legal services nationally and globally. While Katten offers an extensive range of legal services across numerous industries, its core areas of practice are corporate, financial services, litigation, real estate, commercial finance, intellectual property and trusts and estates.

Among the firm’s clients are a wide range of public and private companies, including a third of the Fortune 100, as well as a number of government and nonprofit organisations and individuals.

With regard to intellectual property Katten serves domestic and international companies seeking to protect and benefit from their IP. Clients include industry leaders in apparel, entertainment, telecommunications, software, electronics, health care and insurance.

Attorneys at the firm have spent their careers in intellectual property law and have built one of the nation’s leading practices. They have demonstrated skills, experience and depth in matters such as complex transactions, licensing valuable technology and brands, and high-profile lawsuits where a company’s most valuable intellectual property is at stake.

Katten’s seasoned litigators enforce and defend their clients’ IP rights in jurisdictions across the United States and abroad. Much of this litigation involves cutting-edge issues of intellectual property law. The practitioners provide guidance on issues relating to new media and emerging rights, and claims involving social media, cyber torts, computer fraud, keyword advertising, pricing and the First Amendment.

The group’s experienced transactional attorneys assist clients in capitalising on their IP rights through licensing, joint venture and technology transfer agreements and advise clients concerning the validity and valuation of intellectual property when they are faced with mergers, acquisitions and dispositions. They also assist clients in managing their IP portfolios, including registration and enforcement of trademarks and patents worldwide and administration of IP agreements.

Additionally, Katten provides services in relation to patent prosecution, trademarks and trade identity, trade secrets, e-commerce, and many more.

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R. KUNSTADT, P.C.

USA - NEW YORK

SCULLY, SCOTT, MURPHY & PRESSER, PC

USA – NEW YORK

Robert Kunstadt Managing Partner T: +1 212 398 8881 mail@RKunstadtPC.com www.RKunstadtPC.com

R. K U N S T A D T, P. C. R. Kunstadt, P.C. provides prompt, innovative and effective IP service by applying technology strategically to leverage the skills of a selected, closely-coordinated staff. The practice includes patent, trademark, copyright and antitrust trials, foreign and international litigation strategy and worldwide IP portfolio licensing and management. Solving difficult cases that need thoughtful study, without requiring a large litigation staff, is the firm’s forte.

A graduate of Yale University and the UCLA School of Law, Mr. Kunstadt was a Research Fellow at the Max Planck Institute for Patent, Copyright & Competition Law, in Munich, Germany. Until 1997, he was a partner at New York’s Pennie & Edmonds.

Ilaria Maggioni is a member of the bar in New York and Italy. She has law degrees from the University of Pennsylvania, and the University of Pisa (Italy); and attended the London School of Economics.

Mr. Kunstadt was editor-in-chief of INTA’s journal The Trademark Reporter in 20062007; he contributed to the journal’s recent 100th anniversary issue. Both he and Ms. Maggioni are on its editorial board.

Recent matters that R. Kunstadt, P.C. worked on include: • Patent litigation / OCR software / San Francisco • Trademark litigation / T-shirts / New York • Patent litigation / Pharma / New York • Trademark litigation / Online keyword ads / Detroit • Copyright search and advice / Italian films / US Copyright Office • Trademark application / Financial services / US, Europe, Japan, Australia.

Keith A. Weltsch - Associate T: +1 516 742 4343 kweltsch@ssmp.com www.ssmp.com

Scully Scott is a boutique intellectual property firm that prosecutes and litigates patents, trademarks, and copyrights in a wide range of technologies and business environments. The firm is distinguishable from many of its competitors in that its practitioners are able to avoid some of the bureaucratic pitfalls associated with the larger general practice firms, and accordingly, are able to provide advice that is specifically tailored to their clientsʼ business needs.

Scully Scott’s greatest strength is its diversity of skills and expertise, both with regard to technology, and as far as the legal experience of its staff is concerned.

“Our trademark practice features experienced trademark litigators, attorneys with decades of in-house experience as well as a former trademark Examining Attorney with the USPTO,” said associate Keith A. Weltsch. “This wealth of varied experiences and backgrounds assures that all of our clients’ intellectual property needs will be met.”

Scully, Scott’s vast experience has allowed the firm to develop the expertise necessary in assuring that clients maximise their rights on a global basis. When clients are considering their international filing plans, the firm utilises its vast network of international associates, as well as its professionals’ extensive knowledge of trademark law in the various jurisdictions around the world. It enables them to properly advise clients of the benefits, and potential pitfalls, of utilising the centralised Madrid Protocol filing strategy, different to direct filing in particular jurisdictions.

Scully, Scott became a member of INTA in 1980, in order to make essential connections in the international trademark community, as well as to take advantage of the valuable seminars and conferences that allow its members to keep abreast of the latest developments in trademark law. Mr Weltsch noted he would strongly recommend that all intellectual property firms join INTA. As Mr Weltsch claimed, in the current economic climate, companies in the United States are more vigilant than ever about protecting their intellectual property in order to obtain a competitive advantage in the marketplace. All those in need for a high quality IP advice can rely on the expertise of Scully, Scott.

Scully, Scottʼs vast experience has allowed the firm to develop the expertise necessary in assuring that clients maximise their rights on a global basis.

- SCULLY, SCOTT, MURPHY & PRESSER, PC

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CENTRAL & SOUTH AMERICA 12 BRAZIL - VICENTE NOGUEIRA ADVOGADOS 12 EL SALVADOR - PORTAL & ASOCIADOS 12 GUATEMALA - PALOMO & PORRAS

13 MEXICO - DUMONT BERGMAN BIDER & CO., S.C. 13 MEXICO - LINK INTERNATIONAL DE MÉXICO, S.C. 13 MEXICO - BECERRIL, COCA & BECERRIL, S.C.

14 PANAMA - BUFETE CANDANEDO 14 PERU - SCAVIA & SCAVIA 14 PERU - OMC ABOGADOS

15 SURINAME - SCHURMAN ADVOCATEN 15 SURINAME - SJIEM FAT & MAHABIR

Much of the Americas, including Argentina, the Bahamas, Brazil, Ecuador, El Salvador, Paraguay and Venezuela belong to the World Intellectual Property Organisation (WIPO) and/or the WTO, and adhere to most international agreements regarding IP. Much of the Americas, including Argentina, the Bahamas, Brazil, Ecuador, El Salvador, Paraguay and Venezuela belong to the World Intellectual Property Organisation (WIPO) and/or the WTO, and adhere to most international agreements regarding IP. However, not all of the countries of the Americas share the same IP rights. Differing spins on legal issues are joined with socially sensitive questions of technology transfer, and commercial and economic interests are complicated by variations in political, nationalist and ideological viewpoints. In this context, the Summit of the Americas Center (SOAC) at the Latin American and Caribbean Center (LACC) of Florida International University (FIU) and the Center of Studies on Economic Integration and International Trade (INTEGRAL) have established a Joint Working Group on Trade and IP to address the evolution of this field.

“In this context, the Summit of the Americas Center (SOAC) at the Latin American and Caribbean Center (LACC) of Florida International University (FIU) and the Center of Studies on Economic Integration and International Trade (INTEGRAL) have established a Joint Working Group on Trade and IP to address the evolution of this field.”

The patents, trademarks, industrial designs, models and copyrights of the Americas are generally protected by the provisions of the International Convention for the Protection of IP (the Paris Convention). However, while it is possible to register patents and trademarks in, for example, Belize, other creative works still remain relatively unprotected in the country. Belize is a member of the Universal Copyright Convention, though not a member of the WIPO or the Bern Convention on Copyrights. As a consequence, piracy is still common, particularly of recorded music and computer software.

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VICENTE NOGUEIRA ADVOGADOS

BRAZIL

Carlos Vicente Da S. Nogueira - Partner T: +55 11 3105 0326 cvsn@vnadvogados.com www.vnadvogados.com

Established in 1957, law firm Vicente Nogueira Advogados provides comprehensive and fully integrated assistance on intellectual property rights.

From extensive experience in searches, filing and prosecution advice, including maintenance and enforcement of IP rights, to handling measures against counterfeiting and unfair competition.

Apart from the comprehensive range of intel-

lectual property services the firm also advises on food, cosmetic, medical devices and drug law, civil and commercial litigation.

According to Carlos Vicente Da S. Nogueira,

partner at the firm, Brazil is playing a key role

in the international IP scenario and IP rights are one of the most important and valuable assets for Brazilian companies and also for foreigner

investors seeking to conduct business in Brazil.

However, as he pointed out, due to Brazil’s

huge territory, the country’s economy is still

driven by small and medium businesses, most

of whom do not have the IP culture among their

principal goals. For that reason the work of local IP associations along with the support of some public entities is of such great importance.

Mr Nogueira added: “We have a very good

law and specialized courts to exclusively judge conflicts involving IP rights.”

Investors who decide to protect their intel-

lectual property in Brazil can rely on high quality services provided by Vicente Nogueira Advogados. Clients of the firm can be sure their needs will be fully comprehended by knowledgeable and committed team.

Recently, the group has worked on a case in

South Korea where one of its Brazilian clients

had to go to court to have his rights on his own

mark restored as one of his Korean distributors

had obtained an unauthorised registration of the client’s house mark. “We have worked close to

our Korean associate in order to recover our client’s house mark,” commented Mr Nogueira.

The firm’s cross-border involvement is

strongly supported by INTA membership. Mr Nogueira said: “Having a chance to enlarge our networking and be regularly updated

on IP matter across the globe are of huge benefit to our firm.”

PORTAL & ASOCIADOS

EL SALVADOR

Edy Guadalupe Portal - Partner T: +503 2263 1717 egportal@portallaw.com www.portallaw.com

A.C. PALOMO & PORRAS

GUATEMALA

Héctor Palomo - Head of International Commerce and Intellectual Property Department T: +502 2279 7474 | hpalomo@palomoyporras.com www.palomoyporras.com

The firm provides intellectual property services to businesses of all sizes, across all industry segments.

Its multidisciplinary approach and multilingual staff appeal to inside and outside counsel who need cooperative, responsive and cost conscious legal team on the ground to represent their clientsʼ interest in the Salvadoran and Central American region.

A.C. Palomo & Porras is a Guatemalan law firm, specialising in corporate law and IP law, including trademarks, patents, enforcement and litigation. The firm focuses on the Guatemalan market, rendering services in all Central American countries through its associated firms.

Portal & Asociados also stands at the forefront of CAFTA related opportunities assisting manufacturers and companies to take full advantage of CAFTA market opening provisions by helping clients navigate the important reforms of domestic legal and business environments.

Representing some of the world’s largest and most successful corporations, Intellectual Property Department at the firm is dedicated to ensure its clients’ intellectual assets are secure, protected and available for commercial use. “We model our services to cost-effectively meet our clients’ unique needs and help them navigate the region’s unique economic, political and judicial landscape.

Our trademark attorneys are, in fact, among the most renowned in Central America,” commented partner Edy Guadalupe Portal.

She added that Portal & Asociados has state of the art technology, using specialised programs that allow the immediate handling of databases in order to keep accurate and updated records of activities and progress in the intellectual property prosecutions entrusted to the firm. “With these programs we can timely warn our clients about the existence of other trademarks and how it may affect their intellectual property rights.”

Portal & Asociados provides legal counseling in intellectual property, both nationally and regionally in trademark registration, licenses, commercial secrets, oppositions, appeals, anti-counterfeiting, cancellations, unfair competition, technology transfer, franchising, copyrights, patents, industrial designs, utility models and any related litigation.

The firm also offers support services in the area of health records: cosmetics, medicines, food and veterinary products, among others.

Ms Portal added: “Because it is so time consuming and therefore expensive to establish and maintain relationships with five different law firms located and operating within a small geographical region, due to our firm´s Central American services we can consolidate clients’ efforts and offer one point of contact for all their legal needs in Guatemala, Honduras, El Salvador, Costa Rica and Nicaragua. That is why we are your Central American hub for intellectual property services.”

A.C. Palomo & Porras was founded in 1978 and at this moment is one of the most prestigious law firms in Guatemala, for its tradition, ethics and expertise.

The firm constantly attempts to provide its clients a strategic guidance in order to protect their intellectual property patrimony. The firm is distinguished among its industry peers for its prompt and direct response, its high level capabilities as well as its cost-effective rates.

The expertise of A.C. Palomo & Porras gives the firm a distinct advantage when working on, what is today considered, an international playing field. Héctor Palomo, who is Head of International Commerce and Intellectual Property Department at the firm, said: “We consider working with international clients as a valuable asset. In fact, representing overseas companies signifies a very good reference to our local clients.”

Intellectual property is one of a company’s main assets. According to Mr Palomo, Guatemalan’s companies are increasingly requesting and asking for IP enforcement services. “The consciousness and understanding of the importance of getting protected is markedly growing,” he said.

“A.C. PALOMO & PORRAS WAS FOUNDED IN 1978 AND AT THIS MOMENT IS ONE OF THE MOST PRESTIGIOUS LAW FIRMS IN GUATEMALA, FOR ITS TRADITION, ETHICS AND EXPERTISE.” A.C. Palomo & Porras became a member of INTA in 2004. Commenting on the network, Mr Palomo said: “As part of INTA we get to know the newest trends in the international community, also since our association we have enhanced the firm’s network. We would definitely recommend it mainly because you become part of an international community of trademark professionals.”

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DUMONT BERGMAN BIDER & CO., S.C

MEXICO

Laura Collada - Managing Partner T: +525553226230 lcollada@dumont.com.mx www.dumont.com.mx

Dumont Bergman Bider & Co., S.C. is an IP boutique established 70 years ago, certified by ISO 9001-2008 for having a management quality system, which enables the firm to provide top quality legal services oriented to achieve clientʼs satisfaction.

The firm has a strong patent team with expertise in patent writing, filing and prosecution, as well as patentability, landscape, infringement, validity and freedom-to-operate searches and opinions.

“Our TM team advises on the whole lifecycle of TM rights,” said Laura Collada, managing partner at the firm. “Finally, our dedicated and keen practitioners from the litigation department have proved themselves in highly complicated cases.”

Dumont Bergman Bider & Co. (DBB) has been managing multi-country patents and trademarks portfolios through established relations with reliable intellectual property law firms worldwide. The firm works closely with European and American clients to help them file, obtain and enforce IP rights throughout Latin America. The firm has been providing these services for more than 50 years since its professionals are able to understand needs and requirements of their clients and translate them to success, due to knowledge, expertise and established business relations.

DBB is a modern firm, completely digitalised and rendering a paperless service upon request.

It uses a top notch docketing system in which clients can go online and check their files.

IP has been growing and developing in Mexico over the years, however, as Ms Collada noted, safeguarding IP rights is a matter of business culture, which makes work of IP professionals harder. Sector awareness about filing and enforcement of IP varies across different industries, with the pharmaceutical sector being one that is most involved in IP matters.

A large number of DBB professionals are in IP-related associations, teach at several colleges and try to create an IP culture and increase awareness of IP protection.

DBB has been a member of the International Trademark Association for almost 10 years. Ms Collada commented: “I became a member of INTA because it is a top IP association, which facilitates networking and business relationships. It is also a comprehensive source of knowledge. I would highly recommend it to other firms and IP specialists.”

LINK INTERNATIONAL DE MEXICO, S.C.

BECERRIL, COCA & BECERRIL, S.C.

MEXICO

Gilberto Sanchez - Partner T: +52 55 2282 8800 gsanchez@linkinternational.com.mx www.linkinternational.com.mx

MEXICO

Fernando Becerril - CEO T: + 52 55 52638730 main@bcb.com.mx; fbecerril@bcb.com.mx www.bcb.com.mx

The Intellectual Property practice of Link International de México, S.C. is comprised of a highly qualified team of attorneys-at-law and technical and administrative personnel, with broad expertise in this area. Personnel are engaged to render outstanding integrated service in the filing and processing of trademarks, patents of invention, copyright registration and any other right related thereto (literary, musical, artistic works, graphic design, architectural, software, performers copyrights, trade names, among others). The partners at the firm also assist with prosecution and counseling (judicial and administrative litigation) in all forms and instances.

The professionals that integrate Link International de México, S.C. are specialists with wide experience and knowledge in both commercial and governmental matters, allowing the firm to offer a broad variety of services through a personalised and direct relationship with the client. This permits Link International de México, S.C. to design special packages of services for each client, including the assessment of opportunities and investment policies as well as legal, commercial and corporate counseling. A number of the firm’s lawyers have previously practiced with the Mexican Trademark and Patent Office (Instituto Mexicano de la Propiedad Industrial - IMPI), implementing procedures to protect intellectual property against piracy and the prosecution of trademarks applications.

Link International de México’s representative clients are national and international enterprises in different areas, namely finance, insurance services, pharmaceutical products, retail stores, real state, television, telecommunications, software and sports.

The partners are the firm noted that Mexico operates under a civil law system, and copyright in Mexico is protected by the Mexican Copyright Act and IP by the Industrial Property Act. Link International is in a position of strength to offer clients oversight for infringement of their obtained rights. It also employs anti-piracy investigations and enforcement proceedings before the relevant authorities. The firm also routinely carries out infringement and lapse declarations, nullity, expirations and cancellations at the Mexican Patent and Trademark Office. The partners conduct legal actions to request or challenge payment of damages and losses resulting from the non-authorised use of intellectual property rights.

Becerril, Coca & Becerril is a specialised firm in intellectual property and technology transfer, with main areas of practice including IP prosecution, IP litigation, IP management, corporate affairs, anti-counterfeiting, and IP value extraction, among the most important.

The firm’s back office capabilities, structural design and relationship with efficient and prestigious correspondents all over the world, allow it to perform as a hub in Latin America for different clients providing them maximum response at a low cost and to centralise work in just one agent who manages and handles their IP portfolios in an effective and assertive manner.

The firm’s Corporate Affairs area helps to provide the best solution to clients’ specific needs.

“We provide them with advisory in every kind of legal procedure, regulations, Official Mexican Standards (NOMS), and contracts,” said Fernando Becerril, CEO at the firm.

IP Value Extraction services of BCB are focused not only on the enforcement of intellectual property matters, but are rather aimed to help clients in leveraging the true value of their IP portfolio.

For this purposes the firm provides its clients with services such as: competitive intelligence and technology studies, freedom-to-operate opinions, valuation of intangible assets, negotiation of license and collaboration agreements with multidisciplinary task-forces covering business, legal and technical aspects (in and out licensing), contract drafting, IP due diligence for mergers and acquisitions, and corporate and business strategies for technology based start-ups.

BCB is the only firm that counts with four experts named in the “Guide to the World’s Leading Patent Law Practitioners” from Euromoney PLCManaging Intellectual Property. “Our organizational structure is unique in Latin America and allows us to take care of every IP matter in each step of its process,” commented Mr Becerril.

BCB has been able to keep its representation of leading firms for patent prosecution from all over the world in several fields of technology, with costeffective performance and has even won contract bidding processes without compromising its quality.

Mr Becerril pointed out: “The confidentiality and reliability that our firm has gained through the years has allowed us to keep our client portfolio including Fortune 500 companies in the pharmaceutical, automotive, telecommunications, machine manufacturing and consumer products industries.”

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BUFETE CANDANEDO

PANAMA

Rolando Candanedo – Partner T: +507 213 0033 rolando@bufetecandanedo.net www.bufetecandanedo.com

Founded in 1976, the law firm of Bufete Candanedo offers to international and local corporations a vast range of specialised legal services. The firmʼs experienced lawyers are capable of dealing with Panamanian set of laws, as well as with international commercial and business laws, especially on foreign investments, real estate law, merges, acquisitions, advise regarding doing business in Panama, Panama corporations, trademarks and patents matters.

“Our clients appreciate our personal attention and high level of service. We know that we must constantly earn the right to serve our clients.”

- SCAVIA & SCAVIA

Bufete Candanedo has more than 25 years of experience in the Intellectual Property field and is well equipped to handle all aspects related to the management, protection and defense of IP matters.

The firm’s IP group has an excellent team of professionals specialised in intellectual property law, that provides full services to a wide range of clients from companies to individuals, connecting in a one-stop shopping the services required in the intellectual property field. A net of associates around the world (especially in Latin America), the efficient way of managing IP assets and highly specialised service, provides clients of Bufete Candanedo with a trustworthy associate in their interests.

The firm’s services in the IP field include: registration and protection of trademarks, patents, utility models, designs, copyrights and domain names, litigations concerning opposition and cancellation of trademarks registrations, trademarks infringement, copyrights infringement and related matters. The firm is also specialised in licensing, distributorship and franchising agreements for its clients, as well as food and drug, unfair competition and antitrust issues.

Bufete Candanedo is deeply involved in all forums concerning the discussion of IP issues, and it actively participates in the process of approving and adopting agreements and laws for the benefit of the IP community. The firm is a member of AIPLA, ASIPI, INTA, AIPPI, ABA, Panamanian Association of Industrial Property, Panamanian Association of Software and Panamanian Bar Association.

Further, Bufete Candanedo has an international network of strategic partners. It allows local corporations and multinational enterprises to benefit from a global representation, which successfully relies on dedicated lawyers, and the use of sophisticated information technology systems. The goal of the firm is to assist its clients in growing and prospering in Panama or in any other part of the world where they decide to conduct businesses.

SCAVIA & SCAVIA

PERU

Renzo Scavia - Managing and Founding Partner T: +511 440 8181 rscavia@scavialaw.com www.scavialaw.com

Scavia & Scavia, general practice law firm specialising in intellectual property and competition law, is the result of the effort and tenacity of the extensive and renowned career of its founder and managing partner, Renzo Scavia, attorney at law with over 15 years of experience protecting his clientsʼ intellectual property in Peru and abroad.

The firm has a team of highly skilled members.

The practice is wide-ranging, from all aspects of patent, trademark, and copyright law and litigation, entertainment law, domain names, licensing, franchising and related aspects of commercial law, e-commerce and other legal areas dealing with technology and intellectual property.

Mr Scavia commented: “Our widespread comprehension of global intellectual property law, our moderate size that facilitates personalised service and close attorney−client relationships, and our dedication to client service has kept us in the vanguard of our profession for the last 10 years.”

When asked about the main strengths of the firm’s IP team, Mr Scavia pointed out that they include a high sense of service, experience, and responsiveness. He explained: “Our clients appreciate our personal attention and high level of service. We know that we must constantly earn the right to serve our clients.

“Our legal experience and knowledge is the vertebral column of our firm. Our legal staff stays apprised of changes in the intellectual property law and regularly attends seminars and informational courses to ensure that our firm remains current and has a thorough understanding of the law.

“The members of our firm strive to provide excellent services to our clients in a well-timed manner. It is our firm’s policy to communicate with our clients to provide them with the assistance they need when they need it.”

Mr Scavia became a member of INTA in 2004.

He commented on the membership: “Coupled with an international branch structure, I am in contact with colleagues and friends from everywhere. Furthermore, the range of INTA opportunities ensures me that I get the progression route that is right for me. I have been a member of the INTA Bulletin Committee since 2009 and it has been an enriching experience.”

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OMC ABOGADOS & CONSULTORES

PERU

SCHURMAN ADVOCATEN

SURINAME

SJIEM FAT & MAHABIR

SURINAME

Schurman Advocaten

Oscar Mago - Managing Partner T: +511 6281238 omago@omcabogados.com.pe www.omcabogados.com.pe

Humphrey Schurman - Partner T: +597 476558 hums@sr.net www.schurman-advocaten.com

Chander S. Mahabir - Partner T: +597 438 902 cs.mahabir@sfmtc.com www.sfmtc.com

The firm has had a great and explosive growth since its foundation (October, 2005), representing different companies and associated firms from all over the world, who have deposited their trust and confidence in the firm and have remained satisfied and happy with the work done. In addition, many associated firms from countries such as China, Greece, France, Poland, Russia, United States, India, Iceland, Israel, among others, have chosen the firm to represent their clients in IP matters not only in Peru, but also in all Latin American countries.

Schurman Advocaten was established on June 18, 1988 and over the years has grown into a dynamic and modern medium-sized company. The team consists of five lawyers and is supported by the secretariat and administration where 15 employees make their contribution. The office is located in Paramaribo, within walking distance of the presidential palace, the Ministries of Justice and Police, Finance, Natural Resources, Foreign Affairs, the Court of Justice and the Building of the Cantonal Courts.

The firm OMC Abogados & Consultores has successfully intervened in several cases against infractions to the Industrial Property rights in Peru, obtaining favourable decisions from the Trademark Office that have stopped the infringement committed by third parties, besides the fines that this fact has caused. Furthermore, in terms of trademark applications, the firm has obtained 95% favourable decisions in the involved cases.

The professional quality of Mr. Oscar Mago, founding partner and CEO of the firm, has been reflected over the past years in international publications on intellectual property in different magazines and national and international newspapers, as well as in television and radio interviews. He has more than 25 years of experience working in the field of industrial property and has successfully handled matters in the areas of unfair competition, infringement of trademark and patent rights and criminal prosecutions for trademark counterfeiting. He has been listed as leading individual in Intellectual Property by Chambers and Partrners (2010), being stated the following: “Formerly of Estudio Colmenares, Oscar Mago has set up his own firm OMC Abogados & Consultores and impresses clients with knowledge of the area”.

The firm has been ranked in 2010 by Managing Intellectual Property, stating the following: “A new entry to this year´s rankings, OMC Abogados offers quality IP advice at reasonable rates. Peers note that the firm is ‘small but good quality’, and one client asserted: ‘OMC was very professional and friendly. We would use them again without any reservation’.”

In January 2009, acting on behalf of E! Entertainment Television, the firm successfully filed oppositions against different applications for the mark E in Peru, thus preventing potential dilution of a distinctive famous mark.

have enabled them to offer professional assis-

Experience and expertise of Schurman Advocaten tance in many jurisdictions. They provide a professional and result oriented coaching for a wide

variety of legal problems. Main aim of the firm is to assist clients and represent them as legal aid.

Schurman Advocaten is much more than

just the legal profession. The company is

firmly rooted in society and provides shelter to anyone who seeks justice and protection. The firm is the hub of new developments where residents can count on excellent service.

Clients of the firm can count on a dedicated

and professional treatment. Each case receives the attention to obtain the best possible results.

At the same time, practitioners at the firm

remain discreet when dealing with information shared by their clients. In addition, they are

committed to ensuring that the complexity of

legislation and jurisprudence is translated to an understandable form for each client.

Humphrey Schurman is the founder of Schur-

man Advocaten. In 2005 he established Ad-

vocacy Foundation on Intellectual Property in

Suriname. Through this foundation individuals and legal authorities are supported in protecting their intellectual property.

Mr Schurman is undoubtedly the driving force

at Schurman Advocaten and is still busy devel-

oping technology to the firm. Under his inspiring

leadership not only is the office modernised and tastefully decorated, but also assistance to the

client evolves with the times. He is full of energy and ideas and supports his team to provide ser-

vice based on the use of information technology, which guarantees better efficiency.

Sjiem Fat & Mahabir is one of the largest IP firms in Suriname. Founded in 1999, it has grown to be the leader in trademark services in Suriname. The firm is a full-service intellectual property firm and business consultancy which advises and represents businesses and individual clients in all aspects of intellectual property and protection, and in how to best register and enforce valuable intellectual property rights.

Much of the firm’s work in the area of intellectual property concerns trademark law, both registrations as well as enforcement actions against infringement. Sjiem Fat & Mahabir is a highly respected firm with a vast network of clients and associates around the world. Some of the clients are owners of very popular brands. Apart from this, the firm also has smaller companies and individuals in its portfolio. Sjiem Fat & Mahabir is associated with Sjiem Fat & Co. Law Offices in Aruba.

Sjiem Fat & Mahabir counts with an ample network of associates extended through all Caribbean nations, allowing it to file applications not only in Suriname, but also in the rest of the Caribbean Community and other countries, without loss of efficiency while maintaining a contained costs policy.

Chander S. Mahabir, partner at the firm, noted that the registration process in the Caribbean differs substantially and is thus not uniform. There is no single Caribbean filing process, and applications must be filed in each country separately. Therefore, assistance of such an experienced firm as Sjiem Fat & Mahabir is of great benefit.

The firm also has an office in The Hague (The Netherlands) offering services for the Benelux region (Belgium, The Netherlands and Luxembourg) and the rest of the European Union (Community Trade Mark).

Members of Sjiem Fat & Mahabir are well equipped and qualified to handle all matters in the field of intellectual property rights. They offer timely, practical and proactive advice on all IP issues. The firm can rely on several years of experience and a team of expert attorneys in case of infringement of trademarks. Recently, the firm has worked on an infringement case for a tobacco multinational and localized and prepared agreements for a IT multinational (including versions of the agreements translated in the local language, as required by Surinamese law).

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EUROPE 17 CZECH REPUBLIC - KOREJZOVÁ & SPOL 17 FINLAND - PAPULA-NEVINPAT 17 FRANCE - CABINET DEBAY 18 GERMANY - KUHNEN & WACKER 18 GERMANY - FPS RECHTSANWÄLTE & NOTARE 18 GERMANY – NESSELHAUF 19 GERMANY - STOLMAR SCHEELE & PARTNER 19 GREECE - DR. HELEN PAPACONSTANTINOU, JOHN FILIAS AND ASSOCIATES 19 ITALY- SIB LEGAL 20 ITALY - RUCELLAI & RAFFAELLI 20 MALTA - MAMO TCV ADVOCATES 20 MALTA - GVTH LAW 21 POLAND – JWP 21 PORTUGAL - BAPTISTA, MONTEVERDE & ASSOCIADOS 21 PORTUGAL - J. PEREIRA DA CRUZ, S.A. 22 ROMANIA - CABINET M. OPROIU 22 ROMANIA – INTELLEXIS 22 ROMANIA - VILAU & MITEL 23 SERBIA - KARANOVIC/NIKOLIC 23 UK - J A KEMP & CO 23 UK - WYNNE-JONES, LAINÉ & JAMES LLP 24 UKRAINE - PAKHARENKO & PARTNERS

A uniform system of protection of intellectual property rights, ranging from industrial property to copyright and related rights, constitutes the foundation for creativeness and innovation within the European Union. Respect of the basic principles of the internal market (the free movement of goods and services and free competition) is based on standardization of intellectual property at European level.

Protection of intellectual property is covered by many international conventions, most of which are imple-

mented by the World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO).

The European Union possesses two important bodies to carry out its mission: the Office for Harmonisa-

tion in the Internal Market (OHIM), which is responsible for the registration of Community trade marks and designs, and the European Patent Office (EPO). The Commission is currently campaigning for the effec-

tive introduction of a Community patent system, which would be less costly and more legally effective, as a guarantee of competitiveness for European industry. Finally, the protection of these rights also entails protecting them against piracy, illegal trade and counterfeiting.

Copyright and related rights provide an incentive for the creation of and investment in new works and

other protected matter (music, films, print media, software, performances, broadcasts, etc.) and their

exploitation, thereby contributing to improved competitiveness, employment and innovation. The field of copyright is associated with important cultural, social and technological aspects, all of which have to be taken into account in formulating policy in this field.

There has been significant harmonisation of the substantive copyright law to reduce barriers to trade and

to adjust the framework to new forms of exploitation. Common ground is also needed with respect to the

rules on the enforcement of rights, i.e. on access to justice, sanctions and remedies regarding infringements.

In order to grasp the full potential of marketing intellectual property rights in the Internal Market, complemen-

tary measures on the management and licensing of these rights may also prove necessary. The Internal Market DG’s task is to enforce the “acquis” on copyright and related rights; to advance it further and to modernise and adapt it to new developments in technology or the markets concerned as this is an evolving scenario.

The copyright industries are critically important to the European Community because they

involve media, cultural, and knowledge industries. Development in the industries is indicative of performance in post-industrial society especially where related to the information society.

Directorate-General Internal Market is also responsible for conducting negotiations on industrial and

intellectual property within World Intellectual Property Organisation (WIPO) (e.g. audiovisual, broadcasting, resale right, databases, etc.), for participating in the relevant WIPO General Assemblies, and for

contributing to the work of other international fora on IPR related matters with a view to ensuring adequate protection of intellectual property rights (IPR) internationally.

16 EUROPE

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KOREJZOVÁ & CO.

CZECH REPUBLIC

Dr. Petra Korejzová - Partner T: +420 246 090 111 PKorejzova@korejzova.cz www.korejzova.cz

KOREJZOVÁ & CO., PLC, is a law and patent office engaged in providing complex legal services in the field of industrial and intellectual property rights. The firm is entrusted with its clientsʼ matters concerning patents, utility models, industrial designs, trademarks and other incorporeal chattels, or related legal issues.

The firm directly represents clients in the Czech Republic and Slovakia or with international organisations for industrial rights protection, or via its agents abroad.

KOREJZOVÁ & CO. promotes intellectual property rights representing clients in:

• Disputes over infringement of trademark, patent, utility model and industrial design, business name rights – the firm has substantial experience in dispute proceedings before Registration Offices and Courts. It represents clients in disputes before the Czech IPO as well as in disputes concerning infringement of registered or unregistered rights and also offers quality services in asserting these rights abroad in cooperation with credible foreign partners.

• Unfair competition disputes – unfair competition practices are often used in business competition relations. In these cases the firm represents clients in negotiations with infringers with the aim to cease their unlawful practices as well as in court proceedings.

The most frequent cases concern a risk of confusion, living on another’s reputation, false advertising etc.

• Copyright disputes – representation of authors in court and out-of-court proceedings for asserting their claims according to copyright regulations.

• Disputes over protection of personality – legal action for protection of personality, for good reputation of legal and physical persons.

• Domain disputes – nowadays, with regard to growing importance of the internet, the number of domain disputes is on the increase. Domain names can often collide with another’s rights to sign. In this field, the firm provides full service to clients in representing them before Common and Arbitration Courts.

• Fight against counterfeiting – representation of clients in all cases concerning fight against counterfeiting, such as elaboration of expertise reports on goods seized within the scope of customs control, filing a request for adopting a customs measure to industrial rights protection, conducting court proceedings for a declaration of infringement of intellectual property rights and further steps within the Customs proceedings, including representation of the injured in penal proceedings.

PAPULA-NEVINPAT

FINLAND

CABINET DEBAY

FRANCE

Yves Debay – Partner

Riikka Palmos - Partner, European Trademark Attorney

T: +358 9 348 00 626 riikka.palmos@papula-nevinpat.com www.papula-nevinpat.com

T: +33 139184624 cabinet@debay.fr

Established in 1975 by Patent Councellor Antti Papula, Papula-Nevinpat is today one of the largest and recognised patent, trademark and design agencies in Finland. The firm serves its clients worldwide by 130 professionals.

Papula-Nevinpat is also one of the most wellknown agencies in Russia. In addition to its Finland-based global operations, the firm has offices in Belarus, Russia, Kazakhstan, Ukraine and Uzbekistan. In other parts of Eurasia, the firm represents clients through its cooperation network.

“Our strong expertise in Russia is a result of groundbreaking work,” said partner Riikka Palmos. “We were the first Western agency to start in St. Petersburg in 1990. We file more than 2500 new cases in the Eurasian area each year. Our experience in industrial property rights in Russia is recognized throughout the globe.”

Papula-Nevinpat provides a vast range of services related to intellectual property. Clients can rely on the firm’s expertise because its attorneys have extensive knowledge about IP and are up-todate with the newest developments in the field.

The experts cover all fields of technology.

“One of our primary goals is to provide our clients with personal advice and service suited to the needs of every individual. This personalised attitude has earned us a great reputation among our clients,” commented Ms Palmos.

Riikka Palmos is a Master of Laws and EU trademark attorney and is based in the head office. She joined Papula-Nevinpat in 1995, and is a partner of the company. She specialises in the trademark rights and practices in Russia and in the states created in the territory of the former Soviet Union. She has more than 15 years of experience in the trademarks in the territory of the former Soviet Union, including changes in the trademark legislation and practices, licensing and assignment of trademarks, protection of well-known trademarks, registration of domain names, infringement cases and registration processes in the Russian Patent Office. Riikka also has experience in Finnish and EU trade mark processes, and she handles cases relating to international trademarks.

Riikka has written a number of articles about the trademark rights and practices and gives regularly lectures and presentations in several seminars in the field of Intellectual property rights.

Cabinet Debay is a medium-sized firm of trademark experts based on the suburbs of Paris. Founded in1984 the firm has a long and successful history of offering clear and practical advice and guidance to numerous clients on trade mark searching, clearance and registration in France, at the European Community Trade Marks Office, at OMPI (Geneva) and worldwide through a network of foreign law firms.

The main two aims of the firm are: to ensure its clients obtain strong and enforceable

trade mark rights at the lowest cost, and to help them avoid needless and expensive litigation whenever possible.

All of the three practising trademark attorneys

at the firm are qualified.

The firm can efficiently help to determine

full trademark strategies for clients, including

worldwide trademark protection utilising both the European Community mark as well as international protection via the Madrid Protocol.

Cabinet Debay is adaptable, utilises the latest

available technology and can advise on matters

such as copyright, domain name protection and its relationship with trade mark protection, trade mark infringement on the Internet, cyber-squatting.

Partner Yves Debay said: “Our firm may also

provide assistance and advice with all activities concerning industrial property and in particular patent rights, namely writing specifications,

filing and prosecution of patent applications

to obtain registration of French or European

patents, prior art search, opposition, filing of

models, software protection, protection of integrated circuits, drafting of intellectual property agreements, assistance in case of disputes, legal proceedings for infringement or unfair

competition, audits of patents and trademarks

and audits of intellectual property agreements.”

When asked about the opinion about INTA

membership, Mr Debay said: “The network

helps the firm to cultivate strong relationships with other IP lawyers across the globe. It can also offer clear and practical advice in other

trade mark related matters such as licensing,

infringement, passing-off, trade mark watching and enforcement generally.”

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KUHNEN & WACKER

GERMANY

FPS FRITZE WICKE SEELIG

GERMANY

Dr. Christian Thomas - Partner, Attorney at Law T: +49 8161 608 303 info@patentfirm.de www.kuhnen-wacker.com

Christian Hertz-Eichenrode - Managing Partner T: +49403789010 hertz-eichenrode@fps-law.de www.fps-law.de

KUHNEN & WACKER is an intellectual property (IP) law firm which was founded more than 35 years ago. The professional staff is highly specialised in all intellectual property matters, including trademarks and patents. The firm represents large and medium-sized corporations based worldwide as well as universities and individual inventors.

The intellectual property practice at FPS is one of the main business areas of the firm including more than 30 attorneys. Apart from domestic German clients, the firm assists a large number of multi-national corporations to protect and enforce their IP rights in Germany.

KUHNEN & WACKER is specialised in IPrelated litigation and prosecution and offers all kinds of services in connection thereto (in particular: filing of trademarks and oppositions, applying and enforcing preliminary injunctions, courts procedures, border seizures etc.).

“By worldwide standards, we are a small firm with a staff of about 76. Our advantage is a direct and clear communication between persons and we can act quickly and efficiently,” said partner Dr. Christian Thomas. “Due to its size, KUHNEN & WACKER is flexible, devoted to the client and its interests and can independently pick the best associates (know-how and cost wise) for the job, whereas, client’s preferences are respected.”

Thinking out of the box is one of the firm’s major strengths. As an IP boutique firm, it is not only trademark oriented, but can also consult with its design and patent departments to optimise its clients’ portfolio protection. “Our clients are very conscious about their IP and KUHNEN & WACKER offers high quality services to meet the client’s needs,” added Dr. Thomas.

KUHNEN & WACKER has been an active member in many trademark organisations, such as INTA (for nearly three decades – formerly called USTA), ECTA and GRUR. At present, the firm has three active INTA Committee members and its attorneys and trademark assistants are regularly attending or actively taking part in INTA meetings, conferences, roundtables etc.

KUHNEN & WACKER is steadily growing and the trademark department will move to a new additional building in October 2011. The new building is located right next to the headquarter office of KUHNEN & WACKER and offers, due to its modern and state-of-the-art technology, a perfect environment for KUHNEN & WACKER’s employees. The new building also offers fully equipped conference and seminar rooms in order to provide clients with top quality service and top quality facilities.

The emphasis of FPS’s work lies on building,

exploiting and defending IP rights and assisting with licensing strategies for clients from

various industries, such as pharmaceuticals,

fashion, cosmetics, luxury goods, advertising, software and new media.

FPS handles trademark searches, adminis-

trative proceedings before the German Patent

and Trademark Office, OHIM, WIPO as well as infringement cases for trademarks, industrial designs, patents and utility models and has

created a special task force to combat product piracy. The firm’s working languages are German, English and French.

“FPS HANDLES TRADEMARK SEARCHES, ADMINISTRATIVE PROCEEDINGS BEFORE THE GERMAN PATENT AND TRADEMARK OFFICE, OHIM, WIPO AS WELL AS INFRINGEMENT CASES FOR TRADEMARKS, INDUSTRIAL DESIGNS, PATENTS AND UTILITY MODELS AND HAS CREATED A SPECIAL TASK FORCE TO COMBAT PRODUCT PIRACY.” FPS firm is an INTA member for more than 30

years. As managing partner at the Hamburg office,

Christian Hertz-Eichenrode, said, the main benefits of INTA membership are contact with foreign colleagues in all jurisdictions, exchange of views for

trademark questions, and easy access to valuable legal information on trademark law.

NESSELHAUF RECHTSANWÄLTE

GERMANY

Dr. Volker Knies - Partner T: +49 40 41188123 knies@nesselhauf.com www.nesselhauf.com

NESSELHAUF Rechtsanwälte is an IP/IT and media boutique law firm, founded in 2008, and located in Hamburg, Germany (11 lawyers in total; 5 partners, 6 associates). The firm is a spin off from a large independent German law firm where its partners practiced IP/IT and media law for many years.

In IP matters NESSELHAUF Rechtsanwälte handles all aspects, namely trademarks, designs, copyrights, patents, domains and advertising law.

In trademark matters the firm advises and supports clients in the development, administration, defence and optimisation of their trademark portfolios.

“Our team represents its clients before the German Patent and Trademark Office, the Office for Harmonization in the Internal Market (OHIM) and the World Intellectual Property Organization (WIPO) as well as before the German and European Courts and the Customs Authorities,” said one of founding partners, Dr. Volker Knies.

He added: “We are highly experienced in drafting and negotiating licensee agreements of all types, in particular with respect to trademarks, patents and copyrights. As we regularly advise both licensors and licensees, we are familiar with the legal issues involved. Furthermore, we understand the economic interests of the parties involved.”

Clients of NESSELHAUF Rechtsanwälte are multinational enterprises, as well as other organisations and individuals from many different branches. The firm´s special expertise is in the media, entertainment, fashion, sports and lifestyle industries.

“OUR TEAM REPRESENTS ITS CLIENTS BEFORE THE GERMAN PATENT AND TRADEMARK OFFICE, THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (OHIM) AND THE WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO) AS WELL AS BEFORE THE GERMAN AND EUROPEAN COURTS AND THE CUSTOMS AUTHORITIES.” Dr. Volker Knies is a member of INTA since 2003.

“We are an independent law firm with close and longstanding relationships to colleagues all over the world,” he noted. “Many of these relationships result from our INTA membership.”

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STOLMAR SCHEELE & PARTNER

GERMANY

Matthias Stolmar – Partner T: +49 89 232367 0 M.Stolmar@shp-ip.com www.shp-ip.com

As a cooperation of patent attorneys for chemistry, biology, physics, computer science and engineering, the IP law firm of Stolmár Scheele & Partners offers legal and patent related advice. Currently, 11 attorneys are working in the firm with a total staff of 30 persons. All the attorneys have gained extensive experience in law firms as well as in patent and legal departments of various globally operating companies.

In cooperation with specialists in numerous countries, the firm of Stolmár Scheele & Partner offers legal services in the field of intellectual property, namely applying for, defending, opposing and enforcing industrial property rights as patents, utility models, trademarks, registered designs or internet domains.

Stolmár Scheele & Partner assists clients in all relevant questions of intellectual property, right from the first product and brand ideas and concepts, through the analysis of the complex IP situations and the creation of own protective rights, to enforcement of these rights. For their clients, practitioners at the firm combine the legal and technical excellence with a personal note, availability and the intensive personal commitment a smaller unit can offer.

“STOLMÁR SCHEELE & PARTNER REPRESENTS ITS CLIENTS BEFORE THE EUROPEAN PATENT OFFICE, THE GERMAN PATENT AND TRADE MARK OFFICE, THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET AND THE WORLD INTELLECTUAL PROPERTY ORGANIZATION.” Stolmár Scheele & Partner represents its clients before the European Patent Office, the German Patent and Trade Mark Office, the Office for Harmonization in the Internal Market and the World Intellectual Property Organization.

The firm places particular value on highlydeveloped problem-solving skills. All of the attorneys combine extensive technical and legal experience in representing domestic and international clients.

Office of Stolmár Scheele & Partner is located in the centre of Munich close to the European Patent Office and the German Patent and Trademark Office and nearby to the Palace of Justice with the District Court of Munich.

The firm can be contacted in German, English or French.

DR. HELEN PAPACONSTANTINOU, JOHN FILIAS AND ASSOCIATES

GREECE

STUDIO LEGALE SIB

Dr. Helen G. Papaconstantinou - Senior Partner T: +30 210 3626624 mail@hplaw.biz www.hplaw.biz

ITALY

Pier Luigi Roncaglia - Managing Partner T: +39 055263381 pierluigi.roncaglia@siblegal.com www.siblegal.com

Dr. Helen Papaconstantinou, John Filias & Associates, is one of the largest specialist IP firms in Greece. Along with its affiliate branch, the Law Office of Dr. P.D. Theodorides – Dr. H.G. Papacostantinou (established in 1920), the firm offers a broad range of top quality IP law services at highly competitive prices. It is worth noting that the firm was the first one and remains the only one in the IP law field to acquire ISO 9001:2008 certification, making it stand apart in the relevant market and assuring the continuous maintenance and development of the quality of its services.

Studio Legale SIB was established by a group of attorneys long specialised in the contentious field of intellectual property (IP). With offices in Florence, Milan and Rome, as well as a liaison office in New York, Studio Legale SIB provides judicial and extrajudicial assistance in Italy and the European Union to Italian and foreign clients, including some of the worldʼs most prestigious companies in the fields of luxury goods, fashion, entertainment, information technology and pharmaceuticals.

The firm’s main areas of practice include: trademarks, patents, designs, SPCs, copyright, anti-trust, anti-piracy/anti-counterfeiting/customs monitoring procedures, domain names & internet law, licensing, distribution, franchising & contract law, commercial law, trade regulation, competition law, consumer protection & advertising law. The team of specialists at the firm provides not only related consultancy, but also represents clients in contentious litigation and ADR procedures.

Attorneys at the firm have significant experience in the area and are continuously kept updated regarding new developments in the sector, whilst a number of them also participate actively in shaping the future of IP law through their membership in various leading international IP organisations (e.g. INTA, ECTA, AIPPI, EPI, etc). Indeed, Dr. Helen Papaconstantinou, the firm’s head and senior partner, has been a member of INTA, since 1975, and continues to be actively involved in all related activities.

One of the main strengths of the office lies in its dedicated litigation team that maintains a strong interest, among others, in the pharmaceuticals industry and, in particular, with regard to disputes between patent owners and generics manufacturers.

Throughout its numerous years of activity, the firm has succeeded in establishing long-standing, invaluable collaborations with hundreds of highly reputable firms around the world, enabling it to represent some of the most important companies internationally – either directly or through their legal agents – building on its solid basis of reciprocity.

“This unique position that our firms have managed to assume in Greece,” said Dr. Papaconstantinou, “is greatly reinforced by our INTA membership, which enables us to further interact, communicate and promote our practices, expertise and ideas with esteemed colleagues and clients worldwide.”

‘90s, considers membership in INTA funda-

Pier Luigi Roncaglia, managing partner of

the firm and member of INTA since the early mental and instrumental to his practice since

this organisation is strongly committed to the

protection, promotion and advancement of the rights of trademark owners.

The Practice In order to provide clients with the most qualified assistance, as Mr Roncaglia underlined, Studio Legale SIB has chosen to work exclusively in

the fields of intellectual and industrial property as well as unfair competition. Mr. Roncaglia

commented: “We handle all matters relating to trademarks and distinctive signs, domain

names, denominations of origin, geographical

indications, patents, designs and models, and

copyright.” In particular, the firm provides extrajudicial and judicial assistance, in both civil and

criminal cases, as well as the drafting of agreements regarding IP rights.

Mr. Roncaglia added: “We handle all aspects

of anti-counterfeiting, including liaising with the police and customs authorities, the coordina-

tion of experts and investigators, the drafting of briefs during preliminary investigations and the filing of briefs of intervention as aggrieved parties in criminal proceedings.”

“Thanks to our equal expertise in civil and

criminal matters as well as to perfect fluency in the most important foreign languages, Studio

Legale SIB is able to offer highly personalised assistance in IP law, conciliating the peculiari-

ties of each single case with the client’s overall protection and budget concerns.”

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RUCELLAI & RAFFAELLI – STUDIO LEGALE

ITALY

Avv. Enrico Adriano Raffaelli - Partner T: +39 027645771 e.a.raffaelli@rucellaieraffaelli.it www.rucellaieraffaelli.it

Rucellai & Raffaelli is a full-service, independent law firm which has acquired a consolidated expertise covering a wide range of practice areas.

Based in Milan and having branch offices in Rome and Bologna, the firm currently counts around 68 lawyers, specialised in corporate, antitrust and competition, banking and finance, IP, EU Law, general civil and commercial law and employment.

Since its foundation in 1979 Rucellai & Raffaelli has been active in the IP field, where the firm consolidated a significant know-how in providing complete assistance to clients. In particular, the firm has distinguished itself in this area of practice, advising its clients on patents, trademarks, models and designs, know-how, copyright, parallel imports, unfair competition, trademark and patent licensing.

The Intellectual Property Right practice of the firm is marked by two main characteristics: (i) a strong synergy between the IP team and those specialised in different areas of practice; (ii) a significant experience gained over decades of activity in all areas of IP law.

The firm offers assistance ensured in both judicial and extrajudicial fields, supported, where necessary, by a network of lawyers worldwide.

Specifically, in the judicial area, the IP team’s activities include, among others: - assistance in actions for the protection of IP rights (including counterfeiting, invalidity actions and those aimed at obtaining compensation for damages); - assistance in actions aimed at obtaining precautionary measures (for instance, seizures of counterfeit products, injunctions against counterfeit activities, publication of the precautionary order in national newspapers); - assistance in the preparation of petitions for the Customs - at a national and European level - (the so called red filter) in order to prevent the entry of counterfeit goods into the market.

In the extrajudicial area, the IP team’s activities include: - advice through the drafting of legal opinion in all IP rights-related areas; - drafting of contracts relating to IP rights and assistance in their negotiation; - assistance in compliance with requirements for the registration of patents, also through the use of high profile offices of patent consultants.

MAMO TCV ADVOCATES

MALTA

Dr. Antoine Camilleri - Partner T: +356 21 231345 antoine.camilleri@mamotcv.com Dr. David Tonna - Partner & CEO T: +356 21 232 271 david.tonna@mamotcv.com

www.mamotcv.com

Mamo TCV Advocates is today one of the largest legal practices in Malta.

The main strengths of the firm’s IP Depart-

ment lie in its versatility since the firm provides advice in all the major sectors relating to intellectual property including national trademark, community trademark, patent and designs searches and registrations, prosecutions, licensing, distributorship and franchising

negotiations, agreements and related advice particularly in the fields of trademarks and copyright, competition law and tax issues

related to IP, technology and know-how transfer and licensing, and general IP-related litigation.

The firm’s clients range from individual traders to large multi-national corporations seeking to obtain or extend protection over their IPRs in Malta or on an EU level.

Mamo TCV Advocates is also regarded as a

leader in Malta in legal services related to anti-

counterfeiting prosecutions taken with Malta Cus-

toms. Thanks to EC Regulation 1383/2003 on cus-

toms action taken in respect of goods suspected of infringing an intellectual property right, work in this field has greatly increased in recent years.

In anti-counterfeiting work, the firm is presently

engaged by several multinational companies in

the protection of their brands including companies in the sports and fashion wear sectors, tobacco

companies, satellite broadcasting organisations, world-famous soccer clubs, computer appara-

tus and printer-ink manufacturing corporations, electronic goods, and large IT and software companies (mostly US-based).

Intellectual property is a main asset of each

company, therefore it should be safeguarded at all times. The firm is currently active (together with relevant authorities) in various aware-

ness campaigns since many local companies still need to learn more about the benefits of protecting their intellectual property.

GVTH ADVOCATES

MALTA

Dr. Michael Grech – Head of IP Department T: +356 2122 8888 michael.grech@gvthlaw.com www.gvthlaw.com

GVTH Advocates is a market leader in IP practice in Malta as the firm has considerable depth of expertise, second to none, that covers the full spectrum of IP related services. The team is comprised of specialised practitioners who are experts in the field, are extremely dedicated and offer immediate response to client needs as and when they arise.

According to Dr. Michael Grech, Head of IP Department at the firm, the world of IP has become somewhat more harmonised, particularly in a European context. Malta has transposed all applicable norms to safeguard IP rights locally, including those relating to cross-border protection of IP rights. Additionally, both European community trade marks and patents can now be extended to Malta, which provides IP rights owners with an efficacious and broad spectrum means of protection.

“We have, therefore, become accustomed to dealing with IP matters which have cross-border implications and have been fully prepared to handle such issues,” commented Dr. Grech.

GVTH Advocates also continues to be highly active in anti-counterfeiting matters, where it acts for a number of multinational companies in the enforcement of their rights and impounding the numerous goods originating from the Far and Middle East. Additionally, there are a considerable number of international generic drug producers in Malta, with a growing industry in this field, which GVTH Advocates is regularly advising on patent registration.

The firm also represents a syndicate of international generic pharmaceutical producers in negotiations with the government of Malta to approve major amendments to the Maltese Patents Act and also to set up a Patents Tribunal to hear cases for revocation of existing dubious patents registered under Maltese law and put into effect a new system for oppositions/refusals of new applications.

GVTH Advocates became INTA member 6 years ago. As Dr. Grech noted, there are several benefits relating to INTA membership, amongst which is the fact of belonging to a highly effective organisation that comprises practitioners from every corner of the globe with which one can correspond and refer work to. It also offers constant access to information on all aspects of IP as and when this becomes available, as well as topical conferences on various matters as they evolve.

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JWP PATENT & TRADE MARK ATTORNEYS

POLAND

Dorota Rzazewska - Attorney at Law Patent and Trade Mark Attorney T: +48 22 436 05 07 info@jwp,pl | www.jwp.pl

According to Dorota Rzazewska, attorney at law at JWP, Polandʼs accession to the EU and foreign investment as well as higher market pressure and increasing competition, both domestic and international, have made Polish entrepreneurs more aware of the role of adequately protected and managed exclusive rights in the business strategy, and subsequently the market has seen an increase in trade mark and patent fillings as well as in IP litigation.

JWP Patent & Trademark Attorneys is one of the leading Polish IP law firms providing comprehensive business focused assistance in the field of intellectual property protection and litigation in Poland and Europe.

JWP serves over 2500 domestic and international clients in various sectors such as pharmacy, cosmetics, chemistry, biotechnology, telecommunication, electronics, IT, mechanics, car industry, clothing and food.

The firm has also a considerable input in offering advice, training and providing pro bono educational workshops on IP protection and litigation for entrepreneurs, inventors, students and the media.

JWP team comprises experienced patent and trade mark attorneys, lawyers, consultants as well as paralegals, translators and administrative staff, all of whom offer integrated technical and legal knowledge and high quality services related to the protection of patents, trademarks, industrial designs, copyrights, domain names as well as anti-counterfeiting and unfair competition actions. JWP professionals have particular experience in trade mark and patent filling, prosecution, litigation and portfolio management, as well as copy rights protection.

Recently, JWP has been working on several cases against various competitors who intended to take advantage, in various ways, of the market position and reputation of a well-known international sweets (pralines) producer.

JWP has also been handling a dispute between international (innovative) and local (generic) pharmaceutical companies on a potential patent infringement. The case concerns the doctrine of equivalents and its application in patent infringement cases.

Furthermore, the firm has worked on a dispute between two leading Polish producers in the food industry concerning a comparative advertising broadcast on Polish television.

In the light of increasing demand of international and domestic clients for litigation services, JWP has recently established its new law firm - JWP Attorneys at Law.

BAPTISTA, MONTEVERDE & ASSOCIADOS

PORTUGAL

J. PEREIRA DA CRUZ, S.A.

Paulo Monteverde - Partner T: +351213806530 paulo.monteverde@bma.com.pt www.bma.com.pt

PORTUGAL

João Pereira da Cruz – Partner T: +351 213475020 joaopcruz@jpcruz.pt www.jpereiradacruz.pt

Baptista, Monteverde & Associados has recently been awarded the Patents Law firm of the year 2010 and the IP Law Firm of the year 2011 in Portugal. Best known for its intellectual property practice in Portugal, Baptista, Monteverde & Associados has won sustained success in IP litigation, winning some of the landmark IP cases in Portugal.

Baptista, Monteverde & Associados’ client list consists of some of the most technologicallyadvanced and innovative businesses in the world, in fields such as chemistry, life sciences, telecommunications, media and information technology and automotive industry.

Baptista, Monteverde & Associados is a full practice firm in what IP is concerned. “We advise our clients on their IP general strategies and then we handle all the necessary IP filings in Portugal and internationally,” said partner Paulo Monteverde. “Once the IP rights are duly protected we also handle the enforcement of such rights. We do so in Portugal and we also coordinate multi-jurisdictional disputes for our national clients.”

“Aiming to be an IP one-stop-shop, we also provide our clients with advice in IP related practices such as competition law, database protection (privacy aw) and labeling,” added Mr Monteverde.

The Baptista, Monteverde & Associados team includes qualified attorneys and patent attorneys experienced in litigation, prosecution and handling multi-jurisdictional disputes and cross-border transactions. Mr Monteverde has been the Vice-President of the Portuguese IP Association for more than five years.

Baptista, Monteverde & Associados has practical experience in providing advice on traditional advertising routes such the written and broadcast press, as well in relation to other advertising media such as mailing and direct marketing and product placement. Issues such as misleading and comparative advertising and on-line advertising in the new media are commonly dealt with by the firm.

Mr Monteverde emphasised that in what Portugal is concerned, in spite of the severe economical crisis, some important changes in the IP law should be expected. He explained that specialised IP courts have been announced by the government for 2011.

“These new courts will help to significantly speed up the current court decision’s time lines.”

J. Pereira da Cruz, S.A. is always keeping up with new communication technologies in order to provide the national and international community with the means to share information and remain up-todate with developments in the world of intellectual property. In the past some of the most prestigious Portuguese and international companies have been clients of J. Pereira da Cruz, S.A. since it started its activities more than 50 years ago.

Intellectual property consists of two branches, copyright and industrial property. The aim of industrial property is to protect inventions, aesthetic creations and signs used to distinguish products and companies in the marketplace, thus protecting the results of investments in innovation whether they are technological or commercial. J. Pereira da Cruz, S.A. has extensive experience with industrial property and believes this legal area to be an essential tool in the economic development and competitive capacity of any business.

THE CLOSE SURVEILLANCE OF THE VARIOUS PRIVATE RIGHTS HAS MADE IT NECESSARY TO IMPROVE ALL THE COMPANY´S SERVICES, ESPECIALLY THE LEGAL DEPARTMENT, WHICH CURRENTLY INCLUDES A TEAM OF LAWYERS WITH CONSIDERABLE EXPERIENCE IN THE VARIOUS ASPECTS OF INDUSTRIAL PROPERTY. The evolution of industrial property during the last 30 years requires stringent organisation, in order to duly safeguard the interests of all those to whom J. Pereira da Cruz, S.A. provides its services. The ease of exchanges in the world nowadays has extraordinarily increased the infringement of industrial property rights, which was almost non-existent half a century ago.

The close surveillance of the various private rights has made it necessary to improve all the company´s services, especially the legal department, which currently includes a team of lawyers with considerable experience in the various aspects of industrial property.

The firm is conscious that only a structure consisting of highly specialised staff and innovative technical resources enables it to efficiently meet the new challenges that it faces, J. Pereira da Cruz, S.A. has strongly invested in these areas and is on a level with the leading firms in the world in its field.

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CABINET M. OPROIU

ROMANIA

INTELLEXIS IP SERVICES

ROMANIA

VILAU & MITEL

ROMANIA

CABINET M. OPROIU

Raluca Vasilescu - Patent and Trademark Attorney T: +40 21 260 2833 / +40 21 260 2834 raluca@oproiu.ro www.oproiu.ro

Bogdan Florin Benga - Partner T: +40 21 310 33 32 bogdan.benga@intellexis.ro www.intellexis.ro

Cabinet M. Oproiu specialises in providing assistance and direct representation in patents and trademarks in Romania and in Europe (namely before OHIM and EPO), covering the main services of advice, prosecution, litigation as well as all related areas (translations, searches, monitoring, renewals).

Counting five years of extensive practice laid down on a solid background expertise of its patent and trademark attorneys, INTELLEXIS currently stands as a reputable intellectual property firm in Romania, while enjoying significant international acknowledgement.

Raluca Vasilescu, patent and trademark attorney at the firm, pointed out that with regard to patent matters, by tradition, a consistent part of the cases entrusted to Cabinet M. Oproiu comes from the pharmaceutical and IT fields. “Consequently, we have gained over the years extensive experience in all aspects deriving from these specific areas such as prosecution, professional searches with opinion, and litigation,” she said.

“In the recent years, we have acquired experience in obtaining Supplementary Protection Certificates for medicines and phytosanitary products. Our competitive edge in patent matter is the litigation for patent infringement and for nullity reasons.”

Cabinet M. Oproiu’s distinguishing feature in relation to trademarks includes the strategy issue as well as all contentious procedures. The strategy is closely linked to the raising consciousness of Romanian companies about safeguarding industrial property in Romania and abroad. “We currently assist our Romanian clients in all the preliminary stages from the creation of a mark until filing oppositions against later applications in foreign countries,” commented Ms Vasilescu.

Another competitive advantage of Cabinet M. Oproiu is its wide experience in the contentious proceeding in the trademark field. This includes the preliminary advice, the filing of oppositions, appeals, nullity proceedings and infringement of the trademarks. Cabinet M. Oproiu is involved in a constantly growing number of cases of customs interventions for national or community trademarks.

Ms Vasilescu is an active member of ECTA Council and the Anti-Counterfeiting Committee (ACC). Based on the experience within the ACC, she was invited to write the Romanian chapter for the book “Enforcement of Intellectual Property Rights through Border Measures Law and Practice in the EU” to be released this year by Oxford University Press.

Cabinet M. Oproiu joined INTA in mid ‘90s and, as Ms Vasilescu noted, the membership provides the firm with invaluable experience in the IP sector.

INTELLEXIS is organised as a one-stop IP firm, providing assistance and competent guidance in any IP related matter under the Romanian and the European jurisdictions.

The firm’s client portfolio includes Romanian and foreign corporate clients in all economical sectors, such as major pharmaceutical companies, food companies, clothing and cosmetic producers, publishing houses, bank institutions, telecommunication global operators, retailers, etc. With each and every one INTELLEXIS fosters reliable partnerships based on tailored advice and equal valuation.

The firm is known for the ability to explore IP law and practice in conjunction with creative resources, which concurrently form into its original approach that brings accurate practical solutions for serving clients’ protection needs.

Major assets of the firm include comprehensive intellectual property expertise, in-depth understanding of the global IP law and practice, recognised skills in the art of implementing creative approaches in registration and enforcement proceedings.

“Our commitment towards our clients, but mainly towards ourselves, is to provide services at the highest quality standards,” commented Bogdan Florin Benga, partner at the firm.

He added: “We are not satisfied with successfully concluding each case, since we know how to achieve this through excellence. We are a team of highly experienced, enthusiastic and value-oriented professionals, dedicated to pursuing our clients’ interests beyond their expectations.

“We take pride in our excellent professional achievements and strive to be better each day. And we succeed by taking the privilege of assisting in each case we are entrusted with as a direct challenge to our expertise, knowledge and skills.

“We challenge inspiration and protect the idea, pursue creativity and add value. We do it INTELLEXIS’ way.”

Dragos M Vilau - Partner T: +40 21 314 3155 dragos.vilau@vilaumitel.ro www.vilaumitel.ro

Vilau & Mitel is acknowledged as one of the top Romanian law firms, advising a vast range of local and international clients, including corporations, financial institutions, governmental bodies and individuals.

In line with its principle to add value to clients’ businesses, the firm provides them with unsophisticated but comprehensive and business oriented legal services, offering a full range of legal services, concentrating in Aviation; Banking & Corporate Finance; Capital Markets, Telecom, IT, IP & Copyright; Competition; Litigation; Employment; Energy, Natural Resources & Utilities; Environment, Planning and Regulatory Services; M&A; Public Procurement, PPP and PFI; Real Estates & Constructions; Taxation.

The firm’s IP practice is appraised at both national and international level, being constantly nominated the leading Romanian law firm in this field.

Vilau & Mitel has built a team of talented lawyers who manage to bring dedication and innovation to each project, with the perfect mix of legal knowledge and understanding of technical aspects for both prosecution and enforcement matters of intellectual property rights.

The firm covers a broad range of contentious and non-contentious IP related issues, ranging from trademarks, trade names, domain names, patents, designs to advertising and marketing rights, copyright, unfair competition and consumer protection.

Vilau & Mitel is an active INTA member who organised several IP conferences in Romania, including the first INTA Roundtable with the Romanian authorities in 2007.

Some of the awards received by the firm: 1. “The Client Choice Awards 2008” for Romania.

2. “Full Service Law Firm of the Year in Romania” ACQ Country Awards 2009.

3. “Best Law Firm in Romania for IP legal work 2009” Corporate INTL Magazine.

4. “Intellectual Property Advisory Firm of the Year in Romania” 2010 Corporate INTL Global Awards.

5. “Trademark Law Firm Eastern Europe” ACQ Global Awards 2010.

6. “Law Firm of the Year - Intellectual Property – Romania” DealMakers Global Awards 2011.

7. “Intellectual Property Law Firm of the Year” The Lawyers World Law Awards 2011.

8. “Full Service Law Firm of the Year – Romania” DealMakers Global Awards 2011.

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KARANOVIĆ & NIKOLIĆ

SERBIA

Dragomir Kojic - Regional IP Partner T: +381 11 30 94 200 dragomir.kojic@karanovic-nikolic.com www.karanovic-nikolic.com

Karanović & Nikolić Law Office has an extensive practice in the field of trademark, design and patent protection procedures. It also provides services with respect to copyright protection, covering a wide range of issues such as copyright ownership, exploitation, licensing and legal protection in the cases of copyright infringing actions. In the past few years the firm has also been active in the fields of intellectual property rights enforcement, anticounterfeiting and anti-piracy initiatives.

Karanović & Nikolić’s IP team brings together leading intellectual property lawyers as well as commercial and corporate lawyers to provide a full service to clients across the jurisdictions of former Yugoslavia: Bosnia & Herzegovina, Croatia, Kosovo, Macedonia, Montenegro, Serbia and Slovenia. It makes Karanović & Nikolić one of the largest multi-jurisdictional law firms in South-East Europe.

Dragomir Kojic, regional IP partner at the firm commented: “Wide experience of our IP lawyers is unrivalled in the markets in which we operate.

Hence, our multi-jurisdictional knowledge comes in as a powerful tool enabling us to provide quick and appropriate legal service to clients approaching us.”

Karanović & Nikolić has been a member of the International Trademark Association since 2004. Mr Kojic stated that the benefits of INTA membership are: easy access to current updates and trends in the trademark field, colorful set of programs and events, large exhibition areas, as well as an overall concise manner of sharing new information.

“Being a member of such an established and worldwide recognised association such as INTA provides us with one of a kind opportunity to make contacts and exchange experiences with other professionals in the field,” said Mr Kojic. “We would highly recommend INTA membership to our peers.”

With the harmonisation of the local IP-related legislature with that of EU, Serbia has seen a significant rise of IP protection awareness. However, as Mr Kojic emphasised, this fact does not undermine the several decades’ long tradition of IP enforcement that the Republic of Serbia has been known to have – even under former Yugoslavia – as well as the fact that it was one of the very first signatories of the Paris Convention.

J A KEMP & CO

WYNNE-JONES, LAINÉ & JAMES LLP

UK

UK

Victor Caddy - Partner T: +44 (0) 1242 267600 victor.caddy@wynne-jones.com www.wynne-jones.com

James Fish - Partner & Head of Trade Marks Group T: +44 020 3077 8600 jfish@jakemp.com www.jakemp.com

J A Kemp & Co, European patent & trade mark attorneys, has a large and comprehensive trade mark and designs filing practice. Led by James Fish, the group comprises four UK qualified trade mark attorneys (all full Members of the Institute of Trade Mark Attorneys – MITMA – and European Trade Mark Professional Representatives), and one trainee trade mark attorney.

The firm has extensive experience in obtaining registration of trade marks. Two of the firm’s attorneys are also qualified as solicitors and hold the TM Litigator Certificate. Members of the trade mark team belong to a number of trade mark organisations including ITMA, INTA, ECTA, PTMG and FICPI. Currently, J A Kemp & Co has about 50,000 trade marks under management, and is involved in excess of one hundred trade mark opposition, revocation and invalidity proceedings.

The firm has considerable experience handling all aspects of trade mark protection in the UK, Europe and worldwide, including in relation to: • Trade mark selection and strategy, • Filing and prosecution of trade mark applications before the national UK Intellectual Property Office (UKIPO), the European Community Trade Mark & Design Office (OHIM) and the World Intellectual Property Office (WIPO) in respect of international applications under the Madrid Protocol, • Instructing the filing and prosecution of trade mark applications widely throughout the rest of the world, • Opposing and defending trade mark applications.

Clients of the firm vary from individuals to multinationals including many household names, such as: adidas, Denso, Hershey’s, j2 Global Communications, Inc., J.K.Rowling, lastminute. com, Mercer (US) Inc, Reebok Company Ltd, Regeneron Pharmaceuticals, Inc, Seiko, Taylor Made Golf, W.R. Grace & Co. and Yeo Valley Organic. Additionally, J A Kemp & Co has a large client base of US and foreign law firms through whom many other corporations are represented.

J A Kemp & Co distinguishes itself from other competitors due to: • An enthusiastic team of trade mark attorneys with a well-developed commercial approach, • Industry expertise, top quality work, reliability, • Approachability and flexibility to adapt to clients’ needs, • Competitive fee structures providing value for money.

As a leading firm of patent and trade mark attorneys Wynne-Jones excels in the provision of IP consultancy by means of a personally tailored service that identifies and satisfies individual client needs.

Victor Caddy, a partner with the firm, explained that a client focused approach, teamed with a proactive & responsive business ethos are what set the firm apart from the rest, allowing it to develop an excellent reputation locally, nationally and internationally.

“We have a broad client base which includes leading multinationals, universities, government organisations, SMEs and individuals,” said Mr Caddy. “As well as being actively involved in obtaining and enforcing intellectual property rights in the UK, we have an extensive overseas network of selected attorney associates, through whom we file, prosecute and enforce patents, trade marks and registered designs worldwide.”

Services of Wynne-Jones include: international protection, maintenance and renewal of IP rights, IP portfolio audits and management, IP acquisition services, domain name disputes, searching and watching services, and the resolution of IP disputes.

They cover the entire life cycle of IP, from the birth of an idea, technology or brand, through maintenance and enforcement, to commercialisation, whether this be in the UK, Europe or worldwide.

“We are not a large firm and therefore we are able to provide a personal level of service for each client matched to their particular needs,” noted Mr Caddy. “This may take the form of being on call whenever required for immediate advice, or adopting a more ‘hands on’ approach with more integration into a company’s internal operations, for example by attending in-house meetings, conducting IP and technology audits or providing training sessions.”

Wynne-Jones has been formally represented at INTA since the year 2000, but individual partners have been regular attendees for more than twenty years. INTA is seen as the single most important professional meeting and networking event in the calendar, and was this year supported by no fewer than three partners from Wynne-Jones.

“It also gave us an opportunity to showcase our new European initiative: alongside partner firms from France, Germany and the Netherlands, we have joined together to form AIPEX, a pan-European IP alliance, designed to offer a ‘one stop shop’ for entry to Europe from the Far East and US markets,” concluded Mr Caddy.

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PAKHARENKO & PARTNERS

UKRAINE

Dr. Antonina Pakharenko-Anderson - Managing Partner

T: +380 (44) 593 96 93 pakharenko@pakharenko.kiev.ua www.pakharenko.com

Pakharenko & Partners is a general law firm with a particular focus on intellectual property. With offices in Kiev and London, Pakharenko & Partners also provides similar services in other countries, particularly in the states of the former Soviet Union.

The firm offers registration of all IP rights and the following services: - Consultations on registrability of IP rights, - All types of IP searches, - Drafting applications, - Filing applications, - Payment of annuities, - Drafting and registration of license and assignment agreements, providing legal opinions on their content, - Filing objections and appeals, - Providing legal advice on commercialization of IPRs, - IP Litigation.

Lawyers at Pakharenko & Partners represent clients before civil, administrative and commercial courts in cancellation actions and IPR infringement cases. The firm is also active in introducing ADR, particularly mediation, in legal actions.

Pakharenko & Partners distinguishes itself by providing a full range of anti-counterfeiting and anti-piracy measures. “We were at the forefront of anti-counterfeiting and anti-piracy activities since the implementation of IPR enforcement provisions in Ukrainian law in 2001,” said managing partner, Dr. Antonina Pakharenko-Anderson. “This allowed us to build up a significant experience on both strategy and operational levels working for representatives of many different industries. We also organise a number of training sessions for law enforcement (customs and police) on behalf of rights holders from various industries.”

IP specialists at Pakharenko & Partners come from various technical fields. Lawyers at the firm have experience in working with judicial bodies and at governmental agencies, particularly at the Patent Office. The team also includes lawyers experienced as corporate in-house counsels. This combination of diverse experience and perspectives allows the team to serve its clients’ various needs and work with them to meet their objectives.

“We are also closely co-operating with governmental agencies in the IPR field, as well as with enforcement authorities by providing consultancy support and training on a number of IPR issues,” added Dr. Pakharenko-Anderson.

“WE WERE AT THE FOREFRONT OF ANTI-COUNTERFEITING AND ANTI-PIRACY ACTIVITIES SINCE THE IMPLEMENTATION OF IPR ENFORCEMENT PROVISIONS IN UKRAINIAN LAW IN 2001.”

- PAKHARENKO & PARTNERS

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AFRICA & THE MIDDLE EAST 26 Cameroon - Cabinet ISIS Conseils (SCP) 26 Ghana - Fugar & Company 26 Israel - Luzzatto & Luzzatto

27 Mauritius - De Comarmond & Koenig (International) 27 Nigeria - David Garrick, Kayode & Co. 27 Nigeria - Agabi, Shinaba, Ogon & Co.

Until 1962, patent rights in the majority of francophone states were governed by French laws. The French National Patent Rights Institute (INPI) was the National Authority for each of these states, then grouped within the French Union (Union Française). The majority of the French Union member countries became independent in 1960 and found it necessary to create a body of their common territory, in respect of conventions on patent rights.

This creation found its legal justification in article 19 of the Paris Convention for the protection of

patent rights, which states that countries, which are signatories to this convention, serve the right to undertake separately among themselves, specific agreements for the protection of patent rights, so long as these arrangements are not in contradiction with the provisions of the said convention.

28 Nigeria - Aluko & Oyebode 28 Qatar- Alpha & Co. IP 28 Saudi Arabia - Al-Soaib Law Firm

It is on the basis of this provision that 12 African countries together decided to create a single body to act

as the national patent rights authority for each of them. The African and Malagasy Patent Rights Authority (OAMPI) was thus born on 13th September 1962 by the agreement known as the ‘Libreville Agreement’.

The conditions of the Libreville Agreement were based on three fundamental principles: 29 South Africa- Bouwers Inc. 29 South Africa - Ron Wheeldon Attorneys

• The adoption of a uniform legislation by the putting in place and application of common administrative procedures resulting from a uniform system of patent rights protection.

• The creation of a common authority, as the organisation serves as a national patent rights protection department, for each of the member states.

• The centralisation of procedures, as the existence of a uniform legislation and of a common authority naturally created for the centralizations of procedures such that a single title issued comprised as many independent national rights as member countries.

The Libreville Agreement covers the territories of African countries of French expression and culture.

The items covered by the Libreville Agreement were patents, trademarks or trade names and

industrial drawings or models. The need for a larger integration brought the founding states to

revise the Libreville Agreement and to create the African Intellectual Property Organization (OAPI) by the adoption of a new convention signed in Bangui on 2nd March 1977.

The Bangui Agreement, revising the Libreville Agreement, legislates patent rights in each of the 16

member states which now make up the OAPI territory.

To date, the OAPI territory covers a surface area of 7.755.967 km square and has about 100

million Inhabitants African Regional Intellectual Property Organisation (ARIPO) membership is open to member states of the United Nations Economic Commission for Africa or the African Union (AU). There are currently sixteen states which are members of ARIPO. These are

Botswana, the Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.

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CABINET ISIS

CAMEROON

Christian Dudieu Djomga - Partner T: +237 22 00 27 52 cdjomga@cabinetisis.com www.cabinetisis.com

Cabinet ISIS is a civil professional firm of industrial property lawyers and counsels. It is the brainchild of Christian Dudieu Djomga, Isidore Youmbi Nguena and Judith Samantha Tchimmoe Fezeu who were driven by the urge to create a modern and dynamic structure that responds closely to the needs of its clients in West, Central Africa and in the African Intellectual Property Organization (OAPI) area.

Cabinet ISIS assists and counsels clients through every stage of business – during set-up and during day-to-day activities. It also secures contracts, intellectual property assets, trade negotiations and partnership agreements, to name but a few.

With regard to intellectual property law, ISIS provides services related to trademarks, patents, industrial designs and models, geographic origin indicators, domain names, copyright, information rights, know-how (topography, plant extracts) software, and utility models.

Further, ISIS partners and consultants have recognised competence in cracking knotty legal questions, especially disputes and objections, technology transfers, licensing contracts, counterfeiting and piracy, and unfair competition. This expertise – on which ISIS partners and consultants have made a name and which has bailed clients out of often difficult situations – may be applied in all areas of intellectual property and business law.

ISIS also has necessary know-how to audit industrial property rights and help its clients assess their own portfolios. A special service liaises with its consultants to treat the sometimes delicate issue of registering the transfer of rights both within the OAPI area and abroad.

Cabinet ISIS has its face set resolutely towards international affairs. Although it is predominantly French speaking, the firm handles English language case files, even drafting letters, findings and other documents in this language. The opening of two offices in Ghana and The Democratic Republic of Congo is evidence of this international openness.

Proactive, versatile and mobile, Cabinet ISIS is the ideal law firm to advise foreign businesses having economic interests in West and Central Africa and within the OAPI area. It also represents them before the courts, faithfully reporting to them on a minute by minute basis.

FUGAR & COMPANY

GHANA

W. E. Fugar - Partner T: +233 302 679222/ 679231 / 679220 ip@fugarandco.com www.fugarandcompany.com

Fugar & Company is one of the leading law firms in Ghana. Acting as both solicitors and barristers, it is committed to delivering high quality, cost-effective legal services to its clientele, which includes multinational and local corporations of all sizes, industries, financial institutions, trusts, estates, public utilities, enterprises, families and individuals.

The practice areas of the firm are categorised into departments: • Group A – Corporate Finance & securities, Investment Law, Immigration, Taxation, Energy & Oil & Natural Resources Law, Environmental Law, Telecommunications Law. • Group B – Company & Commercial Law, Industrial Relations, Intellectual Property (IP), Banking & Finance and Privatization & Divestiture.

• Group C – Property law and Conveyancing, Administration of Estates & Probates, Family Law, Litigation/Dispute Resolution and Construction Law. • Group D – Company Secretarial Practice.

With the growing public awareness of IP rights, there is a renewed drive by the government to eliminate piracy of copyrights, patents and trademarks. Fugar & Co. in recent times has seen a considerable expansion in its IP law practice, offering comprehensive services ranging from advisory, transactional and litigation services connected with the evaluation, protection and effective exploitation and enforcement of IP rights in Ghana.

The firm’s IP team is one of the best in the country. Its experience has been in advising both local and foreign clients on how to enforce and protect their IP rights, and register trademarks, patents and designs. The firm also represents clients in contentious matters pertaining to copyright and trademark infringements as well as passing off actions. It has been conducting litigation for clients concerning copyright infringements, representing clients in arbitration proceedings conducted by the Copyright Office as well as advising clients in Ghanaian IP laws.

“At Fugar & Co.,” said partner W. E. Fugar, “our aim is to empower our clients with knowledge and understanding of IP rights to enable them to feel comfortable not just with expressing their creations but also advising them on which IP rights will protect their expressions.

We provide follow up services through research and searches mechanisms catering for their specific needs and concerns.”

LUZZATTO & LUZZATTO

ISRAEL

Dr. Kfir Luzzatto - Managing Partner T: +972 73 2262626 mail@luzzatto.co.il www.luzzatto.co.il

Luzatto & Luzatto (L&L) is one of Israelʼs leading intellectual property specialists with expertise in all aspects of patents, trademarks and design.

L&L engages in the full range of patent work including patent drafting, prosecution, cancellations, opinions, and literature searches with a special focus on litigation and due diligence.

The firm’s client list includes many of the world’s best-known multinational corporations and brand names as well as individual entrepreneurs and leading companies in Israel.

With Luzzatto & Luzzatto the high level of its technical and administrative staff is a top priority. Every professional employee at the firm is a university graduate. Most of them hold Ph.D. degrees in specific technological fields such as physics, chemistry and biology. Many of the employees are electronic engineers, telecommunication engineers and computer experts. The diverse technological and legal background of the employees helped creating L&L reputation as a firm capable of securing patents in any field.

“THE FIRMʼS CLIENT LIST INCLUDES MANY OF THE WORLDʼS BEST-KNOWN MULTINATIONAL CORPORATIONS AND BRAND NAMES AS WELL AS INDIVIDUAL ENTREPRENEURS AND LEADING COMPANIES IN ISRAEL.” The firm is involved in many legal proceedings in the field of intellectual property in Israel and around the world. It took part in due diligence processes of famous acquisitions of Israeli high-tech companies by foreign companies. In addition, the firm has wide practical experience, both in Israel and abroad, in oppositions, revocations, compulsory license proceedings, infringement claims, etc.

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DE COMARMOND & KOENIG (INTERNATIONAL)

MAURITIUS

Thierry Koenig - Senior Attorney T: +230 212 2215 ckinternational@ckmauritius.com www.ckmauritius.com

De Comarmond & Koenig is the oldest firm of attorneys in Mauritius. It is the successor of Etude Leclézio which dates back to 1828. It still has the largest practice in the country and regularly acts for international corporations. The firm is engaged in the general practice of law with particular emphasis on corporate and commercial law, litigation, insolvency and intellectual property.

The work in the field of intellectual property is

DAVID GARRICK, KAYODE & CO.

AGABI, SHINABA, OGON & CO

NIGERIA

NIGERIA

Olugboyega Kayode - Managing Partner T: +234 1 7361902, 7361989 contact@garkaylaw.com | www.garkaylaw.com

Ekpe Asuquo - Partner T: +234 01 8714367, +234 07025376800 info@agashog.com, ekpeasuquo@agashog.com www.agashog.com

DAVID GARRICK, KAYODE & Co. is a commercial law firm established over 50 years ago with offices in Lagos and Abuja, Nigeria. The firmʼs practice areas include Intellectual Property Law, Corporate/Commercial Law, Tax, Shipping & Admiralty Law, Oil & Gas, Real Estate and General Litigation. The firm is, however, mainly known for its unrivalled expertise in Intellectual Property Law for which it has won several awards from international rating agencies worldwide.

Agabi, Shinaba, Ogon & Co. is one of the Nigerian leading IP law firms established in 1993. By its commitment to quality services, it has built up a reputation as a trustworthy firm with the ability to deliver results to its clients with professionalism.

Its service capabilities in IP extend beyond

handling contentious matters to also providing clients with the necessary resources

required for efficient cross- border service, portfolio management, perfection and en-

performed under the name of De Comarmond &

The firm’s practice is focused on the Nigerian

active and fast growing IP management practices

in protecting and maintaining their intellectual

firm handles a lot of trademarks infringement

supported by a dedicated formalities team.

work of associates. Clients of the firm include

positions at the Trademarks Registry.

offering a one stop advice that covers all aspects

in all sectors of the economy.

in Africa with over 150,000,000 people,

paralegals with expert knowledge in the field and

ness among its entrepreneurs and growing

“Membership of international associations has

trademarks and other IP related rights. A

Koenig (International). It is one of Mauritius most

jurisdiction but it assists clients and associates

forcement of their intellectual property. The

with qualified patent & trademark attorneys and

rights in other African countries through its net-

cases prevalent in the market as well as op-

The firm has a strong reputation in the IP field

of contentious and non-contentious work advising

on the maintenance, prosecution, exploitation and enforcement of intellectual property.

ʻTHE FIRM HAS A STRONG REPUTATION IN THE IP FIELD OFFERING A ONE STOP ADVICE THAT COVERS ALL ASPECTS OF CONTENTIOUS AND NONCONTENTIOUS WORK ADVISING ON THE MAINTENANCE, PROSECUTION, EXPLOITATION AND ENFORCEMENT OF INTELLECTUAL PROPERTY.ʼ The firm offers a high quality service covering all areas of IP work from advising upon

the availability of new marks, filing of patents,

designs, trademarks and copyrights and prosecuting the subsequent applications, through

to initiating and pursuing enforcement actions.

Furthermore, the firm carries out such activities as the protection of trademarks at the customs level for border protection.

De Comarmond & Koenig (International) is one

of the leading independent IP law firms in Mauritius.

local and multinational corporations with interest

Nigeria, being the most populous country

has demonstrated an increasing aware-

The firm’s IP team comprises attorneys and

who are members of international IP associations.

businesses for the need to protect their

been a great advantage to our team,” noted man-

high influx of multinational investors into the

aging partner Olugboyega Kayode, “as they have

country as well as an increase in IP con-

up-to-date knowledge on current developments in IP. This has enabled us to offer commercially and

nected litigations is also notable.

legally sound legal advice to our clients in Nigeria.”

DAVID GARRICK, KAYODE & Co. has been

a member of the International Trademark

Association for over 30 years. Membership of

INTA has enabled attorneys at the firm to build a network of associates around the world. The

network has been a source of great assistance in work exchange with associates from other

jurisdiction. “The training programmes of INTA

has also been of tremendous assistance to our staff as it exposes them to the latest trends in the IP world,” added Mr Kayode.

He believes that companies are increasingly

becoming aware of the importance of IP to

their overall success and are therefore proac-

The firm’s strength, however, includes, but

is not limited to, civil litigation and the efficient

management of IP portfolio. The cutting edge positions taken by the firm in contentious IP

civil cases have led to the development of IP

case laws in Nigeria. In fact, difficult IP cases are usually referred to the firm by other law firms in Nigeria. The firm has just recently

won one of the biggest awards of damages

of over N1.2bNaira in a case against one of

the leading pharmaceutical companies in the

world, GlaxoSmithKline (GSK) N1.2b (equivalent to $8,000,000 USD).

Agabi, Shinaba, Ogon & Co has been

a member of INTA since 2005 and has

tive in protecting their IP rights in Nigeria. It is

benefited tremendously from this. The firm

establish commercial interest in Nigeria to first

internationally thus keeping abreast of IP de-

country. This will prevent bad faith registration

of participating in INTA programmes and

be costly and time-consuming to retrieve.

ing developments in this area of law practice.

necessary for companies intending to trade or

registered with INTA to expand its IP practice

protect their intellectual property rights in the

velopments around the globe. Several years

of their trade marks by third parties which may

activities have exposed the firm to the evolv-

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ALUKO & OYEBODE

NIGERIA

Uche Nwokocha - Partner T: +234 1 4628360 | M: +234 8066803387 uche.nwokocha@aluko-oyebode.com www.aluko-oyebode.com

Aluko & Oyebode is a leading and full service international practice that provides timely and solution driven services to its clients across key markets in Europe, Asia, Sub-Saharan Africa and North and South America. The law firm was recently rated the Nigerian Law Firm of the Year.

Aluko & Oyebode represents a broad range

of multi-national and local manufacturing and corporate concerns. The firm’s intellectual

property practice consists of qualified and educated lawyers who have extensive experience

in the field of intellectual property. The lawyers are members of the International Trademark

Association, Anti-Counterfeiting Group (ACG), IP Committee of the section on Business of

the NBA, AIPPI, and the Licensing Executives

Society (LES). The practice also holds membership of the Intellectual Property Law Association of Nigeria, a pressure group at the forefront of the protection of Intellectual Property (IPLAN) proprietary rights in Nigeria.

The firm’s Intellectual Property Law Depart-

ment continues to increase in size and volume.

Aluko & Oyebode has received a record number of legal instructions from clients and partner law

firms all over the world in recent months, and the firm’s relationship with network and partner firms has also increased throughout the world.

In regards to IP, Aluko & Oyebode advises

and assists clients with clearance searches,

ALPHA & CO. IP

QATAR

Hussain Al Obaidly - Managing Director T: +974 44415275 alphatmp@qatar.net.qa www.alphatmp.com

Headquartered in the State of Qatar, a nation which has been one of the top-tier economies of the world in the last few years and the nation which has won the rights to host FIFA 2022, Alpha & Co. IP has its vast networks all across the world to facilitate its valued clients in the arena of intellectual property protection and enforcement.

Alpha & Co. IP, one of the premier IP service pro-

viders in GCC world, was established by Mr Hussain Al Obaidly in the year 1994. These were the

times when intellectual property field was still in its early days in the region. However, with its vision for the future, mission to reach out clients in an

efficient manner and commitment to excellence, Alpha has now established itself as one of the

leading and most reliable IP agents in the region.

Alpha’s hallmark has been its adaptability to

times and situation and with this flexibility the firm has braced up for newer challenges and sterner

tests. Being a pioneer firm in the intellectual prop-

erty protection and enforcement arena, Alpha has closely associated and immensely contributed to protecting the trade interests of global clients.

“Our qualified and experienced work force

ably led by capable management has helped

us emerge head and shoulder above the rest,” said Mr Al Obaidly. “Over the years Alpha has become fully-equipped with vast resources

manned with attorneys and consultants who are

protection, use and enforcement of trademarks,

experts in all aspects of intellectual property pro-

licensing, technology transfer (Interface with the

in all the GCC (Qatar, Bahrain, UAE, Oman,

Promotion), franchising, media law, packaging,

Egypt and our associate offices spread across

ments and product registration with the national

and sought-after IP service providers across the

copyright, patents, design and trade secrets,

tection and enforcement. With our own offices

National Office for Technology Acquisition and

Kuwait & Saudi Arabia) countries along with

labelling, manufacturing and distribution agree-

the globe, we have become one of the prime

agency for Food and Drug Administration and

length and breadth of the Arab world.”

Control (NAFDAC).

The firm is poised in its commitment to contin-

Mr Al Obaidly concluded: “Our gamut of prac-

tice has grown over the years owing to our abil-

ue to provide the best services for its clients all

ity to adapt to the ever-changing needs of our

law practice in Nigeria and Sub-Saharan Africa

having any prejudice to normal ones is our part

over the world and lead the intellectual property

clients. Special attention to urgent cases without

by building on the successes recorded in the

of functioning and our stringent adherence to the

past and preparing for the future in all genres of intellectual property law.

ethics of work has helped us grow by leaps and bounds among all our contemporaries.”

A-SOAIB LAW FIRM

SAUDI ARABIA

Johnson Samuel - Legal Consultant T: +966 1 472 6362 john@soaiblaw.com www.soaiblaw.com

A-Soaib is a leading established law firm in the Kingdom of Saudi Arabia. Over the years it has evolved into providing a comprehensive range of services to a broad scope of clients from private individuals to the largest multinationals.

A-Soaib is an international law firm with a vision of the future. The firm understands what clients need today and tomorrow. Its practitioners have recognised that the marketplace is changing, and they are focusing on creative and cost-effective solutions that ensure their clients receive the best service at the best price. It is an approach that makes A-Soaib such an innovative force in the legal world.

One of the firm’s priorities is to always provide up-to-date legal advice taking systematically into account the most recent legislative and economic developments in Saudi Arabia and the neighbouring countries.

In the Middle East Al-Soaib Law Firm is joining hands with MENA Associates (offices in Cairo, Dubai, Baghdad, Damascus and Munich, Germany). In Saudi Arabia the firm is cooperating closely with a major UK accountant firm. Most recently, an association has been launched between Al-Soaib Law Firm and ARSA, one of the leading firms of Malaysia. The affiliation of the law firm of Gustav Hamlescher in Stuttgart enables Al-Soaib Law Firm to assist and represent Arab clients in Germany.

Al-Soaib Law Firm also maintains close and privileged relationships with ministries, governmental agencies, chambers of commerce and other public institutions as well as with embassies and foreign investment and trade missions. Al-Soaib Law Firm is one of the ten ‘cooperation firms’ of the Saudi Arabian General Investment Authority (SAGIA).

Johnson Samuel Mavilayil joined Al-Soaib Law Firm in October 2008 as a legal consultant. He is the authorised person for the registration of trade marks and patents. His fields of specialization are corporate and foreign investment matter as well as the intellectual property practice of the firm. He is a member of two Indian Bar Associations, and of the National Indian Trademark Office.

Apart from intellectual property, Al-Soaib Law Firm offers services in the following areas: Banking, Capital Markets, International Dispute Resolution, Finance, Islamic Finance, Real Estate, Public International Law, Corporate, Company Registration, International Trade, Project Finance, Mergers & Acquisitions, and Oil & Gas.

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BOUWERS INC.

SOUTH AFRICA

Deon Bouwer - Trademark Attorney T: +27 11 325 5530 info@bouwers.co.za www.bouwers.co.za

Bouwers Inc. is boutique law firm and has established itself as a leading South African intellectual property law firm, specialising in the protection, enforcement and management of a wide range of intellectual property rights.

“Our services are highly personal, resulting from direct and historic involvement and representation of client,” said trademark attorney at the firm, Deon Bouwer.

Bouwers further follows a client dedicated approach and limits its representation to one client per industry only. “This ensures that we are not faced with any conflicts, which provides clients with a guarantee of continuity in all matters,” commented Mr Bouwer.

Such as other firms, Bouwers employs specialists in the filed of intellectual property matters. Bouwers distinguishes itself from other IP firm, specifically in its ability to provide IP advice in the commercialistion and taxation of IP. Moreover, Bouwers has not only had major success in 2010-11 in attracting new multinational companies and the owners of well-known trade marks as clients but has also been highly active in various litigious matters in South Africa and throughout the world. Clients of the firm include Philip Morris Products, Unilever, Kellogg Company, Kraft/ Cadbury, Adcock Ingram, Andritz AG, Nando’s International, Invensys Plc, Gijima/ GMSI and Mpact Ltd. Bouwers’ ability to provide cross-border IP services has been strongly assisted by the firm’s presence in INTA. Mr Bouwer said: “Membership of INTA provides not only the ideal forum for co-operation with other leading IP throughout the world, but also renders legitimacy to any IP practice. Membership of INTA also provides valuable source documents and information.”

When asked about the level of awareness with regard to IP, Mr Bouwer noted that, similar to other jurisdictions, companies in South Africa are highly conscious of protecting and enforcing their intellectual property rights. “If anything, companies has recently increasingly objected to any attempt to exploit their intellectual property, whether trade marks or otherwise,” he said.

RON WHEELDON ATTORNEYS/BRANDSMAN

SOUTH AFRICA

Ron Wheeldon T: +27116466666 ron@brands-man.com www.brands-man.com

The firm of Ron Wheeldon Attorneys/Brandsman aims to provide clear, concise and practical advice, which is expressed in unambiguous terms. It is due to the fact practitioners at the firm believe that most business people who consult them want crisp answers to their questions, answers they can be confident about relying upon.

Ron Wheeldon, founding partner of the firm,

is an acknowledged expert in trade mark and copyright law and has an ability to predict,

usually with accuracy, what the outcome of a particular dispute would be in the courts.

Having practiced in South Africa for some 29 years now, and having appeared to argue

matters in the High Court on numerous occasions, he has the confidence to give straight answers and stand by them.

He is supported by Stephen Bruce Brand,

a trade mark paralegal of some 14 years

experience who has exceptional administrative skills, Ann Edwards, an effective office manager, and three young lawyers, one of whom is fluent in Portuguese.

Ron Wheeldon has provided international IP

services, including management of interna-

tional client portfolios, for more than 25 years.

He is au fait with most IP laws on the African continent and has a strong grasp of interna-

tional issues, having been active in INTA and

BNEF committees, including serving as a chair and co-chair of such committees and sub-

committees. For the last 10 years he has been a member of South Africa’s Standing Advisory

Committee on Intellectual Property Law (“SACIP”), and is chairperson of the trade mark law sub-committee of SAC-IP.

Mr Wheeldon mentioned that apart from its

legal services, there is another feature that

“We like to encourage clients and colleagues to visit South Africa which is one of the finest destinations in the world at the moment.”

distinguishes his firm from competitors.

He explained: “We like to encourage clients

and colleagues to visit South Africa which is

one of the finest destinations in the world at the

moment. Also some of our colleagues have had an experience of a lifetime with us - a flight in a two seat transonic jet fighter, a Hawker Hunter.

This, of course, is not for everyone, but is a bit

- RON WHEELDON ATTORNEYS/BRANDSMAN

out of the ordinary.”

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ASIA & OCEANIA 31 AUSTRALIA - CULLENS 31 AUSTRALIA - HOLMANN WEBB 31 CHINA - GOLDEN GATE LAWYERS 32 CHINA - WATSON & BAND 32 CHINA - BEIJING LAWCONSTANT LLP 32 INDIA - LEX ORBIS IP PRACTICE 33 INDIA - AZB & PARTNERS 33 INDIA - S.S. RANA 33 INDIA - MULLA & MULLA & CRAIGIE BLUNT & CAROE 34 INDONESIA - CITA CITRAWINDA NOERHADI & ASSOCIATES 34 INDONESIA - GENERAL PATENT INTERNATIONAL 35 PHILIPPINES - SYCIP SALAZAR HERNANDEZ & GATMAITAN 35 PHILIPPINES - CASTILLO LAMAN TAN PANTALEON & SAN JOSE 35 PHILIPPINES - SAPALO VELEZ BUNDANG & BULILAN 36 SINGAPORE - YU SARN AUDREY & PARTNERS 36 SINGAPORE - ALPHA & OMEGA LAW CORPORATION 36 SINGAPORE - AMICA LAW 37 SINGAPORE - HSLEGAL LLP 37 TURKEY - GUR LAW & IP FIRM

In the past, Asia has been a site of numerous contestations over IP as it is home to a variety of countries at different stages of economic development and levels of openness to IP reform, despite pressures from multilateral trading systems and the USTR to standardise and harmonise national IP legislations with global requirements.

In the past, Asia has been a site of numerous contestations over IP as it is home to a variety of countries at different stages of economic development and levels of openness to IP reform, despite pressures from multilateral trading systems and the USTR to standardise and harmonise national IP legislations with global requirements.

However, with most Asian countries having signed on to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and become members of the WTO, the current situation is slightly different. Although TRIPS has created a disconnect between the IP laws of non-industrial, developing countries and their social and economic conditions, since TRIPS did not emanate from the willingness or determination of these countries for forms of IP protection adequate for their needs, these countries are now obliged to ensure that their national legislations are in conformity with the minimum standards set by TRIPS. They are also required to enforce IP laws in accordance with global standards.

“As the relative value of intellectual property increases, Asian businesses are beginning to recognise the importance of protecting IP and are taking infringement issues more seriously.”

As the relative value of intellectual property increases, Asian businesses are beginning to recognise the importance of protecting IP and are taking infringement issues more seriously. In addition to this, government agencies are realising the importance of IP and the role it plays in economic development, with many establishing bilateral agreements. Most recently, economic ministers from Japan and China have established a working group to protect IP rights as part of an attempt to strengthen economic links during the recession.

Japanese minister of economy, trade and industry Toshihiro Nikai and Chinese commerce minister Chen Deming signed a memorandum of understanding in June this year to set up a group that will meet once a year.

30 ASIA & OCEANIA

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CULLENS PATENT AND TRADE MARK ATTORNEYS

AUSTRALIA

Gary Nock - Partner T: +61 7 3011 5555 g.nock@cullens.com.au www.cullens.com.au

Founded in 1936, Cullens Patent and Trade Mark Attorneys is one of Australiaʼs leading firms of patent and trade mark attorneys with offices in Brisbane, Gold Coast and Townsville. Cullens acts for a wide range of clients, from sole traders and small businesses, to some of Australiaʼs leading companies. The firm is also a preferred Australian agent for foreign associates.

For over 75 years, clients of the firm have trusted it to provide advice and guidance in all aspects of trade mark protection and risk management, including providing registrability and freedom to operate advice, filing and prosecuting trade mark applications, managing oppositions and other contested IP disputes, enforcement of IP rights, and trade mark portfolio management.

Cullens specialist trade mark professionals represent clients directly in Australia and New Zealand. The firm also handles trade mark matters in many other countries and actively manages large international trade mark portfolios.

Australia is a member of the Madrid Protocol and practitioners at Cullens are adept at resolving provisional refusals raised by the Australian Trade Marks Office swiftly and beneficially for their clients.

“We appreciate that, in the current global economy, service providers are under increasing pressure to offer competitive rates for their work,” said partner Gary Nock. “At Cullens, we take pride in the fact that our clients appreciate the value for money that we offer them as an experienced and service oriented business.”

In addition to extensive trade mark expertise, the specialist patent attorneys in the Cullens team handle patent applications in a wide range of technologies. Many of the firm’s attorneys gained significant practical experience in their technical specialities prior to joining Cullens, providing the firm with a unique understanding of clients’ businesses.

Cullens has long been a supporter of INTA, and members of the team regularly attend INTA functions and meetings. Mr Nock commented: “Such INTA meetings provide an opportunity for us to keep in personal contact with our international clients and associates, and to keep abreast of current issues in the trade mark community.”

HOLMAN WEBB

AUSTRALIA

GOLDENGATE LAWYERS

CHINA

Linda Zhao - Partner T: +86 10 5870 2028 Lzhao@Goldengatelawyers.com www.goldengatelawyers.com

Dermot Maxwell - Partner T: +61 2 9390 8304 dermot.maxwell@holmanwebb.com.au www.holmanwebb.com.au

Holman Webbʼs work safeguarding the intellectual property rights of business has developed, particularly over the past two decades, as markets have become more integrated on an international stage.

There have been shifts from traditional research and development activities (once located in home countries) to the expansion and search for new technological competitive advantage outside local markets, with clients from Australia and abroad.

GoldenGate Lawyers is able to provide a very personal, one-on-one counselling approach, enabling the firm to offer appropriate advice and implement the most effective strategies for the IP industry. The IP expertise of GoldenGate Lawyers, supported by experienced commercial attorneys and litigators, enables the firm to implement all types of measures and instruments available and suitable to each file.

The firm has offices in Sydney, Melbourne and Brisbane and has accumulated over 50 years experience as top-tier providers of legal services.

Clients of Holman Webb include major national and multinational corporations and SMEs, operating in a range of industries. The firm develops long term client relationships many of which span 20 to 30 years, and it has affiliates in Europe, the United States, Asia and the Pacific region.

Practitioners at the firm know how to protect and make the most of intellectual property rights with a focus on providing commercial solutions that use their extensive experience in protecting registered and common law trademarks as the intellectual property of a business operation.

They also extend those services to include the commercialisation of intellectual property by licence agreements and sales arrangements.

The firm’s IP team is led by Dermot Maxwell, a partner with over 25 years experience. Dermot has advised on proposed trademarks, the prospects for registration and scoped out potential pitfalls at the examination stage of an application. He offers advice and prosecutes trademark applications for a broad range of business interests that range from one-off applications from small enterprises to larger matters involving major public international companies.

Dermot has also been at the heart of resolving conflicts between competitors that includes appeals to the registrar of trade marks (with advice on stamp duty issues), as well as conducting infringement litigation in the Federal Court at both an interlocutory stage and by pursuing matters through to a final decision at a hearing.

Along with resolving many disputes involving mediation, arbitration and informal early dispute resolution techniques, Dermot has developed a speciality in dealing with risk and developing strategies for its minimisation in disputes involving intellectual property.

“We are capable of understanding client’s ultimate goal and business model. We offer tailor-made strategies, for different types of infringements, and a full package of solutions, rather than just focusing on a single issue or problem,” commented partner Linda Zhao.

The firm of GoldenGate Lawyers has received over the years many accolades, some of them including: - One of the Band 2 IP Leading Firms in China in 2011 by Chambers & Partners; - Being among the finalists of the Emerging Law Firm of the Year 2010 by Chambers & Partners; - One of the top 30 local IP firms by Managing IP from 2009-2011; - One of the top 10 Watchlist Firms for 2010 by ALB; - Being among the finalists of Rising Firms of the Year 2009 by ALB, and - Represented in one of the top 10 IP court cases of PRC in 2008.

Currently practitioners at GoldenGate Lawyers are working for clients such as Ritz-Carlton, Columbia Sportswear, Clarins, Spar, Havaianas, According to Ms Zhao, most infringers of the mark “Ritz” or “Ritz-Carlton” are hotels, sauna club or store. “They are all well-established and thus easy to locate.”

She added that infringement of Columbia Sportwears is a serious issue in China. “Investigation is a tough job, which shall be done with presence of notary public,” she explained. “We need to select some sample infringements as targets after investigation is done. AIC raid is highly recommended before taking civil actions.”

She continued: “However, for Havaianas, because most illegal domestic sales are done via the internet and overseas sales are made via import/export company, CD letters will be sent to the ISP and ICP, and those import/export companies will be pursued.

Hence, an in-depth understanding of all aspects of Chinese IP laws is fundamental and crucial.”

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WATSON & BAND LAW OFFICES

CHINA

George Q. Fu - Managing Partner T: +86 21 52921111; +86 21 63500777 mail@watson-band.com.cn www.watson-band.com.cn

Based in Shanghai, with branch offices and associate firms in Beijing, Harbin, Wuxi, Hangzhou, and Shenzhen, Watson & Band has grown into a full-service law firm with over 120 professionals around China. The firm takes the time to understand clientsʼ business needs and aims to be a strategic partner for each of the clients, leveraging its expertise and experience to provide innovative, responsive, and cost-effective legal solutions.

BEIJING LAWCONSTANT LLP

CHINA

Rainy Liu - Executive Manager T: +86 10 8454 9076

mail@lawconstant.com.cn | rainy@lawconstant.com.cn

www.lawconstant.com.cn

The firm of Beijing Lawconstant LLP helps clients in the protection and prosecution of their IP rights in China, including trademarks, patents, copyrights, domain names and Customs recordals, as well as anti-counterfeiting matters. The firm co-operates with the Administration for Industry and Commerce Office (AIC) in different cities in China, and always tries its best to provide the direct connection between the IP owners and the local AIC in China, which is good for the anti-counterfeiting matters.

Intellectual Property Service: Watson & Band

is a premier law firm in China authorised by the Chinese Administration Department to furnish

intellectual property related services for domestic

and international clients. The firm has established a detailed processing system to ensure the high

quality of its services in IPR prosecution. Having

successfully resolved many pressing questions affecting these growing industries, the firm provides clients with a full range of services to meet all of their intellectual property needs.

Corporate and Commercial Service: Watson &

Band has extensive experience in advising busi-

nesses on the legal issues concerning fund raising

and management in the process of privatising stateowned businesses. It further renders responsive,

high-quality, cost-effective and strategic advice on

investment, corporate restructuring, M&A, corporate and securities law compliance issues, and tackles

securities-related transactions, including public eq-

uity and debt offerings, capital transactions, private placements and other forms of private financing under China laws and regulations.

Litigation and Arbitration Service: Watson & Band

has an experienced professional litigation and

INDIA

Abhai Pandey - Partner T: +91 11 2371 6565 mail@lexorbis.com www.lexorbis.com

Lex Orbis is a niche IP boutique firm, based in New Delhi, that provides full IP services ranging from filing and prosecuting of IP applications, maintenance and enforcement of all IP rights. The firm specialises in all these IP services and has dedicated departments comprising leading IP lawyers, scientists and engineers working under one roof.

The firm’s patent filing and prosecution department is ranked amongst the Top 5 patent filers at Delhi Patent Office which receives about

As Rainy Liu, executive manager at the firm,

said, practitioners at Beijing Lawconstant are efficient, responsible and responsive. “All the

responses will be made within 24 hours no matter where the clients are located.”

The firm offers services of good legal and

commercial combination because it cares about clients’ legal and commercial interests. It also

monitors similar marks in the Chinese Trademark Gazette every week and reports them with legal

advice to the client within 48 hours free of charge.

“We are reasonable and flexible, especially

65% of the total patent applications in India. In addition to local filing and prosecution,the firm’s Trademark and Design departments handle global trademark and design portfolios for clients in over 150 countries. The firm’s Litigation and Enforcement department is involved in advising, strategising and conducting high stake patent, trademark and copyright litigation before various high courts, district courts and at the Intellectual Property Appellate Board in India.

Lex Orbis was set up as a partnership firm

for small size companies,” added Ms Liu. “If the

in 1997 by five legal professionals. In less

solution to keep our clients satisfied.”

tially. As on date Lex Orbis has over sixty

co-works with other members with regard to its

twenty four legal and technical associates,

budget is tight, that is fine; we will always find a As a member of INTA Beijing Lawconstant

than a decade the firm has grown exponenpersonnel: six partners, five senior associates,

Chinese clients’ IP matters in the world. “We are

twenty paralegal staff and other staff.

with overseas firms,” said Ms Liu.

that pioneered the multidisciplinary patent practice

always seeking to build reciprocal relationships She also emphasised she would recommend

INTA membership to other firms because it is a good and quick way to find the right person and firm one

arbitration team, which includes former judges, senior

needs for clients’ IP matters in other jurisdictions.

members work closely with other groups to execute

as advanced as in other, more developed coun-

lawyers, IPR experts and law professors. Team

LEX ORBIS IP PRACTICE

Ms Liu noted that IP protection in China is not

Lex Orbis can be differentiated as an IP law firm in India with a synergistic combination of legal, science and technology experts. It is a professional partnership with well-defined business continuity management and soon to be ISO 27001 compliant in terms of security standards.

Lex Orbis is equipped to meet client specific

a well-designed litigation strategy to protect the legal

tries. For instance, the lack of use of the mark

represented clients in many landmark litigations and

Moreover, foreign registrations are not quite

ment case between foreign entities and China’s first

Trademark Office in the prosecution procedure.

patent/trademark application and integrating

the unprecedented nature of many cases the firm’s

in China should approach Beijing Lawconstant

helping clients devise strategies to work around

to get a clear, optional, and executable piece of

prosecution with cost-effective and timely ser-

precedents for future rulings in many areas of the law.

advice regarding all IP related matters.

vices without compromising on quality.

requirements by matching dedicated attorneys

rights and interests of their clients. The team has

is a disadvantage when the mark is challenged.

arbitrations, including China’s first patent infringe-

helpful and thus not considered by the Chinese

record of taking over large volumes of pending

Ms Liu pointed out that all foreign investors

them with Lex Orbis Service Standards thereby

well-known trademark recognition case. Because of members have worked on, they have been able to set

to individual clients. The firm has a proven track

32 ASIA & OCEANIA

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AZB & PARTNERS

INDIA

Nandan Pendsey - Senior Associate T: +91 22 6639 6680 Nandan.pendsey@azbpartners.com

AZB & Partners handles a wide range of intellectual property matters for varied clientele including Fortune 500 companies, and covers a broad spectrum of industries such as FMCG, engineering, media, entertainment & broadcasting, apparel, IT and telecommunication, banking and finance, pharmaceutical, health care, food & beverages, hospitality etc.

The firm’s IP practice group counsels a wide range of clients on how to develop, register, safeguard and enforce their valuable intellectual property portfolio ranging from trademarks, domain names, patents, copyrights, designs to confidential information.

AZB & Partners handles and manages trademark, copyright and design portfolios for clients and provides opinions on registrability. The firm has a good working relationship with several investigators and has assisted clients in overseeing investigations, gathering evidence and analysing investigational results so as to prepare a strategy on effective enforcement of intellectual property rights.

The firm also handles patent portfolios and maintains effective working relationships with patent and trademark lawyers overseas enabling it to address client requirements in a cost-effective and timely manner. With a view to providing industry specific technical expertise, a few members of the firm are registered patent agents with technical backgrounds ranging from mechanical, electrical and electronics to pharmaceutical and biotech.

The firm protects its clients’ IP by undertaking contentious proceedings before the tribunals, high courts and other courts in India. It also renders advice and frames strategies for passing off, infringement and anti-piracy actions, initiates court actions, drafts pleadings and executes enforcement actions against infringers/counterfeiters on behalf of various clients on a continual basis.

AZB & Partners has extensive experience in handling IP transactional work that includes drafting, negotiating and advice on technology collaborations, patent and trademark licensing, and various agreements, including those on co-existence, co-branding, research collaboration, confidentiality and non-disclosure, brand marketing and sponsorship, etc., and has conducted numerous IP due diligences and audits for various clients.

Apart from the traditional IP practice, the firm actively advises clients on allied fields which include clinical trials, medical devices and drug regulatory, privacy and data protection, comparative advertising and unfair competition, regulations governing seeds.

S. S. RANA & CO.

MULLA & MULLA & CRAIGIE BLUNT & CAROE

INDIA

Vikrant Rana - Managing Partner T: +91 11 3056 2000 (10 lines), 91 11 2338 4491 F: +91 11 3056 2010, +91 11 2338 6201 ssrana@ssrana.com, Vikrant@ssrana.com www.ssrana.com

INDIA

Purnima Singh - Senior Associate T: +91 22 2262 3191 Purnima.Singh@mullaandmulla.com

S. S. Rana & Co., founded in 1989 is a New Delhi based law firm primarily engaged in the practice of intellectual property law, business and commercial law.

The firm provides professional legal services in respect of contentious and non-contentious intellectual property related matters. It helps clients in securing, perfecting, enforcing, defending, protecting and exploiting their proprietary rights in their products and services.

As a general practice firm advising on all aspects of corporate commercial law, core competencies of Mulla & Mulla & Craigie Blunt & Caroe are banking and finance, company law, litigation and dispute resolution, real estate, shipping, insurance, infrastructure and intellectual property. Backed by a seasoned litigation team, the firmʼs IP enforcement capabilities are very strong.

Practitioners at the firm believe in the philosophy of diligent and arduous work along with effective strategy and execution. The firm’s work involves planning, monitoring, and enhancing knowledge with respect to client’s expertise and domain.

Consequently, the firm is able to provide effective and efficacious services to all its clients.

S. S. Rana & Co. employs highly qualified professionals, patent agents, scientists, research associates and lawyers to abridge the gap between research, technology and IP protection.

The team comprises professionally talented associates and experts from disparate fields like law, information technology, biotechnology, chemistry, business administration, pharmacy and applied science.

“We make constant endeavors for maximum utilisation of time, resources and intelligence,” said managing partner Vikrant Rana. “Our senior partners have more than four decades of experience and under their aegis our young, dynamic and professionally qualified team toil hard to ensure that every client receives the advantage and benefit of our broad expertise.”

S. S. Rana & Co. understands its corporate social responsibility and makes every effort to comply with the spirit of the law, ethical standards, and social norms. The firm actively participates in IP sensitisation programs, for raising IP awareness, organised by government and non-government bodies, namely: Technology Information Forecasting and Assessment Council (TIFAC), Patent Facilitating Center (PFC), Patent Information Center (PIC), Federation of Indian Chambers of Commerce and Industry (FICCI), Tata Energy Research Institute (TERI) and Ministry of Small Scale Industries (MSSI).

“We at S.S Rana & Co. believe in giving back to the society and helping the public at large.

We offer pro-bono work to support the cause of grassroot innovators to enable them to exploit the burgeoning rural industries in India. We are always more than willing to offer help to the deserving and needy artisans, creators, innovators and inventors,” concluded Mr Rana.

Being a part of a full-service firm, some members of the IP team have cross practices, greatly enhancing their ability to advise with a holistic approach considering issues on tax, regulations, employment etc., which come into play when determining which entity to house IP in or how most efficiently to work the IP. The firm has proudly advised international and domestic clients over several decades. A majority of the firm’s clients are Fortune 500 companies and part of the largest 50 Indian corporate houses. This exposure to the international markets has equipped partners and lawyers at the firm in the mindset allowing them to appreciate diverse cultures and to be mindful of critical legal aspects specific to certain jurisdictions.

“Our IP clients enjoy the benefit of advice rendered bearing in mind issues on tax, foreign investments, regulatory etc., noted senior associate Purnima Singh. “A recent example is in advising a large multinational publishing house which proposes conducting publishing business in India. The primary document of the business relates to the licensing of their trademark and content. However, several factors including tax, regulatory and employment as also foreign investments were considered in structuring the business and investment into India.”

According to Ms. Singh, corporates, both Indian as well as foreign, are increasingly focusing on the protection of their intellectual property assets in India.

“In my experience,” she said, “sectors in which we have seen the greatest awareness is pharmaceuticals and technology. However, often the size of the client determines their intellectual property policy. Smaller organisations and individuals still appear reluctant about investing in IP protection due to a want of awareness. This leads to the inability to appreciate the value of the IP assets they hold and the potential risk these are exposed to.”

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CITA CITRAWINDA NOERHADI & ASSOCIATES

Dr. Cita Citrawinda Noerhadi - Founder T: +62 21 835 4055 cita_p@ccpassociates.com www.ccp-associates.com

Law Office CITA CITRAWINDA NOERHADI & ASSOCIATES offers a broad range of legal services that are primarily for the protection of all types of IPR, including trademarks and/or service marks, patents, copyrights, trade secrets, industrial designs national and international, as well as licensing & franchising agreements.

The firm provides advice with regard to all phases of IPR, the enforcement of IPR, including litigation, oppositions, defence against oppositions, cancellation actions and infringement actions, and criminal actions against counterfeiters, injunctions and legal damages, as well as other civil and criminal cases.

The firm handles and advances investigation from IP proceeding in Directorate General of Intellectual Property Rights as administrative process such as op-

master doc.indd 36

INDONESIA

AS AN EXPERT DR. CITA CITRAWINDA, S.H., MIP PARTICIPATES IN THE GOVERNMENTAL ACTIVITIES ON IP, AN ACTIVE SPEAKER ON VARIOUS NATIONAL IP SEMINARS AND WORKSHOPS, AND MANY MORE.

positions, defense against oppositions and rebuttals.

The firm also handles civil and criminal litigation arising from infringements of its clients’ proprietary interests, cancellation and deletion actions, legal damages action, injunctions and actions seeking compensation for damages, providing guidance to avoid infringement of existing third-party intellectual property rights, as well as other civil and criminal cases.

Recent case studies of the firm include, among others: - Review of international contract; the draft of the Indonesian Patent Law; and the draft of the Indonesian Copyright Law; - Providing written legal opinion as an expert witness to support the Judicial Review Memory of the Decision of Cassation of the trademark case of NOVOTEL;

- Being an expert witness in trademark cases of FUJI FILM, HOLIDAY INN, and OREO; - Being an expert witness in the industrial design case of boiler machine.

Dr. Cita Citrawinda, S.H., MIP is a senior IP consultant who has been practicing in IP field over 20 years, as well as an IP lecturer at the PostGraduate Program, University of Indonesia. As an expert Dr. Cita Citrawinda, S.H., MIP participates in the governmental activities on IP, namely as a team member in preparing an intellectual property laws and its amendments, an active speaker on various national IP seminars and workshops, head for legal studies project on Industrial Design for National Legal Development Body, main researcher on study for the possibility of Indonesia in ratifying the Geneva Act of the Hague agreement.

9/9/11 13:04:56

SYCIP SALAZAR HERNANDEZ & GATMAITAN

PHILIPPINES

CASTILLO LAMAN TAN PANTALEON & SAN JOSE (CLTPSJ)

SAPALO VELEZ BUNDANG & BULILAN

PHILIPPINES

Enrique T. Manuel - Partner etmanuel@syciplaw.com

Atty. Ignacio S. Sapalo Managing Partner

Vida M. Panganiban - Partner vmpanganiban@syciplaw.com T: +632 982 3500; +632 982 3600; +632 982 3700 F: + 632 817 3145; +632 817 3896; +632 8187562 www.syciplaw.com

Founded in 1945, SyCipLaw is one of the most established law firms in the Philippines. It is a full service firm principally based in Makati City, the countryʼs financial and business center, with offices in Cebu, Davao and the Subic Bay Freeport.

The firm’s intellectual property law practice

is one of the largest in the country, in terms

of client base and range of services offered, which include basic rights protection and

administration and maintainance of IP rights

through established systems and the support of highly-trained staff.

The firm has been cited by Asialaw as the

Philippines’ IP firm for 2004-2005 and has

often been cited in international surveys as a

first choice for IPR counseling. Members of the group are included in lists of leading lawyers

in the field and are active in international and

local intellectual property organisations such as the Intellectual Property Association of the Philippines and the Licensing Executives Society.

The firm is consistently cited in leading

international surveys as a first choice for IPR

counseling. For 2011, it has been ranked as a

Band One Firm by Chambers and Partners UK and World Trademark Review, a Tier One Firm for Trademark and Patent Prosecution, and

for Trademark, Copyright and Patent Contentious by Managing Intellectual Property and

cited by Asian Legal Business (ALB) as one of the leading IP firms in the Philippines. Asia IP

selected the firm as one of the best IP firms in

the Philippines for patent work. Members of the firm are included in lists of leading IP lawyers

and are members of international and local IP

organisations, such as the Intellectual Property

Association of the Philippines, the International Trademark Association, the Licensing Execu-

tives Society, International Association for the

Protection of Intellectual Property (AIPPI) and the Asian Patent Attorneys Association.

PHILIPPINES

Atty. Neptali L. Bulilan Senior Partner T: +632 891 1316 to 19 info@sapalovelez.com www.sapalovelez.com

T: +632 8176791, +632 8176795 trademarks@cltpsj.com.ph www.cltpsj.com.ph

CLTPSJ is a full service law firm with a highly regarded intellectual property practice, advising both local and international clients in all relevant areas of intellectual property law as well as information technology law. It has a very broad client base consisting of local companies, multinational corporations, including leading multinational pharmaceutical and information technology companies, foreign law firms and professional groups.

CLTPSJ’s IP litigation group has extensive enforcement experience before the courts, government tribunals and agencies, combining courtroom experience and tactical insights with deep technical expertise. Its experience covers the full depth and breadth of IP law: patents, trademarks, copyrights, trade secrets, unfair competition, and related anti-trust issues. Furthermore, CLTPSJ’s attorneys are highly skilled and successful at employing all forms of alternative dispute resolution, including mediation and arbitration.

CLTPSJ maintains well-established professional relationships with overseas intellectual property practitioners as well as the Philippine Intellectual Property Office which enables it to serve both international and domestic clients in the most cost- and time-effective manner.

A number of the firm’s lawyers in this practice area are very active in many international organisations on protection of IP such as the International Association for the Protection of Industrial Property, Asian Patent Attorneys Association International Trademark Association, International Bar Association and Licensing Executives Society as well as the Intellectual Property Association of the Philippines.

CLTPSJ handles patent infringement and patent cancellation cases for multinational companies like Pfizer, GlaxoSmithKline, Eli Lilly, Merck, and Industriale Chimica, among others. Further, CLTPSJ handles trademark opposition, infringement and unfair competition cases for foreign clients like Boehringer Ingelheim and confidential clients.

With 35 years of experience in intellectual property prosecution and enforcement, Sapalo Velez Bundang & Bulilan (SVBB) is one of the countryʼs top IP law firms. Its excellent service is made possible by the reservoir of experience and expertise of its lawyers, paralegals and researchers, who have academic degrees in both law and science.

The firm’s managing partner, Atty. Ignacio S. Sapalo, was the director of the Bureau of Patents, Trademarks & Technology Transfer from 1987 to 1996. He is the winner of the 2011 Philippines Intellectual Property Lawyer of the Year Award based on a survey conducted by the Corporate International Global Awards. A professor of intellectual property, he authored a textbook and many articles on the subject. He led the group that crafted the current law, the Intellectual Property Code of the Philippines, R.A. 8293. It introduced the first-to-file system in the country, aligned the law in the Philippines with the standards set in the Trips Agreement and established a financially independent Intellectual Property Office.

The firm has contributed to the development of IP law by enriching jurisprudence in the country.

In Societe des Produits Nestle S.A. vs. Court of Appeals, the Supreme Court affirmed SVBB’s argument that the use of Nestle’s competitor of “FLAVOR MASTER” for coffee is not registrable, in view of Nestle’s prior registrations for ”MASTER ROAST” and “MASTER BLEND” also for coffee. This is one of the first of a series of decisions where the court applied the “dominancy test” over the “holistic test” in determining whether there is colorable imitation of a mark by another that would likely mislead or deceive the purchasers as to the source of the goods.

Recently, in Societe des Produits Nestle S.A. vs. Martin Dy, the high court once again, applying the dominancy test, sided with the firm’s position that Mr. Dy’s “NANNY” mark is confusingly similar to Nestle’s “NAN” mark, despite the fact that “NANNY” is used for infant milk, while “NANNY” is for older children and adults.

The firm won in 2010 the Philippine Trademark Firm of the Year and was shortlisted as Philippine Patent Firm of the Year Award by Asia IP.

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YU SARN AUDREY & PARTNERS

SINGAPORE

Audrey Yap Su Ming - Managing Partner T: +65 6358 2865 enquiries@yusarn.com

Yu Sarn Audrey & Partners is a boutique intellectual property and commercial law practice focusing on all aspects of intellectual property and how it can be managed and harnessed as a strategic tool to create value. The firm has helped businesses and organisations of all sizes to protect, manage, commercialise and enforce their valuable intellectual assets and property worldwide.

The firm takes a holistic, client-centred approach to providing legal services, seeking to understand its clients’ corporate and business missions and strategies so as to provide customised solutions to assist them in carrying out business with less legal risk and to meet their strategic objectives.

The firm believes that its clients require much more than legal expertise. “We are committed to understanding your problems and working with you to produce cost-effective and practical solutions that fit your particular needs,” commented managing parter, Audrey Yap Su Ming.

Yu Sarn Audrey & Partners has been consulted by organisations of all sizes including local and foreign technology and innovation-based businesses, venture capitalists, global enterprises, local & regional SMEs, government-linked companies and agencies, statutory boards, hospitals and law firms both to help them create new possibilities using their intellectual assets.

Taking a strategic-planning approach to Intellectual Property practice, Yu Sarn Audrey & Partners helps organisations to design, implement and fine-tune strategies, internal policies and systems to facilitate the creation, ownership, protection, management and exploitation of intellectual property so as to protect and enhance the value of their intellectual assets.

The firm has registered patent agents and patent professionals skilled in various technical areas.

Its Intellectual Property practice is closely integrated with other practice areas at the firm. “This enables us to provide a total intellectual property solution for our clients, including planning, protection, commercialisation and enforcement of our clients’ valuable intellectual property,” commented Ms Audrey Yap. Corporate practice of the firm supports a range of commercial activities and relationships such as technology transfer and licensing, research collaboration, franchising and character licensing, print and electronic publishing, media transactions, research collaboration, biological materials transfer, joint ventures; IP securitisation, private company and business acquisitions, corporate organisation, shareholders’ agreements, employee share option plans, employment contracts, strategic alliances, project consortia, agency & distributorship agreements.

ALPHA & OMEGA LAW CORPORATION

SINGAPORE

Renee Xavier - Director T: +6564725502 enquiries@alphaandomega.com.sg www.alphaandomega.com.sg

Alpha & Omega sets itself apart from other intellectual property (IP) consultancy companies and law firms as one of only a handful of IP specialist law firms in Singapore with a complete focus on IP law.

Thus, it is able to bring deep insights, understanding and sensibility to the IP management process. “As a boutique firm we are able to be nimble and respond to clientsʼ specialised needs fast,” commented Renee Xavier, director at the firm.

Alpha & Omega offers comprehensive IP services, including: trademark, patent and registered design prosecution (from conduct of availability searches to opposition), IP education and training, IP strategy, IP audit and legal analysis, as well as licensing, business, IT, entertainment and commercial agreements.

The firm renders its services in Singapore and South East Asia. Being true blue Asians with a multi-ethnic background, the Alpha and Omega’s team has an instinctive understanding of the region’s diverse culture and ethnicity. “We have a distinct advantage of coupling technical knowledge of IP laws in this geographic area with an extra sensitivity to the ways things are conducted in the region,” said Ms Xavier.

This advantage allows Alpha and Omega to consistently deliver on their brand promise Your IP. Our Knowledge.

“Our expertise takes out the uncertainties and hassles of IP management in Singapore and in the rest of South East Asia for our clients”.

- In a region with diverse language, culture, laws and scope of protection our knowledge ensures our clients receive advice on sustainable solutions in a single language to achieve optimum IP protection and management.

- Our team of handpicked individuals of character and commitment has been nurtured to deliver excellent services based on dialogue (and not monologue) with the highest respect for confidentiality and professional advice.

- We are constantly pushing ourselves to innovate to serve our clients better. Our proprietary software and operational systems enables and ensures that our team consistently delivers precise, timely and customised service to our clients.

- We go beyond the values of “trustworthiness”, “professionalism” and “reliability” to offer transparency, quality assurance and cost effectiveness.

AMICA LAW LLC

SINGAPORE

Jason Chan - Director T: +65 63036210 jason.chan@amicalaw.com www.amicalaw.com

AMICA LAW LLC is a leading specialist intellectual property and technology practice in Singapore. The team of 30 lawyers, professionals and paralegals each bring with them many years of experience in IP management & protection, litigation & enforcement, as well as commercialisation & licensing, in the areas of copyrights, patents, trade marks, designs, brand management, domain name, data protection, contracts and licensing, litigation and enforcement, telecommunications, entertainment and media.

The firm and its lawyers have been cited as a leading IP firm and practitioners in Chambers Asia, Legal500, Asian Legal Business SEA Law Awards, Who’s Who Legal and AsiaLaw Leading Lawyers and PLC Which Lawyer.

The main strength of the firm is in specialisation and ability to provide a one-stop solution to handle clients’ IP needs. Separate teams of lawyers, professionals, technical staff and paralegals handle different aspects of IP, with teams in management & protection, litigation & enforcement, as well as commercialisation & licensing. Previously being part of a big full-service law firm also means the lawyers are familiar with and able to provide the same level of services at competitive rates.

Jason Chan, director at the firm, said: “The experience and specialisation skill-sets of our lawyers means our clients can feel secure in knowing that they are properly advised and able to comprehensively secure their rights when dealing with overseas counterparts or obtaining proper protection of their rights and assets.”

The diverse mix of local and foreign clients in various industries and for different types of work, such as Allergan, Charles & Keith, Dell, Exxon –Mobil, Fairmont-Raffles Hotels, Harley-Davidson, National University of Singapore, Petra Foods, Philip Morris, Sanofi, Starwood Hotels, Starbucks Coffee Company, Sony Ericsson Mobile and Warner Brothers, represent the wide-ranging expertise within the firm, in prosecution, litigation and transactional.

Mr Chan pointed out that companies in Singapore and around the world have now realised or are beginning to appreciate the significance of IP to their businesses and long-term competitiveness. Singapore companies, though government and industrygroup initiatives are beginning to expend financial resources to the creation and protection of their IP.

36 ASIA & OCEANIA

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HSLEGAL LLP

SINGAPORE

Tasneem R. Haq - Partner T: +65 6438 6602 tasneem@hslegal.com.sg www.hslegal.com.sg

GUR LAW & IP FIRM

TURKEY

Riza Ferhan Cagirgan - Partner, Attorney at Law, Trademark&Patent Attorney T: +90 212 325 90 20 | riza@gurlaw.com www.gurlaw.com , www.gurip.com

As a boutique IP practice, strong foundations are built on the personalised services hslegal LLP offers to its clients. The firm has a good understanding of its businesses, goals and budgetary concerns. Its clientattorney relationships are long-standing and, in some cases, these working relationships span decades. The firmʼs IP practice integrates its expertise in Singapore, Malaysia and Brunei with international experience for all types of client profiles in various industries.

GUR Law Firm, which is one of the largest and leading law firms in Turkey, has established its IP Department and its subsidiary IP Ltd. Co. about three years ago.

Practitioners at hslegal LLP handle all aspects of IP such as trade marks, designs and patents (including filing and prosecution), copyright issues, drafting of IP rights agreements, domain name protection and disputes, enforcement issues and litigious IP matters. The firm also has the benefit of having an experienced team of professionals and long-serving paralegals and administrative staff.

According to Tasneem Haq, partner at hslegal LLP, corporations and individual businesses are very cautious about their IP protection in Singapore and internationally. Their main concerns are putting the right protection in place and planning strong enforcement strategies. Due to budgetary constraints, a brand owner’s scope of trade mark protection is focused on protection of signs, logos and designs for which they have immediate plans to use. hslegal LLP assists brand owners in planning a workable strategy for their IP matters taking into account their priorities, the development of their business and the current economic climate. Attention to detail and finding a creative and individual approach for each client is of crucial importance.

The managing partner of the firm, Murgiana Haq, is one of the first INTA members representing Singapore. She has played an active role in the INTA committees for several years and was also the Chair for the ASEAN Sub-Committee of INTA from 2002 to 2004. She presently serves on the amicus curiae sub-committee.

Tasneem notes that INTA membership and participation is valuable to the firm as it facilitates several networking opportunities and the educational programs are an excellent resource for keeping upto-date on trade mark issues worldwide.

She added: “We also continue to develop international contacts through the INTA meetings, to assist our local clients in managing their matters outside Singapore, Malaysia and Brunei.”

property matters in Turkey and overseas. GUR

GUR Law & IP Firm specialises in all matters concerning the protection and prosecution of intellectual property rights and has an extensive experience in dealing with all aspects of contentious and non-contentious intellectual Law & IP Firm is a registered agency before the Turkish Patent Institute and represents major foreign and Turkish clients in all kinds of filing and prosecution of trademarks, patents, designs and other industrial property rights before the Office.

Apart from providing a full range of intellectual property services, GUR Law & IP Firm also provides services to its clients in Consumer Protection Law, Product Liability, Media and IT Law Regulatory Compliance, Competition Law & Antitrust and Data Protection Law in Turkey.

GUR Law & IP Firm also handles big litigation operations for its major clients. These kind of litigation of trademarks, designs and patents include seizures of counterfeits at customs and anywhere they are found in the territory.

GUR Law & IP Firm also advises its clients on developing domain name registration strategies and defends and represents its’ clients before national courts and the domain name arbitration centers in Geneva (WIPO)

GUR IP team has handled more than 150 civil and criminal IP lawsuits and has advised its major clients in big anticounterfeit operations including dozens of cases and seizures.

and Prague (Czech Arbitration Court).

In this short period of time, GUR IP team has handled more than 150 civil and criminal IP lawsuits and has advised its major clients in big anticounterfeit operations including dozens of cases and seizures. Therefore, GUR is very experienced in developing strategies against infringers. For instance, GUR has been representing Hyundai Motor Company which is one of the leading automobile companies in the world. GUR IP team filed more than 15 infringement lawsuits on behalf

- GUR LAW & IP FIRM

of the client in Turkey so far.

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INDEX / * #''#'! *# ' %#' ++

& + -+,(& (-+ +, ' %# ', *.# G N B E # ' 1 *( ++#(' %#+& ' *# ' %#' ++C I + * ," " %%& *$+ ( %# ', 34 GENERAL PATENT INTERNATIONAL 18 NESSELHAUF + *.# , -+,(& (-+ 3 ' ," + F ' /"1 / / * + % , + 09 GIBNEY, ANTHONY & FLAHERTY, LLP

A 27 AGABI, SHINABA, OGON & CO. 28 ALPHA & CO. IP 36 ALPHA & OMEGA LAW CORPORATION 28 AL-SOAIB LAW FIRM 28 ALUKO & OYEBODE 36 AMICA LAW 33 AZB & PARTNERS B 21 13 32 07 29 14

31 GOLDEN GATE LAWYERS 37 GUR LAW & IP FIRM 20 GVTH LAW

BAPTISTA, MONTEVERDE & ASSOCIADOS BECERRIL, COCA & BECERRIL, S.C. BEIJING LAWCONSTANT LLP BIAGGI & MESSINA BOUWERS INC. BUFETE CANDANEDO

H 31 HOLMANN WEBB 08 HOLMES WEINBERG, PC 37 HSLEGAL LLP 08 HUSCH BLACKWELL LLP

#' ," , !(*1 (

O 14 OMC ABOGADOS

P 24 PAKHARENKO & PARTNERS 12 PALOMO & PORRAS 17 PAPULA-NEVINPAT 12 PORTAL & ASOCIADOS R 10 R. KUNSTADT, P.C. 29 RON WHEELDON ATTORNEYS 20 RUCELLAI & RAFFAELLI

FUND SERVICES FIRM OF THE YEAR/IRELAND I 22 INTELLEXIS

#' 8@?@ -+,(& (-+ " + -#%, ' #', !* , !%( % -' &#'#+,* ,#(' + *.# S (' ) *+(' % (&&#,& ', ' * % ,#('+"#)+ ('+# *

C 17 CABINET DEBAY J 35 SAPALO VELEZ BUNDANG & BULILAN 4

%# ',+ * * (!'#+ + #' #.# - %+ '(, (-', '-& *+ 26 CABINET ISIS CONSEILS (SCP) 23 J A KEMP & CO 14 SCAVIA & SCAVIA 4 M. %# ',+ $'(/ ," 1 ' #* ,%1 %% '1(' #' + '#(* & ' ! & ', #' %- #'! ," *(-) 22 CABINET OPROIU 21 J. PEREIRA DA CRUZ, S.A. 15 SCHURMAN ADVOCATEN 35 CASTILLO LAMAN TAN PANTALEON 21 JWP 10 SCULLY, SCOTT, MURPHY & PRESSER, P.C.

' *(-) " #*& ' & SAN JOSE 19 SIB LEGAL 4

-+,(& (-+ 5+ + -* -+ * *# ' %1 / * )(*,#'! ' ,* #'! )% , (*&+ 3

34 CITA CITRAWINDA NOERHADI & ASSOCIATES K 15 SJIEM FAT & MAHABIR 3 " + ' / %% * #. 1 %# ',+ /"( ' ++ ," #* (-', , #%+ , '1 ,#& ( ," 31 CULLENS 23 KARANOVIC/NIKOLIC 33 S.S. RANA 1 (* '#!", 09 KATTEN MUCHIN ROSENMAN LLP 19 STOLMAR SCHEELE & PARTNER D 4 17 KOREJZOVÁ & SPOL 35 SYCIP SALAZAR HERNANDEZ & GATMAITAN

-+,(& (-+ #+ () ' 9; < *(& - %#' ,( "# !( ,( #'! )(* ,( %, ," 1 27 DAVID GARRICK, KAYODE & CO. 18 KUHNEN & WACKER ' . * ' + (* -+,(& (-+ (* #,+ %# ',+ 27 DE COMARMOND & KOENIG (INTERNATIONAL) V

-+,(& (-+ " + +, G # , ,( )*( ++#(' % ' ) *+(' % + *.# 3 ,* & ' (-+ 19 DR.4 HELEN PAPACONSTANTINOU, JOHN FILIAS L 12 VICENTE NOGUEIRA ADVOGADOS ++ , (* (-* %# ',+ ' (-* (&) '1 ' (' (* /"# " / * 0,* & %1 !* , -% AND ASSOCIATES 08 LARIVIERE, GRUBMAN & PAYNE, L.L.P. 22 VILAU & MITEL 07 DUANE MORRIS LLP 32 LEX ORBIS IP PRACTICE ' /(*% ( !%( %#2 ,#(' #'+,#,-,#(' %#2 ,#(' ' , "'(%(!1 (. %% %+ 13 DUMONT BERGMAN BIDER & CO., S.C. 13 LINK INTERNATIONAL DE MÉXICO, S.C. W

-+,(& (-+ #+ , 1(-* + *.# D/#," *# ' %1 & BAND 26 LUZZATTO & LUZZATTO 32 WATSON F 23 WYNNE-JONES, LAINÉ & JAMES LLP

(', , % *, #%# ' !#'! #* ,(* 09 FITZPATRICK, CELLA, HARPER & SCINTO M % *, #%# &, -+,(&"(-+ !*(-) (& 18 FPS RECHTSANWÄLTE & NOTARE 20 MAMO TCV ADVOCATES Y HHH -+,(& (-+ %( % -' *.# + , 26 FUGAR & COMPANY 33 MULLA & MULLA & CRAIGIE BLUNT & CAROE 36 YU SARN AUDREY & PARTNERS

HHH #!' (/ *+ #!' ,* , %# & :8>9 %, HHH % 6:<= 9>79 9>@@

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38 INDEX

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22/7/10 9/9/11 08:11:12 13:05:37

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08:11:12

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CorporateINTL Corporate lNTL, Charles House, 148/149 Great Charles Street, Birmingham, B3 3HT, UK www.corp-intl.com

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