FIRST LATIN AMERICAN INTELLECTUAL PROPERTY MAGAZINE / Nยบ 42 JULY- SEPTEMBER 2011
UNITED BY IP INTA 133rd Annual Meeting in San Francisco, California
PARTNER A cuestioned career
BUILDING YOUR BUSINESSES Interview with Robin Rolfe, president of Robin Rolfe Resources
PATENTS AND NUMBERS Statistics
THIS EDITION IS SUPPORTED BY:
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ABRIL / JUNIO 2 0 1 1
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Table of Contents 30
6
Editorial
8
Statistics. Patent Evolution in the Region
12
Did you hear?
15
Marcasur reports
17
Opinion. By Vera Abogados Asociados, Colombia
18
Events. Mamma Mia. 30th ECTA Annual Conference.
21
Law and Entertainment. Interview with Anthony Lupo
24
Events. Becerril, Coca & Becerril reception
26
AIPLA Open House. Interview with David Hill
30
Partner: a Questioned Career. Feature Article
36
The American Experience. Interview with Griff Price
38
Events. United by IP. INTA 133rd Annual Meeting
44
Building your businesses. Interview with Robin Rolfe
47
Events. Hospitality Suite by Ă lvarez Delucio.
48
You have the Floor.
50
Attorneys in their free time. Take your time.
38
44
Paraguayan-French Caroline Casseli and Peruvian Juli GutiĂŠrrez
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4
52
Marcasur Travelling. Shanghai. From here to China.
56
Joking but seriously.
57
The History of a Brand. So British: After Eight
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Editorial
staff
This edition has San Francisco's Golden Gate Bridge on the cover. With it, we are firstly referring to an emblematic structure of the city where the largest worldwide IP event organised by the INTA took place. Secondly, it metaphorically alludes to the thousands of attendees who, united by IP, crossed that bridge to reach the event. We have dedicated a number of pages to this coverage and different moments of the event are shown through pictures.
Editor: Juan Pittaluga
The Feature Article concerns lawyers' professional careers. Recent situations question a fundamental aspect: if an associate's career in a firm should culminate as a partnership or are other variants arising. We would especially like to thank all who took part, generously providing us with information.
Press: Karina Gonzรกlez
We were witness to how large Latin American and United States firms lent themselves to this collaboration. However, the same did not occur with other offices which politely refused to take part in this article. It is a debate which the profession deserves and here it is. The article on the president of the AIPLA, David Hill, came about when we bumped into him one day at a breakfast and we mentioned that the organisation which he presides over was almost exclusively considered in Latin America as an organisation for patent issues. He replied that it was not the case and that trademark issues today occupy an important place within the AIPLA. He also added that it should be of interest to professionals dedicated to this area of IP. So we decided to give this prestigious organisation a space in Marcasur.
jpittaluga@marcasur.com
Executive Director: Victoria Pereira vpereira@marcasur.com
Marketing Department: Mei-Lin Che mche@marcasur.com
kgonzalez@marcasur.com
Francisco Pittaluga francisco@marcasur.com
Communications: Natalia Domingo ndomingo@marcasur.com
Graphic Design: LP / arte visual Printers: Grรกfica Mosca
Anthony Lupo's interview is proof of our intention to continue giving entertainment law and its related branches of law a place. So, why not publish an article on someone who is today one of the most prestigious specialists on this topic in the United States? We strive for Marcasur to be informative yet also didactic. We hope to achieve this with your participation. We'll be waiting! M MARCASUR Cont. Echevarriarza 3535 A, 1604 CP 11300 Montevideo, Uruguay Tel: (598) 2628 4604 (598) 2623 2957 info@marcasur.com Year 15 nยบ 42 July-September 2011
Quarterly publication edited by Editorial MS S.R.L. ISSN 1688-2121 D.L. 354.155 Comisiรณn del Papel. Ediciรณn amparada al decreto 218/96
Marcasur Mail Send your correspondence to: info@marcasur.com 6
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Statistics // Patents Worldwide
PATENTS
IN NUMBERS 19% MORE PATENT APPLICATIONS WERE FILED IN NATIONAL LATIN AMERICAN OFFICES DURING 2010 COMPARED TO THE PREVIOUS YEAR, ACCORDING TO THE REPORT PRODUCED BY MARCASUR. BELOW WE WILL PRESENT YOU THE RESULTS OF THE EVOLUTION.
Worldwide. To produce the report, national and international offices have provided statistical data concerning the number of patents applied for between 2006 and 2010. The statistics show the evolution of patent application filings in the following geographic areas: all Latin American countries, United States, Spain, the European Union and the Patent Cooperation Treaty (PCT) administered by the WIPO. In Latin America, the surveyed countries were Argentina, Bolivia, Brazil, Chile, Colombia, Costa Rica, the Dominican
Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Uruguay and Venezuela. The figures were obtained between March and April 2011. The results include invention patent, utility model and industrial design applications. The cases where other variables are included are indicated.
Invention patent, utility model and industrial design applications, by country Country
2006
Argentina 5.876 Bolivia 240 Brazil 19.001 Chile 3.723 Colombia 2.723 Costa Rica 667 Cuba 270 Ecuador 682 El Salvador 281 Guatemala 528 Honduras 212 Mexico 15.500 Nicaragua 295 Panama 511 Paraguay 386 Peru 1.242 Dominican Rep. 297 Uruguay 891 Venezuela 2.600 Totals 55.777
2007
2008
2009
2010
5.872 453 29.467 a 3.871 2.683 827 306 806 98 229 250 19.963 341 576 430 1.657 203 884 2.961 71.768
5.778 402 33.424 a 3.938 1.861 886 274 1.037 323 d 426 330 20.198 334 465 519 1.945 87f 880 2.779 75.699
6.572 470 26.524 b 2.243 c 1.974 91 250 826 298 424 219 17.746 222 448 e 636 f 1.079 324 881 2.430 64.089
4.935 413 37.944 3.115 2.507 693 288 884 337 438 250 18.726 237 621 594 990 405 940 2120 76.437
Notes: a The figure includes certificates of addition and PCTs. c Source: SysTM S.A. d There is a significant variation in terms of invention patents since due to the PCT ratification in 2006, most applicants refrained from filing patent applications in 2007 to later file them via PCT in national phase after 2008. Therefore patent applications were filed in mass in 2008. 8
Growth from 2009 to 2010 (%) -24,9 -12,1 43 38,7 27 66 15,2 7 13 3,3 14,1 5,5 6,7 38,6 -6,6 -8,2 25 6,7 -12,7 19
e Includes 9 industrial designs. f The figure does not include utility models or industrial designs. n/d No statistical data
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National invention patent applications in 2010, by country Country
Argentina
Total in Latin America. The growth for 2010 was 19% in relation to 2009. 76,437 invention patent, utility model and industrial design applications were filed that year compared to the 64,089 filed the previous year.
experiencing a greater increase in filed patent applications in 2010 were: Brazil, Chile and Panama. Brazil (37,944 applications) is the leading country in terms of volume of filed applications, followed by Mexico (18,726) and Argentina (4,935).
908
18,4
Brazil
28.055
10.018
35,7
Chile
3.115
430
13,8
Colombia
1.944
218
11,2
Costa Rica
693
1
Cuba
266
63
Ecuador
664
13
1,95
El Salvador
284
7
2,46
14.576
951
Nicaragua
222
1
0,45
Panama
621
29
4,66
Paraguay
594
16
2,69
Peru
752
39
5,18
Dominican Rep.
345
15
Venezuela Totals a
Percentage of national patents (%)
4.935
Mexico
The top three. The countries
Total number Total number of national invention of invention patents patents
2120
106
59.186
12.815
0,14 23,6
6,5
4,34 a
5 78
Off the record data.
Note: Only those countries where official sources have information about the total number of national invention patent applications are included.
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Invention patent, utility model and industrial design applications in Spain Country 2006
2007
2008
2009
2010
Spain
7.621
7.859
7.738
7.946
7.754
Growth from 2009 to 2010 (%)
2,68
Total in Spain. 7,946 applications were filed in 2010. An increase of 2.68% is registered in relation to 2009. Spain is a PCT Contracting State.
Invention patent, utility model, industrial design, invention right and renewal applications in the United States Country USA
2006 452.633
2007
2008
484.955
485.312
2009 482.871
2010
Growth from 2009 to 2010 (%)
520.277
7,74
Total in the United States. A total of 520,277 applications were filed in 2010. An increase of 7.74% is registered in relation to 2009. The US is a PCT Contracting State.
European and PCT patent applications Area
2006
2007
2008
2009
2010
European Union 210.871 222.797 226.319 211.796 232.000
Growth from 2009 to 2010 (%)
9,53
Total in Europe. The European Patent Office (EPO) received 232,000 European patent applications in 2010, 9.53% more than in 2009 (211,796). “These figures clearly indicate that the demand for patent protection is increasing again after the economic recession of the last two years”, said the President of the EPO, Benoît Battistelli. The EPO expects a further increase for the year in course.
PCT international patent applications
2006
2007
2008
2009
2010
Growth from 2009 to 2010 (%)
149.669
159.886
163.600
155.398
162.900
4,82
Procedure
PCT
Total PCTs. The number of international patent applications filed under the Patent Cooperation Treaty (PCT) increased by 4.8% in 2010. The provisional statistics available indicate that 162,900 international patent applications were filed in 2010 in comparison to the 155,398 applications filed in 2009. “In general terms, the level of filed PCT applications has recovered after the fall due to the economic crisis and is at values similar to those recorded in 2008”, said Francis Gurry, General Director of the WIPO. He also added that “the rapid growth in eastern Asia is a reflection of the accelerated geographical
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diversification of innovation activities. This trend has many consequences, among which a greater linguistic diversity of technology used by the patent offices as a basis for determining if an invention is patentable should be highlighted”, he concluded. M
The data corresponding to each country is supplied by the following contributors and national and international offices: Argentina : Matías F. Noetinger (Noetinger & Armando) and Guillermo M. Vispo (INPI) Bolivia: Marcos Mercado (Guevara & Gutierrez S.C) Brazil: Rogério Rosa de Almeida (INPI) Chile: Marcos Morales (Alessandri & Compañía) Colombia: Martín Torres (Brigard & Castro) Costa Rica: Marianella Arias (Divimark) and Viviana Mora Artavia, B.A. (Intellectual Property Register) Cuba: Yordanka Ramírez (CLAIM S.A. firm) and Carmen Ross Fonseca (Cuban Intellectual Property Office) Dominican Republic: Mary Fernández Rodríguez, Miguelina Figueroa, Melba Alcántara Cornelio and Emperatíz López (Headrick, Rizik, Álvarez and Fernández) Ecuador: Rodrigo Bermeo R. (Bermeo & Bermeo Abogados) El Salvador: Diana Hasbún and Patricia Iraheta Larios (Intellectual Property Register) Europe: Gaëlle Pluta (EPO) Guatemala: Ernesto R. Viteri (Viteri & Viteri) Honduras: Camilo Bendeck and Karl Hollmann (Intellectual Property Office of Honduras) Mexico: Fernando Becerril (Becerril, Coca & Becerril) Nicaragua: Marvin Caldera S. (Caldera & Solano Compañía Limitada) Panama: Susana Saldaña R. (Bufete Candanedo) Paraguay: Lorena Mersan (Mersan Abogados) Peru: Virginia Delion (Estudio Delion) Spain: Dàmaris Ansón (Oficina Ponti) United States: United States Patent and Trademark Office (USPTO) Uruguay: Edgardo Larminy (Pittaluga & associates), Dr. Luis Alberto Gestal and Patent Division (National Intellectual Property Office) Venezuela: Adolfo López Moreno (Ayala & López Abogados) WIPO: Carlos A. Naranjo
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HAVE YOU HEARD? Comings goings
&
In Uruguay, Ferrere law firm incorporated the Mónica Bacot y asociados Intellectual Property Practice. Mónica Bacot Silveira, María Fernanda Cea Bacot and Stella Weng, with a vast career and well renowned in the area of IP, have joined Ferrere's team. Their new email addresses are: monicabacot@ferrere.com, mceabacot@ferrere.com and sweng@ferrere.com. In Uruguay, Pittaluga Attorneys at Law have incorporated attorney Sofía Ruete to their Intellectual Property department. Her email address is: sruete@pittaluga.com.
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In Ecuador, attorney Esteban Riofrío has joined Barzallo & Barzallo. His email address is: estebanriofrio@barzallo.com. In Panama, Rebeca Herrera left Galindo, Arias & López to dedicate herself to a private professional practice. Her email address is rebeca@cableonda.net.
The latest In Colombia, attorney Ándres Felipe Zapata started a new project geared towards providing legal advice in the area of commercial law, especially in
Industrial and Intellectual Property. With more than 15 years of professional experience he will provide his clients with integral advice in his new firm A to Z Legal Consulting. www.atozlegalconsulting.com In Argentina, attorneys José A. Kuklis and Fabian G. Kuklis announced their professional continuation in the area of Industrial and Intellectual Law under the name Kuklis & Asoc., maintaining their 50+ year career in the activity, providing the necessary advice on everything concerning emerging situations or conflicts linked to this area. www.kuklis.com.ar In Mexico, Diego González Rossi, Gilberto Martínez and Ana Vargas have disassociated themselves from the González Rossi & Asociados office to create the firm Rossi, Martínez Vargas, S.C., which you can find out about through the www.iberbrand.com website.
In Mexico, José Rodrigo Roque Díaz has recently been named new IMPI Director (Mexican Institute for Intellectual Property), after his predecessor, Jorge Amigo Castañeda, resigned after 18 years in charge of the organisation. Mr. Roque Díaz had already taken up the position of Legal Director for the DirectorateGeneral of the National Copyright Institute. In Uruguay, Clarke Modet & Co., a Spanish multinational company specialized in Intellectual Property, has recently opened its office, thus becoming the eighth Latin American country with offices of said firm. There are also offices in Argentina, Brasil, Colombia, Chile, Mexico, Peru, Portugal, Spain and Venezuela.
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HAVE YOU HEARD? New data In Colombia, Prieto & Carrizosa has changed the image which accompanied the firm for 17 years as part of an expansion strategy. We invite you to find out about it on the new webpage: www.prietocarrizosa.com. The Chilean Association of Intellectual Property, an association with over 100 IP specialists, has partially renewed its board of directors in the election that took place during their recent regular meeting. The elected Directors were attorneys Max Villaseca (President), Marcos Morales (Vice-president), Santiago Ortúzar (Secretary), Max Montero (Treasurer), Cristian Mir, Cristóbal Porzio and Juan Pablo Silva. Felipe Langlois and Andrés Melossi left their positions after being part of said board for three and four consecutive terms, respectively.
Anniversary The Spanish firm Abril Abogados turned 10 years old career wise and celebrated it on June 9 with a cocktail party at the Santiago Bernabéu stadium.
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Family news In Venezuela, Barbarita Guzmán, from Markven Office, and her husband Pedro Alberto Jedlicka became parents of their third daughter, Barbarita Sofía, on January 14, 2011. Congratulations! In Panama, the Arosemena Benedetti family has grown. Yolianna and Ana Cristina Arosemena Benedetti from the Benedetti & Benedetti firm, have recently become mothers. Yolianna and her husband Ricardo Chanis have ver y happily welcomed their third son, Ricardo Alberto, on February 4, 2011. Ana Cristina and her husband Carlos Martínez became parents of their first little boy, Ignacio Alonso, on April 20, 2011. Double congratulations! In Panama, Roberto Gómez from Cedeño & Méndez firm married Ana Patricia Fabrega on August 5, 2011 at the Panama City Union Club. Congratulations!
Awards
& Distinctions The Peruvian Office Barreda Moller received the Valued Agency Network Contribution Award, granted by Unilever in recognition of firms for their outstanding contribution in the field. As Unilever's Katrina Burchell mentioned during the award ceremony, Barreda Moller is the first Latin American firm that has received this distinction.
Sad
News
We are saddened to report the death of Dr. Vidya Sagar, Senior Partner of India's renowned firm Remfry and Sagar on the February 27.
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MARCASUR
Peru: Allende & García, a combination of experiences in a new office
reports
Magali is a lawyer from the University of Lima with a Masters' in Intellectual Property Rights and Competition from Universidad Católica and was Trademark director at Clarke, Modet Peru for the last eight years. Allende & García provides integral advising services in intellectual property issues. They stand out for providing a customized and preferential service and attention for each one of its clients, providing their experience and professionalism for the client's benefit. The joining of these two lawyers in the Allende & García firm has been stirring up a great deal of talk lately, having been referred to as the “dream team” and “the current hit”. It's worth getting to know them.
The Allende & García Office has recently been founded in Lima, Peru. The founding partners, Jorge Allende and Magali García, have an ample career in the IP field. Jorge is a lawyer from the University of Lima with a Masters' (LL.M) from Northwestern University. He was manager of the intellectual property area at Estudio Olaecha since 2003 and named partner of the office in 2008.
www.allendegarcia.com.pe
Chile and Brazil: Alessandri & Compañía and Dannemann Siemsen Bigler & Ipanema Moreira win the 2011 MIP Firm of the Year award in Chile and Brazil David Merrylees and Peter Siemsen, from Dannemann, Siemsen Bigler & Ipanema Moreira, Brazil, with Rodrigo Velasco, from Alessandri & Compañía.
Managing IP magazine presented Alessandri & Compañía and Dannemann Siemsen Bigler & Ipanema Moreira with the 2011 Firm of the year award, in Chile and Brazil, respectively. Rodrigo Velasco S., from the Chilean firm, and David Merrylees and Peter Siemsen representing the Brazilian firm, received the honor in www.marcasur.com
in London on April 6th. Alessandri & Compañía has stood out for its great success in trademark protection and unfair competition lawsuits as well as important achievements in defending well-know trademarks against piracy. Since the first edition of this award in 1997, Dannemann Siemsen Bigler & Ipanema
Moreira has been chosen the best Brazilian Trademark and Patent Office. It is world renowned for the excellence of its professionals and for having one of the most complete libraries specialized in intellectual property in Latin America. Managing IP is a leading intellectual property publication of the English
group Euromoney. With more than ten thousand readers, it conducts surveys each year with more than two thousand specialized attorneys.
www.alessandri.cl www.danneman.com.br JULY / SEPTEMBER 2 0 1 1
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opinion
Democracy in corporations Jorge Vera Vargas Vera Abogados Asociados S.A. Colombia
Due to the recent re-election of FIFA president, Mr. Joseph S. Blatter, great controversy was provoked in the world of sports about the eternal occupancy of a person or of a group of people in charge of a specific institution. Mr. Blatter was re-elected, almost unanimously, taking into account he was the only candidate for the presidency since his only rival was “annihilated” with so called dirty tactics to prevent any possibility of his substitution in the presidency. Blatter will finally continue carrying out his presidential term of office until at least 2015 and extending his tentacles of almighty king not only before FIFA affiliated federations but also before the different nations to which said federations belong. It has been traditional in FIFA's history that whoever reaches presidency will practically remain in that life-long position, as occurred with Mr. Blatter's predecessor, the Brazilian Mr. Joao Havelange, who was President in successive terms from 1974 until 1998. www.marcasur.com
This custom of individually running FIFA has spread to various federations, which are in turn eternally run by a single person, such as in the case of Argentina with Mr. Julio Humberto Grondona and in the South American Football Confederation with Mr. Nicolás Leoz, who exert their authoritarian and whimsical powers at will. This FIFA subject makes us reflect on the exercise of democracy at a corporate level in numerous national and international institutions. Scrutinizing a little, we find that in many of those institutions the power is exercised by a single person or a group of people which take turns being in charge of the various Boards of Directors. They hold absolute power and do not allow third party candidates to have the possibility to reach the managing positions, as if the “owners” were afraid that the institution would not be able to be run fairly and honestly by others since they consider that only they can do it. It is historically well known that absolute powers corrupt
and become extremely hazardous to a healthy society and, in the case in point, for the integrating members of the corporations or institutions who, like it or not, must submit to the dictatorial regime of those who have taken over the institution, whether they be sporting, as in the case of FIFA, educational, financial or even trade union institutions. Institutions must be run with the wide participation of the associates, allowing everyone to democratically have a chance to reach management positions, having in light of the law and statutes all the regulatory mechanisms for this to happen. The repeated elections for management positions with a single candidate or a single list are definitely undemocratic and what is happening within the institution should be inspected.
Jorge Vera Vargas. Founding partner and Director of Vera Abogados Asociados S.A., since 1972
The author is solely responsible for published articles when they are signed. JULY / SEPTEMBER 2 0 1 1
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EVENTSENTREVISTA JORGE OTAMENDI
IN THE BEAUTIFUL NORDIC CITY OF STOCKHOLM, SWEDEN, THE 30TH ANNUAL ECTA CONFERENCE WAS HELD FROM JUNE 8TH TO THE 10TH
CON HONORES MAMMA MIA! By MartĂn Pittaluga 28
A little over 700 attendees and nearly 100 companions (mostly European) got together in Stockholm to take part in the conference and at the same time experience a tropical heat and days (with sunshine) lasting from three in the morning until eleven at night. As is usual in annual ECTA conferences, the committee meetings were held on Wednesday morning, there was a workshop in the afternoon (this time dedicated to the measures against counterfeiting) and in the evening the event was officially inaugurated at Stockholm City Hall itself, headquarters of the www.marcasur.com
Friends in Stockholm,. Juan Berton Moreno (Sena & Berton Moreno, Argentina), Cristóbal Gumucio (Sargent & Krahn, Chile) and Eduardo Kleinberg (Basham, Ringe & Correa, Mexico)
official annual award banquet of the Physics, Chemistry, Medicine and Literature Nobel Prizes (the Nobel Peace prize is awarded in Oslo). The Thursday and Friday sessions were truly interesting, focusing on various topics. The panels for trademarks and industrial designs, new gTLDs authorized by the ICANN, trademark infringement on the Internet through social networks, evaluation of the current European trademark system, analysis of the latest novelties of the European courts and managing trademark portfolios stood out. On Thursday night participants could enjoy a special cruise ship tour through the city, to later disembark at the Vasa Museum, known for having been built to house the ship of the same name, the only one from the XVII century to have
Juan Carlos Durand (Durand abogados, Peru), Ella Cheong (Ella Cheong, China), Howard Choen (Wwipps Sàrl, Luxemburg), Ricardo Mejía (Bufete Mejía, Honduras)
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Juliรกn Vadillo (Vadillo & Cia., Mexico), Marco Van der Merwe (Spoor Fisher, South Africa), Elke Dichlberger (Sattler & Schanda, Austria), Eli-Ann Evensen (Protector, Norway), Christine Schjerven (Protector, Norway).
In good company. Luis H. de Larramendi (Elzaburu, Spain), and his colleague from the ECTA's professional issues committee, Jasna Habic (ITEM, Slovenia)
At the Convention Center. R. Peter Spies (Dineff Trademark Law Limited, USA), and Pablo Gonzรกlez-Bueno (Gonzรกlez-Bueno & Illescas, Spain)
survived until our times, making it an artistic treasure and one of the world's most visited sightseeing monuments. As a finishing touch to the event, a gala dinner was held at the Munich Brewery where the highlight of the evening, without a doubt, was the performance of an ABBA tribute band which made the guests leap from their tables from the start, putting hunger aside to dance to the sound of the famous 70's group. Concluding, in honor of the iconic band and pride of this country, it suffices to say <<Mamma Mia!>> and thus define the experience lived during three days of conference in such a beautiful city. M 20
During a break. Pepe Isern (J. Isern Patentes y Marcas, Spain), Paulo Parente (Di Blasi, Parente, Vas e Dias e associados, Brazil), Margarita Castellanos (Castellanos & Co., Colombia), Neil Milton (Miltons IP, Canada) www.marcasur.com
ENTREVISTA
I've got the best job in the world ANTHONY TONY LUPO, PARTNER OF THE FIRM ARENT FOX AND MEMBER OF ITS EXECUTIVE COMMITTEE, CONTINUOUSLY REPEATS THIS. LUPO CO-DIRECTS THE FIRM'S ENTERTAINMENT-INTELLECTUAL PROPERTY LAW DEPARTMENT. HE WAS CHOSEN AS THE BEST INTELLECTUAL PROPERTY ATTORNEY BY THE WASHINGTON BUSINESS JOURNAL.
Chatting with Tony is a pleasure. He's a very nice, modest person who welcomed us as if he had known us his entire life. He truly transmits his love and passion for law. He talks with a lot of energy and doesn't overlook any topic. His beginnings, his career, his vision of Latin America and technology, his team in Arent Fox, his perception of young attorneys are some of the topics we touched on. We jumped from one subject to the next and returned to the previous 21
one without a break but with an enviable clarity of concepts. He knew what he would dedicate himself to from a very young age. He walked into the office of one of his father's friends, a Trademark attorney, and found him playing video games in socks. At that moment he said: “I want this in my life” Even with this decision his future was destined beforehand. His father, as well as his grandfather, worked in intellectual property. Both worked at the Trademark www.marcasur.com
and Patent Office so Tony's beginnings were, as it couldn't be any other way, in that office. When the Internet started to evolve and attorneys didn't give it much importance, Tony started to study it in depth, identifying what its impact on intellectual property was, until becoming an expert on the topic. That allowed him to write in various publications and to be invited to different television channels. Today his work is focused on protecting the intellectual property rights of important entertainment and technology companies. Among his clients are Discovery Communications, Pixar Animation Studios, America Online, Apple Computer and Red Hat. He has also worked for many films, including Finding Nemo, Wally and Up. He defines himself as a business maker: “I am continuously thinking of my clients' business”, and considers himself
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fortunate to work in what he does: “I'm often paid to watch films, test video games”. Attorneys and offices. For Tony attorneys, especially those starting their careers, should dedicate themselves to the area of law they really like. According to him, if you do what you are truly interested in, you won't mind if they pay you less money because you are doing something you like. He totally disagrees that law firms should decide what area young attorneys should dedicate work in. For him this means that many young attorneys get stuck in areas they don't like. “You have to know what it is you like and not let the firm choose for you”, he advises young attorneys. For it not to happen, the first thing he asks an attorney on arriving to the firm is: “where do you want to work?”
He considers it essential that attorneys today know about their clients' business. That enables giving the client a quick answer. Learning from the clients' business allows “giving the client a complete overview on the matter. For example, if you provide legal advice to a television program, understanding the business is knowing what your competition is doing, why they are doing it, if the title is similar to your client's, what contracts are being handled. You must know about unions, know the agents, etc.” Latin America. According to Tony, one of the problems for Latin American attorneys is that it takes them 10 minutes to identify a client's problem and businessmen don't have that time. “They need practical answers,” he says, “they need to hear: 'you have a 50% chance if you do this, a 20% chance if you do the
JULY / SEPTEMBER 2 0 1 1
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the other'”. He assures that a change is coming in Latin America. “Attorneys are going to have to be able to understand businesses”. This is very difficult since, according to him, not all attorneys are capable of doing this. Especially because of how they are trained in most universities. “They teach you theory. In my experience, if I'm a client who's paying you a lot of money, I don't want to hear the theory. You have to be creative and give me a way of doing what I want to do”. According to Lupo, the number of international clients seeking advice in Latin America will drastically increase in the coming years. “Young attorneys will see an opportunity in this and will create their own firms and that will shake the foundations”, he points out and continues: “Every time a generation changes in a business, insecurity and nervousness crops up, but the businesses which remain are the ones that have adapted to that change. Nobody is going to like it, but it will be healthy for the legal community and the community as a whole”. Technology. Lupo knows and is passionate about technology, so the conversation naturally drifts in that direction. “In a few years everything will be online, you will no longer see music stores or libraries. Everything will change, and not everything for the better. In other words, technology can be scary. There will come a point where we will have virtual reality.
Things that seem so real that people will want to become part of that world and not the real world” he says and adds, “every year technology grows 100%. In ten years' time the change will be enormous”. His team. Lupo leads a team of thirty attorneys and is one of the most “veteran”. He considers himself very fortunate to have a lot of work and with it be able to attract the best attorneys, but for him the best attorneys are not just the most intelligent ones. For Tony, “every firm likes to say that they have the best attorneys, the most intelligent ones. That's important but it's not everything. What's really important is that those attorneys are able to talk with a businessman and, in a second, be able to give him the answer to his question”. To Lupo, it is fundamental for an attorney to know how to communicate correctly. That's why he hires young attorneys, so he can train and prepare them. “If an attorney wants to be on my team he has to be able to talk and give presentations, and to be able to explain a difficult idea very quickly to a client. If not, you won't be on my team for very long” he says with absolute conviction. For that purpose he makes the members of his team give presentations so that they are able to communicate and perform with clients. He is a specialist in this area and has given and gives conferences around the world as well as on Court TV and CNN. He also writes for the New York Times and the Los Angeles Times. He loves to work on a team and never
does anything alone. “I always have someone to help me” As we were finishing our chat he says enthusiastically “Countries hire me to help them. It's a great experience, living abroad and helping local people with global problems”. And he asks “Do you know what the USA's number one export is?” He replies “It's IP by far. Think about it: films, technology etc. I've been hired by Vietnam, Indonesia… I've got the best job in the world”, he says with certainty. We truly believe in what he says. He sincerely enjoys his work and it is a pleasure to find professionals like him. M
«YOU MUST BE CREATIVE AND GIVE ME A WAY OF DOING WHAT I WANT TO DO» 23
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Becerril, Coca & Bercerril cocktail party in San Francisco
Elegant party at City Hall On May 16th of this year Becerril, Coca & Becerril, S.C. held its traditional reception for associates and friends to celebrate the annual INTA congress in San Francisco, a unique city because of its diversity and openness, the cultural level of its locals, history and strong economy. On this occasion, the location chosen by BC&B was the Californian metropolis's City Hall. With its majestic architecture, forty six thousand square meter area and the fifth largest dome in the world, it is one of the most emblematic buildings of the city. In a comfortable atmosphere achieved by the perfect music and lighting, top-shelf international liquors and a mixture of “tamales”, “quesadillas” and “flautas”, those present had a taste of the flavor and warmth of Mexico. Time flew for the guests and hosts. 24
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Business connections bubbled at the busy City Hall. In three steps you could bump into an old friend, put a face to a well known name or a name to a face when gazes crossed. BC&B was, as always, pleased to see the guests enjoy the party. The positive comments left the sweet taste of satisfaction for a job well-done, and also the upcoming date for Washington 2012.
Fernando Becerril (Becerril, Coca & Becerril, Mexico), Mauricio Bonilla (Oller Abogados, Costa Rica), Javier Isern (J.Isern Patentes y Marcas, Spain) and Miguel Angel Jiménez (Becerril, Coca & Becerril, Mexico)
Raúl Domínguez (Becerril, Coca & Becerril, Mexico), Omar Velarde(Becerril, Coca & Becerril, Mexico), Ana Patricia López (Becerril, Coca & Becerril, Mexico), Jerry Zeng (Minyong Law Office, China) and Enrique Caamaño (Becerril, Coca & Becerril, Mexico)
Some of the hosts, Fernando Becerril, Raúl Domínguez and Heriberto López www.marcasur.com
Omar Velarde (Becerril, Coca & Becerril, Mexico), Oscar Mago (OMC Abogados & Consultores, Peru), Jerry Zeng (Mingyong Law Office, China), Enrique Caamaño (Becerril, Coca & Becerril, Mexico), JULY / SEPTEMBER 2 0 1 1
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Interview Nota central
AIPLA
OPEN HOUSE THERE ARE EXEMPLARY CAREERS AND THIS IS ONE OF THEM. FOR MORE THAN THREE DECADES DAVID HILL HAS BELONGED TO THE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION, WHICH HAS OVER ONE HUNDRED YEARS OF HISTORY AND TODAY HAS THE HONOR OF HAVING HIM AS ITS PRESIDENT. 32
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«WHAT MAKES A LAWYER A GREAT LAWYER IS ENJOYING WHAT HE DOES EVERY DAY»
His career started as officer in the U.S. Army and not as a lawyer. “After graduating with a Bachelors Degree in Engineering, I was fortunate enough to be selected to attend the West Point Military Academy and serve five years of active service in the U.S. Army Corps of Engineers, including aviation and park ranger training and a four and a half year tour in Nuremberg, Germany”, he said. After finishing his service in the military, he attended the George Washington University Law School, where he completed two degrees: a J.D and a Masters. He joined AIPLA (then called APLA) in 1977, when he was still a student. “I was working as a technical advisor at the US Court of Customs and Patent Appeals in Washington D.C. at that time and I later joined the law firm”, he explains. During that time his career progressed at the Finnegan law firm, but he always tried to make time for the association's work and to attend AIPLA meetings. “I was lucky that my law firm has supported me in these efforts”, he happily admits. We quickly move on to the next task in his agenda: the Marcasur interview. Let's talk about your beginnings in AIPLA. How many members were there and what is the situation today? When I joined the Association there were roughly 3,900 members, around 19 committees and a staff of about 6 people. Today we have approximately 16,000 members, more than 45 committees and a staff close to 25 people. To what do you attribute the growth?
educational programs, its balanced focus in order to offer programs focusing on all areas of intellectual property and its ability to produce the active participation of so many members at the committee level. The Association has also benefited from the growth of technology in the last few years, especially in the bio-technology and software fields. We also have an excellent professional staff that keeps the Association running from day to day. A path which has led you to becoming President. What does your job as President of the Executive Committee entail? My job as president consists of representing the Association at the various national and international meetings and conferences, speaking on its behalf, chairing the Board of Directors and Executive Committee meetings and supervising and guiding our staff. They help me with the agenda for the Board and Committee meetings and to generally lead the development and execution of our strategic plan and its initiatives. I also provide general financial supervision to help assure that the Association and its activities maintain a solid financial base.
More about David He is 65 years old, has been married for 42 years to J. Leslie Hill, an interior designer who has her own business and with whom he has two children. One of them is a patent attorney who lives in Tokyo and works for a large US law firm. The other lives in Oakland, California and works for a solar electricity company. He has two grandchildren, one who is six years old and the other six months old, both living in Japan. He lives in Jackson. Wyoming is his home. He also spends part of the year in McLean, Virginia and part in West Palm Beach, Florida. He has a Bachelors Degree in Engineering from the US Military Academy; an M.S. with honors in Business Administration from Boston University, a J.D. and a Masters with maximum honors in Patent and Trade Regulation Law from the George Washington University Law School. He likes travelling, music, theater and watching spor ts, especially ice hockey, football, baseball and basketball. His hobbies include golf and skiing. He speaks a little German and Japanese. He has frequently spoken at seminars and educational programs on IP topics for more than thirty years. His most recent commitments include a speech for the IP administration of the Zhejiang province in Wenzhou, China, entitled “U.S. ITC 337 Investigation and Case Studies”, and a speech for the XV ASIPI Work Sessions entitled “Patentability of Telecommunications Inventions”. If he has long flights, he takes advantage and catches up on work, sleep and watching films. For him, what makes a lawyer a great lawyer is enjoying every day.
I think it has grown due to its magnificent
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REASONS TO TAKE PART IN THE ASSOCIATION
One. On advocacy issues and activities, there is no other more active or respected Association. Two. In education and publications, we are experts of renowned prestige. Three. We are opinion leaders on intellectual property at meetings and conferences. Four. Because of influence and prestige, we are unbeatable in the profession. And more. AIPLA gives its intellectual property attorneys and agents a new perspectives and new focus for their practices. The members bring further knowledge with them. New opportunities to improve practical skills are brought forward. It allows the members to take part in the most up to date matters in our profession and helps shape future intellectual property laws.
«IN THE USA THE IMMINENT PASSING OF THE PATENT LAW REFORM SPELLS THE BIGGEST CHANGES TO OUR PATENT LAWS IN HISTORY» In general terms, who are the 16,000 Association members and where do they come from? They represent a broad sample of intellectual property professionals. The majority of our members are from the United States, private practice or corporate attorneys, but we also welcome foreign patent attorneys and agents, patent office examiners and other professionals and law students. Currently, around 14,000 members are from the United States and close to 2,000 are from foreign countries. How do you organize yourselves? Our association is run by a Management Board which includes twelve members who are elected for a period of three years and seven officers serving for a period of one year. We strive for diversity in our Board so it includes men as well as women, minorities, members participating in corporate and private practices focusing on patents, trademarks, copyrights and other IPrelated areas. We are fortunate enough to have a team of strong voluntary leaders in our Board and the more than 45 committees which put the Association's primary work into practice.
How often do you meet? The Management Board meets around ten times a year and the Association usually holds three important meetings spread throughout the year. The annual meeting is held in Washington D.C. in October and it is the largest, bringing together between 1,500 and 2,000 people. The winter meeting is generally held at the end of January and alternates between the East and West coast of the United States. This year the meeting was held in Orlando, Florida and in 2012 it will take place in Las Vegas, Nevada. And finally there is the spring meeting, which is held in different cities in the United States at the beginning of May. This year it was in San Francisco and in 2012 it will be held in Austin, Texas. All our meetings are open to the public so I would welcome the presence of some of your readers at any of our future meetings.
every new and important proposal for the regulatory changes to the USPTO and we take part in open forums and debates with t h e U S P TO a t e v e r y p o s s i b l e opportunity. Finally, how does David Hill imagine the future of intellectual property? I have seen many changes in our IP laws and practices during my career of over 35 years in this profession. I hope to see steady progress towards the convergency of the different systems existing today around the world and to continue moving towards harmonizing patent procedures, simultaneously guaranteeing the work shared around the world and making trademark offices more appealing. I hope to see a European Union patent in the near future along with an efficient application mechanism. In the USA, the imminent passing of the patent law reform spells the biggest changes to our patent laws in history. I foresee a continuous reduction in the accumulation of pending patent applications and important improvements in the examination quality and schedule. Intellectual property laws will evolve to take on the challenge of facing new technologies, as they have done in the past, and the protection of intellectual property will have an even more important role when more countries have knowledge-based economies. M
How is your relationship with the US Patent and Trademark Office (USPTO)? Our relationship with the USPTO has probably never been as close as it is now. The current USPTO director, David Kappos, is a former member of the Management Board and the assistant director, Teresa Stanek Rea, was president of the Association. We present
“THE PROTECTION OF INTELLECTUAL PROPERTY WILL HAVE AN EVEN MORE IMPORTANT ROLE WHEN MORE COUNTRIES HAVE KNOWLEDGE-BASED ECONOMIES” 28
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The Spanish firm Salvador Ferrandis & Partners' party
Spanish Fever Party
For the second year running, the Spanish office Salvador Ferrandis & Partners (SFP Legal) held their annual reception during the INTA Conference on May 15, 2011 in San Francisco. The Spanish Fever Party has become “the” Spanish party at the INTA, dressed with its Spanish product tasting, in this case from paella to typical Spanish cocktails. This year more than 1,800 friends and colleagues walked down the “orange carpet”, the identifying color of SFPLegal. Colleagues, clients and friends accompanied the partners and the office's lawyers chatting, dancing and enjoying an informal atmosphere and good music. SFPLegal, a Spanish office with an international vocation, has professionals with more than twenty years experience and provides counseling in all IP-related aspects, including unfair competition and antitrust regulation. It particularly offers legal counseling services and also deals with the different types of registration rights (trademarks, designs, patents, etc.) and its defense before Spanish and European courts as well as in international arbitrations. To learn about the firm and see more photos of the fiesta visit www.sfplegal.com
Salvador Ferrandis & Partners Velázquez 146 1.º Dcha, 28002 Madrid, España Tel.: +34 915 642 300 Fax: +34 915 633 538 Email: info@sfplegal.com www.marcasur.com
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Feature article
PARTNER: A QUESTIONED CAREER
THERE WAS A TIME WHEN ALL NEW LAW GRADUATES DREAMT OF HAVING A CAREER IN A LAW OFFICE AND BECOMING A PARTNER. TODAY THE QUESTION IS IF BEING A PARTNER FUNDAMENTALLY REMAINS AS THE ONLY “PRIZE” IN A LAW OFFICE. SEVEN PROFESSIONALS INVITED BY MARCASUR ANSWER THESE QUESTIONS AND MORE. 36
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Starting point. They almost all agree that not every professional entering a law office will become a partner. For some, the traditional law office model is in crisis. For others, the same model will continue without any major risks. The best way to get organized. In general terms, in the Argentinean office Marval, O'Farrell & Mairal (MO&M), the first major difference among professionals is between partners and associates. Among the associates there are junior, advanced junior, semi-senior and senior associates. All the associates are employed by the company, the partners are not, and they are the ones who take the business risk. “The model we have chosen,” partner Sebastián Iribarne says, “is not better or worse than others, it's that the partners strive for the office to exist after they are gone. Other offices decide, for example, that the office will exist as long as I do, since I am the owner and founding partner. When I'm gone, figure it out for yourselves. There is already an institutional harvest here. The idea is for Marval to be better than its components”. “It's a model of perpetuity”, adds partner Iris Quadrio. In the also Argentinean Brons & Salas (B&S) there are partners and associates, replies partner Alfredo Rovira. At the same time he assures Marcasur that in his office they do not believe in rigid concepts that an attorney has to be a partner after so many years. “Since an attorney can have ten years of professional experience and still not be a partner, and an attorney can have six years of professional experience and be a partner, because it depends on content”, he emphasizes. “We do not have a classification in the office and in fact I expressed that I did not agree with
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classifying attorneys as senior, semisenior and junior, even though we could do so internally, from the point of view of fairly charging the client”, he says. For him, the best way to organize yourself is to do so in such a way that the structure is totally flexible. The Mexican office Basham, Ringe y Correa has three well-defined steps of the ladder: assistants, associates and partners. The objective of the attorney classification plan is to get each member to fully develop his/her skills. “In our organization we understand that no one has a more important job than anyone else, just that the duties are different. To fulfill client expectations, it is essential to perform any task with excellence” say partners Juan José López-de-Silanes and Martín Michaus. At Mitrani, Caballero, Rosso Alba, Francia, Ojam & Ruiz Moreno Abogados (MCRAFO & RM Abogados) of Argentina, partner Cristian Mitriani points out that the professional categories are associates and partners. “We have implemented objective guidelines for profit distribution primarily based on personal effort which gives all the partners confidence”, he replies to Marcasur. In Brazil, Veirano Advogados (VA) have equity partners and non-equity partners, as partner Valdir Rocha tells Marcasur. The difference between equity partners, who were initially the founders of the office, and non-equity partners is that their responsibilities are different. The equity partners' staff consists of professionals who either come from other offices with new practices or who have stood out from the rest due to their experience, productivity and recruitment of new clients as non-equity partners. An office assistant can first become a non
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“NON-EQUITY PARTNERS WHO STAND OUT THE MOST IN PROMOTION, RECRUITMENT, EXECUTION, TECHNICAL ABILITY, ACADEMIC PERFORMANCE AND RELATIONSHIPS WITH OTHERS ARE CONSIDERED FOR BEING ELECTED EQUITY PARTNERS”. VALDIR ROCHA
Valdir Rocha
-equity partner and then an equity partner. The profit distribution is different. The equity partners have more shares in the office and receive larger revenues.
Playing by their own rules. López and Michaus have no doubts and assure that the career of partner is still a valid one. “It follows the ancient tradition of the noble trades with apprentices, journeymen and masters. In order to be a master you must first have gone through the other posts”, they answer. In fact one of the fundamental strategies of the office is team work, and for them an attorney can be surprisingly good, “but he/she will never be better than a team of attorneys”, they point out. Mitriani in turn assures that it is still a valid career. “The traditional model survives but with its own qualities, not necessarily ideal ones”, he clearly explains. He also adds: “When the choice is in favor of a career, in office environments most professionals want to become partners”. Iribarne and Quadrio agree that the career of partner continues to be a valid one. “Our office model,” says Iribarne “mainly consists of promoting people and taking on more partners. Although no one has a guaranteed career of course”, he emphasizes. His partner Quadrio replies that “if a professional proves he/she has the qualities we are looking for, he/she has a good chance of becoming a partner”. Rocha expresses in agreement that for him being a partner is still a valid career. Even though the career is still valid for Rovira, it is clear that not all attorneys will become partners and they don't have to either. “We value a lawyer in terms of remuneration for their ability to bring in
business, whether because they can be developed in house or because they are market issues, such as bringing a person to the office who is not a client but could be one tomorrow”, and he concludes “because in the end, it's the result that counts”.
dedicated to your clients and colleagues, than wear the badge of “partner” or even be part of the office letter head. I feel that these attributes are secondary”.
Step by step. When talking about careers, it is clear to everyone that managing human resources in a service organization is vital. “The essence of the office,” says Iribarne “is its human capital; after that it's just chairs, computers and a meeting room. What makes an office an office is its people”, he points out. At Basham, Ringe y Correa they assure that from the time a person starts working in the office they are not hiring an assistant or an attorney. “We are looking for a partner, someone who plans to grow within the firm and to make the firm grow”, say Michaus and López. For them interoffice promotion is a combination of personal and professional qualities because ultimately they are looking for heirs. At MCRAFO & RM Abogoados, promotions are a result of a professional's progressive increase of knowledge and experience. “For many, becoming partner entails the recognition of a foreseeably successful professional career”, says Mitriani, who adds “In my opinion, it is more important to be a good professional,
“WE VALUE A LAWYER IN TERMS OF REMUNERATION FOR THEIR ABILITY TO BRING IN BUSINESS”, AND HE CONCLUDES “BECAUSE IN THE END, IT'S THE RESULT THAT COUNTS”. ALFREDO ROVIRA 32
Alfredo Rovira www.marcasur.com
“THEY CAN'T ALL BECOME PARTNERS BUT THE GOOD THING IS THAT THEY ARE PEOPLE WHO COME HERE, ARE TRAINED HERE, GO THROUGH DIFFERENT AREAS TO LEARN DIFFERENT DISCIPLINES AND FOR US IT IS VERY VALUABLE TO HAVE THEM” IRIS QUADRIO
Iris Quadrio
At VA, a professional's career can start out as salaried office assistant and after graduating they can become non-equity partners with a remuneration based on their personal responsibilities. “Nonequity partners who stand out the most in promotion, recruitment, execution, technical ability, academic performance and relationships with others are considered for being elected equity partners”, Rocha explains. They choose
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new partners every year, and the partners can be from outside the office, but in most cases they are in-house. The promotion system is a natural system at B&S, says Rovira. “If there is a virtue in this organization,” he says “it is precisely that of having the mental capacity to not create preconceptions, to not say no too soon and to be open”. And he highlights “Everything that could constitute a promotion system, a business growth mechanism, is welcome”. They have a model by virtue of which from the time an attorney starts working at the office they give them the incentive to prove their generating ability. Furthermore, he says that when he interviews today's youth something happens that did not happen ten years ago. “The say: “Well, what can I aspire to?; to which I reply: “well, see that in front of you over there, can you see it?“,
and he points to the view outside the window of the room, “It's the horizon. That's what you can aspire to. What's the limit? There are no limits here”, he emphasizes. And he remarks that the best proof is that there are no partners in Brons & Sala who were not employees first. Iribarne points out that anyone arriving at MO&M “is aware that it is a place where they will not be protected by anyone, not even if they are related to someone. You truly get there on the basis of merit. And even if the structure isn't rigid, a certain basic structure is required”. Quadrio adds that “They can't all become partners but the good thing is that they are people who come here, are trained here, go through different areas to learn different disciplines and for us it is very valuable to have them”. Always trying not to fall into the trap of self-
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“THE ESSENCE OF THE OFFICE IS ITS HUMAN CAPITAL; AFTER THAT IT'S JUST CHAIRS, COMPUTERS AND A MEETING ROOM. WHAT MAKES AN OFFICE AN OFFICE IS ITS PEOPLE” SEBASTIÁN IRIBARNE
Sebastián Iribarne
satisfaction, and even that the office has always been a meritocracy, it is now in a full revolutionary process in terms of an attorney career plan. “Each attorney's individual situation will be analyzed,” says Iribarne “they will be evaluated and the idea is to structure a complete future career with a specialization; to lay out a path for them to follow to encourage the progress of that attorney” he informs.
Alternative careers. An alternative to partner is consultant, mentions Rocha. They are creating a parallel career path in his office, i.e., “the non-equity partner that does not meet all the requirements to become an equity partner can become a consultant, with different compensation formulas, but does not necessarily have to leave the office”, he replies. Coincidentally, Mitriani believes that the category of consultants can be adopted: we call them counsel or of counsel in the Anglo-Saxon model. Michaus and López exemplify it: “Mr Antonio Correa, one of the founders of our office, described it like this: “Attorneys don't leave the firm like dogs onto the street, but as eagles in flight””, they say. For them, attorneys have several options and even some of their colleagues have taken other paths. “Some of them have chosen to become corporate attorneys and have even achieved being company directors. Others decided on a judicial career and have become justices of the Supreme Court of Justice. Others chose politics while many others chose public
administration”, he tells Marcasur. For Rovira there is no need for labels and if there are labels, there is no need for an alternative career. His answer is simple: “One can be a very well-paid lawyer without certain responsibilities of partner”. Iribarne points out that it is not that easy to create an intermediate category in Argentina due to legal and judicial reasons. “You can be an employee or a partner; there are no intermediate categories as there are in Anglo-Saxon countries, the equity partner and nonequity partner. These figures are very hard to implement, but it does not mean that we aren't always looking to see what alternative careers can be introduced in the office” he concludes. Models in perspective. In the intellectual property context in Latin America there are a great number of family offices usually called boutiques. This is due in part to that the legal service volume demand not being as great as in other parts of the world. The legal services market in the USA, for example, is so large that it includes all types of offices and one of the biggest differences with Latin America is the lack of family type offices and the existence of megafirms. In the region and in Brazil, for example, Rocha mentions to Marcasur that the tradition of the family office has been decreasing and they have very professional offices with a merit system to help the corporation grow. According to what Michaus and López have seen, although there seems to be a
“MR. ANTONIO CORREA, ONE OF THE FOUNDERS OF OUR OFFICE, DESCRIBED IT LIKE THIS “ATTORNEYS DON'T LEAVE THE FIRM LIKE DOGS ONTO THE STREET, BUT AS EAGLES IN FLIGHT”
Juan José López
Martín Michaus
MARTÍN MICHAUS Y JUAN JOSÉ LÓPEZ www.marcasur.com
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“IT IS MORE IMPORTANT TO BE A GOOD PROFESSIONAL, DEDICATED TO YOUR CLIENTS AND COLLEAGUES, THAN WEAR THE BADGE OF “PARTNER” OR EVEN BE PART OF THE OFFICE LETTER HEAD. I FEEL THAT THESE ATTRIBUTES ARE SECONDARY” CRISTIAN MITRIANI
Cristian Mitriani
worldwide trend towards office mergers, in Mexico on the other hand the opposite occurs. “The spinning off or separation of offices” they say and add “seems to be related with clashing ideologies and sharing responsibilities and success. Many find it hard to accept that we, including partners, are merely workers and just passing through”, he emphasizes. Mitriani in turn states that when the legal service business model is taken to places such as Argentina, he is perplexed in at least two aspects. “An organization where the most senior and qualified individuals have responsibilities in the areas of marketing, administration and financing, human resources and production doesn't seem very sensible. Neither does it seem a profession in which those choosing to work in these companies expect to be shareholders and run them”, he tells Marcasur. For Rovira, the small office has been a constant in Latin America. “The
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following occurs: if you want to be the owner of the office you have to lay down strict rules and those who do not adapt to the rules must leave. And furthermore, because I am the boss and I do not tolerate anyone else except me being so. It's a formula which existed in its day when offices were family run. There are also many offices that do not acknowledge the work and ability of those outside the family enough and the professionals end up leaving. The question is: What is easier and more comfortable? And some say: “I prefer being the owner of a small office” He assures that in the United States, the offices are businesses and the partners are not partners. “You start there first, you take money and then you have to bring it in. When you fail to bring it in you will end up leaving and this is bad for offices because they slowly bleed to death”. Iribarne and Quadrio consider that there is no single trend but each country has the habit and makes a lot of use of each one. And the variants of different economies stand out. “Latin America is a region with an economy with many ebbs and flows and an English model, such as Marval, requires or cries out for a stable economy. I can assure you that it is much more difficult to achieve and maintain an office the size of Marval in a country like Argentina than in New York. It is very different, you have to be dynamic and be able to adapt quickly to changes, which the Anglo-Saxon office does not have”, he concludes. Other paths. In spite of everything, the career of partner is still valid and is not
the only path a good professional can take. A partner should first aspire to be a good attorney, since they will surely always be well paid, and if the office doesn't meet their expectations, they won't be short of work elsewhere. Furthermore, other paths are possible, such as consultant. On the other hand those offices that are able to train, excite, involve and maintain capable professionals will without a doubt have more satisfied clients. And that of course is important to everyone. The constant in Latin America has been a continued re-categorization of the office model and the categories of professionals which will continue for now. M
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Feature article
Griff Price
THE AMERICAN EXPERIENCE NOT MANY FIRMS HAVE KNOWN HOW TO ADAPT SO WELL TO THESE TIMES AS THE AMERICAN FIRM FINNEGAN. IT IS THE BIGGEST INTELLECTUAL PROPERTY FIRM IN THE USA AND PERHAPS THE BIGGEST IN THE WORLD. WHILE CHATTING WITH MARCASUR, PARTNER GRIFF PRICE GOES OVER THE ESTABLISHED GUIDELINES ON WHAT BEING A PARTNER MEANS AND IF THIS CAREER IS STILL VALID IN THE USA.
The firm has a team of over 375 IP attorneys, five offices in the USA and four offices in other countries such as Belgium, Japan, Taiwan and China. It is run by a president and a managing partner who supervises the firm through two committees, the management board and the coordination board. These boards in turn consist of the firm's workgroup leaders. The groups include: biotechnology, pharmaceuticals, chemistry, metallurgy, electric and 36
computing technology, mechanical technology, trademarks/copyrights and IP specializations (such as: trade secrets, import and export licenses, IP-related competition issues, among others). Griff Price heads the trademarks/copyrights and IP specializations groups. Here is what he has to say.
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«THE MOST SIGNIFICANT CHANGE IN THE US LAW FIRM MODEL IN THE LAST 25 YEARS HAS BEEN THE APPEARANCE OF THE MEGAFIRMS»
Tell us: What does being a partner in Finnegan mean and what are your main responsibilities? The Finnegan partners must dedicate all their time and efforts to intellectual property law practice in the best interest of the firm's clients and the firm itself. The partner's two biggest expectations are, first of all, complying with the highest ethical law practice standards, and second of all, providing clients with the highest quality and most sophisticated legal services in the IP field. Furthermore, partners must be able to independently represent the clients' interests, effectively supervise the associates and other attorneys within the firm and client productive development activities. What is the system for promoting professionals in the firm? We have a regular system for reviewing and evaluating the professional growth and development of each attorney, and all the partners take part in the evaluation providing input about their work and receiving information from advising partners. The associates can be considered for being partners after several years with the firm, depending on their prior experience, progress within the firm, the commercial needs of the firm and so on and so forth. There is no single threshold or expiration date for being promoted from associate to partner. Even though there are established guidelines for the assessment, the firm has maintained a flexible attitude concerning the time and circumstances for promoting associates to partners. Based on your experience, what are the
expectations for attorneys who come to Finnegan? At one time it could have been possible to say that each lawyer that came would expect to become partner. That was probably the case when I arrived at Finnegan in 1987. Now they come with the expectation to work with lawyers who are talented in handling intellectual property issues for those clients who appreciate the importance of protecting and maximizing the value of their intellectual property. We are very proud to offer an environment in which young attorneys can gain experience in practicing intellectual property law at the highest level, along with the opportunities of a distinguished track record in that field. And since we have several offices in other countries in the growing field of intellectual property law, the prospects for future growth are very good. Consequently there is no doubt that we still offer excellent opportunities for qualified associates to anticipate a longterm future with the firm. So in your opinion, being a partner continues to be a career within a law firm. Don't you think, like some do, that this model is in crisis or even over? It's still valid. Even though the legal profession has changed a lot in the last ten or fifteen years, especially since the 2008 recession, the basic partnership model still predominates. For those willing to invest the necessary time and effort to become partners, it is a very rewarding career both professionally as well as economically.
Can you think of any other alternative career to that of partner? Firms in the United States are continuously exploring partnership options in order to meet client needs, lifestyle options of attorneys and the firm's economy. Many firms in the United States have responded to economic pressures and commercial needs by implementing multi-level partnership structures. They offer attorneys career options within the firm, even if they do not become equity partners. These include silent partners (salaried but permanent), contract partners (salaried but not permanent), of counsel (senior associate) and the like. Each of these can have real advantages for a law firm in certain circumstances and each can have real benefits for some attorneys. To close, what do you think the trend has been in the management models of professionals in the United States? In my opinion, the most significant change in the law firm model in the United States in the last 25 years has been the appearance of megafirms, with several offices throughout the country and, in fact, the world. I think this change will most likely continue until the international legal services market becomes saturated, until firms reach such a size that conflicts of interest will prevent them from further expanding significantly, or both. M
20Avenida“A”1y2Calle,S.O. BarrioRio BarrioRi odePiedras,POPox1744 d SanPedroSula,Honduras,C.A. Tel.(504)550-7744/550-2624/552-8615 Fax:(504)550-0795/552-8570 e-mail:rmejia@bufetemejia.com www.bufetemejia.com
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Events
INTA 133rd Annual Meeting in San Francisco, California
UNITED BY INTELLECTUAL PROPERTY
IT'S AN INCREDIBLE FACT THAT AROUND EIGHT THOUSAND PROFESSIONALS FROM EVERY CONTINENT MEET EACH YEAR, ATTRACTED BY INTELLECTUAL PROPERTY. THIS YEAR THEY TRAVELLED TO SAN FRANCISCO TO TAKE PART IN THE 133RD ANNUAL EVENT ORGANIZED BY THE INTERNATIONAL TRADEMARK ASSOCIATION (INTA) BETWEEN MAY 14 AND 18, 2011. 46
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Smiling. Rolando Candanedo D. (Bufete Candanedo, Panama), Susana del Cerro (Pittaluga abogados, Uruguay) and Suzanne de Tablas (Consortium, El Salvador) Always look on the bright side. Rebeca Herrera (RDH Abogados, Panama) and Miguel DePuy III (DePuy & Asociados, Panama)
We ask ourselves: Is there another branch of law which attracts so many professionals year after year? We don't think so. How is it that this one does? It's not because it has greater economic power, since the fees are probably much less than in other branches. In our opinion there are two reasons. One is that the same legal language is spoken among intellectual property specialists, since the rules that govern this branch of law are common to the different jurisdictions making it of interest to everyone. And secondly, because the practice is carried out to a great extent with international clients, who also take part in this event, then one has the opportunity to meet with them. The INTA has always fomented, from within the organization, that these moments be useful for networking, helping to increase the number of participants, making it the largest event in the field. Though there may be others as good as this one, none attracts as many participants. www.marcasur.com
Partying! Luis Ruiz and Lisa Hetzel-Ruiz. (Arenales & Skinner-Klee, Guatemala) with Karina Calderon (IP Legalsa, Guatemala) and Juanita Acosta (Cardenas & Cardenas, Colombia)
M贸nica and Federico Palomo (Palomo & Porras, Guatemala), next to Pedro Ch谩vez (E-Proint, Costa Rica) JULY / SEPTEMBER 2 0 1 1
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Eventos
Serious & nice. Francisco Pérez-Gangotena (Pérez, BustaIn the convention center's hospitality area, Alberto Guerra (Guerra mante & Ponce, Abogados, Ecuador), Victoria Fox (Fox & Lapenne, Propiedade Industrial, Brazil), Gilberto De Hoyos-Koloffon (De HoyosUruguay) and Juan Carlos Durand (Durand Abogados, Peru) Koloffon & asociados, Mexico) and Jose Madan (Khatan & Co., India)
San Francisco is a very interesting city for holding seminars because everything is relatively close, and there is a very beautiful convention centre in the heart of the city. Of course, the lack of taxis and the weather complicated transfers because the conference itself brought thousands of people to the city who wanted to take taxis. As always in this event, the academic aspect was not improvised. Everything was carefully prepared, resulting in a very high, if not excellent level. This year, with the incredible addition of the television (INTA-TV), which could be accessed from a special channel in the hotels or from the INTA website (www.inta.org). The most important moments and the most popular events and conferences, as well as the interviews with outstanding members of INTA and of the Executive Committee, were aired daily.
At the reception held by Canadian firm Gowlings, hosts Frank and Linda Mulock, with Dee Lienesch-Dayton (Thompson Hine, Ohio, USA) and Albert Chang (Canadian Internet Registration Authority, Ottawa, Ontario)
R
R
Pros
Cons
The location of the Convention Center ·Being invited to visit a Wine County cellar INTA-TV That your work of art be exhibited in the INTA's Art Gallery The great level of Latin American cocktail parties Walking across the Golden Gate with friends
The exaggerated size of the badges ·The long lines to register ·The San Francisco climate ·The lack of taxis The aggressiveness of some of the ·salespeople in the booths
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Exchanging cards. Laura Urrutia (Brigard & Castro, Colombia) and Ricardo Almaraz (Almaraz & Asociados, Argentina) www.marcasur.com
José Ramón Fermin (Bolet & Terrero, Venezuela) and Jor- Robert A. Rivas (Alvarado Smith, USA), Sergio Madrazo and Gilberto Sánchez (Link Inter ge Allende (Allende & García, Peru) national de Mexico) and Ylva Villavicencio Balvín (Villavicencio & Villavicencio, Peru)
Elegant. Rita Reyes (Amat & Vidal-Quadras Advocats, Spain), Ricardo Rojas (Rojas Gaona & Bandres. Venezuela) and his wife Rosemary Ríos INTA welcoming reception. Francisco Luna and Itzel Karina Tellez, from Alegría, Méndez & Fernández Wong, S.C., Mexico
iPad Participants in the last five years Chicago 2007 Berlín 2008 Seattle 2009 Boston 2010 San Francisco 2011 41
8500 8600 7700 8450 8713
You could say that this was the year of the iPad. Indeed, you can feel it as soon as you board the plane and instead of books, the passengers pull out their tablets, also from the long lines at Apple way before opening time in order to purchase one. There was an iPad2 at nearly all the booth prize drawing (I thought it was the same one but that was not the case, and they each had their own to give away…long live originality). The magazines, among them Marcasur, displayed their iPad format. If you still don't have one (or another similar tablet) buy one! Otherwise by next year you'll be out of touch with the latest technology.
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Latin American countries with the most participants Mexico 189 Brazil 173 Argentina 108 Colombia 62 Chile 48 At the women's tea party held by the Brazilian office Montaury Pimenta, Machado & Vieira de Mello we found Carolina Fernández (Hausheer Belgrano & Fernández, Argentina), Margarita Romero (Marklaw, Ecuador), Clarissa Jaegger (Montaury Pimenta, Machado & Vieira de Mello, Brazil) and Mercedes Durlach (Palacio & Asociados, Argentina)
IP youngsters. Roberto Gómez and Rodrigo Cano (Cedeño & Méndez, Panamá and Honduras respectively)
From Central America, Sandra Cabezas (Rusconi Medina & Asociados Central Law, El Salvador), Danilo Rodríguez Villamil (Espino Nieto & Asociados, El Salvador) and Marisol Caldera (Caldera & Solano, Nicaragua)
From Latin America to the world. For the first time at the INTA in San Francisco, we presented an institutional booth informing about our projects with a digital presentation. www.marcasur.com
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Night at the Moulin Rouge. At the party held by Baker & MacKenzie, hosts Bernard Malone (Baker & McKenzie, Argentina), Laura and Eduardo Leite (Baker & McKenzie, Chicago) and Stephen Jones (Baker & McKenzie, England)
Neighbors. Luis Felipe Castillo (Castillo Grau & Associates, Colombia) and Enrique Cheang (E.C.V. & Asociados, Venezuela)
Laura Collada and Armando Pinto (Dumont Bergman Bider & Co., S.C., Mexico) at the reception held by their firm at the Westin St. Francis Hotel
Countries with the most participants
Raincoats due to bad weather, a constant at this INTA. Yolianna Arosemena (Benedetti & Benedetti, Panama), Wallis Pons (Biaggi & Messina, Dominican Republic), María Eugenia García (Jarquin-García, Nicaragua) 43
United States United Kingdom China Germany Canada France India Mexico Japan Brazil
3184 448 418 375 305 220 194 189 184 173 www.marcasur.com
Interview
BUILDING
YOUR BUSINESS
IT SEEMS LIKE YESTERDAY BUT SEVERAL DECADES HAVE PASSED SINCE ROBIN ROLFE REINVENTED WHAT SHE HERSELF DEFINES AS “ASSISTING AND HELPING LAWYERS BUILD THEIR BUSINESS”, A TASK SHE PERFORMS FROM HER LEGAL CONSULTANCY ROBIN ROLFE RESOURCES. IN THE MARCASUR INTERVIEW SHE LOOKS BACK AT HER CAREER AND GIVES SOME TIPS FOR DEVELOPING A LAW FIRM.
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«I WOULD LIKE TO TAKE CREDIT FOR ALL THE INTA ACHIEVEMENTS DURING MY LEADERSHIP, BUT WHAT MADE (AND MAKES) INTA GREAT IS ITS MEMBERS» Her career has not been part of a plan as such, but more of an evolution. It all started when, interested in law, she realized that her intellectual abilities and curiosity were satisfied assisting IP firms to fulfill clients' needs and increase business rather than in practicing law. “Doing whatever it takes to make the vision a reality”, she says. Before we start, tell us about your beginnings as a lawyer in Inc. Chesebrough-Pond's and the LowensteinSandler law firm. After graduating from university I went to a paralegal training institute and became qualified in corporate law, commercial litigations and successions and trusts. I enjoyed the work and working with lawyers but I was ambitious and there was no room to move forward, so I became a lawyer. I worked in the Lowenstein firm while studying at law school and later as a lawyer in the Corporate Department, where I got into trademark practice. When I decided that I wanted to specialize in trademark law I joined Chesebrough-Pond's (now Unilever), which had a large trademark portfolio.
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Later you were INTA executive director for 17 years. Which part of the INTA success took place under your leadership? The INTA was very satisfying both professionally and personally. It opened the door to new challenges and experiences. I would like to take credit for all the INTA achievements during my leadership, but what made (and still makes) the INTA great is its members. I think my role was to smooth the transition in the Association so that it could be both responsible and proactive. It was the dedication of the members that turned the USTA into the INTA – in name as well as action- by means of developing leading positions in public policy and legislative initiative issues and providing timely information to lawyers, businesses, government and the Judiciary through communication, education and publications. A professional career which has led to be the president of Robin Rolfe Resources Inc. today. What does your work as president entail?
I don't care much for titles and the one of president is nothing more than a business formality. Being the founder and director of a professional services firm means doing what needs to be done to make the vision a reality. That's my job.
Very personal She is old enough. She is married to Arnold Saltzman. They live in Cliffside Park, New Jersey (on the other side of Manhattan's Hudson River). She studied her J.D. in Seton Hall University School of Law (Newark, NJ) at the Institute for Paralegal Training (Philadelphia, PA); BA in English at Penn State University (University Park, PA).
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Tips for your firm What should a new lawyer to the law market do or understand to improve his practice and development of his business? Firstly, I would say that the clients expect you to have an excellent legal understanding but doing a good job won't be enough. What clients care about are results and treatment. Bad results sometimes happen. Clients can forgive and they will if you have treated them well. Improve your legal practice concentrating on how well you treat your clients, not only on doing a good job. The formula for business development has three essential parts. Potential clients must know you (they don't hire companies or lawyers they have never heard of), they must be willing to do business with you (they need to feel comfor table with you) and they must trust you.
In general terms, tell us about your firm's work team… R o b i n R o l f e R e s o u r c e s o ff e r s personalized management consulting services to offices, legal departments and service providers in the legal profession. Our work is not limited to IP-related practices, but those are my roots. Our tailor-made services mean that we listen to the clients and help achieve their objectives. We trust in our knowledge and experience gained in similar circumstances to develop specific solutions for the client. How do you organize that work? The firm is currently organized into three teams. The Consulting Group helps law firms and legal departments meet their needs with a wide range of legal practice management services, ranging from strategic and consecutive planning to client satisfaction, reputation and reference studies, organizational structuring, professional development and compensation plans, marketing and business development programs. The Association Group offers planning, marketing, programming and administration services to professional and commercial organizations as well as law firm networks. The Legal Support Group works with companies which offer products and services to the legal community, helping to develop and implement marketing and sales programs. We also offer meetings and events planning, including retreats, galas and receptions and entertainment for
conferences and clients. In your opinion, and in regard to improving the practice and increasing business, what common problems do IP law firms and lawyers face today? The most immediate threat is without a doubt the commercialization of intellectual property practice. Intellectual property lawyers must learn to handle business efficiency and costs and concentrate on providing value by tailoring their services to their clients' needs. What kind of services do clients ask for the most? In the last few years law firms' priorities have nearly always included the increase of business. Latin American firms also tend to worry about differing from their competitors, client loyalty, the positioning of the firms and marketing tools such as websites and brochures. Corporate Intellectual Property Departments often look for comparative assessment studies of personnel structures and report production.
“LATIN AMERICAN FIRMS ALSO TEND TO WORRY ABOUT DIFFERING FROM THEIR COMPETITORS, CLIENT LOYALTY, THE POSITIONING OF THE FIRMS AND MARKETING TOOLS SUCH AS WEBSITES AND BROCHURES.”
other partners. We conducted a thorough assessment of the elements which constituted the company's culture to understand the morals, mixture of personalities, emotional intelligence, communication, team work, problem solving and management and leadership abilities. We also reviewed the current management structure and identified alternative management models. Based on our findings and recommendations at a two-day retreat, the partners unanimously accepted a new management structure and new management was elected. In our final report we recommended that the company assign an important role to the founding managing partner to redirect his energy and keep him in touch with the company's next development stage. Satisfied with what had been achieved, we didn't pressure the new management on this point, and they didn't take a deeper look at the role of this partner. In a space of 18 months he had left the company and started a new firm because he was restless. The lessons learnt from this successful project were: 1) change is difficult, even when approved, 2) in law firms, the company's assets are the people, who must feel wanted and appreciated. M
Can you tell us about a difficult case or situation which in the end made you grow as a professional? A law firm asked us to help them keep their highly valued internal culture and its leadership transition. The company had been run by a management committee since it was founded 15 years ago, consisting of a strong managing partner nearing retirement age and two
“THE MOST IMMEDIATE THREAT IS WITHOUT A DOUBT THE COMMERCIALIZATION OF INTELLECTUAL PROPERTY PRACTICE. INTELLECTUAL PROPERTY LAWYERS MUST LEARN TO HANDLE BUSINESS EFFICIENCY AND COSTS AND CONCENTRATE ON PROVIDING VALUE BY TAILORING THEIR SERVICES TO THEIR CLIENTS' NEEDS” 46
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Álvarez Delucio's Hospitality suite during the INTA in San Francisco
Chuanxin Hao, Susan Shao and Susy from Scihead IP and Israel Jiménez from Álvarez Delucio
For the fifth year running, the firm Álvarez Delucio fitted out an area to comfortably receive their clients and friends during the 133rd INTA Annual Meeting. The city of San Francisco housed the over eight thousand convention participants and provided the opportunity for the Mexican firm to launch their new online service which allows their clients to access their electronic files so they are able to have the information at any time, therefore destroying the distance barrier and time differences. This advance is an addition to the previously introduced services, such as online orders and searches, thus the firm is on the cutting edge in the use of new technologies innovating intellectual property services. The Álvarez Delucio office was close to the Moscone Convention Center and, as is tradition, the visitors were able to taste typical Mexican food in a warm and comfortable atmosphere which contrasted with the et climate of the city of technological innovations. Álvarez Delucio's partners and colleagues would like to express their deepest gratitude to their clients and friends for the trust and support shown and they confirm their commitment to continue “creating solutions to protect creativity”. www.marcasur.com
www.alvarezdelucio.com
IP, Mexican style Beata Wojtkowska from Kulikowska & Kulikowski and Alma Álvarez from Álvarez Delucio
Sarita Mosqueda and Patricia Álvarez from Álvarez Delucio; Arturo Pérez-Guerrero, from Guerrero-Noble, Perez-Orama & Guerrero-Calderon; and Alma Álvarez, from Álvarez Delucio JULY / SEPTEMBER 2 0 1 1
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The floor is yours
F150 vs. F150. The automotive market is special
Before the start of the 2011 Formula 1 season, which took place in Australia, the teams were already warming up their engines and were fighting to show the power of their new cars in pre-season training. After the existing conflict over the use of the Lotus trademark by two different teams, Ferrari launched their new race car for this season, the F15. The new car was named the F150 to commemorate the 150th anniversary of the unification of Italy. It was obvious for some what Ferrari F150 meant. Nevertheless, for Ford Motors the name of the Italian team's new car generated a conflict with the famous Ford F150 pick-up truck. Fortunately for the parties, the dispute didn't last long, given that Ferrari decided to change the name of its single seater race car, renaming it Ferrari 150th Italia. On the other hand, Ford decided to desist with its claim. However, if the case had been resolved in court, perhaps the outcome would have been different. In the hypothetical case that it would have been submitted to Venezuelan jurisdiction, it would have been based on the provisions laid out by our Trademark and Patent Office in its 1235 resolution
published in Official Bulletin 475, which settled the dispute between the T3500 trademark, owned by Mazda Motor Corporation on one hand, and the of General Motors Corporation C-3500 trademark on the other, both used to identify Class 12 goods, specifically “vehicles”. The office pointed out that both belonged to “a selective market where the consumer public will not easily confuse them because they are
very specific and expensive products”. To be honest, if the dispute between Ferrari and Ford had been resolved in Venezuela, it seems clear that for consumers, pick up trucks and Formula 1 race cars are not easily confused, and the latter of course are not available in show rooms.
Matías Pérez Irazábal Date and place of birth: Caracas, Venezuela, 30.10.1976 Office: Hoet, Peláez, Castillo & Duque Position: Associate Nationality: Venezuelan Profession: Attorney Academic information: Attorney, specializing in intellectual property.
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The floor is yours
The name of a Condominium is not a Trademark The third panel of the Supreme Court of Justice rejected a trademark infringement lawsuit filed by Baer Empreendimentos S/C Ltda against Compax Buildings, based on the similarity of the trademark AQUAMARINE, registered by the plaintiff for the “administration, rental and ancillary services for the real estate sector”, and the name of a condominium o f a p a r t m e n t s n a m e d ACQUAMARINA in the city of Rio de Janeiro, built by the defendant (special appeal 867,067 RJ). The reporting judge, the Honorable Della Giustina Vasco, decided that the name of the condominium of apartments does not infringe the intellectual property rights inherent to the trademark. The names of buildings or condominiums in the judge's opinion are not trademarks or commercial activities, but civil activities, and cannot be classified as goods or services. “The fact that a company builds a condominium and gives it a name to set it apart from the others does not make it a commercial activity”, he explained. “The protection of a trademark registration is limited to commercial activities such as providing services or marketing goods; it doesn't extend to naming things”. The reporting judge cited Portuguese professor José de Oliveira Ascensao who, on studying a similar conflict in Portugal involving the name of an apartment in Lisbon, named Dolce Vita and a registered trademark of the same name, concluded that: “A trademark has the aim of identifying goods or services. Incidentally, we aren't dealing with a service. Nor are we dealing with a product. We have highlighted an essential aspect in this field: a trademark distinguishes groups, not individuals.
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Or, if one prefers, it distinguishes individuals by its integration in a group, not by its singularity. Therefore, a trademark opposes other business signs which are only based on the individuality. Names of commercial establishments or signs, for example, are not trademarks […]. If this were not the case there would be no distinction between a trademark and a name. All names would be trademarks if and when applied to an object: Vasco de Gama Bridge for example. However, the law puts them in their rightful place. Names and trademarks can be distinctive signs, but names are names and trademarks are trademarks.” Maurício Lopes de Oliveira (coord.): “Nome de edificio: conflito com marca, insígnia ou logotipo?”, in: Cadernos de Direito de Marcas, v. 1, Río de Janeiro: Lumen Juris, 2007, pp. 1-9 and 46-54).
Could this decision mean a green light for companies to name condominiums with registered names in Brazil? In “usual” cases of similarity with registered trademarks, I think it's exactly what will happen. Nevertheless, the construction of condominiums with very famous trademarks such as Rolex or Ferrari can still be contested for other reasons, such as unjust enrichment.
Rodrigo Borges Carneiro
Office: Danneman Siemsen Advogados Nationality: Brazilian Profession: Attorney Academic information: Danneman Siemsen Advogados partner and intellectual property agent. He works in the trademark, unfair competition, copyright and entertainment law fields, advising clients and filing IP lawsuits in state and federal courts. He has a Masters' in Intellectual Property Law from the John Marshall Law School in Chicago, USA and a post-graduate diploma in International Copyright from King's College, London.
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Attorneys in their spare time
TAKE
YOUR
TIME
DEDICATION, PASSION AND DYING TO HAVE A GOOD TIME. TWO ATTORNEYS EXPLAIN HOW THOSE COMPONENTS WORK IN THEIR SPARE TIME.
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On stage. Known for being the owner and CEO of Casseli Law Firm of Paraguay, Caroline Casseli (Paraguayan-French, 36 years old, attorney and public relations professional) started acting when she was a little girl. At first, and during her childhood in France, she just stuck to imitating people and organizing small plays for Christmas and Easter together with her cousins. Later on, because of her passion for journalism, she knew that she wanted to be in front of the camera and that she would make it to theatre and television. Three years ago, tired of her routine, she registered in El Estudio Theatre Investigation and Disclosure Centre, directed by Agustín Núñez. And it was there that she lit up. She took acting lessons with Hernán Melgarejo, who introduced her to the Stanislavski acting method. “Being someone else”, Caroline admits, “demands a radical change in the way you think, walk, dress, and even feel things”. Her first play was Sala de espera; then came television appearances in the soaps Papá de corazón, De mil amores, La doña and in the miniseries La herencia de Caín. Her first professional play would come later, Treinta, and that same year Albino Jara Ñembosarai (El juego de Albino Jara), the most demanding of them all. “Each actor had to play three and even up to four characters as well as dance and sing”, she says. Finally the play Electroshock, where not only did she act but was, as in Albino Jara, executive producer. What she most likes about acting is knowing that you can generate emotions on stage. “It is certainly the best challenge that one could take on”, she reflects. And of course, the public's applause “is the best reward”. However, Caroline never ceases to point out the difficulties which an actress can come across. She says that for the second season of Treinta she played the role of the eldestwww.marcasur.com witch and
had to be in the center of the stage, alone, speaking Latin and “as if casting an adjuration”. Caroline recalls: “on the opening night neither the incantation nor the Latin nor anything else came out…my mind was completely blank, and all I came up with was to scream like a mad woman, which luckily enough suited the character!”. Although she admits that she would love to dedicate herself to acting professionally, she does it as an amateur right now. “Treading the boards and feeling that adrenalin rush is unique” she says, “but first and foremost I am mother to a teenage boy and a responsible professional with a law firm in full growth”, she closes with conviction. Her projects continue in all their splendor. Her next challenge is to open a national production company where she can produce short and feature films. And she is going for more.
The adventure. Juli Gutiérrez (Peruvian, 36 years old, attorney at Estudio Muñiz of Peru and a Master's from the Universidad Complutense de Madrid), states that hiking captivated her because, among other things, it completely removes her from the world of law, legal reports, dealing with clients and formal clothes. Let's break it down. It all started when she agreed to go on a not very organized trip with her husband, who was already a hiker, to the Peruvian northern mountain range. Almost without realizing it, Juli had already started the trip on difficult terrain, altitudes and different climates. Since then hiking turned out to be an unexpected success and has become a regular activity in her life. “Hiking stimulates me and feeds my being. What I like the most is having been able to see places I would never have dreamt of”, she says.
over country paths and is usually used as military training, but it allows those who do it as a hobby to exercise, enjoy nature, see areas rich in heritage and ethnic and cultural elements”. The decision to embark on a trail always constitutes a different challenge to those who practice it. “Each new trail is different from the one before it and one isn't better than the other because all of them leave you with different memories and stories. It's an experience. The challenge is to reach the finish line and show yourself that you can achieve what you set out to do”, she says bravely. Your clothes depend on the trail you choose, however, in her experience there
mountain range of Southern Peru. She admits that it isn't easy to meet people that enjoy hiking since it requires
are five things which you should always
a lot of sacrifice and effort for those who
have: a comfortable and appropriate pair
practice it. Merely taking part already
of shoes, sun block, water, energy bars
makes them winners because of all they
and a good photographic camera. The
receive from it. And she concludes: “It
weight of your bags can dictate the
hasn't helped me meet clients but I have
difficulty of your journey. “More weight,
met great friends doing it”.
M
more difficult. That's why there is a golden rule when preparing your rucksack: you decide on the essentials and you take half of that”, she reveals. Of all the trails she has hiked, the Huascarán in Peru stands out “for its beauty: a snow capped mountain top surrounded by the Llanganuco turquoise lagoons” and Mt. Everest, in China “because of its grandeur: it's the highest mountain in the world”. The longest took
We asked her what exactly it entailed and she replied: “The activity consists of
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her eight days in total and was the trail that links Cusco and Apurimac in the JULY / SEPTEMBER 2 0 1 1
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WWW.MARCASURTRAVELLING.INFO
Bund’s traditional walk
SHANGHAI FROM HERE TO CHINA ECONOMIC MOTOR OF A COLOSSAL SUPER POWER, IT INVENTED ITSELF FROM ORIENTAL LEGACY AND WESTERN INFLUENCES. TODAY, GROWING IN GIANT LEAPS, VISITING IT IS A MULTI-SENSORY EXPERIENCE WHICH MAKES ANY CITY AROUND THE GLOBE SEEM SMALL 74
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Lying on the East coast, two hours away from Beijing and Hong Kong and with 20 million inhabitants, is the biggest city in China and most dynamic in the world. Impacting, mysterious, glamorous, surprisingâ&#x20AC;ŚThere aren't enough adjectives. Its overwhelming city lights take our breath away when it greets us and when saying farewell. The city was built from poverty and prosperity. During the opium wars (1842), the Western powers demanded that China open Shanghai's port. The city was the center of the exchange of products and bank notes. However, it lost importance during Japanese occupation (1937) and later with the Chinese revolution (1950). Shanghai finds its way to the East China Sea through its rivers. The Huangpu River fills with maritime activity and divides it into two halves: Bund and Pudong. Bund holds the most elegant buildings of the time of Western rule in a little more than 1 kilometer. There are plenty of promenades, shops, franchises and beautiful walks. On the other side is Pudong, with its emblematic Pearl of the Orient as its flag. It was the city's poorest neighborhood around the middle of www.marcasur.com
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A view of Pudong from Bund from the Huangpu River
the 20th century: a squalid slum of shacks and brothels. In 1990 it was declared a special economic area and since then it has become an international architecture and construction trend reference point. The transformation has been spectacular: the old neighborhood is now an endless forest of state of the art skyscrapers. You can't stop looking up, even when your neck becomes stiff! Going to the top of the Jinmao tower is a must to enjoy everything from up in the clouds. The streets are packed with movement. Be it from locals going about their daily business or tourists filling up their camera's memory card up, all giving Shanghai an air of megacity. The traffic, dense but not chaotic, grows at rush hour. To avoid it, your best bet is the 54
supersonic bullet train, which, at 232 mph, covers any long distance in minutes. The taxis and underground are modern, clean and courteous, providing an excellent way of travelling within the city. To see it, as with all large cities, the easiest thing is the classic double decker city tour, which allow you to hop on and off at the established points along its planned route. The ticket costs $30. The old quarter of Shanghai is typically Chinese: alleys, markets, temples, and thousands of people. You must cross the fascinating markets with curiosity and care to find valuable antique pieces or perfect copies. As always, you must haggle, so a good dose of feigned annoyance is the economy's ally.
Where to stay? The Bund was very comfortable. There is a multitude of different types of hotels and of five star hotels as well.
Where to eat? Mint, T8, Ye Shanghai, M on the Bund, Mr and Mss Bund, Katherine 21, Los Bares, Bar Rouge, Faces, Martini Bar, Glamour bar. There are plenty, enjoy!
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The French Quarter (historical area) gives a European charm to the city: tree lined and elegant avenues, with cafĂŠ tables on the pavement and a constant cool atmosphere. The shopping streets par excellence are Nanjing Road and Huaigai Dong, the latter being the most exclusive. A jungle of shops, signs and services unfolds between both. They look to attract clients with their wonderful staircases, giant shop windows and vast lights. Each shopping center is more luxurious than the next although they have the famous Western brands, very ample spaces and sky high prices in common. There aren't enough hours, places or dishes to eat in the day! China's top restaurants are found in Shanghai, with every kind of cuisine. The culinary fusion of flavors, smells, creativity and display of acclaimed chefs is fabulous. The night time delights are also guaranteed with classy nightclubs with music and aesthetics with a western air about them. The hotels are fabulous, both in terms of size and technology. State of the art rooms and exquisite appearance, with a smile and respect towards the customer as commitment. One word to describe Shanghai: fascinating! M
Yuyuang market www.marcasur.com
JULY / SEPTEMBER 2 0 1 1
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kidding but
seriously Number One It was the spring of 2020 and Latin American law firms were expectantly waiting for the new Legal Forum ranking. This ranking was so prestigious that it marked all of the offices destinies, who were anxiously awaiting (like children for a sweet) the famous English firm's report. In my country, for example, the famous Lucho & Lucho case is still remembered, a firm which suddenly disappeared in 2011. Its tenacious members tried to keep it afloat until the very last minute but ended up selling even the staplers. The reason? It didn't appear in the ranking! On the other side of the coin was the snooty Fontes & Palmiero, a success machine since they took the top spot in 2014. But let's get back to the spring of 2020. Around that time I received the excited call from my esteemed colleague Marco Brush from the Square & Painted & Grubby office. In between cries, clapping and clinking of glasses, he told me hoarsely that his firm was number one in the ranking. “Come and celebrate with us”, he invited whilst a barrage of music at full blast drowned out what was l e f t o f h i s v o i c e .
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I reached the offices and the atmosphere was hyper noisy: there were streamers on the floor, champagne on the desks and confetti decorating the heads of all the employees who were doing the conga as they sang: “Fontes, Palmiero are not number one!” My friend Marco introduced me to the head of the office, Ulysses Grubby, whom I barely got to see: sweating, he was surrounded by cameras and microphones answering the non-stop questions of dozens of journalists. “This is fruit of our hard work which our beloved Julian Square has always enforced in us” he shouted. So much noise was understandable: being number one on the list meant increasing your client portfolio substantially. Now everyone would want to work with them! Naturally, they would have to grant Legal Forum 5% of the earnings. However, at Fontes & Palmiero the atmosphere was deathly. The curtains were drawn, the phones silent and the computers quiet. Even the coffee machine stopped working! You could even hear some inconsolable sobbing. Not only had they lost the top spot but they had dropped to third place. A nightmare! That day, the local business brunch restaurant was packed. The common topic of conversation was the new Legal Forum list and all the guests boasted about having Square & Painted & Grubby as their firm. If anyone mentioned the name Fontes & Palmiero they quickly assured not knowing them. That day, the local business brunch restaurant was packed. The common topic of conversation was the new Legal Forum list and all the guests boasted about having Square & Painted & Grubby as their firm. If anyone mentioned the name Fontes & Palmiero
they quickly assured not knowing them. During the course of that afternoon it was found out that Mr. Jacinto Fontes, legendary head of that law firm, had jumped off a bridge, unable to stomach the news of being third. Meanwhile in London, another gentleman was living an altogether different reality. He was in his sixties, had abundant grey hair and generous extra pounds. He wore a tailor made Italian suit with multicolored suspenders and was about to savor the last whisky before dinner. He was sat comfortably in a soft armchair at his golf club. Whilst savoring a sip, he remembered the beginning of his multimillion company. He had been fired as manager of a biscuit factory and his brother-inlaw (a not very bright court clerk) introduced him into the editorial office of a legal rag. In time he became the owner and transformed it into the most powerful legal editorial: Legal Forum. “This business is easier than selling biscuits”, he though with a chuckle. “And all thanks to lawyers' egos”.
M
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THE HISTORY OF A BRAND
So British
Chocolate created in 1963 by the Rowntree Mackintosh's company
IN TERMS OF CONFECTIONARY AND OTHER SWEETS, THE REPUTATION OF THE ENGLISH DOES NOT NEED PROVING, NEITHER DOES THEIR TENDENCY TO MIX GENRES. WE COULD AS EASILY BE TALKING ABOUT A RECIPE FOR ROAST MEAT WITH MINT AS A DARK CHOCOLATE, ALWAYS WITH MINT!
In 1962 the Rowntree Mackintosh's family business produced 4 x 4 cm squares of dark chocolate filled with a mint flavored sugary paste for the very first time, presented in individual packages on a tray inside a long slim green box. Joseph Rowntree named them After Eight or After Dinner and exactly as the name suggests they were advertised to be eaten after dinner. With the slogan “After dinner mint” the prestigious English chocolate trademark w a s b o r n . When After Eight became part of Nestlé in 1988, after buying Rowntree
Mackintosh's, the trademark started to distinguish itself by eccentric advertising campaigns. In 1985 it made “Atlantic ship” with references to the Titanic and in 1989 “The rocking chair”. In 2000, the company J. Walter Thompson came up with a spot inspired by the film The Full Monty with the song That's the way I like it. The advert shows several English men who, after finishing dinner, start a game of pool and realize that they have left their After Eight in the living room where their wives are. Prepared to do anything in order to recover them, they start doing a strip-tease. Later on, in an attempt to sell the chocolates to tourists visiting London, the chocolates were packaged and sold as memorabilia of the city with photos on the top part of the box of seven
places of sightseeing interest: Big Ben, Tower Bridge, Westminster Palace, the London Eye and the Tower of London. The manufacturing headquarters of Nestlé Rowntree are located in the city of York and are capable of producing four tons of chocolate an hour. And if you are unable to resist chocolate, the Ormolu Mantle clock similar to the antique French style Louis XV which appears on its logo will always show you the time to try them. M
Sources: Petites histoires de marques by Jean-Watin-Agouard and http://www.aftereight.co.uk. 57
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THIS EDITION IS SUPPORTED BY: