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Thank you for picking up a copy of “The Global IP Matrix magazine”. We are elated with the reception & feedback our magazine has had since our launch during the INTA Conference in Seattle in May 2018.
CONTENTS Page 4
We have strived to ensure that this issue is also packed full of current content & issues from some of the world’s leading IP law firms and businesses. We endeavour to bring you a
The Complex Art of Infringement Searching Dean Parry, Technical Director at PatnetSeekers Wales UK
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Unearthing the Russian Mole Victor Green & Company London UK
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Utility Model Protection in Poland Marek Bury, Managing Partner at Bury & Bury Poland
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Artificial intelligence in the Caribbean and Latin America Gabriela Bodden, Partner at Eproint Costa Rica
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Elvin Hassan
ECTA exclusive - The Final Farewell & New Beginnings Ruta Olmane Immediate past President of ECTA Associated Partner of METIDA & Dr. Gergely Dzsinich, (LLM Strategy & Communication Officer at ECTA)
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Joint ownership of trademarks. Vladimir Biriulin, Partner at Gorodissky & Partners
Elvin Hassan Senior Editor - The Global IP Matrix
Carlos Northon
Trademark trend in Africa Brenda Matanga – Managing Attorney at B Matanga IP Attorneys
Domain names – Are they infringing on your IP Bart Mortelmans,General manager of bNamed.net
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We would like to thank all of our contributors and all our subscribers from all over the world who are reading our new publication and spreading the word. Thank you! Look out for the next one!
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Trademark Infringement and the Remedy of ‘Passing Off ’ in Nepal Anju Upreti Dhakal and Kripa Shrestha From Pioneer Law
Enforcement of IP rights in Sri Lanka Anomi I Wanigasekera, Partner & Head of Intellectual Property at Julius & Creasy
new, contemporary magazine with interesting articles from all over the globe with topics and issues that will educate you in all things IP and also keep you wanting to read & know more.
Seize business opportunities using smart IP data Ms Doris Spielthenner, Director, Law Firm Analytics, CPA Global
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EUIPO: IPR Infringement Report summarised Lisa Lovell, CEO Brand Enforcement UK
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CEO & Founder Northon’s Media PR & Marketing LTD Publisher of The Global IP Matrix carlos@northonsprmarketing.com Copywriter & Editor Global IP Matrix Info@northonsprmarketing.com
Craig Barber
Head of design Global IP Matrix info@northonsprmarketing.com
EDITORIAL BOARD OF DIRECTORS
Gabriela Bodden
Partner at Eproint Global IP Matrix editorial board director
Afamefuna Francis Nwokedi
Principle counsel & Group head Stillwaters Global IP Matrix editorial board director
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PATENTS
The Complex Art of
Infringement Searching
Dean Parry (Technical Director) Patent Seekers Ltd www.patentseekers.com
“Not checking for third party patent rights is one of the biggest mistakes made by companies when launching a new product” Mr Dean Parry – Technical Director at Patent Seekers Limited for the last 14 years, having been involved in more than 14000 searches, for international patents attorneys both in private practice, in-house and for major blue-chip companies, discusses the importance of carrying out infringement searching:
So, what is patent infringement?
The owner of a granted patent has a monopoly (defined by the patents claims) over his invention for up to 20 years, if in this time a third party tries to manufacture and/or sell the invention in the territories/countries protected by the patent then they risk infringing the patent rights of the owner. Therefore, anyone intending on manufacturing/ selling (launching) a new product should have a patent infringement search to assess the risk of infringement. In fact, not checking for third party patent rights is one of the biggest mistakes made by companies when launching a new product and may result in them being sued for wilful infringement (deliberate infringement which carries greater damages).
The importance of using a patent attorney
Before having a patent infringement search carried out, the best approach is to have an initial discussion (and engage) with a registered patent attorney. As patent infringement law is
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an incredibly specialised area, an attorney can help direct the scope of a search and is the only person qualified to give the final decision on whether you are infringing third party patent rights.
Carrying out the infringement search
Due to the complexities of patent infringement searching it is wise to use an experienced search firm to carry out the search. An example of the complexities relates to using prior case law for guidance, especially when considering multiple countries as there are differences in patent law from e.g. European compared to US. When carrying out these patent searches, it’s best to use a broad, catch all approach. Search on the essential features of the invention; find patents (and patent claims) using the most likely keywords and/or patent classes, and use the tried and tested search techniques, while limited to the territories/countries of interest in the last 20 years. It’s important to note that patents fall into several categories during their life cycle: 1. Granted alive patents 2. Granted patents that are now dead (e.g. early death due to non-payment of renewal fees, invalidity action or because they have recently come to end of the lifetime of a patent) 3. Patent applications that are alive 4. Patent applications that are dead 5. All the above should be considered during the search and then categorized in the results. The analysis of the results will help give a greater understanding when trying to launch a product. 1. 2.
For example: Without question all close, granted and alive patents need to be considered. A dead patent that is bang on for subject matter may have died due to an invalidity action, so
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you would want to know this and whether the way is now clear for you. A patent application that is alive and close on subject matter may not be granted now but could be granted in the future e.g. next week!
Developing a search strategy
Once an attorney has put together the main features of the product and the territories of interest, a search strategy can be formulated. A patent infringement search strategy is based around trying to put together keywords and patent classes which would have most likely been used on third party patents. Patent classes can be identified by looking at the class description list and the first initial set of keywords would be the main features provided by the attorney or company. These classes and keywords are then used to find an initial list of patents which can then be used
to create a larger list from their forward and backward citations. These can then be checked for keywords and classes used. In this way the search is taken forward to find further results. There are various free and commercial patent databases available to carry out an infringement search. They contain many useful features to simultaneously display title, abstract, main drawing and main claims to help identify any patents that may pose an infringement risk. Also, many databases now include machine translations (some good, some bad) for territories such as China, Japan, Korea, etc, to help cover these territories.
SPCs are applicable to certain subject matter, which the UKIPO details as the protection of patented active ingredients present in pharmaceutical or plant protection products for which you must obtain regulatory approval to be sold. Examples are marketing authorisation or product licence. Where a patent protects “active ingredients”, the SPC can compensate for the lag time involved in obtaining regulatory approval, by extending the patent expiry date up to a maximum of 5 years, although with the potential for a 6-month extension where relevant paediatric testing has occurred.
This is particularly true of early adopters of a technology. Their initial filings may cover the basis for much of the advancements that have followed, and may be worded differently to more recent documents, and recent applications, which may be amended to include features from the specification before grant.
Once the main patent results have been found, it’s important to check the status (application, granted, alive or dead) of each patent. This can be done in a few ways including INPADOC and national patent office checks. There can be delays and errors in INPADOC so it’s important to cross check against the national registers for any patents that are considered an infringement risk based on subject matter to gain an up to date and accurate assessments on status.
From an infringement searching perspective, the increased timeframe for results to be granted/alive should be factored in when dealing with applicable subject matter. This involves the date period which will need to be covered during an infringement search; going back from present day and the potential expiry date of a patent in the future if granted an SPC. It is therefore advisable to seek professional legal advice concerning SPCs and to utilise an experienced search firm to carry out the necessary searching and setup involved.
To conclude;
How much should be spent? Well how much money should you be throwing at this? It’s a common question and not an easy one to answer. There are several questions to consider: 1. How heavily patented is the market you are looking to enter and how litigious is it? 2. Are you a start-up company or established small, medium or large company? 3. How deep are your pockets? When considering the market you are entering, are there a lot of patents in this subject area? If there aren’t then the search may be relatively inexpensive. However, a heavily patented area such as mobile phone technology would have thousands of patents, and there may have been a large number of infringement actions taken. This would usually require an extensive search costing many thousands of dollars (would you really want to enter this market off the back of a small search?). If you are a start-up company, then the costs may be prohibitive, but it is better to have some level of search carried out than none at all. Sometimes a simple search can give results that provide enough of a warning that this market should not be entered or would need changes to the product. But nothing can be a substitute for an extensive search to provide an accurate representation of the infringement position.
A word on Supplementary protection certificates (SPCs)
How does infringement searching differ from prior art searching?
Again, this is a common question and although there are numerous differences between the two searches, the primary differences are: 1. Territories/countries covered 2. Date range 3. Purpose 4. Searching and analysis of claims 5. Price A prior art search focuses on patent descriptions and is typically not limited by any specific territory or date, while an infringement search will focus on patent claims and be limited to publications in the territories/ countries of interest in the last 20 years. The date range ensures that older documents which can no longer be in force are not covered by the infringement search, while limiting to the territories/countries of interest ensures only documents which may pose a genuine infringement risk are identified. The purpose of the search is also important, a prior art search attempts to show whether an invention is new and inventive, whereas an infringement search is trying to show whether a product falls within the monopoly covered by one or more patents. The search and analysis of patent claims, as opposed to descriptions as covered by a prior art search is key to any infringement search. As while they define the protected invention they are often written in extremely broad terms and, as such, can often be misinterpreted. Similarly, due to the broad nature of the claims the full specification of most documents must also be reviewed to determine whether an infringement risk exists in relation thereto.
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All the above shows why an infringement search is a much more in-depth and timeconsuming search in comparison to a prior art search, which in turn leads on to the increased costs associated with them.
When launching a new product, it’s important to consider your infringement risk. Consider the size of the market (and how many big players there are within the market), approach a patent attorney to discuss the product scope and territories you wish to manufacture and/ or sell into. An attorney will be well placed to commission a commercial patent infringement search and advise them on the technical features of the invention. The best option is an extensive search but if this is beyond your budget then it is worth considering scaled down versions of this rather than having no search at all. Gauge the costs of the search best on the market you are entering. A professional search should be carried out with consideration of all patents (applications, granted, alive and dead), limited to the time frame and territories of interest, as this will provide the true picture of the infringement position not just now but also the potential position in the future e.g. patents that may be granted in the future. The final word on the infringement position would need to be considered by the attorney, once the final results have been analysed and compared to the product. When launching a new product, it’s important to consider your infringement risk. Consider the size of the market (and how many big players there are within the market), approach a patent attorney to discuss the product scope and territories you wish to manufacture and/ or sell into. An attorney will be well placed to commission a commercial patent infringement search and advise them on the technical features of the invention. The best option is an extensive search but if this is beyond your budget then it is worth considering scaled down versions of this rather than having no search at all. Gauge the costs of the search best on the market you are entering. A professional search should be carried out with consideration of all patents (applications, granted, alive and dead), limited to the time frame and territories of interest, as this will provide the true picture of the infringement position not just now but also the potential position in the future e.g. patents that may be granted in the future. The final word on the infringement position would need to be considered by the attorney, once the final results have been analysed and compared to the product.
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Unearthing the
Russian Mole
Over 30 years of searching excellence
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Introduction
In a memorable enquiry about a Russian device called the “Magic Mole”, a great deal of detective work was required to find the answer. The Magic Mole was the subject of a US patent and our client needed to prove they were not infringing the patent claims by the sale of a similar product. We were able to identify an expert witness who contributed to a successful outcome; the plaintiff dropped the action against our client. Should you wish to requisition a search from us, colourful or otherwise, rest assured that the relationship between you and Victor Green & Company, and any information you provide, will be kept strictly confidential. We took care to obtain permission from the instructing attorney for us to publish an account of this interesting case.
The Search
In 1989 there was a search inquiry about a ‘Russian Magic Mole’. The Magic Mole was a machine that allowed pipes to be laid underground without the need to dig trenches or tunnels. It looked like a torpedo and could bore horizontal channels for pipes and cables under canals, roads and railways using a pneumatic hammer action. The Russian inventors had obtained a US patent1 covering the device and our client was being sued by them in the United States. The machine had been imported into the United Kingdom in 1969, before the US priority date, knowledge of which would indicate that the patent was invalid. Although the US Company knew of prior use of the device and verbal evidence would have been sufficient if the disclosure had occurred in the United States, they needed documentary evidence for a US court if the information had arisen in other territories.
Tel: +44 (0)1633 816601 Email: mail@patentseekers.com www.patentseekers.com
Cost-effective
Victor Green, MD
Patent information work is sometimes more colourful than one would expect. At Victor Green & Company we’ve been asked to carry out searches that need a lot of lateral thinking.
Patentability/Novelty Search Infringement/FTO/Clearance Invalidity/Patent Busting
Resourceful
It was known that George Cohen Machinery Ltd had imported the tunnelling device into the UK by 19742. Patent analysts at Victor Green & Company started by telephoning the company and learned that the first batch of machines had been imported by some other company. By a series of contacts we found a company in Ireland that had bought one of the machines in April 1970 and still
- Founded in 1986 www.victorgreen.co.uk - Full range of patent, design and literature searches had the manual. Their engineer was good remembered a demonstration of the Magic - Staff skilled in all fields of science and technology enough to send the whole document, which Mole and who had diaries dated well before the - Meticulous, resourceful, cost-effective
by extraordinary luck still had attached the priority date. At a visit to Taunton he was able compliment slip from the importer, Searching Wogau the to show us an entry for January 1969 indicating world’s IP by class, code, keyword, Brameast Trading Ltd3, signed E.W. Webb. his attendance and proving that the machine structure, sequence, image and interview. had public disclosure even before the Russian priority date of 26 February 1969.
The Importer
request@victorgreen.co.uk
www.victorgreen.co.uk
Conclusion
Victor Green & Company With that information in our hands +44-(0)20-7269-9200 we went hunting for Mr E.W. Webb. Telephone +44-(0)20-7269-9210 Victor Green & Company directories of the regions of the UK, working Albert and the man who had first identified Victor Green & Company outwards from London, were examined for the Magic Mole in Russia as a machine First Floor, 25 Angel Gate, City Road, London, EC1V 2PT, England every occurrence of the name E.W. Webb worth importing were also interviewed, and and these were followed up by phone until we a meeting was arranged at a London patent discovered the person we wanted, retired but attorney’s office at which all the interviewees alive and reasonably well in Milton Keynes. He were brought together after some 18-20 years had worked for the Guinness Mahon merchant for a discussion with our client’s US attorney bank which owned Wogau Brameast, and was in a strange kind of reunion. responsible for the original importation of the first 40 Magic Moles. Subsequently it was learned that the plaintiff ’s attorneys fought back with some vigour, firstly by trying to invalidate the witnesses’ evidence on the basis that small sums were paid by A meeting with Mr Webb was very fruitful. our company for their time and trouble in The 40 machines were sold, but the product taking part in the interviews, and secondly had been dropped by the bank and the spares by suggesting that they had been led by our sold off. Mr Webb had set up and attended interviewer to the evidence they had given by demonstrations of the Magic Mole and was unfair means. None of this was effective. able to give us the name of the engineer, Albert, who had carried out the demonstrations. The Apart from the paper evidence, it was demonstrations included one in the grounds the presence of Albert, who gave the first of the US ambassador’s residence in London, demonstrations in the UK of the Magic Mole Winfield House, with the aim of laying cable that was wanted at the trial in the US. He without disturbing the rose beds. We realised didn’t need to give his evidence - the case of that the demonstration had therefore taken the other side folded at the trial and the client place on US soil, and wondered if eyewitness was cleared of infringing the patent claims. evidence would be sufficient if the date could be established as early enough. This was verified by the American Bar Association, but unfortunately the embassy staff had no particular interest in helping us with our enquiries, believing that the records would be difficult to access if they even still existed.
Demonstrations
By another series of contacts… An engineer in Hull remembered that he used to obtain spares from “a plumber in Norwich”. We searched the Yellow Pages for Norwich (for younger readers these were telephone directories classified by trades and occupations), and by phoning everyone in the list of plumbers, we identified a Mr Reg Whiting as the owner of the Magic Mole spares. He too was tremendously helpful. He faxed us a list of the forty owners of Magic Moles, and as we started contacting the names we found an engineer at the South West Electricity Board in Taunton, Somerset who
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References 1 Pneumatic percussion device for making holes in the ground by packing the latter, US3616865, Institut Gornoga dela Sibirskogo Otdelenia, Priority date 26 February 1969 https://worldwide.espacenet.com/publicationDetails/originalDocument?FT=D&date=19711102&DB=&locale=en_ EP&CC=US&NR=3616865A&KC=A&ND=4 2 Pneumatic Tunneller, New plant, equipment and materials, The Highway Engineer, Journal of the Institute of Highway Engineers, Vol.21, No.1 p.10. January 1974, Chartered Institution of Highways & Transportation (CIHT) website, http://www.ciht.org.uk/en/document-summary/index. cfm/docid/0D421485-5E51-4AB9-A0DC859A7EBDCFE8 3 Magic Mole, From Russia comes an ingenious aid for laying small diameter pipelines quickly, easily and, so it is claimed, at an economic price. Gas World - Gas Transmission, 14-16, 29 November 1969
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Over 30 years of searching excellence
! W O N N I O J 018 2 K E E P W I N O D LON
Meticulous
Resourceful
Cost-effective
Ideas e r u t u F Shaping
December 10-12 , 2018
e tc v e n u e s S t P a u l' s , L o n d o n , U K
- Founded in 1986 - Full range of patent, design and literature searches - Staff skilled in all fields of science and technology - Meticulous, resourceful, cost-effective Searching the world’s IP by class, code, keyword, structure, sequence, image and interview. request@victorgreen.co.uk
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+44-(0)20-7269-9200
Victor Green & Company
+44-(0)20-7269-9210
Victor Green & Company
Victor Green & Company First Floor, 25 Angel Gate, City Road, London, EC1V 2PT, England
3 DAYS 2 CONFERENCES rt a t s es T e f 25+ HOURS OF NETWORKING A com e t V a k. + e g 9 pwe le 1 1 e ATTENDEES 500+ D m £ doni n f r o ww.lo w 60+ SPEAKERS Contac ts: george@cosmonauts.biz +44 (0) 2037 139 396
Utility Model Protection
IN POLAND
‘Utility model protection in Poland is severely underused by the applicants before the European Patent Office which leaves their demand of protection unsatisfied’
At first glance this title might be considered a bit farfetched as a conclusion, yet, it finds a lot of support in the numbers.
The protection for utility model Let us sum up the allegedly underused right of the protection for utility model. This right lasts for 10 years from first filing and is granted after examination. Only novelty and usefulness criterions are examined. Demonstration of inventive step is required neither in prosecution nor in litigation. Only 3D described structures can be protected – as supposed to methods, substances, systems and circuits. Any refused European patent application can be converted to the polish utility model application.
Marek Bury, M.Eng.PhD Managing partner from Bury & Bury www.bnb-ip.eu
It is rather difficult to assess what percentage of inventions of European patent applications could qualify as Polish Utility Models (being a subject matter). A reasonable guess could be based on the number of applications rendered by EPO as belonging to mechanical and civil engineering in the field of technology statistics, which is c.a. 30%; That number corresponds to 30 000 of refused or abandoned applications annually. If the reason of the unsatisfactory result of proceedings before the EPO was an inventive step objection then prosecution of the invention eligible as utility model before Polish Patent Office could be a relatively easy shot. Another reasonable guess is, that it could be the case of the 15 000 rejected or abandoned
Having summed up the above, let’s take a closer look at the figures. There are c.a. 200 000 European patents annually. Every year c.a. 100 000 European patents are granted which leaves applicants of another 100 000 rather unsatisfied. Of the 100 000 European Patents granted annually roughly 12 000 are validated in Poland (full translation + request). Less than 100 European patents validated in Poland have patentees based in Poland. This means that roughly 12% of foreign European applicants are interested in having valid protection in Poland.
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European patent applications. Applying the ratio of 12% applicants interested in having protection in Poland to the number of 15 000 of all possible cases gives 1800. 1800 is a number of conversions that could be expected, provided that the demand was about to be satisfied. The total number of utility models granted for the applicants not having principal place of business in Poland in 2017 was “34”. Even if the math above is not particularly exact the 1800 vs 34 leaves a huge space for unsatisfied demand.
The cherry on top of the cake: The Polish patents and utility models register mentions no conversion from the European patent application – at least none for foreign entities that have their protective rights for utility models granted in Poland in 2017.
reflection of the author’s personality, requiring the human intervention in order for copyright to arise. This is not the best approach as adequate protection sparks investment in this region of the world.
A DIGITAL PAIR OF HANDS:
ARTIFICIAL INTELLIGENCE IN THE CARIBBEAN AND LATIN AMERICA Back to the future
What seemed like something impossible now isn’t, the merging of cloud based computing, big data analytics and machine learning are playing a big role in powering AI (Artificial Intelligence), which is now applicable in all technology areas such as facial recognition, which has totally impressed me in the last years. Companies such as Apple and Samsung may very well pose the largest facial recognition and finger print database, and this makes one think about adequate protection in this region of the world besides the usual trademark or copyright protection. AI is extremely useful when applied to manually-intensive tasks that suffer from high error rates improving speed and efficiency; such is the case of conducting searches and watching services. Whilst this is highly positive, handing over the task to a digital pair of hands also poses its risks and should rather be combined with the human mind giving it the final touch and this is where intellectual property experts come in useful, in order to determine why some results are better than others and then determine the way forward.
Artificial Intelligence Technology Along this line of thinking a select group of companies including Samsung, Apple, IBM, Google, Amazon, Microsoft, AT&T, amongst others, are pioneers in patenting fundamental AI technology directed to machine learning, neural networks, natural language processing, speech processing, expert systems, facial recognition, robotic and machine vision. In turn, this fundamental AI technology is being adapted and utilized within a wide variety of industries including health care (human and animal), genetics, biotechnology, manufacturing, and transportation to create AI-based products that are better, more useable
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Gabriela Bodden, Partner at Eproint www.eproint.com and intuitive than before (e.g. machine-based interlocutors, vehicle production, smart surgical tools, warehouse robots, self-driving cars, etc.).
region of the world affording copyright is one of the select possibilities when patenting isn’t; however, when non-human copyright arises the legislation is not amenable.
A Chilean company for instance is the creator of a system capable of reading and ranking CVs, conducting examinations, interviewing via video. This is simply incredible!
The position of the United States Copyright Office is that it will “register an original work of authorship, provided that the work was
The second possibility is creating an exception to all human authorship and affording protection to AI, which to me is a more amicable approach to grant authorship to the programmer. This can now be achieved in Hong Kong (SAR), India, Ireland, New Zealand and the UK. This approach is best encapsulated in UK copyright law, section 9(3) of the Copyright, Designs and Patents Act (CDPA), which states: “In the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.” In this regard section 178 of the CDPA defines a computer-generated work as one that “is generated by computer in circumstances such that there is no human author of the work”. Therefore granting protection to the work involved in cresting software that generates copyright protected works when the initial creativity arises from a machine. Now we’re literally hitting the future as once envisioned.
AI in the Caribbean and Latin America In Latin America, Mexico is the first country that has publicly announced & launched a national AI strategy (amongst the first ten countries in the world) making it part of the world’s most technologically ambitious nations, (proper protection goes hand in hand with this). In doing so, Mexico has joined an elite club that already includes the UK, Canada, China, the UAE, Singapore, South Korea, France, and Japan. The challenges these regions faces are those faced in other regions of the world and involve the preparation for major political, legislative, intellectual, technological, political, ethical and social matters that are and will arise as AI becomes more deeply integrated into the Caribbean and Latin America.
Many companies are investing millions of dollars in innovation research focusing on AI, others develop and sell AI based technology and are creating strategies to adequately protect their findings in the form of patents, copyright and trade secret protection and others. No doubt Latin America and the Caribbean are attractive but we are well behind other economies and there is no time to be lost!
Following the footsteps of leading countries
Luckily the most robust type of protection for AI can be obtained in European countries and the US for instance via a patent. In our
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created by a human being.” (Case law (e.g. Feist Publications v Rural Telephone Service Company, Inc. 499 U.S. 340 (1991)) which specifies that copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.” This means that human intervention must be necessary. In Australia a work originating from the intervention of a computer could not be protected by copyright, because it was not produced by a human (Acohs Pty Ltd v Ucorp Pty Ltd) supporting the position of the USA. The Court of Justice of the European Union (CJEU) is of the position that copyright is applicable to the “author’s own intellectual creation.” (Infopaq decision (C-5/08 Infopaq International A/S v Danske Dagbaldes Forening). This can be interpreted as that the original creation should necessarily be a
Jamaica for instance is one of the most advanced IP legislative nations in the Caribbean, as per its economic growth plans to become a nearshore Business Process Outsourcing (BPO) destination for important U.S. corporations. This has already reaped positive results funded by local and international sources such as is the case of Xerox (A Fortune 500 that purchased Jamaican owned ACS) that announced the expansion of its operations in the Caribbean and generated 2500 jobs for Jamaicans. In addition to this, plentiful Latin America and the Caribbean’s traditionally important sectors are already utilising AI within agriculture, commodities, manufacturing of goods and the public sector. Therefore adequate protection is vital.
Protecting uncertainty Patent protection is the natural route, however, the likelihood of patentability is a factor to be considered in this region of the world, as for instance in many Caribbean islands the patent legislation of out of date or in operant representing is a challenge and not yet possible or viable (such as the case of Suriname). AI protection via trade secret route may not be the most secure protection as it is dependable on whether the parties involved can keep the confidentiality involved. Trade secret protection can be aimed at diverse forms of complicated information, commercial methods, designs, patterns, source codes of all sorts, certain techniques, and contents of AI training sets that cannot be protected via the traditional patent route. This sort of protection is readily available in Latin America and the Caribbean via strictly redacted contracts (unlimited in space and time) and in some jurisdictions specific legislation has been put in place. Copyright is feasible in the protection of literary works, compilations of data, computer source codes, user guides and product related documents involved within the AI based technology and is widely utilised in the Caribbean and Latin America. However, it is worth noting that Copyright legislation in the Caribbean in general is aged. It is important to note that the data in itself is not protected via copyright, but that in some jurisdictions Data Protection Acts have been enacted, whilst this possibility is null in others.
Why is this problematic? Simple, copyright lies with the author that used the program to create the works capable of protection (utilising Word to write articles for instance), however, when faced with AI algorithms that work almost on their own creating work (not all algorithms are related to AI or machine learning specifically), the user’s contribution to the creative process can be that of pressing a button enabling the pair of digital hands to do its magic and guiding it along the process telling the software ‘’what to do next’’. This can start of being pretty simple and end up becoming extremely complex and technical. We are in the era of technology. AI along with its many advantages such as machine learning, the capability of searching algorithms, datadriven applications capable of recognising certain patterns, requires adequate protection in this region of the world as we are already benefiting from it! AI has evolved to a stage where robots, nonhuman beings, and the likes are capable of developing new inventions and sometimes where the intervention of the human mind is minimal but still necessary, or is it? Is the Caribbean and Latin America capable of affording adequate IPright protection to the creations of machines and are these machines subject of ownership at the Registries? Is proper legislation being put into place and are we prepared for this?
The important interrogative here is who should the law consider to be the person making the arrangements for the AI to generate the work and would this person be considered the author entitled to IPrights protection? Should the programmer or the user of the program be entitled? In an analogue world this can be compared to questioning if copyright is granted to the creator of the calligraphy pen or to the calligrapher?
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DOMAINS
Domain names -Are they
infringing on your IP? So, you notice that somebody registered a domain name infringing on your intellectual property? Luckily there are procedures you can take to to take action against this, like URS and UDRP. However, we notice that in many cases the dispute can be resolved without having to resort to the costly and sometimes lengthy dispute resolution procedures or other legal action.
The first step to take is checking if it can indeed be called an infringement of your IP. Just because a domain name is not in active use, that doesn’t mean that you can have it. Is the domain name you’re looking at confusingly similar to a registered trade mark you own? Was the domain name registered after your trade mark registration? If either of them is not the case, then I’m sorry, but most probably we’re simply talking about a domain name somebody else also liked and you’ll need to try purchasing it from them if you would like to own it.
Are you sure this is officially a trade mark infringement? If so let’s contact the owner! For this, we obviously need some contact information. Since the new GDPR regulations, getting hold of that information has become much harder. So use the (little) information you can find, even if you had hoped to find more.
Bart Mortelmans, General Manager of Bnamed www.bnamed.net The first place to look for the information still is the Whois. In some cases you might be in luck and you’ll actually find full contact details in there. Most often, that will however no longer be the case.
1.
Explain why you’re sure this registration is infringing on your registered trademark.
2.
Offer some “compensation” to the current owner of the domain name in order to “cover the domain name registration costs” they have incurred until now. Don’t be too cheap on this, take into account what a normal dispute resolution would cost you (both in time and money). And while you might not be eager to pay this “IP-infringing crook”, remember that it’s a solution you’re after, not revenge. Be very specific; mention how you’ll be paying. This makes your offer concrete and real.
3.
Most importantly; be fully prepared to handle an incoming transfer for the domain name quickly and smoothly. Mention in the letter everything that the current owner would need to do to hand over the domain name to your management (don’t forget any steps; double check this with your domain name registrar). You will want to make the transfer easy on the current owner, so that they don’t change their mind simply because the transfer seems a hassle.
4.
Make the compensation and the important parts of what is needed for the transfer stand out by putting them in bold or highlighting them. You will want that information to be easy to find.
According to temporary regulations put into place for gTLDs, the Whois should now show either an anonymised e-mail address or a link to a web form via which you can contact the owner. Not all registrars however already adhere to those regulations.
Then there is the option to ask the registrar and/or registry for the information. For gTLDs, they are obliged to give you access to this information, if you have a legitimate interest. Don’t expect them to hand over the information just because you’re asking for it. Be prepared to answer some questions about why you should be entitled to see this information. If the domain name is registered under a country code TLD, your best chances are to contact the ccTLD registry directly. Most ccTLDs have procedures in place for disclosure of contact details. If you have a valid IP infringement case and you took the time to jump through the hoops put into place by the registrar/registry you contacted, you will probably at this point have contact information in your hands. If however you still don’t have the information you were looking for, but the domain name was registered before May 2018, you could try finding the pre-GDPR information via a website like domaintools.com or domainiq. com. They might still have the complete information on file, but will charge you for looking up this information.
Ready to contact the domain name holder?
Don’t be too threatening, but obviously still be firm and make your statement clear. Here are some things to take into account:
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Your first attempt to contact the current owner preferably is via a simple e-mail. If no response is received within a reasonably time, try sending them the same via registered mail. You would be surprised how often a solution can be found this way, but only when it is an actual IP infringement.
If it doesn’t work out, then you’ll still have URS or UDRP (or another dispute resolution, depending on the TLD) at your disposal, but trying an amicable solution first, can save you a lot of time and money.
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TRADEMARKS
ENFORCEMENT OF INTELLECTUAL
Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has established itself on rich tradition and the highest professional principles. Julius and Creasy’s wealth of expertise and experience in a wide range of specialized fields of Law enables it to offer innovative legal and business solutions to a diverse, sophisticated and high profile clientele.
PROPERTY RIGHTS IN SRI LANKA
Our firm from its inception has been involved in intellectual property work. We are presently handling over 50,000 files of which about 15,000 are current and intellectual property involves both contentious and non-contentious matters. We file a large number of trademark applications for overseas clients being instructed by our associates in several countries In compliance with the TRIPS I Wanigasekera – Partner ,&New HeadZealand, of Intellectual Property including UK, European Union, USA , India, Anomi Singapore, Hongkong, Australia Agreement the Intellectual www.juliusandcreasy.com Japan and Korea.
Property Act No. 36 of 2003 Act) makes provision and clients both at the National Intellectual Property Office in In (IP contentious matters we represent lays the foundation opposition proceedings for andeffective in infringement proceedings before Courts, Infringement enforcement of Intellectual make an application proceedings are instituted in the Commercial criminalto the Director General IllegalHigh actsCourt of and where necessary of Intellectual Property. An inquiry will be Propertyare rights. The system proceedings also instituted in the Magistrate’s Court. conducted and the decision of the Director counterfeiting for enforcement entails a General shall be binding on all parties. An strongly deter illegal acts of counterfeiting s. appeal can be preferred to the Commercial combination of judicial Although our practice is to a great extentTo trademarks we have substantial portfolio of patents as 186 (2) of the IP Act creates the sale, possession High Court against such decision. well. A largecivil part of thiscriminal, portfolio is related to PCT applications filed in Sri Lanka, We also file remedies and for sale or any purpose of trade or manufacture, goods or things to which any forged Mark number of design applications for at overseas clients in Sri Lanka and for Sri Lankan clients administrative and remedies or false trade description is applied, or any The cross border overseas through countries. We also advise Sri Lankan and overseas common law. our associates in various Mark so nearly resembling a registered Mark companies copy issues including of copyright agreements and advise protection of Intellectual so as toreviewing be likely to mislead, is falsely applied, Accordingly,oncivil actionright can be instituted before theboth Commercial High Court of Sri as an offence. Criminal proceedings can publishers in Sri Lanka and overseas. Property Rights
Lanka to combat infringement or imminent be instituted on these grounds before the infringement and for protection against Magistrate Court by the right holder, assignee The cross border protection of Intellectual Unfair Competition in relation to Intellectual or licensee, directly by way of a Private Plaint Property Rights is predominantly governed by the Customs Ordinance or by(Wales) a Plaint filed the Police. Aincomplaint Act provides for injunctive Ms.Property. AnomiThe Wanigasekera, holder of LL.M andbyDiplomas Intellectual Property Law, No. 83 of 1988. can be lodged by the right holder with the relief and damages for loss resulting from International Trade Law, Banking and Insurance Law of Institute of Advanced Legal Studies of the infringement or unfair competition. In Commercial Crimes Division of the CID, upon S. 125 A of the Ordinance prohibits Incorporated Council of Legal Education heads the Property Division of our firm. and Ms exportation of counterfeit may institute proceedings before importation addition, Court is vested with power to order investigationIntellectual trademark goods, pirated copyright goods Magistrate Court. the impounding and disposal of of infringing Sandamali Kottachchi, holder LL.B the (Colombo), Master of Arts – International Relations , and any other goods which contravene the goods outside the channels of commerce and Diploma in Forensic Medicine & Science and Diploma in Computer System Design is a senior grant such other relief the court deems just and A special Anti-Piracy and Counterfeit unit provisions of the IP Act. Violation shall professional associate in the Firm’s Intellectual Property Division and there are 8 other professional entitle the customs authorities to forfeit the equitable. Provisional protection in the form attached to the Criminal Investigation Department (CID) of the Sri Lanka Police has goods and dispose outside the channels of of Enjoining Ordersto and Injunctions associates attached theInterim Intellectual Property Division. exist to maintain the status quo and prevent been set up for investigation and curtailment commerce. Under s. 125 B of the Ordinance further violations until conclusion of the main of piracy and counterfeiting. Over the years the owner of any registered trademark or the CID has taken663, active to raid and holder of copyright or any other Intellectual judicial proceedings. Tel.94 11 4335159 Fax: 94 11 24466 +94initiative 11 2435 451 prosecute a considerable number of traders Property rights may make an application to Email: jacey@sltnet.lk; pts@juliusandcreasy.lk engaged in illegal reproduction of songs of the Director General of Customs requesting to Internet: www.juliusandcreasy.com Infringement of copyrights popular local music groups and singers before suspend clearance of imported/exportation of Magistrate’s Courts for selling, possessing and goods that are suspected of being counterfeit & other registered displaying for sale counterfeit CDs and DVDs. or pirated. If a prima facie case of infringement intellectual property rights is established to the satisfaction of the Director General of Customs the release of goods shall Infringement of copyright and other registered be suspended. intellectual property rights, willfully or knowingly, also constitute a criminal offence The Customs may also on its own initiative liable for conviction before the Magistrate suspend the clearance of importation or Court under Chapter XXXVIII of the IP Act. Sanctions are in the form of imprisonment and While stringent enforcement of Intellectual exportation of goods in respect of which it fine, with a maximum penalty of rupees five Property Rights is clearly visible under the has acquired prima facie evidence that an hundred thousand or imprisonment for period criminal law, a strong desire to increase public intellectual property right has been, or may of six months or both. Second or subsequent awareness as to infringement of Intellectual be infringed. To facilitate performance of this convictions will give rise to a penalty Property Rights has come to the fore. ex-officio action in enforcement of Intellectual double the amount of such fine or period of Publication of cautionary notices in the print Property rights, the Customs Department has imprisonment. Criminal sanctions are further media and reporting of raids in the media are established an Intellectual Property Rights imposed under s. 475 of the Penal Code for some of the means adopted by the Sri Lanka Enforcement Unit where right holders who Police to deter acts of infringement. are desirous of safeguarding their rights could misappropriation of property. register with, by furnishing information and In the realm of Copyright Infringement, s. 22 documentary evidence of their rights. (3) of the IP Act entitles the rightful owner aggrieved by any infringement of his rights to
Increasing public awareness
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Bolivar Will not Carry Double (O’Henry)
The problems with joint ownership of trademarks Vladimir Biriulin, Partner at Gorodissky & Partners www.gorodissky.com
The problem of joint ownership of trademarks rarely surfaces on the Russian IP landscape. One of these cases elicits remembrance of a famous story “The Roads we Take” by O’Henry. As a rule, a trademark application is filed and registered in the name of one legal person or one individual entrepreneur. In an article in the Civil Code, (Article 1478) a chapter is dedicated to trademarks which states that “a trademark may belong to a legal person or to an individual entrepreneur”. In addition, there is also a chapter in the Civil Code which concerns intellectual property in general, (viz. Article 1229). This article sets forth that “Exclusive right for the result of intellectual activity or a means of individualization (except for the company name) may belong to one person or jointly to several persons.” As shown there is some contradiction between these provisions leaving space for interpretation. This contradiction played part in triggering a lengthy and complicated court case which lasted four years ending in 2018 with involvement of all court instances, patent office and trademark owners.
Case History
The case under review started as a routine trademark non-use case. A company, Les Publications Conde Nast S.A. (plaintiff 1) and its Russian offspring Conde Nast CJSC (plaintiff 2) sued an open joint stock company ‘Sinergia Capital’ for non-use of trademarks (Nos 295229, 304346 and 433377). The case was examined by the IP court in its capacity in the first instance. The patent office was involved in the case as a third person without its own claims. The IP court satisfied the claims in part. Both, the plaintiffs and the respondent appealed the judgment to the Presidium of IP court. The hearings were postponed four times on request of plaintiffs and the respondent. The reason for this was that the parties wanted to conclude an amicable agreement and needed time to discuss it. On the fifth scheduled time the parties appeared at the hearing and asked the court to approve their amicable agreement and discontinue consideration of their cassation appeals.
Provisions of the amicable agreement:
The respondent agreed with the judgment of the IP court concerning the early termination of protection of his trademark VOGUE according to registration No 295229, trademark VOUGE (sic!) according to registration No 304346 and trademark VOGUE according to registration No 433377. The respondent also owns a trademark VOGUE according to IR No 929433. Plaintiff 1 owns numerous trademarks in Russia where the word VOGUE is part of the trademarks, such as VOGUE EUROPE (IR 430952). All above trademarks cover Classes 32 and 33 of ICGS. The respondent recognises the right for VOGUE in the name of the plaintiff. The parties agree on joint co-ownership in shares 50/50 and use of the trademarks as provided in Article 1229(2) of the Civil Code. Article 1229(2) sets forth that “Exclusive right for the result of intellectual activity or a means of individualization (except for the company name) may belong to one person or jointly to several persons”. The parties also made some
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provisions regarding their financial relations that were acceptable for both parties.
IP Court Vs Patent Office
The IP court approved the agreement which was submitted to the patent office for registration. The patent office however refused to register it. The patent office argued that joint ownership of trademarks is not possible proceeding from the combined analysis of the provisions of the law and judicial practice. It further opined that if both parties wanted to have a trademark they could convert it into a collective trademark. The parties did not agree with the decision of the patent office and sued the patent office in the Moscow Commercial Court asking the court to recognize the decision as invalid. They argued that the decision of the patent office contravenes Article 5(3) of Paris Convention, Article 11 of the Singapore Treaty on Trademark Laws and Article 1229 of the Civil Code mentioned above. They complained that they would not be able to jointly conclude a license agreement with the producer of a
19
sparkling wine under the VOGUE trademark. The parties argued against the patent office’s statement that there is a collective trademark option which could have been used by the parties. In fact, the concept of a collective trademark supposes that there are a number of manufacturers producing goods with similar characteristics however the collective trademark belongs to the association of manufacturers (one legal entity) but not jointly to the manufacturers. The court delved into the provisions of the Civil Code and concluded that the law draws distinction between the rights for things and the rights for the means of individualization ((Article 128 CC). Further, the court explained that according to Article 1227(2) CC provisions concerning real property (Section II CC) should not be applied to intellectual property. Hence, provisions concerning joint shared property (50% and 50%) cannot be applied to intellectual property in principle. As a result, proceeding from the fact that a trademark is a designation serving to individualize the goods (Article 1477) assignment of a trademark to more than one person contradicts the essence of the trademark which should individualize, i.e. distinguish the goods of one person from those of another. Being not satisfied with the judgment of the Moscow Commercial Court the parties appealed the judgement before the 9th commercial court of appeal which confirmed the judgement of the Moscow Commercial court without additional arguments. The parties appealed the judgement to the IP court as cassation instance. This became a second entry to the IP court though for a different reason. They delivered a staunch approach in support of their original claim, i.e. they again referred to Article 1229 which admits of no double interpretation. Besides, the lower courts ignored the provisions of international agreements which allow joint ownership of trademarks. They also referred to the International Bureau of WIPO which had established joint ownership of International Registration No 430952 and this trademark enjoys protection in Russia in the absence of objections from the patent office. The IP court confirmed its earlier position
stating that in contravention of conclusions of the courts of first and appeal instances the law does not contain provisions forbidding joint ownership of trademarks but conversely, it directly provides for joint ownership in its Article 1229 CC. The lower courts did not take into account that the concept of exclusive right does not consist in that it should belong to one person but in that it is assigned to a person or persons defined in the law while all other persons are deprived of the right to use the trademark. The IP court also pointed out that international agreements allow joint ownership of trademarks and Russia is a member of those agreements. In the end, the IP court cancelled the judgments of the lower courts and obliged the patent office to resume examination of the parties’ request to register partial assignment of the trademark.
owners relied, appears in the chapter of the Civil Code which regulates general aspects of intellectual property while the issues specific to the trademarks are explained in other articles of the Civil Code. Those articles provide that only one person may own a trademark. The Supreme Court also justified the approach of the first instance court and of the court of appeal in what concerns international treaties discussed by IP court during the hearing. Article 5C(3) of Paris Convention sets forth that simultaneous use of a trademark by industrial or trade companies being co-owners according to the law of the country where the trademark is used does not limit protection in any country‌ The key words here are coowners according to the law of the country. It is implied by this that the Russian law does not allow joint ownership.
Backlash from Patent Office
Provisions of Article 11 of the Singapore Treaty do not prescribe that a member country should grant protection to a trademark in the name of several persons simultaneously. As a result, the Supreme Court upheld the decision of the patent office refusing registration of VOGUE in the name of joint owners. Not withstanding the decision of the Supreme Court, doubts still remain. Article 1229 CC cited many times by the trademark owners and by the courts is absolutely unequivocal, in that it allows joint ownership of the trademark. Interpretation of that provision with reliance on other provisions is not convincing.
This time the patent office backlashed. It applied to the Supreme Court with a cassation appeal against the judgment of the IP court. The Supreme Court went through the arguments of the courts and the complainants and concluded that Article 1229 on which the trademark
This is confirmed by the fact that the mentioned article even though it sets forth general conditions nevertheless includes a very specific limitation indicating that a company name cannot be owned jointly. That means that despite being general it is also quite specific, otherwise it should not mention the company names leaving interpretation to other specific provisions regulating company names in the section concerning the means of individualization. If the law does not want to allow joint ownership Article 1229 should be excluded from the Civil Code.
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To conclude, the situation is as it is and trademark owners should be aware that attempts at joint trademark ownership are doomed to failure, at least for now.
YOU ARE
INVITED
TO ATTEND
IIPLA
5 TH
Dubai IP Congress
2019
January 14 & 15, 2019
Carlton Palace Dubai, UAE
Phone: 1 844 MY-IIPLA (+1 844 694 4752) Email: mail@iipla.org | www.iipla.org
MADRID PROTOCOL TOP FILERS IN ZIMBABWE -2017
TRADEMARK
TRENDS IN AFRICA
Brenda Matanga – Managing Attorney at B Matanga IP Attorney’s www.bmatanga.com
Brenda Matanga –
Managing Attorney at B Matanga IP Attorney’s, shares her general observation from a Zimbabwean perspective. As I was reading the 2018 world’s most valuable1 brands,2 I observed that there is not a single brand originating from an African country represented. The list is dominated by US brands3, European ones and some significant Chinese brands 4 were emerging on that list. What struck me was, out of 54 African countries, none has a globally competitive brand represented on that list. Is it that African brands are not competing at a global level or are they not doing well enough to earn recognition at that level?5 Brands that are acknowledged on that list are obviously brands with presence on the global market. My own explanation would be this, I could be wrong, but I am persuaded to believe that the following factors listed below do have an impact: 1. Africa is generally a consumer and not a creator. 2. Poor marketing strategies 3. Uninventive brands 4. That African brands are only trading within the African continent and do not make it in the international market. 5. With most African countries providing the raw materials, through foreign exports it definitely means
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6.
Africa’s products are not in any way inferior but what may be lacking is competitive branding That most brand owners do not use intellectual property rights to distinguish their products on the market so as to create value for their brands.
THE ETHIOPIAN COFFE CASE;
Selling unbranded products is one of the reasons that African products are not competitive enough to gain recognition on the international market. A case in point would be the Ethiopian coffee case with Starbucks6. It is a fact that the world’s finest coffee such as Harrar, Sidamo and Yirgacheffee originate from Ethiopia. Ethiopian coffee has a unique flavour and aroma that distinguishes it from coffees from other countries but the producers in Ethiopia were failing to obtain high returns on their coffee sold internationally on the retail market. The bulk of the coffee sales profit was going to middlemen and distributors. Use of IP was the only solution to Ethiopian coffee industry where trade marks were eventually used to differentiate Ethiopian coffee in the market place. This helped the producers to achieve higher returns for their coffee. The different coffee brands were registered as trademarks in key markets such as Europe, USA, Canada, Brazil, China, Japan and even in South Africa, thereby resolving its legal dispute with Star Bucks and increasing its brand recognition and value.
YEAR
2015 2016 2017
NATIONAL
1382 1227 1127
TRADE MARK FILING TRENDS
A close analysis of statistics of the filings at the Zimbabwean registry is reflective of this current pattern where global brands dominate the register. It is these top valuable brands that are filed in our jurisdiction7. The company which has filed the most trade marks is in Great Britain with over 1829 marks8 in the registry followed by a US company with 1810 trade marks9. Only one local company has about 800 applications at the Registry, whilst the majority of the trade mark applications originate from international companies.
Whilst a majority of countries have IP systems in place, it is the utilisation of those systems by local brand holders that is lacking and hence their absence from the global scene. One would at least expect to have the larger markets in the continent such as Nigeria and South Africa represented in these rankings. Companies should extensively market their products on a global scale and develop strategies of penetrating the global markets. There is need to utilize modern technology to market Africa’s products. This is how brands acquire global presence, recognition and in turn create value from their existence on the global market.
COUNTRY OF ORIGIN
NUMBER OF APPLICATIONS FILED14
China United States of America Germany Switzerland United Kingdom France Japan Italy Belgium India
442 156 64 55 35 32 20 18 15 14
REFERENCES 1.
2. 3. 4. 5.
6. 7. 8. 9. 10.
11. 12.
13. 14. 15.
There are several methodologies to value brands. The most popular method of calculating brand value is based on predicting future earnings derived from the brand and calculating the net present value. BrandZ report www.marketing-interactive.com/top100-most-valuable-brands-in-the-world-announced/. Forbes rankings also reiterate the same findings. Amazon was the most valuable brand in the world with an estimated brand value of about 150.81 billion U.S. Alibaba, Tencent and JD ,all ecommerce platforms. MTN made the ranking in 2014 and 2015 but fell off the table after it became embroiled in a multibillion-dollar lawsuit in Nigeria, which wiped billions off its market valuation. http://www.wipo.int/ipadvantage/en/details.jsp?id=2621 Writer’s personal survey. Data provided by the Registry. Figures collated by writer from data provided. Zimbabwe became a signatory of the Madrid Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) hereinafter referred to as Madrid since 11 December 2014 when it deposited its instrument of accession. Domestication was only done on the 1st of July 2016 through the General Laws Amendment Act which incorporated the Madrid Protocol. According to Zimbabwe’s Constitution, Section 327 (2) treaties are not binding on Zimbabwe until they have been approved by Parliament and incorporated into Zimbabwean law as Acts of Parliament. Trade Marks Act (26:04) Section 97A (4) a, Section 12 (1) Madrid Protocol Regulations. Apple is currently the top filer designating Zimbabwe followed by Huawei then other huge pharmaceutical giants such as Bayer Aktiengesellschaft and Janssen Pharmaceutica N.V. A company in the financial services sector. These are the origins of designations of the Zimbabwe applications filed via Madrid according to WIPO. MTN South African Brand in Telecommunications is regarded with such respect not only regionally but internationally.
FILING SYSTEMS AVAILABLE IN ZIMBABWE
There are three options provided for the protection of trade marks in Zimbabwe. 1.
International route-Madrid System10
2.
Regional route-African Regional Intellectual Property Organisation (ARIPO)
3.
Domestic Route- Direct filing at the Zimbabwe Intellectual Property Organisation (ZIPO)
A trademark holder’s choice of the route to take is dependent on factors such their budget, urgency in obtaining the rights, intention and generally the effectiveness of each route. The legal rights obtained are the same11, but it is interesting to note that a lot of applicants still favour the national route, which is often a more viable option. The following table reflects this reality.
BANJUL
155 241 101
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It is not a surprise to see the same brand holders being the main users of the international trademark registration system12. Local companies do not have a trademarking culture and only one local company has filed using the Madrid filing system, since accession13. I suppose this system has been designed to serve the bigger global players and may not serve much purpose for local companies whose brands are not even in the global market. Numbers do not lie, the graph below will inform you about the real beneficiaries of the Madrid system.
TO CONCLUDE
MADRID TOTAL
600 984 1119
2137 2452 2347
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ECTA SPECIAL
The Final Farewell &
New Beginnings Ruta Olmane – Immediate past President of ECTA & Associated Partner of METIDA recaps on the last two years achievements as the President of ECTA and conveys the honour of the ECTA Presidency to the new ECTA President and Management team.
ECTA’s Main Task
The main task of ECTA (European Communities Trade Mark Association) is to promote the knowledge and professionalism of members and owners alike in the fields of trade marks, designs, copyright and other Intellectual Property rights, within the European Union. In the last two years I have been honoured to be a President of this association and I am really proud to see that with the assistance of my excellent team ECTA is still maintaining its high reputation and continues to develop and expands its expertise. During my Presidency, ECTA has maintained and developed good relations with EU Officials, including the European Commission and IP attaches of the EU Member States. During this year, more than 10 meetings with EU Officials were held in Brussels. During these meetings the ECTA Management Committee was informed about the status of various legislative reforms and recent developments and expected changes, future IP dialogues and IP priorities of the upcoming Presidencies of the Council of the EU. ECTA is recognized as a long standing and trusted partner by many governmental authorities.
New Initiatives
This year ECTA extended its activities and was involved in some new initiatives organized by the EUIPO. ECTA continues leading or participating in some joint projects with other User Associations e.g.
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Ruta Olmane – Immediate past President of ECTA & Associated Partner of METIDA - www.ecta.org || www.metida.lt issues concerning Brexit, industrial designs and the Steering Committee advising the European Trade Mark and the Design Education Centre for which ECTA also nominated a candidate for the Examination Board and teachers. Through the Management Committee, Council and/or Committee members, ECTA was represented at 51 meetings and events such as MBBC meetings, User Group meetings, Liaison meetings as well as bilateral meetings with EUIPO and WIPO, the European Commission and others.
EUIPO
Upon an invitation from EUIPO, representatives of ECTA participated in TM5 and ID5 meetings during the year. One of the days of the TM5 Annual Meeting 2017, was dedicated to the User Session. Partner Offices´ representatives and User Associations representatives delivered presentations on three selected topics; namely Quality Management, Fraudulent Solicitations and Bad Faith Trade Marks: an e-commerce perspective. I was honoured to give a presentation about the questions of Quality Management from the user’s perspective as well as moderating a workshop about ‘Quality Management’. During INTA’s annual meeting in Seattle, ECTA was also invited to participate at the TM5 midterm meeting User Session.The word about the ECTA Award spread around rapidly this year, which led to ECTA receiving a record number of applications for award. In order to further expand the visibility in 2018 the ECTA Management signed a ‘Memorandum of Understanding’ with ELSA International and very much look forward to future mutual cooperation with members of ELSA.
Honorary Members & their Contributions
During my presidency, I was pleased that three honorary members were admitted. In accordance with the Articles of ECTA, a person can be admitted as an honorary member either
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if he or she has made a significant contribution to the development of ECTA or the European Intellectual Property regime, particularly trademarks and/or designs, or both. By the first mentioned requirement, it is meant that the person in question, for a long time, actively and consistently has participated in the work of ECTA and clearly contributed to its evolution and prestige. By the other it is understood that he or she is either in academia or operating as an IP Professional, be it in the administration or in any other relevant position, or is/has been important to the trade mark or design system. In 2017, two ECTA past Presidents Fabrizio de Benedetti (IT) and Dr. Max Oker-Blom (FI) were admitted and this year former Executive Director Antonio Campinos was admitted.
Further Movements from ECTA
The ECTA Management created a special task force for Brexit, which, under the leadership of Dr. Max Oker-Blom, (ECTA honorary member and advisory committee member), closely follows Brexit developments and has assisted in producing the ECTA position in this respect. The ECTA Management created a special task force for CCBE, which under the leadership of Philippe Péters (Member of ECTA Law Committee) will represent ECTA there. The CCBE’s Permanent Delegation to the Court of Justice and the General Court of the EU and the EFTA Court (PDLux) is a committee comprised of practitioners with particular expertise and experience in EU litigation. This committee prepares papers on a wide-range of issues, including proposed changes to the practical guides for practitioners pleading before the EU Courts or the EFTA Court. The ECTA Management Committee has dedicated a large amount of time on the largest project in the history of ECTA in order to re-fresh the external website, create online working spaces for the committees (in order to facilitate work efficiency and overview in the committees) and not least to facilitate the work
of the ECTA Secretariat. The project should be accomplished within 2018 and the ECTA Management team trusts that it will greatly assist the organisation and management of the internal work of the ECTA Committees and Secretariat. ECTA increased the number of workshops and seminars organized and in addition this year organized a workshop in Munich about the Case Law of the EUIPO Boards of Appeal and German courts. Many of the workshops were broadcasted as webinars.
ECTA’s 37th Annual Conference
ECTA’s 37th Annual Conference covered a wide range of IP topics and the latest IP trends as well. Highly focused subjects – such as Brexit, the EU Copyright Reform, the EU Trade Mark Directive and the latest challenges in the enforcement area of IP rights - were addressed and discussed by internationally recognised speakers. For the very first time, we introduced a special pharma session where the moderator and speakers from the most prominent pharma companies shared their experiences. As always, we also offered the opportunity to attend several workshops during the conference. The workshops focus on plain packaging questions and exchanging of best practices of small/family companies. In addition, a workshop was organised with WIPO and EUIPO where you were able to learn about their new IT tools. As always during the ECTA annual conference exciting social events were organised each evening; the welcome reception was organised in the spectacular Zappeion building surrounded by stunning garden settings and the Gala dinner was organised at the Nasioutzik Museum. This year we gathered more than 800 attendees at the Annual Conference and statistics shows that there is a growing interest from delegates outside Europe to attend our ECTA event.
The New ECTA President & Management Team
During the Gala dinner I conveyed the honor of the ECTA Presidency to the new ECTA President. The new ECTA Management consist of five members Sozos-Christos Theodoulou from Cyprus as President, Anette Rasmussen from Denmark as First Vice President, Mladen Vukmir from Croatia as Second Vice President, Carolin Kind from Germany as Seceretary General and Laszlo Berczes from Hungary as Treasurer. During my presidency the overall goal was to make ECTA the foremost and most prestigious trade mark, geographical indications, design, copyright and related rights association of the European Union; this was achieved. I deeply thank the entire ECTA family for their support and true dedication to ECTA. I would especially like to thank all current and former ECTA Council members, members
of Advisory Committee, ECTA Committees leadership team and ECTA Management team and ECTA Secretariat. Without the exceptional teamwork all these goals would not have been achieved. I was honoured to serve ECTA and will remain an active ECTA member.
The newly appointed President of ECTA
The 37th event has resulted in changes in the Management. Mrs. Anette Rasmussen became First Vice-President, and Mr. Mladen Vukmir took on the role of Second Vice President of ECTA. The Gala Dinner served as the ceremonial inauguration venue of ECTA’s new President: Mr. Sozos-Christos Theodoulou, who is well known and respected not only in the trade mark profession, but also within the Association, having been a member of the Management Committee for the past four years.
A Six Year Strategic Plan The new President explained to Global IP Matrix that ECTA operates by a rolling six-year strategic plan. The plan is regularly reviewed and adapted every two years by each incoming president.
Dr. Gergely Dzsinich, (LLM Strategy & Communication Officer at ECTA) looks back at ECTA’s 37th Annual Conference in Athens and speaks about the inauguration of the new President Mr. Sozos-Christos Theodoulou. During the 13th-16th June 2018, ECTA organized its 37th Annual Conference at the Inter Continental Athenaeum Hotel in Athens. The event has already grown into an international professional occasion, broadly recognised and also visited by professionals from Europe, the Americas, Africa, Asia, and Australia. ECTA is known for organizing its events in a way so that the delegates may not only benefit from the high standard professional programs but may also have quality time for each other to build reliable professional connections. This unique atmosphere is one of the primary motivators for delegates to decide on attending in each year. The ‘Professional Programme’ not only included presentations, workshops, and panel discussions but also gave the opportunity to discuss issues such as: Brexit, the Trade Mark Directive, the EU Copyright Reform, goods in transit and the trade mark profession’s future. As always, ECTA took due care of organising various social programs, day trips and exclusive dinners in Athens, which were also open to accompanying persons.
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Mr. Theodoulou aims at continuing the support of ECTA’s five pillars approach, which consists of these elements: 1. the development of membership benefits; 2. the broadening of ECTA’s expertise; 3. the reinforcement of external partnerships; 4. the strengthening of the internal organization and; 5. the broadening of the financial basis. Mr. Theodoulou highlighted: “A streamline of projects is planned to be executed in the next two years, which are built on our five pillars concept. From the organisational angle, a new structured IT system will be introduced shortly to the Association, which will significantly support the internal and external communication, moreover, the workflow. Regarding our outreach activities, we would like to approach the university world, academics and students alike. Furthermore, ECTA is expected to bring on board more industry members, examine and adapt to the consequences of Brexit, as to ECTA’s seat and structure; enhance the Association’s intelligence within the EU, create new committees, as necessary, and, last but not least, become more visible to national authorities.”
Looking Ahead Regarding the 38th Annual Conference, we have been informed that ECTA is already diligently preparing the event which will take place in Edinburgh, Scotland from 26th-29th June 2019. We encourage our readers to visit the www.ecta.org homepage and ECTA’s LinkedIn, Twitter and Facebook pages for news and also information about their events.
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Trademark Infringement Nepal
Trademark Infringement and the Remedy of
‘Passing Off’ in Nepal Anju Upreti Dhakal and Kripa Shrestha From Pioneer Law Discuss trademark infringement in Nepal. 1 The author is an Intellectual Property and Commercial Attorney with LL.M. degree from Kathmandu School of Law, Purbanchal University of Nepal. 2 The author is an Intellectual Property Attorney with B.A.LL.B, degree from Nepal Law Campus, Tribhuwan University of Nepal. Nepal is a developing country in the SouthAsian region with the market based mainly on imports from India and China. Nepal is a party to WTO and other WTO related treaties such as TRIPS. Since being a developing country, a special provision is maintained in regard to its compliance with WTO treaties i.e. Nepal has until 2021 till she has to make laws compliant with the different WTO treaties such as TRIPS. Thus efforts have been made at modernisation and harmonisation of trade related laws and Intellectual Property laws. Nepal is also party to the Paris Convention on Protection of Industrial Property 1883. However ominously, Nepal is yet to ratify other major trademark conventions such as Madrid Agreement/ Protocol, Nice Agreement etc. Like any other country, trademark plays a major role in the Nepalese market but due to the lack of effective laws and poor enforcement of trademark, brand owners are in peril due to mass free-riding in the country. Some wellknown examples are Kansai Nerolac, Royal Stag, Rajnigandha trademark etc.
Legislations in Nepal Patent, Design and Trademark Act, 1965 (2022) (“PDTA”) is the main legislation governing trademark protection and enforcement in Nepal. Beside the PDTA there are other legislations that deal with, to some extent, the matter relating to trademark in Nepal. Such other legislations include the Custom Act,
Ms. Anju Upreti Dhakal - Partner at Pioneer Law Associates www.pioneerlaw.com 2007 (2064), the Black Marketing and Some Other Social Offences and Punishment Act, 1975 (2032), and Export and Import Control Act, 1957 (2013). Department of Industry (“DOI”) is the authority which registers and administers Trademark in Nepal. DOI also works as the quasi-judicial body for the settlement of dispute related to trademark as a court of first instance. The legal recourse on trademark issue depends on the nature of infringement or the stage of infringement. The remedy available against the infringement of a trademark can be classified broadly as (a) filing a petition for the opposition when the impugning trademark has been applied by a second party and published in the Industrial Property Bulletin; (b) filing a cancellation petition against an impugning trademark that has been already registered; (c) filing a petition to prevent use along with demanding confiscation of goods and damage in case the impugning trademark has not been applied for registration or registered but has been used in similar products and commercialised; (d) filing an injunction petition to stop the registration, sale, distribution or commercialisation of the impugning trademark or products; (e) restraining the export or import of goods bearing the impugning trademark and (f) Remedy of Passing off. Section 16(2) of the PDTA provides that “no one shall copy or use or cause to use in the name of the others without transforming the ownership or written permission, the trademark registered in the name of any person.” The use of the mark cancelled or use of the mark as a registered mark without its registration or unauthorized use of the registered trademark is punishable under Section 19 and 25 of the PDTA. The owner of the registered mark can seek (a) the order to restrain the use of the trademark identical or similar to that of the registered trademark, (b) confiscation of the goods that infringes the registered trademark, (c) imposition of a fine to the infringer(s), and (d) damage for the loss of the infringement. Section 19 of PDTA authorizes the DOI to impose fines up to Rupees 100,000 to the infringer and confiscate the goods involving the infringement of the registered trademark.
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Section 25 of the PDTA provides damage pursuant to which the registered owner can claim damage of the actual loss suffered from the infringement. However, the case is different if the trademark is not registered.
Passing off as a remedy
In Nepalese context, the concept of passing off has not been explicitly recognized. However, in interpretation of Proviso clause of Section 18(1) of the PDTA, which states that where the proposed trademark is likely to hurt the reputation of the trademark of the other, such proposed trademark may not be registered, it is understood that the concept of passing off is somewhat adopted. In light of this provision, we can say that a trademark not registered in Nepal may be protected under the remedy of this passing off action. The remedy of passing off has been provided by the DOI in the YUM YUM case, PEARL DROP and NISHA Henna (cases subjudice in Supreme Court) trademark cases where the trademark was protected on the basis of the goodwill that it had garnered over the years of its use in the market. However, the practice of this remedy has not been consistent. The DOI and the Courts do not see eye to eye when it comes to the passing off remedy. Although the DOI has issued a criteria list for determination of well-known-ness of a trademark, it does not strictly adhere to it in most cases, thus it has become more unpredictable and difficult. However, we, as activists, are constantly trying to persuade the relevant authorities to enact modernised and harmonious provisions for the protection of well-known trademarks in Nepal.
To conclude
Thus, in this context of globalization and market expansion, Nepal faces a big problem of free-riding and trademark infringement essentially jeopardizing the Nepalese economy. The law is almost silent in this regard and its practice has been very inconsistent, thus making it unpredictable. Therefore, it is advised for any investor/exporter in Nepalese market to register their trademark before actual product penetration.
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J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
One of the oldest and leading IP companies in Bulgaria Professional, cost effective services and quality advices
Areas of practice: *IP Protection *IP Enforcement *Anti-counterfeiting *Litigations *Domain name registrations *IP watches
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Smart IP Data
immediately informed when they start to use a different law firm for its filings into your jurisdiction, giving you a window of opportunity to also obtain work from the tech giant whilst its open to using new law firms.
Seize business opportunities
Additionally if you are already working for a major applicant or with a law firm, you can set up an alert to be notified when they start using a new law firm to handle the filings in your jurisdiction. You can immediately step in and start to strengthen your relationship with the client to ensure that you retain them rather them losing them to another competitor.
using smart IP data Although it seems that the tech giants may hold a significant amount of your personal data, in this article we explore how you can easily obtain significant data insights about THEM; Smart data that informs and enables you to spot new business opportunities with the tech giants. We’re all familiar with the big tech giants that seem to always be in the news. Headlines about their controversial moves with acquisitions, data breaches or court cases, but most of the time it’s about their latest innovations. For example, Facebook has generated news headlines (not just about its data breaches) but also about its latest innovation named Athena, a low earth orbit internet satellite that is designed to “efficiently provide broadband access to unserved and underserved areas throughout the world”. Google has also been making headlines with its new Google Assistant developments. The latest being an AI assistant that can communicate to make phone calls and schedule appointments for its user with a believable human voice. This is considered by many as a breakthrough development in the application of AI and natural language analysis.
Ms Doris Spielthenner, Director, Law Firm Analytics, CPA Global www.cpaglobal.com fall of patent filings from these tech giants amongst specific law firms. Looking at the latest PCT filing data for 2018, Google works with more than 35 US based law firms. Upon a closer look at their ‘Source of PCT filings’ in Filing Analytics, it shows that three of these law firms started working with Google in 2016 and 14 of them only just started working with them in 2017. At first glance this may look like deliberate diversification, which would mean that the top law firms who would have gotten the most amount of work must be getting less and that the work from Google is more diversified. However, this doesn’t appear to be the case here.
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Another interesting point to raise is the pattern of the work declining from Google amongst the law firms over the years. While some law firms show an increase in work for 2018, Law Firm H shows a sharp drop and Law Firm L shows no work for 2018. Will these two lose all business from Google in the next year? The data from Google’s ‘Filed PCT Applications’ data also shows similar patterns of consecutive drops. Observe the sharp drops in Law Firm B and F, and the gradual drop in filings for Law Firm A and D.
The top five major law firms who have historically received the most work from Google still ii - Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io received a sizable amount of work from Google in 2017 and 2018. So questions then arise, how is the work being divided amongst law firms, who are the Now there may be many reasons for this such new entrants receiving additional work and as the law firms may not have the technology are there any law firms receiving less work speciality area or there could just be a lack of resource capacity etc. However the important aspect to note is that there is plenty of work available from Google but it’s now being snapped up by new entrants. New entrants who are most likely focussing strongly on business development and actively targeting new clients like Google, rather than just relying on their existing clients for work.
Regardless of the good or controversial headlines the tech giants may generate, an undeniable fact about them is that they are very innovative and file many patents. For patent attorneys and law firms these tech giants can be a great source of business and i - Google’s ‘Source of PCT filings’ graph. Source: filinganalytics.io revenue. That being said, they can be considered a competitive business space for law firms to enter, but is that really true? The patent filing data shows that there is a diverse from Google? Let’s take a closer spread of law firms that actively work with look at the patent filing data to get these companies and that the spread of law the answers. firms regularly changes. Upon looking at the case flows for Google, we can clearly see some law firms losing business from the tech giant even though there is no What’s interesting to analyse is the rise and shortage of work coming from them.
The rise and fall
For example, the screenshot from Filing Analytics shows that Law Firm 4 and 5 lost business from Google over the past years, while Law Firm 6 only started receiving work from them in 2017. Law Firms 1-3 show a nice increase in work in 2017 but they haven’t received any work from Google in 2018.
iv - Facebook’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io
iii - Google’s ‘Filed PCT Applications’ graph. Source: filinganalytics.io
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The same pattern holds true for other tech giants like Amazon and Facebook. For example, if we take a closer look at Facebook’s ‘Filed PCT applications’ in Filing Analytics it shows that law firm A had an increase in work from Facebook over the years, whilst law firms B and F show a clear decrease in work volume from them. These drops and rises, amongst other factors could be considered to be indicative of the strength of the relationship between the client and the firm and the effort put in by the law firm towards business development and client retention.
Entering & keeping your place in the market So how can a law firm who wants to work with a tech giant know when would be the best time to try and enter the market? Or if you are a law firm already working with a tech giant or a significant applicant, how can you prevent losing business from them to another law firm? Apart from the patent data and analysis that Filing Analytics already provides, its new Watch feature ensures that you are alerted to any filing changes related to a law firm or applicant, without you having to do any extra work! For example, if you put a Watch alert on Facebook you will be
v - New ‘Watch’ feature on filinganalytics.io
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Team up with another Law Firm
Another key feature to assist law firms to obtain more work is the ‘pi Connect’ feature, which connects you to other law firms to easily set up new business partnerships. Rather than try and work with the tech giants directly, why not connect with a law firm in another jurisdiction to handle the tech giants incoming filings for your jurisdiction. This is also an easy way for law firms to increase their business opportunities with no extra resourcing required on their part.
vi - New ‘pi Connect’ feature on filinganalytics.io
To discover which tech giants you can find work from or find out who is working with who visit http://filinganalytics.io and obtain a free report on any law firm of your choice with details of the firm’s recent filings, their filing partners in your jurisdiction, client lists and more. All this information is publicly available under register sources for different jurisdictions. These actual snippets have been identified using Filing Analytics which collects these information points from diverse sources and makes the data available and easily searchable while providing further analytics on the data.
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EUIPO: IPR infringement report
EUIPO:
IPR Infringement Report summarised Counterfeiting remains a huge problem for the economy, and year on year it continues to rise. Some new research from the EUIPO looks at the epidemic as it stands, but also at various actions being used to combat IPR Infringement. Lisa Lovell, CEO, BEUK, explains … It is no secret that the epidemic of counterfeiting is still on the increase. In June 2018, The European Union Intellectual Property Office (“EUIPO”) produced the results of some new research showing the level to which counterfeiting has reached. “The report brings together the findings of the research carried out since 2013 by the European Union Intellectual Property Office (EUIPO), through the European Observatory on the Infringement of Intellectual Property Rights (Observatory), on the extent, scope and economic consequences of Intellectual Property Right (IPR) infringement in the EU. Evidence on the economic value of IPRs in the EU economy, the extent to which this value is exploited, the infringement mechanisms used to realise that value and the actions being taken in response to these challenges are outlined and discussed.”
The Value of IPR
According to another study, conducted in partnership between the EUIPO and the European Patent Office (EPO); the total contribution of IPR-intensive industries to the EU economy accounts for approximately 42% of GDP (€5.7 trillion) and 28% of employment. 42%
Employment 28% EU exports to the rest of the world
93%
“Innovation and innovative assets play a significant role in economic growth and their importance as business assets is increasing, not only to innovators, but to business partners,
financiers and policy makers. Consequently, scoping and understanding their growing value and contribution to economic and employment growth is now, more than ever, a significant priority.” IPR-owner compared to non IPR-owner companies have higher; • •
The Report
EU’s GDP
Lisa Lovell, CEO & Founder Brand Enforcement UK www.brandenforcement.co.uk
• •
Revenue 29% higher per employee or 32% for SME’s Salaries 20% higher on average (in the same sector and country). Business Indicators higher turnover, employment, profitability and access to finance Profitability higher profitability and therefore faster growth
How & Why is IPR infringed?
The report shows that the ‘global phenomenon’ of counterfeiting is continuing to evolve at a rapid pace, largely in line with significant technological advances. Not only does the use of better technology make it easier for the counterfeiters to manufacture the illicit goods, but there are other incentives involved, including the availability of cheaper production methods, the increased return on investment, much lower prison sentences and fines for IPR infringement than those awarded for more serious crimes and therefore the decreased risk of choosing to produce counterfeit goods. “There are a number of distinct incentives for criminal gangs to engage in counterfeiting activity. First and foremost is the potential return on investment, which, as has been suggested, can be greater than those returns gained on the sale of illicit drugs. According to the International Institute of Research against Counterfeit Medicines (IRACM) an investment of $1,000 in the purchase of heroin could result in a yield of $20,000 in return. In comparison, the same investment in counterfeit cigarettes can yield $43,000, and the return on counterfeit pharmaceuticals might be as much as $500,000.”
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Damage to the Health of the Consumer
Not only is the sale of counterfeit goods damaging to the economy, but it can also be very damaging if not catastrophic to the health of the consumer. This illicit production (affects) the health and safety of consumers, who, as a result of buying these products can suffer a range of injuries, such as chemical damage to scalps, the ingestion of toxic substances through the application of counterfeit cosmetic products, and burns from self-igniting counterfeit batteries.”
Damage to the Economy
“According to a study carried out by EUIPO and the OECD in 2016, estimates of IPR infringement in international trade in 2013, could reach as much as 5% of EU imports, or €85 billion per year.” The report shows that a massive EUR59 billion sales are lost every year throughout Europe due to counterfeiting. The research, which commenced in 2013, is intended to provide a comprehensive picture of the impact counterfeiting has on the economy and the knock-on effect that in turn has on employment and growth. In the EU, the estimated loss of jobs is approximately 435k (UK 58k) and the loss per Inhabitant EUR116 (UK EUR141). Sector wise, the clothing sector is the hardest hit, with an estimated loss of annual sales in the EU of EUR23,247 million, medicines EUR15,953 million, cosmetics EUR5,828 million, smartphones EUR4,212 million and wine and spirits EUR2,744 million. The report also concluded the percentage of sales on the basis of the afore-mentioned and the following sectors: footwear and accessories, sports goods, toys and games, hand bags and luggage, jewellery and watches, recorded music, pesticides and agrochemicals, batteries and tires. The total cost spent on all these sectors in million EUR (percentage of sales and euros per inhabitant in different states and sectors.
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COUNTRY SPENDING COST % SALES (EUR) (EUR) PER INHABITANT Austria 1,041m 121m 6.9% Belgium 2,055m 183m 6.8% Bulgaria 552m 77m 19.8% Cyprus 196m 234m 15.1% Germany 8,326m 103m 5.9% Denmark 1,147m 203m 6.0% Estonia 1,041m 1021m 6.9% Spain 6,175m 133m 9.3% Italy 8,620m 142m 7.9% Sweden 1,248m 128m 5.0% “Because of the high value associated with IPR, infringement of those rights is a lucrative criminal activity, which generates significant costs to the rights owners and to the economy in general.”
Costs of Combatting IPR Infringement
The report looks at two main ways IPR infringement affects SME’s; the loss of sales, and the need to invest resources in detecting infringement and dealing with it. A survey of 1,291 companies in 14 EU Member States set out the types of costs of combatting IPR infringement as follows; • • • • •
employee time; external legal assistance; court fees in connection with infringement-related litigation; storage and destruction costs; other infringement-related costs.
Overall, the average company in the sample spent EUR 115,317 per year on enforcementrelated activities, which varies depending on the size of the company. • • •
Small company (less than 50 employees) EUR 83,653 Medium companies (50-250 employees) EUR 103,166 Large companies (250+ employees) EUR 159,132 per year
“..IPR ownership is essential for SMEs to grow ...IPR infringement is a major threat to the development of innovative SMEs.”
Initiatives to combat the growing trend
So, whilst we are well aware that counterfeiting is on the rise, and will no doubt remain this way for the foreseeable, what actions are being taken in an attempt to combat IRP infringement? The report sets out various initiatives which have been employed to try to reverse the growing trend; “In response to these developments the EUIPO, together with public and private partners, is undertaking and supporting a number of actions to meet these challenges. These actions range from providing rights
owners with information on the changing infringement landscape, working with Europol on wider responses to IP crime, not least by funding a specialised IP crime unit within Europol, supporting the European Commission (DG Trade) efforts to address the supply of counterfeit goods in third countries, and by providing citizens with information on the availability of legal digital content offers and on the economic impact of purchasing counterfeit goods or accessing illegal content.” •
•
•
•
•
•
EUIPO works with the European Commission on assisting European Innovative SME’s with the management and protection of their IPR’s EUIPO’s Enforcement Database offers rights owners a secure line of communication with Customs and Police Officials and encourages sharing of product identification tips EUIPO’s ACRIS and ACIST databases offers European companies information on detentions at the borders and the internal market in order to assist companies with risk management EUIPO’s TMView and DesignView assists companies with understanding of the existing IPR landscape, helping to promote original innovation whilst avoiding conflict EUROPOL’s IP Crime Coordination Centre (IPC3) monitors and reports IP crime and conducts investigations in order to counter IP crime globally Global Scale Operations conducted by various enforcement bodies including; • Op Pangea X (September 2017) coordinated by Interpol tackling illicit medicines/ medical devices, including 197 enforcement authorities from 123 countries. • Op Opson VI (early 2017) a joint Europol-Interpol initiative targeting counterfeit food and drink, resulting in seizure of 13.4 tonnes (food) and 26.3m litres of drink worth an estimated EUR230million. • Op In Our Sights (finalised November 2017) a joint initiative of EUROPOL, INTERPOL and US Immigration & Customs Enforcement – Department of homeland security
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•
•
Investigations (ICE-HIS) and resulting in seizure of 20,520 domain names across 27 countries. “Follow the Money” approach, a European Commission initiative seeking to disrupt the trade in counterfeit goods and in particular the revenue streams of counterfeiters in order to establish voluntary agreements between rights holders and internet platforms, the digital advertising community, payment providers and transport companies. OECD Task Force on Combatting Illicit Trade (TF-CIT), facilitates research, adopts policy recommendations and promotes best practices to combat illicit trade and trade in counterfeit goods.
The Future
We forecast that counterfeiting will continue to rise. However, in order for us to allow innovation to grow we must continue to find better ways in supporting companies in developing and also protecting their IPR. We must continue to raise consumer awareness of the damage counterfeiting causes, not only our economy but also of the potential health risks to the consumer. We must continue to work together in partnership and develop more joint initiatives to combat the crime and keep the costs of combatting counterfeiting as low as possible, so companies can not only free up budgets but also employee time in order to get on with their core businesses. Finally, we must continue to disrupt the trade of the criminals, by circumventing the new technologies used by the counterfeiters, whilst continue to develop our own in order to maintain a competitive edge. It is great news therefore that the research of the EUIPO will continue and the report is expected to be published on an annual basis. “EUIPO acknowledges that the current provision and support offered to European companies is subject to continued review and evaluation, as the IPR infringement landscape becomes more complex, as for instance, technological developments continue to offer new opportunities for criminals to infringe IPRs and to distribute their goods more widely and via ever changing routes and shipments.” “The Observatory will therefore continue to use the evidence captured via its databases and through interactions with its key stakeholders to keep pace with this evolving landscape, to ensure that in the future both EU companies and citizens continue to benefit from the economic value, employment and innovative investment associated with intellectual property.”
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