the trademark › wp-content › ... · magazine will ensure that you and your colleagues have...
TRANSCRIPT
LawyerTrademarkIssue 2 2020
GLOBAL REACH, LOCAL KNOWLEDGE
www.trademarklawyermagazine.com
The
Sunny Su & Jennifer Xia of Lusheng and Chris Lee &Theresa Mak of Rouse ask how Chinese brandowners can guard against counterfeits
Ensuring hand sanitizers are genuine and effective
EUROPEAN
Law firmRANKINGS
AyalaDeutschinterviewPage 18
CTC Legal Media
IP and e-commercePage 22
Australian brandprotectionPage 30
Front cover_TML_v6:Layout 1 6/4/20 18:02 Page 1
CTC Legal Media THE TRADEMARK LAWYER
THE TRADEMARKLAWYERIssue 2 2020EditorMatt [email protected]
Publishing DirectorChris [email protected]
Advertising Enquiries
Katie Kerr (Publishing Executive)[email protected]
Dael Carter (Publishing Executive)[email protected]
Faye Waters (Publishing Executive)[email protected]
Subscription [email protected]
Accounts [email protected]
Published by:CTC Legal Media Ltd,23 Hedgers Way, Kingsnorth,Ashford, Kent TN23 3GNTel: +44 (0)20 7112 8862Fax: +44 (0)20 7084 0365
Design and Repro by:Design and Printing Solutions LtdUnit 45C, Joseph Wilson IndustrialEstate, Whitstable, Kent CT5 3PS
Printed by:Pureprint Group, Crowson House,Bolton Close, Bellbrook Park, Uckfield,East Sussex TN22 1PH
Whilst every effort has been made to ensure that theinformation contained in this journal is correct, neitherthe editor, contributors or CTC Legal Media canaccept any responsibility for any errors or omissionsor for any consequences resulting therefrom.© CTC Legal Media 2020, and contributors. Thecontents of this journal are protected under thecopyright law of the United Kingdom, the BerneConvention and the Universal Copyright Convention.Any unauthorised copying of the journal may be inbreach of both civil and criminal law. Infringers will beprosecuted.
ISSN 2053-3829
LawyerTrademarkIssue 2 2020
GLOBAL REACH, LOCAL KNOWLEDGE
www.trademarklawyermagazine.com
The
Sunny Su & Jennifer Xia of Lusheng and Chris Lee &
Theresa Mak of Rouse ask how Chinese brand
owners can guard against counterfeits
Ensuring hand sanitizers are genuine and effective
EUROPEAN
Law firmRANKINGS
Ayala
Deutsch
interviewPage 18
CTC Legal Media
IP and e-commercePage 22
Australian brand
protectionPage 30
Front cover_TML_v6:Layou
CTC Legal Media
3
In previous years, our second issue of the year has traditionally been ourINTA issue. Most readers, however, will be aware that INTA’s AnnualMeeting, due to have been held in Singapore in April, has been postponed
due to ongoing world events. With a rescheduled meeting planned forNovember, we at The Trademark Lawyer are working hard to assemble ourusual bumper INTA issue, this time for Issue 5 later this year.
It’s worth remembering that The Trademark Lawyer is also a digitalpublication, so despite current uncertainty, we will still be bringing you thelatest in trademark news, features, and opinion. Head over towww.trademarklawyermagazine.com to read our online editions and latest
news stories - and make sure tosubscribe to our weekly newsletter.
What, though, of the issue youcurrently hold in your hands? Here youwill find the usual broad selection ofarticles from industry leaders andtrademark experts. For starters, in aninterview conducted at the end ofJanuary, I spoke to Ayala Deutsch abouther career in IP, her time at the NationalBasketball Association, and herobjectives for the year ahead asPresident of INTA.
For our very timely Cover Story, Sunny Su and Jennifer Xia fromLusheng (China) and Chris Lee and
Theresa Mak from Rouse (Hong Kong) ask how Chinese brand owners canlegitimately claim that their hand sanitizer products are effective, whilstguarding their brands against counterfeit and substandard rival products.
Kemal Tayyareci, Pre-Sales Consultant at Incopro, explains why Google needsto step up its game when it comes to websites selling counterfeit goods, ZhenkunFu, Senior Partner at Corner Stone & Partners, discusses the challenges posed toIP protection by the rapid growth of e-commerce, and CompuMark’s RobertReading discusses the results of its latest trademark survey and explains whytechnology may be able to help tackle growing levels of infringement.
All this and much more can be found within these pages.Enjoy – and stay safe.
Editor’swelcome
Mission statementThe Trademark Lawyer educates and informs professionals working in the industry bydisseminating and expanding knowledge globally. It features articles written by people atthe top of their fields of expertise, which contain not just the facts but analysis and opinion.Important judgments are examined in case studies and topical issues are reviewed inlonger feature articles. All of this and the top news stories are brought to your desk via theprinted magazine or the website http://www.trademarklawyermagazine.com/
EDITO
R’S W
ELCO
ME
we will still bebringing youthe latest intrademark
news, features,and opinion
”
“
Editor’s welcome_ONLINE_v3_TML:Layout 1 7/4/20 09:38 Page 3
Stop Beinga Bank
www.billtrader.com | [email protected]
Get in touch with us at [email protected] to schedule an obligation-free demo of our innovative platform today.
eineineeBeBeBeinBeinBanBanBanBanBanBanBaBaop Bop Bop Bop Bop op p Bp B
nknkStop being a bank for your overseas clients and trade your invoices into cash with Billtrader. All you need to do is send us a copy of the invoices you issue to your foreign agents and we’ll pay you cash for those invoices within 7 days. Here’s how it works:
Are you sick of waiting for months to be paid by your foreign agents?
Step
1Step
2Step
3Step
4
Each time you invoice your foreign agent, email a copy to us. We’ll load it into the Billtrader platform, ready for you to trade.
You trade your invoices into cashon our platform and we pay you next Tuesday.
Now that you’ve been paid, we will liaise with your foreign agent to await their payment direct to Billtrader.
You send a one-time authorisation email to your foreign agent, letting them know you’ll be asking them to pay you via Billtrader.
Billtrader FP.indd 1 04/02/2020 09:03
5CTC Legal Media THE TRADEMARK LAWYER
CO
NTEN
TS
32 Russian Case Study –defending “Suzuki”Alexandra Pelikh of Zuykov and partners discusses arecent case in which her firm defended the interestsof the right holder of a disputed trademark.
36 A new dawn for ArgentinaSantiago O’Conor of O’Conor & Power examinesrecent changes to Argentinian trademark law thathave brought decades of stagnation to an end.
38 Rankings: EuropeTen of the best law firms from each of the topEuropean jurisdictions, including France, Russia, and Germany.
47 Directory of servicesAn A to Z list of the international law firms who provideIP related services.
36
30
Contents_TML_v3:Layout 1 7/4/20 08:59 Page 5
4 THE TRADEMARK LAWYER CTC Legal Media
Contents
18 Holding court - aninterview with INTAPresident Ayala DeutschMatt Seex, Editor of The Trademark Lawyer, talks toAyala Deutsch about her career in IP, her time at theNational Basketball Association, and her objectives forthe year ahead as President of INTA.
22 Cyber IP infringements andlegal remediesZhenkun Fu, Senior Partner, Trademark and LitigationAttorney at Corner Stone & Partners, discusses thechallenges posed to IP protection by the growth of e-commerce.
26 Why Google must do moreto protect trademarksfrom counterfeitsKemal Tayyareci, Pre-Sales Consultant at Incopro,explains why Google needs to step up its game whenit comes to websites selling counterfeit goods.
30 What you need to know inorder to protect yourbusiness and your brandJacqui Pryor of Mark My Words looks at brandprotection in Australia.
Issue 2 2020
226 Meet the Editorial BoardMeet our Editorial Board members who helpdetermine the direction of this magazine.
7 NewsDid Netflix make the wrong choices withBandersnatch? Why Stilton still won’t come fromStilton after Brexit, and a $77 million court win for The Beatles.
10 COVER STORY Killing the99.9% - how to ensurehand sanitizers meet theright criteria The COVID-19 pandemic has made hand sanitizing amatter of life and death. Sunny Su and Jennifer Xiafrom Lusheng (China) and Chris Lee and Theresa Makfrom Rouse (Hong Kong) ask how Chinese brandowners can legitimately claim that their sanitizerproducts are effective, whilst guarding their brandsagainst counterfeit and substandard rival products.
14 The trademark ecosystemin 2020 – CompuMark’slatest surveyWith trademark registers becoming ever-morecrowded, CompuMark’s Robert Reading discusses theresults of its latest trademark survey and explains whytechnology may be able to help tackle growing levelsof infringement.
Contents_TML_v3:Layout 1 5/4/20 12:45 Page 4
NEW
S
7CTC Legal Media THE TRADEMARK LAWYER
Did Netflix make the wrongchoices with Bandersnatch?STREAMING GIANT NETFLIX has failed inits bid to dismiss a $25 million infringementaction brought against it by ChoosecoLLC, current publisher of the perenniallypopular Choose Your Own Adventurebooks.
Chooseco alleges that its trademarkswere infringed by the “Bandersnatch”episode of Netflix show “Black Mirror”,created by Charlie Brooker. The episodewas notable for being interactive; atcertain points in the episode, viewerswere required to make choices for thecharacters on-screen, dictating theiractions and, ultimately, influencing thedirection of the narrative.
The Choose Your Own Adventurebooks were originally published byBantam Books from the late 1970s untilthe 1990s. Told from a second-personpoint of view and allowing the reader tomake choices that affected the story’soutcome, the series was immenselypopular, spawning an entire “gamebook”genre that included popular series suchas Lone Wolf and Fighting Fantasy. In2003, Chooseco, which was founded byauthor R. A. Montgomery, writer andcreator of the original series, purchasedthe lapsed rights to Choose Your OwnAdventure in order to republish some ofthe books and license the property toother media.
Chooseco claims that by evokingChoose Your Own Adventure in itsmarketing for “Bandersnatch”, and byincluding a scene where the protagonistof the episode expresses his intention tocreate a videogame based on ChooseYour Own Adventure, Netflix infringedupon its intellectual property.
Proceedings were brought againstNetflix in 2019. In response, Netflix put upa defense based on the First Amendmentdecision in Rogers v. Grimaldi. Accordingto that defense, in light of the FirstAmendment’s protection of artistic works,
the use of a trademark in such a work maybe actionable only if that use misleads.
Nonetheless, Judge William Sessionsof the Vermont District Court found thatChooseco is entitled to proceed with itsaction, finding that:
“Netflix used Chooseco’s mark todescribe the interactive narrative structureshared by the book, the videogame, andthe film itself. In addition, the mentalimagery associated with Chooseco’s markadds to Bandersnatch’s 1980s aesthetic.
"Here, Chooseco has sufficiently allegedthat consumers associate its mark withinteractive books and that the mark coversother forms of interactive media, includingfilms. The protagonist in Bandersnatchexplicitly stated that the fictitious book atthe center of the film’s plot was a 'ChooseYour Own Adventure' book. In addition,the book, the videogame, and the filmitself all employ the same type of
interactivity as Chooseco’s products. Thesimilarity between Chooseco’s products,Netflix’s film, and the fictitious bookNetflix described as a 'Choose Your OwnAdventure' book increases the likelihoodof consumer confusion.
“Moreover, any descriptive aspects ofthe phrase [Choose Your Own Adventure]may stem from Chooseco’s mark itself. Inother words, the phrase may only havedescriptive qualities because Choosecoattached it to its popular interactive bookseries.
“The Court lacks the facts necessary todetermine whether consumers perceivethe phrase in a descriptive sense orwhether they simply associate it withChooseco’s brand."
It remains to be seen whether Netflixand Chooseco will be able, or willing, tochoose an ending to their own adventure,and reach a settlement.
News
Stu
dio
R3
/ S
hu
tte
rsto
ck.c
om
TML0220 news_v3:Layout 1 6/4/20 11:38 Page 7
6 THE TRADEMARK LAWYER CTC Legal Media
MEET THE EDITORIAL BOARD
Pravin Anand - Anand & Anand, IndiaPravin Anand, managing partner of Anand and Anand, completed hislaw studies in New Delhi in 1979 and since then has been practising asan advocate and a patent and trademark attorney. He has been acounsel in several landmark IP cases involving the first Anton PillerOrder (HMV cases); the first Mareva Injunction Order (Philips case); thefirst Norwich Pharmacal Order (Hollywood Cigarettes case); right ofprivacy (Bandit Queen case); dilution in trademarks (Glenfiddich case);recognition of market survey evidence by judiciary (Time warner case).
Ronda Majure - Vice-President,Global Head of Sales, CompuMarkRonda joined the company in 1996 and has worked in thetrademark research and brand protection industry for over 20 years, serving on several INTA committees including the INTA Internet Committee, Trade Dress, the Online Trademark UseSubcommittee, and currently serving on the Unreal Campaign.She has held several positions within CompuMark, including Vice-President of Sales and Marketing.
Jayne Durden - Intellectual Property Law Management SpecialistA trademark attorney and solicitor, Jayne is experienced inworking in large, as well as boutique law firms in the US andAustralia, helping in-house legal counsel and brand managers todevelop strong brands, supported by strategic trademark filingstrategies. Jayne utilizes her technical knowledge andunderstanding of trademark management to support thedevelopment and delivery of a range of IP portfolio services.
Christopher Lees - Director and part owner of BENTLEY ClothingChris has been heading the UK-based company for several yearsand even saw it win a landmark legal battle against Bentley Motors after they failed to cancel their trademarks.
Vitor Palmela Fidalgo - Legal Director at Inventa InternationalCurrently holding the position of Legal Director at InventaInternational, Vítor coordinates the Trademark and PatentAttorney’s team, a role in which he has extensive experience.Combining the legal and business perspective, Vítor worksalongside the clients in order to set and carry out the mostadequate Intellectual Property (IP) strategies, with the aim toprotect and enhance the profitability of all IP assets.
Enrique A. Diaz - Senior Partner,Goodrich RiquelmeEnrique is head of the Industrial and Intellectual PropertyDepartment. IP Latin American expert Enrique joined the firm in1998, finished law school in 2001, and by 2010 he became theyoungest lawyer to have ever been made senior partner in thefirm’s history. He is currently a foreign expert on Latin-Americanintellectual property, managing the prosecution of over 3500 trademarks and more than 1000 patents per year.
Rob Davey - Senior Director, ManagedSolutions and Global Markets, CompuMarkRob is a member of the CompuMark leadership team responsiblefor driving strategic growth from professional services andgeographical expansion. He leads CompuMark’s Custom &Managed Solutions team who answer the global trademarkcommunity’s unique challenges with tailored professional servicesand data analytics. Rob is also accountable for CompuMark’sbusiness in Asia, Latin America, the Middle East and Africa.
Mr. Gang HU - Trademark Specialist,CCPITMr. HU is a senior Chinese trademark specialist and practitioner.He is good at solving all kinds of difficult and complicatedtrademark litigation and non-litigation cases. Some of theinfluential cases he handled were widely reported by a variety of media, and any recent IP litigation cases represented by himwere awarded by the Supreme People’s Court as the annualguidance cases.
Rosie Burbidge - Partner, Gunnercooke LLPRosie is an intellectual property lawyer. In 2019 she wasrecognized as one of 20 Women in IP who are “destined for great things”.
Joel Vertes – Partner, CMSJoel is a Partner at CMS, with expertise in trademark litigation andprosecution, copyright, anti-piracy and other IP enforcementdisputes. He also specialises in licensing/franchising.
Shelley Jones - Vice-President atNational Inventors Hall of Fame, CanadaShelley was called to the Ontario Bar in 2010 and has been a registered trademark agent since 2002. She is experienced in protecting global brands with a focus on trademark and copyrightinfringement, domain name disputes, and anti-counterfeiting. At IPIC,Shelley developed relationships and partnerships with keystakeholders such as businesses, educators and government.
Santiago R. O’Conor - Managing Partner,O’Conor & PowerSantiago is an attorney and trademark and patent agent advisingdomestic and foreign companies on local and international IP lawin Argentina and across Latin America for more than 30 years. Heis the managing partner at O’Conor & Power in Buenos Aires,Argentina.
Verónica Rodríguez Arguijo -International Legal CounselVerónica has extensive experience in the prosecution, enforcement,and litigation of IPRs. She provides legal advice to multinationals,associations, and SMEs in relation to cross-border IP, regulatory andcontractual issues. She holds an LL.M. from Maastricht Universityand Specialization from the National Autonomous University ofMexico, both in IP Law. Verónica contributes to IPKat and IPTangoand is an IP mentor at HighTechXL.
Jeffrey LIU – Senior Partner of Corner Stone& Partners; Member of Anti-CounterfeitingCommittee of INTA & ECTAJeffrey is an established trademark attorney whose experienceincludes trademark prosecution, investigations involving infringingand counterfeit goods, and administrative enforcement. He is a keystrategist in building the foundation for complex international cases.His extensive experience and focus on client caring has made himthe firm’s international ambassador.
Tania Clark - CITMA PresidentTania is responsible for the policy and direction of CITMA and for maintaining its relationship with UK legislators andinternational organisations, including the UK Intellectual PropertyOffice (UKIPO), European Union Intellectual Property Office(EUIPO) and the World Intellectual Property Office (WIPO). A Chartered Trademark Attorney and a qualified Barrister, Tania has headed the London trademark team at Withers &Rogers for the last 12 years.
Steve Burkhart - Vice-PresidentAdministration, General Counsel andSecretary, BIC CorporationBefore joining BIC, Steve was in private practice at Venable. Inaddition to general counsel responsibilities, he serves as aConvenor of ISO TC61 SC4 WG10 for lighters, the immediate pastChairman of the Board of the Product Liability Advisory Council(PLAC), VP of U.S. Lighter Association and as an adjunct professorof law teaching in-house corporate practice.
Mr. Francesco Bonini - Studio Bonini, ItalyFrancesco has 20 years experience in Italian and EU trademarkand design prosecution. He had successful cases in oppositions,appeals and cancellations both before the EUIPO and the Italian PTO. Studio Bonini, established in 1980, has its head officein Vicenza, in the North-East of Italy. It has helped severalcompanies of the Venetian area to protect their IP rights, dealing with IP prosecution.
Mark Durrant – Director of Marketing andCommunications, Marconi GroupHaving spent over thirteen years at Nokia, most recently as the Director of Communications for Nokia Technologies, Mark has recently joined the Marconi Group as their Director of Marketing and Communications.
Editorial Board_TML_v2:Layout 1 2/4/20 15:09 Page 6
NEW
S
9CTC Legal Media THE TRADEMARK LAWYER
Ferrari takes “full-blooded”action against charityFERRARI IS TAKING legal action against a charity in Italy becauseit wants to use the charity’s name for its new SUV. The luxury carmanufacturer and the Purosangue Foundation, which states itsobjectives as “[t]he promotion for the public benefit ofparticipation in healthy recreation by providing facilities for sportand the improvement of health and fitness”, had previously heldtalks regarding Ferrari’s desire to use the name “Purosangue”, anItalian word meaning “thoroughbred” and “full-blooded”, for oneof its upcoming vehicles.
However, when these talks broke down, the PurosangueFoundation took action to prevent Ferrari’s application for aEuropean trademark for the “Purosangue” name. By way ofresponse, Ferrari responded by launching proceedings againstthe small foundation, claiming that it has not made sufficientcommercial use of “Purosangue” since registering it as atrademark back in 2013, and therefore is not entitled to exclusiveuse of the term. For its part, the Purosangue Foundation isrefusing to back down, arguing that there is plenty of evidenceof use, including a joint venture with Adidas to create clothingand footwear branded with the “Purosangue” name. With neitherside likely to give ground, the dispute will likely be decided bythe Italian courts. e
ska2
00
5 /
Sh
utt
ers
tock
.co
m
TML0220 news_v3:Layout 1 5/4/20 12:50 Page 9
NEWS
8 THE TRADEMARK LAWYER CTC Legal Media
Post-Brexit, Stilton stillwon’t come from Stilton
THE FACT THAT Stilton cheese, world-famous for its distinctiveblue veins and pungent aroma, cannot be legally manufacturedin the village of Stilton that lends the cheese its name, continues tocause something of a stink in the small Cambridgeshire village.
Thought to have been created in the 1700s, EU protecteddesignation of origin (PDO) rules mean that cheese may only besold as “Stilton” if it is made in Nottinghamshire, Leicestershireor Derbyshire, using local, pasteurized milk. An application by acheese manufacturer, the Original Cheese Company, to amendthe PDO in order to extend it to the village of Stilton itself, wasrejected in 2013.
Conservative MP Shailesh Vara, whose constituency includesthe disgruntled village, has expressed his hope that Brexit will
allow the relevant rules to be changed, thus allowing Stilton tomanufacture their eponymous cheese.
That hope, however, may come to nothing.According to the chairman of the UK Protected Food Names
Association, Matthew O’Callaghan:"When the High Court in 1966 granted the trademark for
Stilton cheese and so restricted its production to the threecounties of Leicestershire, Nottinghamshire and Derbyshire, itdid so with the clear understanding that the village of Stiltonwould be permanently excluded from applying for certificationby the Stilton Cheesemakers' Association to make cheese andcall it Stilton.
"When the EU Protected Food Names Scheme wasintroduced, it was clearly stated that it was not designed toreplace trademarks already in existence. In fact, any applicationthat did so was to be refused.
"The legislation establishing the Protected Food Namesscheme allowed trademarks applied for before the ProtectedFood Names scheme to co-exist with any Protected FoodNames designation. So, the trademark for Stilton and therestrictions imposed by the High Court are still valid."
Responding to Mr O’Callaghan, Mr Vara said:"I appreciate that existing producers of Stilton cheese, who Mr
O'Callaghan represents, wish to protect their exclusive rights tothis lucrative business, said to be worth £50 million annually, butit is important arguments are conducted on the basis of facts.
"As the MP for North West Cambridgeshire, which includes thevillage of Stilton, I have been approached by constituents whowish to make the famous cheese locally.
"Historical evidence proves that the cheese was originallymade in Stilton village in 1722 and it would be fantastic if wecould make the cheese again.
"It would be great for local jobs and tourism and it wouldcertainly be a boost for the local economy."
With EU rules on such matters, along with many others, set toremain in force at least until the end of the UK’s post-Brexittransition period, this ongoing row seems set to ferment.
The Beatles win $77 millionmerchandise rulingTHE CORPORATION founded by TheBeatles to manage their financial andlegal affairs, Apple Corps, has beenawarded $77 million in damages by USDistrict Court Judge Beth Bloom over thesale of unlicensed merchandise using theband’s name and imagery.
The figure of $77 million was arrived at by identifying 77 individuals selling
counterfeit Beatles merchandise andthen imposing a million-dollar penalty oneach of them. That said, the rulingappears to be largely symbolic, with mostof the 77 infringers remaining unidentifiedsave for their online usernames, and withnone of them appearing in court, eitherfor the judgment or during theproceedings themselves. Nonetheless,
Judge Bloom has ordered the 77 to ceasemanufacturing and/or selling suchmerchandise.
It is hoped, not least by Apple Corpsitself, that the ruling might deter potentialinfringers, here, there and everywhere, inthe future.
Apple Corps has made no publiccomment on the decision.
TML0220 news_v3:Layout 1 6/4/20 11:39 Page 8
HA
ND
SAN
ITIZER
S
11CTC Legal Media THE TRADEMARK LAWYER
regulations. Although it does not fall into thescope of medical products, the PRC governmentclosely supervises the manufacture and sale ofdisinfection products in the market. Chinacategorises disinfection products depending onusage and the degree of risk. Hand sanitizer is categorised as second-class and should be strengthened to ensure high levels ofeffectiveness. Operators should not produce,sell, or import hand sanitizers in mainland Chinauntil they have acquired a business and hygienelicense and/or pass hygiene and evaluationtests required.
Regulations in Mainland China include:a. Disinfection Management Measures
(“DMM”) Articles 20, 22 and 26Under the DMM, in order to lawfullymanufacture hand sanitizers, manufacturersshould obtain the corresponding businesslicense as well as a hygienic license issued bythe local provincial authority. The numbershould be printed on the product packagingwhen launching to market.
b. Regulations on the Hygiene and SafetyEvaluation for Disinfection Products(“Regulation”) Article 4
Under this Regulation, satisfaction in the Hygieneand Safety Evaluation is required before sellingsecond-class disinfection products such ashand sanitizer in mainland China. The companycan conduct the Evaluation either by itself or byentrusting a third party.
c. Notice of the General Office of the NHC on the Urgent Marketing of SomeDisinfectants During the Prevention andControl of Pneumonia Outbreaks of NewCoronavirus Infection (“Notice”) (issuedon 3 February 2020)
According to the Notice, during the preventionand control of the pneumonia epidemic ofCOVID-19, inspections and filing procedures forlaunching alcohol, chlorine, chlorine dioxide,and peracetic acid disinfectants are postponed.Products manufactured by companies withhygienic license can be quickly launched tomarket. However, when this period ends,companies who continue to produce and sellthose products will need to adhere to therelevant formalities in accordance with theoriginal procedures.
The authority has the right to confiscate allillegal income and fine offenders approximatelyUSD 7,200. Serious offences could incur criminalcharges.
In Hong Kong, sanitizers are not classified asmedical products, dangerous goods, strategiccommodities, or controlled items and prohibitedarticles under the laws which govern on goodsimported, exported, produced, traded orpossessed. They are ordinary goods so their use,sale, distribution, marketing, and advertising canbe conducted freely, unless the activity violatesgeneral requirements for product safety or saleand/or marketing practices that are reasonablyexpected under common law and thelegislation described below.
Jennifer Xia
Chris Lee
Rouse_v5_TML2:Layout 1 2/4/20 15:36 Page 11
RésumésSunny SuSunny is a Senior Associate at LushengLaw firm (part of the Rouse Network),where she focuses on IP prosecution andcontentious and non-contentiousprotection in China. She has particularexpertise in IP commercials, includingtechnology import-export, franchise,assignment, licensing, non-compete andvarious commercialization agreements.
Theresa Mak Theresa is a Principal based in Rouse’sHong Kong office. She has experience inboth non-contentious and contentiousmatters, including the filing andprosecution of trademark applicationsand the provision of advice on a range ofIP issues. Theresa advises advertisingagencies and brand owners onmarketing, trade claims and privacyissues. She also advises on consumersafety and general trade promotion andadvertisements on social media andconventional advertising platforms.
Jennifer XiaJennifer is an Associate within the IPcommercial team at Lusheng Law firm(part of the Rouse Network), where shefocuses on IP prosecution and protectionin China. She has represented numerousworld-renowned multinationalcorporations in dealing with theirintellectual property protection issues,and also provides compliance servicesrelated to advertising law, entertainmentlaw and cybersecurity law.
Chris LeeChris is a Senior Paralegal based inRouse’s Hong Kong office, and has over30 years' experience in commerciallitigation and IP enforcement.
10 THE TRADEMARK LAWYER CTC Legal Media
Killing the 99.9% - how to ensure hand sanitizersmeet the right criteria
The COVID-19 pandemic has made handsanitizing a matter of life and death. SunnySu and Jennifer Xia from Lusheng (China)and Chris Lee and Theresa Mak from Rouse(Hong Kong) ask how Chinese brand ownerscan legitimately claim that their sanitizerproducts are effective, whilst guarding theirbrands against counterfeit and substandardrival products.
Sunny Su
Theresa Mak
HAND SANITIZERS
Hand sanitizers have quickly become oneof the world’s hottest commodities asCOVID-19 continues to cross borders
and there has been a surge in demand inmainland China and Hong Kong as employeesbegin to return to the office.
The sanitizer products typically contain one ofthree types of alcohol: ethanol, isopropanol orn-propanol. These sanitizers are effective forkilling germs, with at least 60 percent alcoholconcentration (normally 75 percent for productsin mainland China).
Sanitizers reviewed by the US Center forDisease Control and Prevention state that theirclaims of killing “99.9% of germs” can besubstantiated. However, these tests are conductedin laboratories when, in real life, the situations aresignificantly more complicated; the effectivenessof hand sanitizers varies on the oiliness ordirtiness of an individual’s hands and on thegerms or viruses concerned.
So, how can a brand owner claim its sanitizerproducts “Kills 99.9% of germs” in mainlandChina and Hong Kong?
1. Classification of hand sanitizersand entry of market
In mainland China, hand sanitizer with asterilisation function is classified as a sanitarydisinfection product, the manufacture and saleof which is subject to special laws and
Rouse_v5_TML2:Layout 1 2/4/20 15:36 Page 10
HA
ND
SAN
ITIZER
S
13CTC Legal Media THE TRADEMARK LAWYER
bacterial, fungal, or other infectious diseasessuch as COVID-19.
Enforcement cases in mainland ChinaSince the outbreak of COVID-19, procuratoratesacross the country have handled 1,086 economiccrimes that interfere with the prevention andcontrol of the epidemic; 427 cases are suspectedof producing and selling counterfeit and inferiorproducts (particularly medical masks anddisinfectants), and 149 cases are suspected ofselling counterfeit registered trademarks.
In one incident, it was identified that thechlorine content did not meet National Standardsand therefore considered substandard products.The offenders were arrested for selling fake andinferior products.
Enforcement actions by Hong Kong CustomsOn 27 January, Hong Kong Customs beganinspecting retail locations selling sanitizers andother common protective items. Since then,several arrests and seizures have been madeagainst pharmacies and retail outlets sellingsanitizer products which violate the provisionsof CGSO and TDO.
In one incident, Hong Kong Customs searchedan office of a pharmacy group and its 20 branchesin various districts across the territory as well asover 230 retail spots, seizing a total of 174 bottlesof disinfectant alcohol with suspected falsedescriptions on composition. The disinfectantalcohol was put on sale in 1 litre bottles withclaim of “75% ethanol” but was found to be ofjust 737 millilitres in volume and composed of52% methanol and less than 0.1% of ethanol. Adirector and six salespersons were subsequentlyarrested.
3. What can brand owners oflegitimate sanitizer products do?
Sanitizers are hygienic products and areexpected to provide users with enough protectionagainst germs and infection. Counterfeit andsubstandard sanitizers may expose users tosignificant harm due to their inferior quality or asa result of them containing harmful substances.Often these products copy the designs,packaging, logos, emblems, and productdescriptions of the real products.
A brand owner should protect its products byensuring the registration and protection of itstrademarks in mainland China and Hong Kong.The PRC Trademark Law (Chapter 7) and TradeMarks Ordinance (Cap 559) in Hong Kongprovides remedies for the infringement ofregistered trademarks when a person who is notthe registered owner or its licensee uses atrademark identical or strikingly similar to aregistered trademark in relation to identical or
similar goods or services. In mainland China, in addition to the civil
actions, the trademark owner may also file acomplaint and request the Market SupervisionAdministration (“MSA”) handle the trademarkinfringement/ counterfeiting. If there istrademark infringement, the MSA has the powerto order the infringer to stop the infringement,confiscate and destroy the infringing products,and impose monetary fines. The brand ownermay also file Customs Recordal of its registeredtrademarks with General Administration ofCustoms (“GAC”) in mainland China, meaninglocal customs can proactively protect thetrademark rights through randomly inspectingand detaining the fake products.
In Hong Kong, the owner of a registeredtrademark can take civil action against infringersfor damages. The registered trademark ownermay also record its trademarks with Hong KongCustoms in order to assist criminal enforcementactions against goods bearing forgedtrademarks under the provisions of the TDO.
ConclusionManufacturers must acquire a hygienic licensebefore producing hand sanitizers in mainlandChina. Any products then sold in the marketmust bear this hygienic license number.
When making trade claims such as “kills99.9% of germs”, sellers or distributors ofpersonal care products should ensure that theyhave evidence to substantiate their claims. Forany disinfection products sold in mainland Chinaor Hong Kong, any trade claims made on labelsor advertisements must not be misleading.
Aside from trade claims, sellers or distributorsof sanitary products should also note there aremechanisms for protecting their brands andcomposition of their products sold in mainlandChina and Hong Kong against counterfeit orlookalikes.
Theeffectivenessof handsanitizersvaries on theoiliness ordirtiness of anindividual’shands and on the germsor virusesconcerned.
”
“
ContactJennifer Xia [email protected]
Sunny [email protected]
Chris [email protected]
Theresa [email protected]
Rouse_v5_TML2:Layout 1 2/4/20 15:37 Page 13
HAND SANITIZERS
12 THE TRADEMARK LAWYER CTC Legal Media
Regulations in Hong Kong include:a. Consumer Goods Safety Ordinance
(“CGSO”) Cap 456Under the CGSO, it is an offence to supply,manufacture, or import into Hong Kongconsumer goods unless the goods comply withgeneral safety requirements for consumergoods.
The maximum penalty for the initial convictionis approximately USD 1,300 and imprisonmentfor one year. The CGSO also requires that, if astandard exists, the goods are required to meetthat standard if manufactured, supplied orimported into Hong Kong.
2. Claims/descriptions of thehand sanitizers on the labellingand packaging
According to the US Center for Disease Controland Prevention, a sanitizer product claiming to“kill 99.9% of germs” must have an alcoholconcentration of at least 60 percent. The CGSOhas no special requirements on the labelling ofpersonal care products in Hong Kong; however,all information provided on the packaging ofsanitizer must be true and not misleading. If awarning regarding the storage, use,consumption or disposal is placed on thesanitizer product or its package, the warningshould be stated in both English and Chinese.
In mainland China, standards demand that thesterilisation rate is no less than 90%; nowhere inthose standards does it stipulate that sanitizersshould have a sterilisation rate of 99.9%. In anyevent, all descriptions or information on theproduct packaging must be true, and notmisleading, and comply with other relevantadvertising and standard regulations.
Regulations in Mainland China include:a. Advertising Law of PRC Articles 3, 4, 8,
11, 28, 55Under the PRC Advertising Law, anadvertisement should be true to facts andcapable of substantiation and should notcontain any false or misleading information, norshall it deceive or mislead consumers. Violatorsface losing their business license and penaltiesof up to five times the advertising fees orapproximately USD 145,000.
b. DMM Articles 31, 43Under DMM, the label (including instructions)and promotional content on the disinfectionproduct must be true and must not state orimply any healing effects. Offenders would beordered to make a correction within a specifictimeframe and may also suffer a penalty ofapproximately USD 2,900.
c. Law of Protection of Rights and Interestsof Consumers Articles 20, 45, 55, 56
Under this law, information pertaining to thequality, functions, use, etc. of the productsshould be true and complete, the companyshall not make false or misleading advertising.Further, a consumer whose legitimate rights andinterests are harmed as a result of falseadvertisements of the products has the right toseek compensation from the company. In casethat the company commits fraud, compensationcould total three times the amount of the priceof the goods purchased by the consumer.
In view of the above, the claim that a product“Kills 99.9% of germs” must be true andaccurate. If challenged by consumers and thecompany fails to provide solid evidence, thesupplier may suffer severe consequences andbe subject to significant fines.
Regulations in Hong Kong include:a. Trade Descriptions Ordinance,
Cap. 362 (“TDO”)The TDO is the prime legislation which regulatesdescriptions applied on goods and services inHong Kong. Under Section 7, it is an offence forany person to apply a false trade description togoods, or to possess, supply or offer any goodsto which a false trade description is applied. Themaximum penalty upon conviction of an offenceunder Section 7 is a fine of USD 64,000, and fiveyears’ imprisonment.
Although there are no mandatory requirementsunder the TDO to list product ingredients onlabels, suppliers should be aware of theimplications in violating the TDO. A “Kills 99.9%of germs” claim on the sanitizer product must betrue and capable of substantiation if required bythe Customs and Excise Department.
b. Undesirable Medical AdvertisementsOrdinance, Cap. 231 (“UMAO”)
According to the requirements of the UMAO, it isan offence to publish an advertisement which islikely to lead to the use of any medicine, surgicalappliance, or treatment which states it willprevent human beings from contracting certainspecified diseases or conditions. Any companywho contravenes these provisions is guilty of anoffence and liable to a maximum fine of USD50,000, and six month's imprisonment.
Although advertisements of medical productsfor the purpose of relief of symptoms ofcommon colds, coughs or conditions commonlyreferred to as influenza are permitted under theUMAO, suppliers of sanitizer products with a“Kills 99.9% of germs” claim should ensure thatany advertisement of the product does not carryan indication or implication that the sanitizer canbe used for treatment or prevention of any viral,
Often theseproductscopy thedesigns,packaging,logos,emblems,and productdescriptionsof the realproducts.
”
“
Rouse_v5_TML2:Layout 1 2/4/20 15:37 Page 12
CO
MP
UM
AR
K
15CTC Legal Media THE TRADEMARK LAWYER
image marks in 2019 than in previous years, and78% of respondents also reported that they arefiling applications for industrial designs as partof their protection strategy.
Searching and watchingIn order to function properly as a trademark andqualify for protection a brand needs to beunique within its marketplace. Avoiding confusionwith other brands is a key element of brandidentity. In order to check that a proposed brandis sufficiently different to existing brands, ideallyin-depth searches should be conducted prior toadopting and registering a new brand to avoidconflict with existing brands in the space.However, there are some practical issues thatmean this is not always possible. The majority ofrespondents reported that they conductedsearches for fewer than half of the brands theylaunched in 2019. Respondents identified anumber of challenges that make searchingdifficult – too much data (49%), not enough time(44%), not enough resources (38%) and nothaving the right tools and technologies (35%).
Respondents reported that because it wasn’talways practical to conduct a search prior tofiling a trademark application, the main factorsdetermining if a search should be carried outwere the overall investment in the brand (28%),budget (22%) and the importance/tier of thebrand (18%).
Similar factors applied when deciding howrespondents monitor (watch) their brands todefend against potential infringement. The majoritywatched fewer than 50% of the marks withintheir portfolio, with the investment in the brandand budget being the overriding considerations.
Infringement is on the riseTrademark infringement can be a very expensivechallenge —whether that’s changing a name ora logo or marketing material prior to (or evenafter) launching or taking legal action against aninfringing mark. As an example, in January 2019luxury jewelers Tiffany & Co. were awarded $21 million in damages and costs by a New Yorkcourt which ruled that their TIFFANY trademarkcovering diamond rings had been infringed byCostco.
With trademark registers receiving anincreasing number of applications every year, itis becoming more difficult to find unique namesand logos for new brands, and collisions areseeing a corresponding upward trend.
When CompuMark first surveyed trademarkpractitioners in 2017, 74% reported that they hadexperienced issues with infringement during theyear. That proportion had risen to 81% in 2018, andthe 2019 report reveals that 85% of respondentshad experienced trademark infringement in the
past 12 months. Significantly, nearly one third(30%) of respondents in 2019 reported that theyhad experienced more than 10 cases oftrademark infringement.
It is important to note that infringement is notjust being experienced in traditional channels,such as business and brand names, but alsosocial media names, industrial design, webdomains and advertising campaigns. What thismeans for trademark professionals is that it is nolonger sufficient to simply monitor patent andtrademark office (PTO) databases. It is also vitalto regularly check online channels, social media,and other common law (i.e. non-register)sources. Organizations need to be diligenteverywhere in order to keep their key brandssafe, as the threat of infringement can appearfrom a number of different directions.
The impact of infringementWith instances of infringement rising, so are the consequences of infringement that have asignificant impact on brands. In the 2018 surveyalmost one-third of respondents (30%) reportinghaving had to change the name of a brand as theresult of an infringement – in 2019 this proportionincreased to 46% of the trademark professionalssurveyed. Changing a brand name has wide-reaching and expensive implications: cost,reputational damage, and consumer trust. It canimpact a broad range of areas, such as websitedesign, advertising campaigns, marketingmaterials, and packaging.
Three-quarters of respondents reportingtaking legal action against infringers in 2019,with 40% spending between $50,000 and$250,000 in their most expensive action, and12% spending over $250,000 on a single case.
45% of respondents in 2019 reported thatinfringers caused confusion for their customers,with 38% stating that their business had lostrevenue and 37% felt that the reputation of theirbrand had been damaged because oftrademark infringement during the year.
The rising importance of technologyThe process of creating and protecting atrademark involves a number of potentiallycomplicated steps: name creation and/or logodesign; searching for potential obstacles; filing atrademark application and managing theprocess through to registration; monitoring forinfringement and taking action if necessary. It is
RésuméRobert Reading Robert is IP Director of Government &Content Strategy at Clarivate Analytics.
It is easierthan everbefore tocreate a brand.
”
“
Compumark_v5_TML2:Layout 1 6/4/20 11:53 Page 15
14 THE TRADEMARK LAWYER CTC Legal Media
Last year was another record year fortrademark activity. In 2019, for the tenthyear in a row, trademark registers around
the world saw a record number of trademarksapplications filed, with China leading the way.Global filing volume exceeded 11 million trademarkapplications – an increase of 5% over 2018 – withbrand owners filing nearly 8 million new trademarkapplications in China alone. The US saw nearly500,000 new applications, while India, Brazil,South Korea, Japan, Mexico, the European UnionIntellectual Property Office (EUIPO) and Turkeyeach received in excess of 100,000 applications.As 2019 drew to a close there were over 83 millionactive trademarks on global registers; thisnumber is likely to approach 100 million withinthe next two years.
Due to the nature of our interconnected world,it is easier than ever before to create a brand,and easier than ever for brands to access nationaland international markets. This accessibilityhowever is creating challenges for brand ownersas markets become more crowded and itbecomes increasingly difficult to carve out aniche and avoid collisions with other brands.
For trademark attorneys and other brandprotection specialists the growing number of brandsand the corresponding growth in trademarkapplications at Intellectual Property offices aroundthe world means that it is becoming more complexto screen, clear, register and watch trademarks.
These processes need to be carried outdiligently because not doing them, or not doingthem properly, can have severe consequences,including failure to secure a mark, infringing onanother organization’s intellectual property,possible litigation, and customer confusion. It’salso vital to monitor marketplaces andtrademark registers to prevent other brandsfrom infringing on your intellectual property.
Obtaining protection for a brand – andmaintaining protection - requires a significantinvestment in skills, money and time, and thelandscape is changing faster than ever.
To understand the changing issues andchallenges that are facing brand owners,CompuMark annually commissions independentresearch into the trademark ecosystem - in 2019 this survey covered 351 trademarkprofessionals, both in-house and externalcounsel, across five countries.
Survey ResponsesIncrease in trademark application filingactivityTrademarks are a fundamental aspect ofintellectual property protection for startups andmultinationals alike. As noted by Daren Tang,current chief executive of the IntellectualProperty Office of Singapore and the incomingDirector General of the World IntellectualProperty Office (WIPO) in Geneva, “not everybusiness needs a patent or a design, but allbusinesses need a trademark to communicate[their] brand”. There has been consistent growthin the number of trademark applications filedaround the world each year since the globaleconomic slowdown in 2008 — ten straightyears of growth driven in particular by theexponential increase in trademark activity byChinese brand owners. This growth is reflectedin the survey results, with 79% of respondentssaying that they maintained or increased theirtrademark filing activity in 2019.
There has also been increased interest inmarks with a visual element – perhaps in partdue to increased online activity where visualappeal increases the chance of getting noticedand holding attention. 56% of respondentsreported that they filed more applications for
The trademark ecosystemin 2020 – CompuMark’slatest survey
With trademark registers becoming ever-more crowded, CompuMark’sRobert Reading discusses the results of its latest trademark survey andexplains why technology may be able to help tackle growing levels ofinfringement.
Robert Reading
COMPUMARK
Compumark_v5_TML2:Layout 1 2/4/20 15:39 Page 14
MEXICO
Industrial andIntellectual Property
Litigation
Licensing Enforcement
Entertainment and Sport Law
Copyrights
Enrique A. Diaz [email protected] (5255) 5525 1422
Jaime Delgado [email protected] (5255) 5207 5324
Juan Carlos Suarez [email protected] (5255) 5207 9261
Guillermo Sosa [email protected] (5255) 5207 7561
Paseo de la Reforma 265, M2Col. y Del. Cuauhtemoc, 06500 Mexico, D.F.Tel. (5255) 5533 0040, Fax. (5255) 5207 3150
e-mail: [email protected]: www.goodrichriquelme.com
Goodrich FP_A4.indd 1 06/04/2020 11:17
COMPUMARK
16 THE TRADEMARK LAWYER CTC Legal Media
clear from this year’s survey that trademarkprofessionals believe that technology can playan increasingly important role in this process.
Technology was cited as the most importantway to improve both the clearance process andthe way brands are protected by 49% ofrespondents, arguing that technology is moreimportant than increasing resources (46%),larger budgets (45%), more time (40%) and bettercollaboration between departments (40%).
Looking specifically at how technology couldhelp, 50% of respondents suggested that thebenefit would come from real-time access totrademark data, 50% nominated better analyticsto assist decision making, and 46% believed thattechnology could be used to provide betterreporting.
Trademark professionals believe thattechnology can help make them moreproductive, with artificial intelligence andmachine learning in particular being identifiedas a potential automation tool. There is stronginterest in technology that is user-friendly andspeeds up processes while at the same timeimproving accuracy. Interestingly, this finding isin direct contrast with the regularly aired viewthat artificial intelligence poses a threat to legalprofessionals. Trademark searching andwatching were identified by respondents asspecific areas where AI could speed up existingprocesses, and predictive analytics wassuggested as a way that technology could assistthe decision making process for trademarkprofessionals by making the ever expandingvolume of information easier to digest.
There is also an opportunity for IntellectualProperty offices to benefit from advances intechnology and machine learning. 93% ofrespondents believe that applications fortrademarks containing an image would increaseif IP offices had a more reliable examinationprocess in place – tools are already beingdeveloped to speed up the categorization ofimage marks and the searching process tocheck for existing similar images.
Trademark professionals have a key role to play in brand creationAs trademark registers become more crowdedit is becoming more difficult to create trulyinnovative and unique names and logos for newbrands. Brand creation is typically handled by marketing within an organization, withtrademark professionals being involved whenclearance searches are required. When askedabout collaboration between the marketing andlegal teams during the brand creation process,42% of respondents reported that trademarkprofessionals were an integral part of theprocess, while 41% reported being consulted on
an ad hoc basis. Reassuringly only 15% oftrademark professionals felt that there was littlecollaboration between legal and otherdepartments.
Only 1%of the trademark professional surveyedreported that they were not asked to assist withproviding alternative names, with 90% ofrespondents reporting that they spent at least 4hours providing alternative naming options tomarketing colleagues or clients during thenaming process.
C-suite engagementAs an illustration of how fundamentally importanttrademarks are to most businesses, 58% ofrespondents reported that top level managersresponsible for running the business wereactively involved with the trademark process,and a further 25% reported that members of theC-suite are not actively involved but recognizethe importance of protecting IntellectualProperty.
EducationOne area that was identified as a potentialweakness within organizations by trademarkprofessionals was education in relation tointellectual property. Only 30% of respondentsreported that their organization had a formalizedtraining program in place to educate marketing,with 24% having processes in place for workingwith brand owners. 22% rely on ad-hoc training,and 21% reporting that training was conductedas “learning by doing”.
Conclusion The trademark ecosystem is changing. Thereare more marks than ever before on trademarkregisters around the world and it is becomingincreasingly challenging to search, file andwatch a portfolio of trademarks. Higher budgetsand better technology can certainly help inmitigating the risk of infringement, as being ableto properly search and watch marks is a vitalpart of brand protection. Finding a unique markis becoming more difficult but there is optimismthat the application of artificial intelligence andmachine learning to the trademark protectionprocess could reduce the effort required byprofessionals to find solutions. Given the risingincidence and cost of trademark infringement,investing in better tools seems like a clear pathforward.
Trademarkinfringementcan be a veryexpensivechallenge.
”
“
ContactCompuMark https://clarivate.com/compumark/[email protected]
Compumark_v5_TML2:Layout 1 2/4/20 15:40 Page 16
AYALA
DEU
TSCH
19CTC Legal Media THE TRADEMARK LAWYER
my family. I was motivated by the portrayal oflawyers in fiction. To Kill A Mockingbird hasalways been my favorite book and so that's whatdrove me. When I went to law school, I wasfocused on being a litigator. I wound up at a lawfirm that didn't have much of an IP practice andI started doing general litigation with aninternational focus. About one year into mytenure I got assigned to a trademark caseinvolving the protectability of the trade dress inthe design of radiators. I always tell people Iknow I'm a true IP geek because my interest inIP was sparked by a case involving radiatordesign, which is one of the less sexy IP assetsyou can think of! I was very intrigued by thenotion of intangible property and how definethat, how to derive value from that, and how toprotect that - it just sparked my interest - so I went to the two litigators at the firm who did IPand I told them “put me on anything that has IPand I'll find a way to make it work”, which theydid, and over the years I developed an IPexpertise. So, I was not always destined to be anIP lawyer, but from the first time I was put on anIP case, I was.
How did you end up at the NBA - are you asports fan?I am a sports fan - it's hard not to be growing upin a city like New York! I didn't even know therewas such a thing as sports law, but I went wheremy gut was telling me to go. I realized that whatI enjoyed the most, and found most rewarding,was client counseling - helping clients come upwith ways to accomplish what they needed todo, to avoid problems, and not always be theone sweeping up after the elephants in thecircus parade. So, I went looking for an in-houseposition that focused on IP - I happened to findone at the NBA, and the rest is history. The NBAcontinues to have a really wide array of IP issues:trademark, copyright, right of publicity, FirstAmendment, so for an IP geek like me it wasperfect.
So how did the INTA President role comeabout?You are approached and asked to be an officer,and that comes out of a process driven by thenominating committee. You are not guaranteedto move up the officer chain but the tradition atINTA is that, more often than not, you progressthrough the officer positions to President. So,last year I was president-elect, and ultimatelylanded in the Presidency.
How do you balance your role at the NBAwith being INTA President?Well I’m three weeks in – you might want tointerview me in late December!
So far, I think I'm doing well. The incomingpresident always spends some time with INTA’sfull staff at the New York Headquarters forsomething called “INTA Week” - going throughthat made me more appreciative than ever ofthe talent, skills, and knowledge of the INTAstaff. A lot of what I can accomplish in my role asPresident is fundamentally facilitated andsupported by the staff. So, I would say, threeweeks in, I rely on a cast of thousands that allsupport me.
What challenges have you faced so far?An exciting challenge is absorbing the scopeand extent of what this organization does, boththrough its staff and through its volunteers. I havealways had a sense of that, obviously, but I thinkI’m now seeing the fuller scope of that, and Iwant to make sure I'm taking it all in.
Could you tell us about your Presidential taskforce and “all-star IP practitioners”?At the NBA, along with my oversight of IP, I wasresponsible for overseeing our business andlegal affairs work, and that opened me up toother aspects of the business that fostered myown development and my ability to excel as anIP lawyer. As a brand lawyer it was really helpfulto better understand the marketing and financeaspects of what we did, and so the Presidentialtask force is meant to bring that to all INTAmembers. I wanted each person to think aboutbeing the best they could be by expanding theirskill set, their knowledge base, and theirperspective on what it means to be an effectiveIP practitioner, and that runs the gamut fromunderstanding substantive areas of law, to finance,to marketing, to what HR professionals would call “soft skills” - communication, projectmanagement, and leadership.
Would you say that’s your key priority for theyear ahead?The key priorities for me are INTA’s strategicpriorities: driving brand value, reinforcingconsumer trust, and embracing innovation andchange. There are a number of projects that Iwant to focus on, for example, we have acommercialization of brands committee that'slooking at not only at how brands and trademarksare developed and acquired, but how they areadvertised, marketed, and monetized. We alsohave a new committee for “brands for a bettersociety” and that's a really great effort by INTAto capture the spirit that has been growingabout brands being good corporate citizens and what that means for individual brandpractitioners, and then we have a new committeeon brand restrictions, which has been a priorityof the organization for a while.
We’rebeginningsomeprograms toadvance theleadershipof women inIP. That's abig passionof mine.
”
“
INTA_v5_TML:Layout 1 6/4/20 11:57 Page 19
To Kill AMockingbird hasalways been my favorite book and so that'swhat drove me.
”
“
18 THE TRADEMARK LAWYER CTC Legal Media
Ayala Deutsch began her one-year term as INTA President on 1January 2020, having spent almost 30 years as a lawyerspecializing in IP law. She kindly agreed to speak to The
Trademark Lawyer about her career, her journey to the NBA (where sheremains Executive Vice President and Deputy General Counsel of NBAProperties), and her new role at INTA. Ayala discusses her priorities
for her one-year term and her plans for “all-star IP practitioners”,as well as the challenges faced by INTA and its members,
from the lack of diversity in IP, to China’s ongoing strugglewith infringement and counterfeiting, and the solutions
that INTA can bring to the table.
Great to speak to you, Ayala. Could youplease tell us about your background?
Was a career in IP always the plan?I wanted to be a lawyer from a prettyyoung age. I don't have any lawyers in
Holding court - an interviewwith Executive VP of NBA Properties and INTAPresident Ayala Deutsch
Matt Seex, Editor of The Trademark Lawyer,talks to Ayala Deutsch about her career in IP, her time at the NationalBasketball Association, and her objectivesfor the year ahead as President of INTA.
AYALA DEUTSCH
INTA_v5_TML:Layout 1 2/4/20 15:43 Page 18
Belonging to INTA Means… Connections with global brand owners
and intellectual property professionals
Reliable, in-depth legal resources
Benchmarking best practices and future trends
Leadership, volunteer, and professional development opportunities
+ Up to 30 percent member discount
on INTA’s live and online educational programs
Better TogetherBecome a member of the International Trademark Association
community and enjoy these exclusive benefits!
2020 Annual Meeting/Leadership MeetingNovember 2020
Visit www.inta.org for details.
INTA (Better Together) FP.indd 1 30/03/2020 16:11
AYALA DEUTSCH
20 THE TRADEMARK LAWYER CTC Legal Media
I'm also excited that we’re beginning someprograms to advance the leadership of womenin IP. That's a big passion of mine, so we'll beseeing some of those later in the year. And we'rebeginning our work on the association’s nextstrategic plan, looking at what IP practice, andIP itself, is going to be like in the future. BetweenAI, the Internet of Things, 3D printing, and data,I think it's a really exciting time to get our handson our crystal balls and see if we can figure outwhat's coming down the line.
Diversity is obviously a very important andtimely topic. How can INTA help address the diversity gap in IP?The nominating committee takes diversity, interms of gender as well as other factors, intoaccount, and that is reflected in the women inleadership in this organization already.
Between 2010 and 2020, five of the INTApresidents have been women, the president-elect this year, Tiki Dare, is a woman, and womenare very well represented on the board and incommittee leadership. In addition, the INTAService Awards now include “INTA members fora better society”, awarded to INTA memberswho demonstrate how brands can impactsociety, particularly in relation to diversity andinclusion.
Finally, we are developing a new initiative topromote leadership and empowerment ofwomen in IT - we're looking forward to launchingthat this Spring, getting feedback from ourmembers about challenges they're facing, andwhat this organization can do to empowerindividual women members to help support andelevate them, and I'm very excited about thatlaunching in the year of my Presidency.
China and the challenges it poses in terms of counterfeiting and IP protection must also be a big priority for you?It continues to be so. INTA is very active in China,with a focus on counterfeiting, and over theyears INTA has fostered productive relationshipswith different authorities in China. INTA’s anti-counterfeiting committee takes the lead. That is
our largest committee. It has more than threehundred members and a dedicated regionalsubcommittee just for China.
Very broadly, the key policy issues for the anti-counterfeiting committee are customs and bordermeasures, criminal enforcement, and onlinecounterfeiting.
We comment on legislation and regulation inthis area, we engage with policymakers andgovernment agencies, and hold round tablesand policy dialogues to bring stakeholderstogether. Last October, for example, the Chinasubcommittee hosted a policy dialogue focusedon ways to combat the problem of fake stores.That round table, which I attended, was alsoattended by law enforcement representativeswho were grappling with how to address themore novel infringement of IP. The subcommitteeis also focused on China's proposed new e-commerce law and providing comments andfeedback on that. China is the largest e-commercemarket in the world and we're working to ensurethat platforms and brand owners communicatewith each other to enact best practice and alsocommunicate with government representativesand law enforcement.
We produced a guide called Addressing thesale of counterfeits on the internet, and again,INTA leadership has conducted meetings withvarious government officials to talk about thesepriorities. So, we are firing on all pistons, as wehave for a while!
So, things are getting better - progress isslowly being made?Yes, I do think progress has been made. Assomeone who’s been engaging with this issuefor more than 20 years, I can see the progress.To be frank, there are challenges, for examplethe migration of counterfeiting to onlineplatforms. I often tell people that China's firsttrademark law was enacted in the 1980swhereas the US enacted its first trademark lawin 1896, so we were a bit ahead! Change takestime, but I think I see positive signs – I’m alwayshopeful, and I find value in continuing to work on it.
INTA hasfosteredproductiverelationshipswithdifferentauthoritiesin China.
”
“
ContactINTAhttps://www.inta.org/Pages/Home.aspx
INTA_v5_TML:Layout 1 6/4/20 11:57 Page 20
CYB
ER
IP
23CTC Legal Media THE TRADEMARK LAWYER
come, first-served” principle inevitably lead toconflict of interests with IP right holders.
1.1.2 Trademark infringement in webpagelinks
Proper links are necessary on the internet becauselink technology is the foundation of the internet.However, anyone who uses another’s registeredtrademark or well-known trademark to create alink on his own webpage and exploits deep link or framed link technology to bypass thehomepage of the linked website commitstrademark infringement with a bad faith intentto profit from the goodwill of another’strademark.
1.1.3 Trademark infringement in searchengines
When consumers use search engines to searchfor another’s goods or services, the infringer'swebpage will appear first. The act of usingtrademarks as key words without the consent oftrademark owners obviously constitutes aninfringement of trademark rights of others.
1.1.4 Trademark infringement in e-commerceIn e-commerce, there are acts of selling counterfeitproducts or business tarnishing or using words and/or images that are identical with orconfusingly similar to another’s trademark in anadvertisement, which constitutes trademarkinfringement.
1.2 Copyright infringement1.2.1 Republishing a work without consent. Unless otherwise provided by law, any act ofrepublishing a work without consent from theauthor constitutes infringement. Some acts ofrepublishing are capable of infringement of therights of integrity, adaptation, and derivation ofworks.
1.2.2 Internet plagiarism.Infringers copy, revise or change someone else'sworks on the internet, including articles andaudio-visual materials, without consent from theauthor, and then pass them off as their own topublish.
1.2.3 Internet downloading.This refers to downloading copyrighted texts,images, videos, software, etc. online to profitfrom them.
1.3 Patent infringement• An infringer displays another’s patent
number on the products he manufactures orsells, or on the packages of these products,without consent from the patentee.
• An infringer uses another’s patent number in
his advertisements or other publicitymaterials without consent from thepatentee, leading the public to mistake thetechnology concerned as another’spatented technology.
• An infringer uses another’s patent number in his contracts without consent from thepatentee, leading the public to mistake thetechnology concerned as another’spatented technology.
• An infringer forges or alters another’s patentcertificates, patent documents or patentapplications.
1.4 Other infringements of IP rightsAside from above mentioned cyber IPinfringements, there are infringements of tradesecret and unfair competition on the internet.
2. Legal remedies for cyber IPinfringements
2.1 Sending a lawyer’s letterFor minor cyber infringing acts, or in order to fixevidence and assert rights, alternative disputeresolution is an option.
When discovering an infringement, the rightholder may send a lawyer’s letter to the suspectinfringer or his interested parties. Sending lawyer’sletters can, to some extent, stop an infringing actand help alternative dispute resolution. However,some infringers ignore the lawyer's letter orrefuse to reply.
Anyway, sending a lawyer's letter will help. Itcontributes to the amicable settlement ofdisputes in some cases. After receiving thelawyer's letter, the infringer is likely to stopinfringement even though he makes no reply. Ifthe infringer refuses to stop infringement, the
RésuméZhenkun Fu Zhenkun Fu is a leading intellectualproperty law practitioner with more than 15 years’ experience in prosecutingtrademark and patent infringement,unfair competition, and anti-counterfeiting cases. His work withFortune 500 companies has resulted inthe recovery of millions of dollars indamages. As a leading IP litigator, havingmanaged thousands of lawsuits,Zhenkun’s groundwork and strategicinsight, coupled with his exceptionalrelationships with AIC, BQS and PSB at national and local levels, makes him a key leader in intellectual propertyenforcement in China.
Registeringthetrademarksof others as domainnames is one of theforms of IPinfringement.
”
“
Corner Stone_v4_TML:Layout 1 3/4/20 14:56 Page 23
22 THE TRADEMARK LAWYER CTC Legal Media
Nowadays, the rapid development of the internet has promoted theprosperity of e-commerce. More and
more commercial activities have been replacedby online transactions. With the prosperity of e-commerce, the creation and protection ofintellectual property (IP) rights tends to be morediversified and complex, having a number ofdifferent features as compared to offlinetransactions.
Forms of cyber IP infringements1.1 Trademark infringement1.1.1 Registering others’ marks as domain
namesRegistering the trademarks of others as domainnames is one of the forms of IP infringement on
the internet. Unlike a trademark, which may existwith regard to different goods or services indifferent countries, a domain name in the .comdomain can only be owned by one holderthroughout the world.
There are two cases of domain nameregistration. One is cybersquatting, where theinfringer registers trademarks or brand namesbelonging to others, especially well-known orfamous ones, as domain names, with a bad faithintent to resell or hire them out at a profit, ormake trademark holders “redeem” them at ahigh price; the other is conflict of interestsbetween domain name registrants and IP rightholders, where the domain name registrants donot squat domain names in bad faith, but theuniqueness of domain names and the “first-
Cyber IP infringementsand legal remedies
Zhenkun Fu, Senior Partner, Trademark and Litigation Attorney at CornerStone & Partners, discusses the challenges posed to IP protection by thegrowth of e-commerce.
Zhenkun Fu
CYBER IP
Corner Stone_v4_TML:Layout 1 3/4/20 14:54 Page 22
Corner Stone IP_FP.indd 1 26/02/2018 13:36
CYBER IP
24 THE TRADEMARK LAWYER CTC Legal Media
lawyer’s letter may be cited as evidence for theinfringer’s bad faith content and intensificationof punishment for it in the subsequent legalactions, if any.
2.2 Making a complaint to an e-commerceplatform
Many IP infringements occur through e-commerceplatforms and/or third-party platforms. Upondiscovering an infringement, the right holdersmay make a complaint to the e-commerceplatform. Under the China’s E-commerce Lawand Trademark Law, the e-commerce platformshall delete or block infringing links afterascertaining that the complaint is justified.
2.3 Making a complaint to the authoritiesThe right holder may make a complaint to the administrative authorities through a Chineseattorney-at-law or an IP attorney. Then theauthorities may conduct on-site inspections ofthe infringer’s domicile, warehouse and/orfactory, and impose administrative punishmenton the infringer to stop the infringing act and/orimpose a fine.
2.4 Bringing a civil actionIn case of a failure to serve the purpose by sendinglawyer’s letters and making complaints, or, incase of a serious infringement, the right holdermay bring a civil action to stop the infringementand claim damages.
The right holder may claim damages basedon the right holder’s own losses or the infringer’sgains from the infringement or claim statutorydamages. In China, the maximum amount ofdamages is CNY 5 million (USD 714,000) for
trademark infringement. For an infringementwith bad faith intent, the punitive damages systemwill apply whereby the amount of damages isgenerally two to five times the amount of theinfringer’s gains from the infringement.
Today, China has increasingly been improvingits IP protection system and gradually tightenedits relevant laws and regulations, creating afavorable business environment for domesticand foreign enterprises and making itself anattractive venue for global innovative activities.As the US Foreign Policy Journal noted in anarticle entitled China's Record on IntellectualProperty Rights Is Getting Better and Better inOctober 2019, China’s IP regime has madesignificant strides in just a few decades; China leads the world in patent quantity;minimum damage payouts for infringementshave continually increased, as have durations ofpatent protection.
Many IPinfringementsoccur through e-commerceplatformsand/or third-partyplatforms.
”
“
ContactCorner Stone & Partners 1905, Tower B, Tian Yuan Gang Centre, No. 2, Dongsanhuan North Road, Chaoyang District, Beijing 100027, ChinaTel: [email protected]
Corner Stone_v4_TML:Layout 1 3/4/20 14:56 Page 24
GO
OG
LE
27CTC Legal Media THE TRADEMARK LAWYER
The second organic result was a link to acategory page on the popular Chinesemarketplace Alibaba and not a specific product,making it even more challenging to get themarketplace to take action.
Google is at odds with its own practicesGoogle’s refusal is out of step with its ownpractices when dealing with other types ofintellectual property:
“Google will remove a URL from its search indexwhen it is told that the page infringes copyright.Google removes millions of URLs on this basis.
However, Google won’t act when it is told that aURL is selling counterfeits – where trademarkrights are infringed.”
This inconsistent approach stems from adifference in treatment for copyright andtrademarks in the US.
Google acts against copyright infringementbecause it is legally required to do so under USlaw; the Digital Millennium Copyright Act (DMCA)requires Google to remove copyright infringingpages from its index when notified.
There is no similar legislation in the US thatrequires tech platforms to act on trademarkinfringement and so Google does nothing.
Other tech platforms, however, do act when theyare told about the sale of counterfeit productson their platforms because they fear that theywill be held to be “publishers” if they do nothing.
Google takes the view that it cannot be a“publisher” and only takes the minimum actionrequired to remain legally compliant.
Other platform responseshighlight a stark contrastWhen notified of counterfeits being sold throughtheir sites, big tech companies such as Facebook
or eBay will act by removing the offer for salefrom their platform.
However, when asked to take theseinfringements out of their index, Google routinelyturns down these requests.
The resulting enforcement gap createsenormous difficulty for brand owners looking toprotect their rights and presents a real risk totheir revenues. This gap is particularly apparentwhen websites or even entire networks dedicatedto counterfeiting are identified.
Google can and should bechallengedFrom a moral and cultural perspective, there is acompelling case that Google should do morewhen it knows that it’s displaying search resultsfor counterfeits – products such as fake anti-malarials will put consumer’s health at seriousrisk, for example.
RésuméKemal TayyareciKemal joined Incopro in October 2017after studying law at the University ofSouthampton. Through undertakingIntellectual property and Informationtechnology modules in his final year,Kemal was inspired to work in onlinebrand protection to build expertise in thefight against counterfeits online. Kemal isone of Incopro’s expert Pre-SalesConsultants (Brand Protection), gainingexperience in analyzing and actioningagainst a spectrum of IP offences againstbrands. He has also provided industryinsight into the counterfeit landscape inthe EU Commission’s Counterfeit andPiracy Watch List.
Google’srefusal toact isputtingconsumersat risk.
”
“
Incopro_v3_TML:Layout 1 3/4/20 15:33 Page 27
26 THE TRADEMARK LAWYER CTC Legal Media
PharmaceuticalOn average, over 58% of traffic for infringingpharmaceutical websites originated from organicsearch. Just under half (47%) of traffic to theseinfringing locations comes from keywords thatspecify a brand or a particular product.
This echoes a study by IFOP, a leadinginternational polling and market research firm,that highlights that 47% of people who hadbought an infringing product typed the name ofthe product into a Search Engine before makinga purchase.
For pharmaceuticals, 60% of the results fromproduct or brand keywords were identified aspotentially harmful. A “potentially harmful site”will typically use a third-party registered trademarkwithout permission and fraudulently claim to beaccredited by regulatory bodies.
By combining the highly conservative conversionrate of 2.5% and the average traffic coming fromorganic search, we estimated that an infringingpharmaceutical site will sell to around 640 usersper month.
Children’s productsFake children’s products such as baby teethersare also appearing at the top of search resultsand are readily available to consumers.
The research revealed that searches for teetherscontain a number of online marketplace listings –many of which offer fake or unsafe products.
Of the first 10 results that would be displayedto a consumer, just under a third (32.5%) directedpeople to online marketplaces such as Amazon,eBay, and Chinese B2B platform DHGate. Ofthese, 65.4% appeared within the first five resultson the page.
A keyword search on Google.com for“wholesale comotomo teether” also presentednine organic search results, each of whichdirected to a marketplace or ecommerce site. Ofthe nine organic search results, three were forpotentially harmful products that misused theComotomo trademark.
Kemal Tayyareci, Pre-Sales Consultant at Incopro, explains why Google needsto step up its game when it comes to websites selling counterfeit goods.
Why Google must do moreto protect trademarksfrom counterfeits
When Google is told that it is indexingand returning search results for awebpage or website that is selling
counterfeit products, it will take no action.Google’s refusal to act is putting consumers
at risk; as an example, products such ascounterfeit brake pads, fake antibiotics, andimitation baby teethers can all lead to potentiallydeadly consequences when used.
But significant harm is also dealt to thecompanies targeted by fakes – companies thatinvest a significant amount of time and financialresources to create and market their brands.
Lack of action putting consumersat risk across the globe2019 research on search engine responsibilityrevealed that up to 60% of results returned offer consumers access to websites that sellcounterfeit and possibly dangerous goods.
These sites, often dedicated to selling knockoff products, don’t just infringe IP but are alsopotentially deadly – fake pharmaceuticals, carairbags, and fake cycle helmets are all widelyavailable and put consumers at extreme risk.
The scale of this issueis enormous.The findings demonstrate that in one monthalone and for a single sample product in certaincategories of consumer products, there wereover 1,000 websites indexed by Google that sellinfringing products to consumers.
If Google did remove these websites from their index these sites would be starved of oxygenand would fail – there are case studies thatprove so.
The people who operate infringing websitesdon’t typically pay for advertising. Instead, theyoften rely on organic search, knowing that theywill be found when consumers use searchengines to look for brands or products.
Two sectors were found to be a particularproblem in the research:
Kemal Tayyareci
The scale ofthis issue isenormous.
”“
Incopro_v3_TML:Layout 1 3/4/20 15:32 Page 26
Barreda Moller_FP_NEW.indd 1 07/04/2020 09:24
28 THE TRADEMARK LAWYER CTC Legal Media
But there is also a growing legal case.First, there is now a clear and developed line
of legal authority that empowers the courts torequire Google to act. The legal cases on thishave been developed in several key jurisdictionsand they are examined in detail by the law firmswho have contributed opinions for this White Paper.
Google should cooperate with trademarkowners and develop a streamlined and scaledapproach to support court orders that enableGoogle to act with the protection of the courts.Instead, Google takes a combative stance,insisting on fighting any attempt to require it todo anything in this area.
Second, if Google continues to refuse tocooperate then it may be found to be liable for refusing to act when it is told aboutinfringements that it indexes.
What can brands do?Google’s position is that brands must obtain acourt order against the sites themselves. Onlythen will they act. The reason being that the sitemust be declared illegal before they will move.
But if the same infringing site is featured in aFacebook or Instagram promotion, these platformswill respond and remove without requiring acourt order. If it’s clear to other large tech platforms
that there is clear infringement of trademarktaking place, why is the same evidence regardedby Google as inadequate?
Google and other search engines are at thecenter of this. They should provide a scalablemeans to tackle this vast problem, or case lawmay come calling.
It’s time for Google to change its approachSearch engines need to work more closely withrights owners and their representatives to removecounterfeiters from the results they present toconsumers.
Discussions need to be had amongst lawmakers,brands, platforms and other interested partiesabout how to establish a framework underwhich search engines take on a greater role intackling consumer harm online.
Googletakes acombativestance,insisting onfighting anyattempt torequire it todo anythingin this area.
”
“
ContactIncoprohttps://www.incoproip.com/
Lawyer
TrademarkIssue 2 2020
GLOBAL REACH, LOCAL KNOWLEDGEwww.trademarklawyermagazine.com
The
Sunny Su & Jennifer Xia of Lusheng and Chris Lee &Theresa Mak of Rouse ask how Chinese brandowners can guard against counterfeits
Ensuring hand sanitizers are genuine and effective
EUROPEAN
Law firmRANKINGS
AyalaDeutschinterviewPage 18
CTC Legal Media
IP and e-commercePage 22
Australian brandprotectionPage 30
A subscription to The Trademark Lawyermagazine will ensure that you and yourcolleagues have detailed information on all the most important developmentswithin the international trademark lawindustry.
The Trademark Lawyer magazine isdedicated only to the trademark industryand is written by trademark experts fortrademark professionals worldwide.
A subscription includes a hard copy and an electronic copy which can also be read easily on your smartphoneor tablet.
Subscribe now!
Tel: +44(0)20 7112 8862 Fax to: +44(0)20 7084 0365 E-mail: [email protected]
Incopro_v3_TML:Layout 1 6/4/20 18:12 Page 28
AU
STRA
LIA
31CTC Legal Media THE TRADEMARK LAWYER
you conduct a trademark search to ensure noother trader in your space already uses or hasregistered a confusingly similar brand.
If you receiving an objection, you could stillrespond to a report or appeal a decision. Yourargument could be that even though your signisn't strong, it has become synonymous with thegoods or services you are trading. You couldalso argue that if you continue to use the samewill happen over time.
If you receive an objection due to conflictingtrademarks you may have the option to changesome of the goods or services claimed in yourapplication so there is no overlap with trademarksalready filed. IP Australia will also considersubmissions that you were using the trademarkbefore a cited mark, or in some cases have madegood use concurrently with another trademarkholder, not knowing they were already tradingunder a similar mark. The earlier trademarkowner may also give you a letter consenting toyou using it. This will overturn the objection.
To break it down, this is what will happenwhen you receive an adverse trademarkregistration report from IP Australia:• It doesn’t mean your application is or will
necessarily be rejected.• You will be given information about the
reasons you have encountered objections.• You will be given 15 months to respond and
bring your application into order foracceptance.
• If you don’t meet this deadline you will haveto pay a fee to prevent the applicationlapsing.
• It’s wise to reply to the report sooner as theIPA needs a month to review your response– and, the deadline doesn’t change.Responding as soon as possible ensuresample time to respond to further reports ifthey are issued.
• Use the time to look at all options andstrategies to strengthen your response to IPAustralia.
• Consult a trademarks attorney as they willknow the options that are available to you.The options come with pros and cons youneed to consider carefully.
If your response satisfies IP Australia, theobjection will be overturned and your trademarkapplication will be approved. The next steps are:• The trademark application will be advertised
as accepted for registration.• There is a two-month waiting period in
which others can object to your application.• If no-one objects in those two months, your
trademark will be registered by IP Australia.• Your brand will assume all rights associated
with being a registered trademark holder.
To recap, in order to protect your brand do thefollowing:• Conduct appropriate searches when first
selecting a new brand. • Understand the types of objections that IP
Australia can raise. • Know how to deal with adverse reports for
non-distinctive trademarks to strengthenyour application.
• Know how to deal with adverse reports forsimilar trademarks to strengthen yourapplication.
• Know the sections in the Trade Marks Act1995 that relate to these potential objections.The most common can be found in section41 and section 44 of the Trade Marks Act1995. Section 44 covers trademarks thatconflict with pending and/or registeredtrademarks.
Understandthe types ofobjectionsthat IPAustraliacan raise.
”
“
ContactMark My Words https://www.mmwtrademarks.com.au/
Mark My Words_v1:Layout 1 6/4/20 12:09 Page 31
RésuméJacqui Pryor Jacqui is a registered trademark attorneybased in Australia who providestrademark registration services, searchesand other matters regarding trademarking.
Yourbusiness isyour brand.
”“
30 THE TRADEMARK LAWYER CTC Legal Media
Your business is your brand. Withoutgoodwill, loyal clients, and a solidreputation, you have nothing to offer.
Part of building this entity is protecting it byregistering your trademark with IP Australia. Butwhat happens if your application is rejected? Anexaminer will give you reasons for the particularobjection and will provide you with a report onhow you can resolve the problem.
A reason commonly given is that thetrademark is not distinctive. This means that yourproposed trademark is very similar to anotherthat has previously been filed. That trademarkwould also fall into a similar category of goodsor services to your trade. It could also have ageneric term that is commonly used in your
trade and your competitors have a need to useit. You are therefore not given exclusivity as IPAustralia will not give one business monopolyover a term that is needed for use in the broaderindustry or marketplace. For example, if youapply for a trademark using the area you arelocated combined with your trade, it will likelybe rejected. There will be competitors in thearea and trade that will need to use these termsin their daily activities, such as marketing.
You may also get an adverse report becauseIP Australia finds the trademark that is beingproposed conflicts with another one that is alreadyregistered (or pending) because it looks/soundstoo similar. They want to avoid any confusionbetween the two brands.
So, how can you prevent this from happeningwhen you’re deciding on a brand for yourbusiness?
Ensure your proposed trademark can beidentified as being linked to your business. Askyourself, is it unique and distinctive? Does it inany way describe the goods or services I amoffering? Would other traders need to use asimilar trademark in their activities? Also, ensure
What you need to knowin order to protect yourbusiness and your brand
Jacqui Pryor of Mark My Words looks at brand protection in Australia.
Jacqui Pryor
AUSTRALIA
Mark My Words_v1:Layout 1 3/4/20 17:10 Page 30
RU
SSIA
33CTC Legal Media THE TRADEMARK LAWYER
activities, and had actively used the “Suzuki”trademarks.
When considering the objections inRospatent, it was found that, in addition to BritishVirgin Islands registration, Dunham Investment.Inc. had an address in Japan, which had beenindicated in the application. The legislation ofthe country of origin of the legal entity allows forthe possibility of having several addresses. Inaccordance with the legislation being in force inRussia on the priority date of the disputedtrademark, the address of the legal entity shouldhave been indicated when filing the application.In view of the fact that the applicant hadintended to carry out its business through Japan,for which the premises had been rented, it hadindicated the Japanese address when filing theapplication.
It should be noted that the situation was of anexceptional nature. The emergent precedentwas that a company could indicate its address inanother country but still prove that it was thesame person so as to retain rights to itstrademark.
Thus, in September 2017, Rospatent decidedto dismiss the objection. In order to bring the
information in the State Register of Trademarksin line with documents confirming the company’slegal status, changes were made to the Register.While considering the objection, the legal statusof Dunham Investment Inc. was established.
Regarding the statement of claim of SuzukiMotor Corporation for the early termination ofthe trademarks due to their non-use, therepresentatives of Zuykov and partnersmanaged to defend the major part of DunhamInvestment Inc’s interests. On 19 October 2018,based on the decision of the IntellectualProperty Court, the legal protection of thetrademark “Suzuki” owned by DunhamInvestment Inc., was partially terminated inrespect of products of the 07th class of the ICGS,namely “Machine coupling and transmissioncomponents (except for land vehicles);agricultural implements other than hand-operated;incubators for eggs”, and of the 11th class of theICGS “Apparatus for lighting, water supply andsanitary purposes.” However, legal protection ofthe trademark was retained in respect of part ofproducts of the 07th and 11th, and all theproducts of the 08th, 09th, 21st classes of theICGS.
Suzuki Motor Corporation was not satisfiedwith the decisions of Rospatent and the court,and its representatives appealed to the higherauthorities. The Court of Cassation consideredSuzuki Motor Corporation’s complaint andconfirmed the decision made of the first-instance court.
Judicial proceedings regarding theinvalidation of the decision of Rospatent werealso held. On 28 November 2018, despite thefact that Rospatent had established thelawfulness of the trademark registration in
SuzukiMotorCorporationwas notsatisfiedwith thedecisions ofRospatentand thecourt.
”
“
Ink
Dro
p /
Sh
utt
ers
tock
.co
m
Zuykov_v4_TML2:Layout 1 6/4/20 12:11 Page 33
RésuméAlexandra Pelikh Alexandra is a patent attorney of the Russian Federation. Since 2013,she has worked for Zuykov and partners, where she manages the legaldepartment. She is a recommended lawyer in the field of intellectualproperty, based on the results of the ratings of the Chambers Globaland the Chambers Europe in 2011-2013. Alexandra specializes indisputed issues related to the use of intellectual property. She advisesforeign and Russian companies on obtaining, defending, and disposingof intellectual property rights and defending their interests in the courts.In 2018, Alexandra was included in the rating of WTR-1000 specialists,having characterized her as a practicing specialist, who pays specialattention to the needs and wishes of her clients.
32 THE TRADEMARK LAWYER CTC Legal Media
The known means of individualization quiteoften become the subject matter ofconstant attacks from competitors and
other entrepreneurs wishing to dispute adesignation or register a confusingly similartrademark. At the same time, if the opponenthas sufficient funds, a whole set of measures isoften undertaken against the competitor inorder to eliminate and prevent its furtheractivities. This occurred in the situation of aconfrontation between two companies usingtrademarks with the identical word element“Suzuki,” where one of the organizationscommitted a number of actions that could haveled to the cancellation of the registration of thetrademark of its competitor. Throughout theconflict, the representatives of Suzuki MotorCorporation appealed simultaneously to allpossible authorities. However, competentrepresentation by the lawyers of Zuykov andpartners of the interests of Dunham InvestmentInc. allowed the company to retain its registeredtrademark and persuaded state authorities ofthe lawfulness and legality of their existingpowers.
Since 2006, Dunham Investment Inc. hasbeen the holder of trademarks with the wordelement “Suzuki” in respect of products of the07th and 11th classes of the ICGS for the
manufacture and promotion of householdappliances. “Suzuki” air conditioners have foundtheir niche and have proved themselves to bereliable household appliances for the mid-pricemarket.
Suzuki Motor Corporation, which specializesprimarily in the manufacture of automobiles,was the right holder of the trademark with theidentical word element “Suzuki” in respect ofproducts of the category of the 12th class of theICGS — Vehicles. In 2017, Suzuki Motor Corporationdecided to expand its legal protection and usethe designation for products of the 07th, 08th,09th, 11th and 21st classes of the ICGS. Thetrademarks registered in the name of DunhamInvestment Inc. were clearly an obstacle to thisregistration. This was the reason for the conflictbetween the two organizations, and so SuzukiMotor Corporation disputed the trademarks ofDunham Investment Inc.
Without carrying out a proper market analysis,and without considering the fact that DunhamInvestment. Inc. was registered properly andoperating and using the trademarks, SuzukiMotor Corporation filed an objection with Rospatentagainst the current legal protection of thetrademark “Suzuki” in order to achieve the desiredresult. In addition, Suzuki Motor Corporation fileda statement of claim with a request for an earlytermination of the trademarks due to their non-use.
To justify the objection received by Rospatenton 5 May 2017, the representatives of SuzukiMotor Corporation pointed to the fact that thetrademarks were registered in the name of anon-existent person. The grounds for such wasthe fact that, when filing the application, theapplicant’s address had been indicated not asthe registration address of the company in theBritish Virgin Islands, but as the address ofleased premises located in another state.
The lawyers of Zuykov and partners defendedDunham Investment Inc. in Rospatent, since theorganization had been duly registered inanother country, had been engaged in business
Russian case study –defending “Suzuki”
Alexandra Pelikh of Zuykov and partners discusses a recent case in whichher firm defended the interests of the right holder of a disputed trademark.
Alexandra Pelikh
RUSSIA
Zuykov_v4_TML2:Layout 1 3/4/20 17:16 Page 32
zuykov.com
IP SERVICES IN RUSSIA, UKRAINE, BELARUS,KAZAKHSTAN & OTHER CIS COUNTRIES
Russia129090, Russia, Moscow,
Grokholskiy per., d. 28, 2nd floorTel+Fax: + 7 (495) 775-16-37
e-mail: [email protected]
Belarus220004, Republic of Belarus, Minsk,
23/1 Pobediteley AvenueTel+Fax: +375 17 204-16-37
e-mail: [email protected]
Kazakhstan050043, Kazakhstan, Almaty,28 Ryskulbekova Str., Block 4,
10th Floor, Suite 33,Tel+Fax: +7 727 312-16-37
e-mail: [email protected]
Ukraine01135, Ukraine, Kiev,
25 Chornovola Str., Suite 168Tel+Fax: +38 044 501-16-37
e-mail: [email protected]
PATENTSIP LITIGATION
TRADEMARKS AGREEMENTS
PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT
Zuykov.indd 1 29/04/2019 12:53
ContactAlexandra Pelikh, Zuykov and partners LLC Mail address: Russia, 129110, Moscow, P.O. Box 165Office: Russia, 129090 Moscow,Grokholskiy per., d. 28, 2nd floorTel./Fax: +7-495-775-16-37www.zuykov.com
RUSSIA
34 THE TRADEMARK LAWYER CTC Legal Media
respect of Dunham Investment. Inc., the Intellectual PropertyCourt, while considering the statement of Suzuki MotorCorporation, thought that Rospatent had not taken into accountall the circumstances relevant to the case, and was critical ofsome of the evidence. In this regard, the objections were sentto the Federal Executive Authority for reconsideration.
By the time of the reconsideration of the objections, the legalprotection in respect of one of the trademarks “Suzuki” hadbeen terminated based on the statement of DunhamInvestment Inc. For this reason, based on the results of theconsideration of the objection, the decision was made toterminate the proceedings. Despite the fact that the decisionof Rospatent was apparent, Suzuki Motor Corporation disputedthat decision in the Intellectual Property Court, which sent thecase to Rospatent for a new consideration. After thereconsideration of the objection, Rospatent dismissed it.
On 23 March 2018, the second trademark was transferred toTechnika GmbH based on an alienation agreement. The Officereconsidered the objection against that trademark.
According to the decision of Rospatent of 16 May 2019, theobjection of Suzuki Motor Corporation was dismissed, and thelegal protection of the trademark “Suzuki” remained in force.That act also did not satisfy Suzuki Motor Corporation, whichfiled a statement of claim to the Intellectual Property Court torevoke the decision of Rospatent.
The main argument of the plaintiff was that the conclusionsof the Office’s specialists were not justified, given theregistration of the designation in the name of the real legalentity, while the connection between Dunham Investment. Inc.(Japan) and Dunham Investment. Inc. (the British Virgin Islands)had not been duly confirmed.
After reviewing the plaintiff’s statement, Zuykov and partnerssent a reasoned report, where the following circumstanceswere indicated:1. The argument of Suzuki Motor Corporation, that the
actions in respect of the registration of the trademarkcould not be approved by the General Director ofDunham Investments Inc., was not justified.
2. The indication of the address in Japan in itself did notconstitute the grounds for invalidating the registration ofthe trademark, since regardless of the address, the legalentity, in whose name the application had been filed, wasan existing one, as confirmed by documents on its status.
3. The argument that court cases and the registereddisposal of the right to the trademark had no legal valuefor the consideration of the objection was inconsistent.
4. Rospatent executed the court’s decision, reconsideredthe objection, and made a decision similar in nature tothe previously adopted act.
On 4 December 2019, the Intellectual Property Courtconfirmed the lawfulness of the decision of Rospatent. Whileconsidering case No. SIP-595/2019, the Court pointed to thefact that there was evidence confirming that the company-rightholder was the legal entity registered in accordance with thelegislation of the country of origin. The legal capacity of thelegal entity was also confirmed by facts established by theCourt in other cases. In particular, in case No. SIP-295/2017, theIntellectual Property Court agreed that the trademark was usedin respect of the 07th and 11th classes of the ICGS; therefore,Suzuki Motor Corporation’s application for the early termination
of the legal protection of the trademark “Suzuki” was dismissedin that respect.
Zuykov and partners defended both Dunham Investment Inc.and Technika GmbH, being the new right holder of thetrademark “Suzuki”. The Intellectual Property Court dismissedthe application of Suzuki Motor Corporation in case No. SIP-595/2019.
This example of a confrontation between two companiesallows us to draw a number of valuable conclusions forpracticing lawyers:• Conflict situations regarding the use and registration of
trademarks do not always occur between real competitors.Thus, in the above case, the dispute arose at the stage ofpotential conflict of interests. It is likely that, if therepresentatives of Suzuki Motor Corporation had tried tosettle the disagreements according to a pre-judicialprocedure, they would have managed not only to achievethe desired result, but also to save money and time.
• The right holders of the identical trademarks registered inrespect of other classes of the ICGS products are potentialcompetitors, since, in the future, they may wish to expandthe legal protection of their designation and, if there aregrounds, to dispute the current certificate for the trademarkregistered in respect of another person.
• The active opposition and the aggressive policy of thedispute initiator is not proof of the righteousness of itsposition, and therefore the confident and competentrepresentation of the client’s interests allows us to defendhis interests and achieve the desired result.
• It is important to assess the circumstances objectively. Itcan be assumed that, by launching the dispute, SuzukiMotor Corporation hoped to win by bringing pressure onthe defendant at the expense of its status in anotherindustry. However, Dunham Investment Inc. had used thedesignations and had fulfilled all conditions necessary tomaintain the trademark, therefore, it was inappropriate todispute the legal protection.
• The lawyer must appreciate and consider the possiblescenarios. To do this, one should have complete andobjective information about the client and his opponent, aswell as an idea of the list of permissible actions, whichorganizations and under what conditions it is possible toaddress, which acts are able to be appealed, and what theopposing party can undertake in this case.
• Special attention should be paid to cases with a case-lawcontent, as they allow representatives, judges, and otherparticipants, to understand the nature of current legalnorms, the scope and the peculiarities of their application,as well as their withdrawal from use.
Zuykov_v4_TML2:Layout 1 3/4/20 17:21 Page 34
AR
GEN
TINA
37CTC Legal Media THE TRADEMARK LAWYER
renewal of a trademark; and on the other, thenew “MTDU” for the maintenance of a trademarkregistration.
When filing a trademark renewal, it is mandatoryto file both types of declarations - that is for the“DJU” as well as the “MTDU”.
For the moment there are no sanctions orconsequences for not having filed the “MTDU”in that, to the contrary of what the lack of itsfiling causes in other jurisdictions, for examplethe USA, the only derivation in Argentina is thatthe TMO shall not allow the renewal of atrademark unless the “MTDU” has also beensubmitted.
We shall have to wait and monitor to establishif the TMO shall introduce new sanctions for thenon-filing of this new document.
A major advance is the mandatory electronicfiling of all documents with the TMO, as well asthe payment of the official fees by electronicmeans.
It is also now possible to renew trademarkswithin a six-month grace period, which onceseemed impossible to apply in Argentina, eventhough the majority of Latin American countrieshave already adopted the same for many years.
However, this grace period brings the uncertaintyof determining if a mark which is an obstacle foran application has been renewed or not until thegrace period has ended.
Argentina is not a member of the SingaporeTrademark Law Treaty. Therefore, there is nomulti-class application system and in order toobtain trademark protection it is necessary tofile a separate and single trademark applicationper class.
Finally, it is now necessary to indicate thespecific goods and services upon the filing of atrademark application.
The new amendments have not introduced,for the time being, any reference to the issuanceof TMO office actions regarding the registrability(or not) of a mark and citation of antecedentswhich is left at the end of the registrationprocedure, when it should be applied at thebeginning of the procedure.
This situation emphasizes the importance ofconducting trademark searches beforetrademark filing, so as to avoid an annoyingsurprise at the end of the registration procedure.
We trust that all of these recent amendmentsshall optimize and grant even more efficiency tothe protection of trademarks in Argentina - oneof the most active and outstanding countries inSouth America, a beloved darling in the region,due to its high influence of European andAmerican culture and background.
Changeswere finallytriggered inearly 2018.
”
“
ContactO'Conor & Power Abogados-PropiedadIndustrialSan Martin 663, Piso 9, Of B, Buenos Aires1004, ArgentinaTel: +54 11 4311 2740Fax: +54 11 5368 [email protected]
O’Conor & Power_v1_TML2:Layout 1 3/4/20 15:57 Page 37
RésuméSantiago O’Conor Santiago R O'Conor is the managingpartner of O'Conor & Power, a leading IPpractice based in Buenos Aires. Santiagospecializes in all aspects of intellectualproperty, principally trademarks, advisingdomestic and foreign companies on localand international IP law, prosecution andlitigation in Argentina and Latin America.He advises Forbes and Fortune 500companies in a variety of industries, suchas technology and telecommunications,luxury goods, agriculture, food and wine,and entertainment.
Argentinahas a strongand healthytradition in theprotection oftrademarkrights.
”
“
36 THE TRADEMARK LAWYER CTC Legal Media
The purpose of this article is to brieflyindicate how the different amendmentsintroduced to Argentine Trademark Law
No. 22,362 since the month of January 2018,initiated by Decree No. 27/2018, have impactedon everyday trademark protection and practice.
It is important to underline that TrademarkLaw No. 22,362 (“TML”) was issued in the year1981. More than 35 years passed until DecreeNo. 27/2018 introduced the first important changesto the “TML”, updating the same to reflect modernstandards of international trademark practice.
Argentina has a strong and healthy tradition inthe protection of trademark rights in Latin America;however, many of its prosecution proceduresdiffered from the ones applied by othercountries, and this led to Argentina becomingisolated and “old” vis a vis worldwide trends.
Changes were finally triggered in early 2018with the introduction of a new oppositionsystem by which the parties involved, onceofficially notified, have three months to reach anamicable agreement to obtain the withdrawal ofan opposition.
If no agreement is reached, an administrativeprocedure is initiated which will finally bedecided by the Argentine Trademark Office
(“TMO”) with the possibility of filing an appealthrough a court action with the Federal Courts.
During this opposition procedure, the opposingparty needs to ratify its objection by addingarguments and paying a substantial additionalofficial fee.
The latter has meant that many physical personsand companies which used to file groundlessoppositions or objections with speculativepurposes have refrained from doing so, mainlydue to the economic implications and costs ofmaintaining these kinds of objections.
The reduced quantity of useless oppositionscreates the benefit of a more dynamic and agileprocedure, which for the time being is not visible,due to the backlog of the TMO in the handling ofthe new opposition system.
In the prior opposition system, objectionswhich were not solved in an amicable mannerby the parties necessarily fell into federal courtactions, which caused high costs and long-termdecisions.
This prior opposition procedure system was unique in Latin America and observed withbemusement by trademark applicants whocould not believe that a federal court actionneeded to be filed to obtain the removal of anopposition, when the same should be solvedadministratively by the TMO.
At this time, however, we need to wait todetermine the nature and grounds of thesekinds of decisions to be issued by the TMO.
Nullifications and Non-Use Cancellation Actionsare also now decided by the TMO.
Unfortunately, there is presently a considerabledelay and backlog before the TMO in thehandling and prosecution of these items.
The new obligation of the filing of a Mid-TermDeclaration of Use (“MTDU”) within the fifth andthe sixth year of the granting of a trademark hascaused confusion among trademark holders.
The TML now establishes two types ofdeclarations of use. On one side is the Declarationof Use (“DJU”) indicating that a trademark hasbeen used during the last five years prior to the
A new dawn for Argentina
Santiago O’Conor of O’Conor & Power examines recent changes to Argentiniantrademark law that have brought decades of stagnation to an end.
Santiago O’Conor
ARGENTINA
O’Conor & Power_v1_TML2:Layout 1 3/4/20 15:57 Page 36
THE E
UR
OP
EA
N TR
AD
EM
AR
K R
AN
KIN
GS 2
020
39CTC Legal Media THE TRADEMARK LAWYER
PATENTSERVIS Praha a.s.
Patent & Trade Mark Agency
Na Podkovce 281/10 147 00 Praha 4 Czech Republic
Patents, Trade Marks, Utility Models, Industrial Designs, Copyright, Licencing and Technology
Transfers, Mediation, Litigation, Arbitration
Tel. +420 2 61 09 00 11 Fax. +420 2 61 21 49 21
E-mail: [email protected] Internet: www.patentservis.cz
Representation also provided for the Slovak Republic
BerggrenBoco IPBoreniusCastrén & SnellmanEversheds SutherlandHannes SnellmanHeinonen & CoKolsterRoschierProperta Attorneys
Finland
AWABech-BruunBudde SchouChas HudeGorrissen FederspielHortenKromann ReumertNjord Law FirmPatradePlesner
DenmarkRankings: Asia-Pacific
In Issue 3 ofThe Trademark Lawyer
Magazine
Baker McKenzieBird & BirdČermák a spolCMSKorejzová & spolPatentservis PrahaRott Růžička & GuttmannTraplová Hakr KubátVšetečka Zelený Švorčík and PartnersVyskocil Krošlák & Partners
Czech Republic
TML 0220 rankings Europe_FINAL:Layout 1 6/4/20 12:15 Page 39
38 THE TRADEMARK LAWYER CTC Legal Media
THE EUROPEAN TRADEMARK RANKINGS 2020
Throughout the next few pages, you will view acomprehensive list of the 10 most well-respected law firmsfrom Europe, in alphabetical country and company order. Ourfocused list is derived from a multifaceted methodology,which uses months of industry research and feedback fromour readers, clients, and esteemed connections around theworld. All firms are ranked top 10 in their jurisdiction but aredisplayed alphabetically to avoid bias.
SPACE TO FILL
CMSFreshfields Bruckhaus DeringerGassauer-Fleissner RechtsanwälteHaffner & KeschmannPuchberger & PartnerSchoenherrSonn & PartnerTorggler & HofingerWiltschek PlasserWiltschek Rechtsanwälte
AustriaARSIS ConsultingBojinov & BojinovBoyanov & CoDimitrov Petrov & CoDjingov Gouginski Kyutchukov & Velichkov (DGKV)Dr. Emil Benatov & Partners IP ConsultingJulian Varbanov and PartnersManev & PartnersPavlov & Co
Bulgaria
Divjak Topic Bahtijarevic (DTB)Hraste & PartnersMatievich Law OfficesMilojevic Sekulic & AssociatesPetoševićProducta Tana Intellectual Property Vukina & PartnersVukmir & AssociatesZivko Mijatovic & Partners (ZMP)
Croatia
SPACE TO FILL
Allen & OveryAltiusBird & BirdCrowell & MoringHoyng Rokh MonegierKirkpatrickNautaDutilhSimont BraunStibbeVan Innis & Delarue
Belgium
LEDRA HOUSE, 15, Agiou Pavlou Street, Agios Andreas, 1105 Nicosia, CyprusTEL.: +357 22 55 66 77
[email protected] | www.vasslaw.com
KEEPING YOURIDEAS SAFE
SPACE TO FILL
A.G.Paphitis & Co Andreas Coucounis & Co LLCChristodoulos G. Vassiliades & Co. LLCDr K Chrysostomides & CoElias Neocleous & CoIP CyprusKoushos Korfiotis PapacharalambousLellos P Demetriades Law OfficeMarkides & CoMichael Kyprianou & Co LLC
Cyprus
TML 0220 rankings Europe_FINAL:Layout 1 6/4/20 12:15 Page 38
41CTC Legal Media THE TRADEMARK LAWYER
THE E
UR
OP
EA
N TR
AD
EM
AR
K R
AN
KIN
GS 2
020
SPACE TO FILL
AdvopatentBaker McKenzieBérczes Law OfficeCMSDanubia Gödölle Kékes Mészáros & SzabóOppenheimSar & Partners SBGKSzecskay Attorneys at Law
Hungary EU IP Codesin your pocket
Welcome to EU IP Codes 2.0by GLP — the brand new version of the first evermobile app to consultall the European and Italian regulations on Industrial Property in one place.Since 2012 an essential toolfor IP professionals.
Welcome to EU IP Codes 2.0by GLP — the brand new version of the first evermobile app to consultall the European and Italian regulations on Industrial Property in one place.Since 2012 an essential toolfor IP professionals.
Your EuropeanIP Partner
GLP SrlVia L. Manara 1320122 MILANOT +39 02 54120878F +39 02 54121214E [email protected]
GLP SrlV.le Europa Unita 17133100 UDINET +39 0432 506388F +39 0432 507735E [email protected]
GLP SrlVia di Corticella 181/440128 BOLOGNA T +39 051 328365F +39 051 4173102E [email protected]
Other offices:PERUGIA
ZÜRICHSAN MARINO
www.glp.eu
Barzanò & ZanardoBird & BirdBugnion SpAGLP Hogan LovellsJacobacci & PartnersSocietà Italiana BrevettiStudio BoniniStudio TortaTrevisan & Cuonzo
Italy
TML 0220 rankings Europe_FINAL:Layout 1 3/4/20 16:10 Page 41
40 THE TRADEMARK LAWYER CTC Legal Media
Rankings: The Americas,
The Middle East & AfricaIn Issue 4 of
The Trademark Lawyer Magazine
THE EUROPEAN TRADEMARK RANKINGS 2020
Established 1920
2, Coumbari Str., Kolonaki, 10674 Athens, Greece T: +30 210 3626624 • F: +30 210 3626742 E: [email protected] • W: www.hplawfirm.com
• Patents• Utility Models• SPC’s• Plant Breeders’ Rights• Trademarks• Designs• Copyright• Anti-Counterfeiting & Anti-Piracy• Litigation• Licensing• Franchising
• Commercial and Corporate Services• Internet• E-Commerce
and Domain Names• Competition Law• Advertising / Consumer Protection• Foreign Jurisdictions• Consultancy
Cabinet ChalliotCabinet Beau de LoménieCabinet PlasseraudDuclos Thorne Mollet-Viéville & Associés (DTMV)Germain & MaureauGide Loyrette NouelHogan LovellsHoyng Rokh Monegier VéronLavoixSantarelli
France
SPACE TO FILL
Bardehle PagenbergBird & BirdBoehmert & BoehmertCMSGleiss LutzGrüneckerHarmsen UtescherHarte-BavendammHogan LovellsLubberger Lehment
Germany
A & K Metaxopoulos & PartnersDr. Helen G. Papaconstantinou and PartnersDrakopoulosKiortsis & AssociatesKLC Kyriakides GeorgopoulosMalamis & AssociatesPatrinos & KilimirisTsibanoulis & PartnersVayanos Kostopoulos
Greece
TML 0220 rankings Europe_FINAL:Layout 1 6/4/20 12:17 Page 40
THE E
UR
OP
EA
N TR
AD
EM
AR
K R
AN
KIN
GS 2
020
43CTC Legal Media THE TRADEMARK LAWYER
.fenixlegaL INTERNATIONAL PATENT AND LAW FIRM
SWEDEN SCANDINAVIA EUROPE
Patents, Trademarks &
Designs
& Domain Name Disputes
Copyright &
Commercial Law
Social Network Law
IP Due Diligence & Business Law
Östermalmstorg 1 11442 Stockholm Sweden
[email protected] www.fenixlegal.eu
Internet Law
, 3tr.
AWADelphiFenix LegalGozzo AdvokaterGullikssonLindahlSandart & PartnersVingeWesterberg & Partners Zacco
Sweden
zuykov.com
IP SERVICES IN RUSSIA, UKRAINE, BELARUS,KAZAKHSTAN & OTHER CIS COUNTRIES
Russia129090, Russia, Moscow,
Grokholskiy per., d. 28, 2nd floorTel+Fax: + 7 (495) 775-16-37
e-mail: [email protected]
Belarus220004, Republic of Belarus, Minsk,
23/1 Pobediteley AvenueTel+Fax: +375 17 204-16-37
e-mail: [email protected]
Kazakhstan050043, Kazakhstan, Almaty,28 Ryskulbekova Str., Block 4,
10th Floor, Suite 33,Tel+Fax: +7 727 312-16-37
e-mail: [email protected]
Ukraine01135, Ukraine, Kiev,
25 Chornovola Str., Suite 168Tel+Fax: +38 044 501-16-37
e-mail: [email protected]
PATENTSIP LITIGATION
TRADEMARKS AGREEMENTS
PROTECTING TWO PARTS OF THE WHOLE: DATA AND RIGHT
Cabinet M OproiuEnporaMuşat & AsociaţiiNestor Nestor Diculescu Kingston Petersen (NNDKP)PetoševićRatza & ratzaRominventStoica & AsociațiiTuca Zbârcea & AsociatiiZamfirescu Racoti & Partners
Romania
Abril AbogadosBaker McKenzieBird & BirdBomhardIPCuatrecasasElzaburuGómez-Acebo & PomboGrau & AnguloHogan LovellsHoyng Rokh Monegier
Spain
BadertscherBaker MckenzieFMP Fuhrer Marbach & PartnersHomburgerLenz & StaehelinMeyerlustenberger LachenalNovagraafSchellenberg WittmerTroller Hitz TrollerWalder Wyss
Switzerland
TML 0220 rankings Europe_FINAL:Layout 1 7/4/20 08:04 Page 43
42 THE TRADEMARK LAWYER CTC Legal Media
THE EUROPEAN TRADEMARK RANKINGS 2020
Baker McKenzieJWPKulikowska & KulikowskiLDS Lazewski Depo & PartnersPatpolPolserviceSkubisz IP Law FirmSołtysiński Kawecki & SzlęzakTraple Konarski Podrecki & PartnersWardynski & Partners
Poland
Baker MacKenzieGorodissky & PartnersGowling WLGHogan LovellsIneurekaPatentica Patent & Law Firm YUSSojuzpatentVakhnina & PartnersZuykov & Partners
Russia
TML 0220 rankings Europe_FINAL:Layout 1 6/4/20 12:49 Page 42
UTPS_FP_RHP.indd 1 20/04/2016 12:13
44 THE TRADEMARK LAWYER CTC Legal Media
THE EUROPEAN TRADEMARK RANKINGS 2020
SPACE TO FILL
AequoArzingerGrischenko & PartnersBaker McKenzieDoubinsky & OsharovaFedorova & PartnersGorodissky & PartnersIPStyleMikhailyuk Sorokolat & PartnersPakharenko & Partners
Ukraine
Ankara Patent BureauCagirgan Intellectual Property ServicesDerisDestek PatentEsin Attorney PartnershipGün + PartnersIstanbul PatentKenarogluMoroğlu ArsevenOrbis Vista
Turkey
TML 0220 rankings Europe_FINAL:Layout 1 7/4/20 08:54 Page 44
DIR
EC
TOR
Y OF SE
RV
ICES
47CTC Legal Media THE TRADEMARK LAWYER
To enter your firm in the Directory of Services section please email [email protected]
Directory of Services
GUATEMALA
Lexincorp IP, S.A.Is a leading Central American Law firm, which hasspecialized in providing legal advisory and support in IP, and other legal areas, to our domestic andinternational clients, for more than 40 years. Ourregional practice has evolved to integrate processes,services, knowledge, values and solutions, providinghigh quality results, operating as a single, fullyintegrated firm, with over 80 lawyers, ready to serveyour needs.
Address: 9a Avenida 14-78 zona 10, Guatemala, Guatemala, C.A.
Tel/Fax: (502) 2246 3000Website: www.lexincorp.comEmail: [email protected]
[email protected] Contact: Mr Gonzalo Menéndez G., Ms Gina Roca
O’Conor & PowerO’Conor & Power’s trademarks and patent practicegroup has wide experience in handling portfolios fordomestic and international companies in Argentina andother Latin American countries. Our services in theregion include searches, filing and registrationstrategies, prosecution, opposition, renewals,settlement negotiations, litigation, enforcement andanti-counterfeiting procedures, recordal of assignments,licences, registration with the National CustomAdministration and general counselling in IP matters.
Address: San Martín 663, 9th Floor,(C1004AAM) Buenos Aires, Argentina
Tel/Fax: 005411 4311-2740/005411 5368-7192/3Website: www.oconorpower.com.arEmail: [email protected]: Santiago R. O’Conor, Managing PartnerE-mail: [email protected]
ARGENTINA
Vera Abogados Asociados S.A.Vera Abogados was founded in 1972 to attend thelegal needs of the business sector in the area of IP.Now they provide their services to all fields of thelaw. The legal study is a reference in the Andeancommunity, and they are part of internationalassociations such as INTA, ASIPI, ABPI and ASPI.They were ranked in 2018 by Leaders League as oneof the best legal studies of Colombia and is a partnerof PRAGMA, International Network of Law Firms.
Address: Calle 70 A No. 11-43, Bogotá, Colombia.Av. 6 de diciembre y la nina, Multicentro, Of: 603, Quito, Ecuador.
Tel: +57 (1) 317 6650 / +57 (1) 312 7928Website: www.veraabogados.comEmail: [email protected]: Jorge E. Vera Vargas / Carolina Vera Matiz /
Natalia Vera Matiz
COLOMBIA
Caribbean Trademark ServicesCaribbean Trademark Services, founded in 1981, by George C.J. Moore, provides a single contact sourceof protecting trademarks and patents in the Caribbean.Covering 29 countries, including Belize, Bermuda, CostaRica and Cuba; a bilingual staff provides IP servicestailored to the diverse jurisdictions. Experienced staffmembers and volume transactions, services are efficientmaking our single contact, long established source forthe Caribbean most cost effective.
Address: 2855 PGA Boulevard, Palm Beach Gardens,Florida 33410, USA
Tel/Fax: +1 561 833-9000 F: +1 561 833-9990Anguilla: Calvin Lake Bldg., Ste 9, Valley, Anguilla Tel: +1 264 462-9000Website: www.CaribbeanTrademarks.comEmail: [email protected]: George C.J. Moore, P.A.
CARIBBEAN
Traplová Hakr KubátLaw and Patent OfficesTRAPLOVÁ HAKR KUBÁT is a well based IP boutiquewith a long-term tradition in representing both theCzech and foreign clients in the patent, utility models,industrial designs, trademarks, copyright, unfaircompetition and anti-counterfeiting issues.
Address: P. O. Box 38, 170 04 Prague 74Přístavní 24, 170 00 Prague 7
Tel: + 420 266 772 100Fax: + 420 266 710 174Website: www.thk.cz Email: [email protected]: Jana Traplová, Attorney at Law
Tomáš Pavlica, European Patent Attorney
CZECH REPUBLICCYPRUS
Christodoulos G. Vassiliades & Co LLC The Firm employs over 200 professionals, comprisingof qualified lawyers, legal and tax consultants,paralegals and accountants, all dedicated to theprovision of services with professionalism, efficiencyand integrity. We offer a fully integrated IP service,providing advice and professional support in relationto copyright, trademarks, patents, designs, domainnames, as well as unfair competition and protectionof other confidential information.
Address: 15, Agiou Pavlou Street, Ledra House, Agios Andreas, Nicosia 1105, Cyprus
Tel/Fax: +357 22 55 66 77Website: www.vasslaw.net Email: [email protected] Contact: Maria H. Kyriacou
GUATEMALA
Merida & AsociadosThe firm provides services throughout the range ofdifferent legal matters, specializing in the bankingindustry both nationally and internationally, businesslaw, banking law, trademarks and patents, litigation,notary law, litigation and arbitration. We are a verywell-known law firm for Intellectual Property inGuatemala. We serve several German institutions,including banks, and several German clients.
Address: 20 calle 12-51 “A” zona 10,Guatemala City, 01010, GuatemalaArmando Mérida, Section 019170,P.O. Box 02-5339, Miami, Florida,33102-5339, USA
Tel: (502) 2366 7427Website: http://www.meridayasociados.com.gt/enEmail: [email protected] Contact: Armando Merida
Cermak a spolČermák a spol. is a leading IP law firm in the CzechRepublic and Slovakia, providing services in all areasof IP law, including patents, trademarks, utility models,industrial designs, unfair competition and others. Wehave a qualified team of lawyers for both IP prosecutionand litigation including litigation in court. Our strengthsis a unique combination of experienced and qualifiedpatent attorneys and lawyers.
Address: Čermák a spol, Elišky Peškové 15150 00 Praha 5, Czech Republic.
Website: www.cermakaspol.com Email: [email protected]
Contact: Dr. Karel Cermak - Managing PartnerDr. Andrea Kus Povazanova - Partner
CZECH REPUBLIC
Cabinet ChaillotYour IP boutique in France and EuropeOur services include filing and prosecution of patent,trademark and design applications, before the FrenchOffice, the European Patent Office and the EuropeanUnion Intellectual Property Office, prior searches,oppositions/cancellations, renewals, recordals,watching with the French and European Customadministrations, negociations.Founded in 1985, Cabinet Chaillot now has 8 officesin France.
Address: BP 74 – 92703 Colombes cedex, FranceVisiting: 16 avenue de l’Agent Sarre – 92700
Colombes, FranceTel/Fax: +33 1 4119 2777 / +33 1 4785 8449Website: www.chaillot.comEmail: [email protected]: Denis Chaillot, Julie Desrois
FRANCE
TML Directory of Services Issue 2 2020 4pp RHS:Layout 1 3/4/20 16:24 Page 47
Romulo Mabanta Buenaventura Sayoc & de los Angeles is the exclusive member fi rm for Lex Mundi — the world’s leading network of independent law fi rms with in-depth experience in 100+ countries worldwide and preferred access to more than 21,000 lawyers around the world all from a single point of contact.
Romulo: 21st Floor, Philamlife Tower, 8767 Paseo de Roxas, Makati City 1226, PhilippinesEmail: [email protected]: +63 2 555-9555 | DID: +63 2 555-9563 Fax: +63 2 810-3110 | +63 2 815-3172 Website: www.romulo.com
PROTECTING YOUR BRIGHT IDEAS.
Romulo.indd 1 29/04/2019 14:21
DIR
EC
TOR
Y OF SE
RV
ICES
49CTC Legal Media THE TRADEMARK LAWYER
Directory of Services
RUSSIA
Vakhnina and PartnersOne of the leading IP firms in Russia. Advising ourclients on all aspects of IP in Russia, Ukraine,ex-USSR countries and Baltic States. Using our owntrademark search engine. Services: Patents,trademarks, designs, utility models, copyright,litigation and enforcement. Members of Russian PAAssociation, INTA, AIPPI, LESI, ECTA, PTMG, GIPC.
Address: Bld. 6, Preobrazhenskaya Pl., Moscow,107061, Russia
Tel: +7-495-231-4840Fax: +7-495-231-4841Website: www.vakhnina.comEmail: [email protected]: Dr. Tatyana VAKHNINA
Dr. Alexey VAKHNIN
I N T E L L E C T U A L P R O P E R T Y P R O T E C T I O N
RUSSIA
To enter your firm in the Directory of Services section please email [email protected]
United Trademark & PatentServicesInternational Intellectual Property Attorneysspecialising in Trademarks, Patents, Designs,Copyrights, Domain Name Registration, Litigation &Enforcement services.
Address: 85 The Mall Road, Lahore 54000, PakistanTel: +92 42 36285588, +92 42 36285590,
+92 42 36285581, +92 42 36285584Fax: +92 42 36285585, +92 42 36285586,
+92 42 36285587Website: www.utmps.com & www.unitedip.comEmail: [email protected]: Yawar Irfan Khan, Hasan Irfan Khan
PAKISTAN
Traple Konarski Podrecki & PartnersThe Traple Konarski Podrecki & Partners law office isone of the leading law firms on the Polish market inits areas of practice. It specialises primarily in thefollowing areas: Intellectual property law, TMT, IT,competition and consumer protection law. Ourlawyers have authored more than 200 academicpublications, including books and monographsconcerning mostly civil law, intellectual property law,new technologies law, advertising law andpharmaceutical law.
Address: Office in CracowKrólowej Jadwigi 170, 30-212 CracowOffice in WarsawTwarda 4, 00-105 Warsaw
Tel: Cracow: (+48) 12 426 05 30Warsaw: (+48) 22 850 10 10
Website: www.traple.plEmail: [email protected]
POLAND
Julius & CreasyJulius and Creasy is one of the oldest civil law firms inSri Lanka. Founded in 1879, the firm has establisheditself on rich tradition and the highest professionalprinciples. Julius and Creasy’s wealth of expertise andexperience in a wide range of specialised fields ofLaw enables it to offer innovative legal and businesssolutions to a diverse, sophisticated and high-profileclientele. The Intellectual Property practice of the firmincludes enforcement, management and transactionalmatters. The firm has acted for several Fortune 500companies and is Sri Lanka correspondent of severalfirms in Europe, USA and Asia.
Address: No. 371, R A De Mel Mawatha, Colombo 3,Sri Lanka
Tel: 94 11-2336277Website: www.juliusandcreasy.comEmail: [email protected]: Mrs Anomi Wanigasekera
SRI LANKA
Bharucha & Co.Established in 1948, Bharucha & Co. is one of theleading Intellectual Property law firms in Pakistanproviding full range of IP services including allaspects of patents, trademarks, designs, copyright,domain names, licensing, franchising and litigation.The firm is ranked among the leading law firms inAsia by most of the prestigious legal referral guides.
Address: F-7/1, Block 8, K.D.A Scheme 5,Kehkashan Clifton, Karachi, Pakistan.
Tel: +92-21-3537 9544Fax: +92-21-3537 9557-58Website: www.bharuchaco.comEmail: [email protected]: Mohammad Fazil Bharucha, Abdul Aziz
PAKISTAN
Pioneer Law Associates Pvt. Ltd. Pioneer Law was founded in 1982 and has beenproviding different IP services ranging from protectionof IP to enforcement and IP litigation. Our IPdepartment is headed by Ms. Anju Upreti Dhakal, anIP attorney with more than 23 years of experience.Through our understanding of the Nepalese markets,the institutional knowledge that we have acquiredover the years and our solution-oriented approach,we provide best legal services to our clients. We arealso members of APAA, INTA and AIPPI.
Address: Pioneer House, 246 Sahayog Marg,Anamnagar, Kathmandu, Nepal
Tel/Fax: +977-01- 5705340, 5707102Website: www.pioneerlaw.com Email: [email protected] Contact: Ms. Anju Upreti Dhakal
NEPAL
To list your firm inthis section,please email
NIGERIA
S. P. A. AJIBADE & CO.S. P. A. Ajibade & Co., is a leading corporate andcommercial law firm established in 1967. The firmprovides cutting-edge services to both its local andmultinational clients in the areas of Dispute Resolution,Corporate Finance & Capital Markets, IntellectualProperty & Technology, Telecommunications, RealEstate & Succession, and Energy & Natural Resources.
Address: Suite 301, SPAACO House, 27A MacarthyStreet, Onikan, Lagos, Nigeria.
Tel: +234 1 4605091; +234 1 8118903060Fax: +234 1 4605092Website: www.spaajibade.comEmail: [email protected]: John Onyido - Partner and Head of the IP,
Technology & Telecommunications DeptBolaji Gabari - Associate Partner, Abuja Office.
TML Directory of Services Issue 2 2020 4pp RHS:Layout 1 3/4/20 16:25 Page 49
48 THE TRADEMARK LAWYER CTC Legal Media
To enter your firm in the Directory of Services section please email [email protected]
Directory of Services
D. P. Ahuja & Co.D. P. Ahuja & Co. is a dedicated full-serviceIntellectual Property firm. For the last 37 years, ourfirm has traditionally specialized in Patent andTrademark Prosecution and Litigation. We combinethe capabilities of 128 members, including 22Attorneys, 5 Litigating Counsel, 5 TechnicalAssociates, 14 Managers, 23 Paralegals, 9 ITProfessionals and support staff to provide fullyintegrated, high-quality legal and professionalservices in the area of Intellectual Property filings,prosecution and litigation.
Address: 14/2, Palm Avenue,Calcutta 700 019, India
Tel: +91 (33) 40177100Fax: +91 (33) 40088262Website: www.dpahuja.comEmail: [email protected]
INDIA
Chandrakant M Joshi Our law firm has been exclusively practicing IntellectualProperty Rights matters since 1968. Today, Mr. HiralChandrakant Joshi heads the law firm as the senior mostAttorney. It represents clientele spread over 35 countries.The law firm conducts search, undertakes registration,post-registration IP management strategies, IP valuation,infringement matters, domain name disputes and cyberlaw disputes of patents (including PCT applications),trademarks, industrial designs and copyrights.
Address: Solitaire - II, 7th Floor, Link Road,Malad (West), Mumbai - 400 064, India
Tel: +91 22 28886856 / 57 / 58 / 64Fax: +91 22 28886859 / 65 Website: www.cmjoshi.usEmail: [email protected] / [email protected] /[email protected] / [email protected] /[email protected] / [email protected]
INDIA
Mehta & Mehta Associates Mehta & Mehta Associates (Gurgaon, INDIA) is a full-service boutique IP Law Firm, providing Filing,Prosecution and Litigation services in respect ofPatents (in different fields of science and engineering),Trade Marks, Designs and Copyright. The Firm assistsboth national and international clientele, from differentgeographical locations and backgrounds for all IPrelated contentious and non-contentious matters.
Address: Mehta & Mehta Associates, Mehta House,B-474, Sushant Lok-1, Sector-27,Gurgaon-122002, NCR, India
Tel: +91-124-410 8474, 410 8475Fax: +91-124-410 8476 Website: www.mehtaip.comEmail: [email protected]: Dr. Ramesh Kr. Mehta, Founder
Ankush Mehta, Principal Attorney
INDIA INDIA
MEXICO
Goodrich Riquelme AsociadosOur staff of attorneys, engineers and computerspecialists help adapt foreign patent specifications andclaims to Mexican law, secure patent inventions andtrademark registrations and maintain them by handlingthe necessary renewals. Our computer system, whichis linked to the Mexican Patent and TrademarkDepartment, permits us to provide our clients with atimely notice of their intellectual property matters. Wealso prepare and register license agreements.
Address: Paseo de la Reforma 265, M2,Col. Y Del. Cuauhtemoc, 06500 Mexico, D.F.
Tel: (5255) 5533 0040Fax: (5255) 5207 3150Website: www.goodrichriquelme.comEmail: [email protected]: Enrique Diaz Email: [email protected]
Merida IP – The IP CompanyAn international legal firm focused on IntellectualProperty, Data Privacy Law, Sports Law andLitigation. Professionalism, personalisation and highquality services offered by specialists.
Address: Calle D, Mz. 1, No. 4, Educacion, Coyoacan, Mexico City, Mexico
Tel: +52 55 56080523+52 1 55 18230378
Website: www.merida-ip.com Email: [email protected]: Jose Alberto Merida
MEXICO
Gold Patents and FinancialServices (1992) Ltd. Gold Patents and Financial Services (1992) Ltd. is anintellectual property solution provider firm thatoperates in Israel as well as worldwide. We specializein providing evaluation and analyses of IP portfolios;prosecuting and drafting complex patent, design, andtrademark applications; freedom-to-operate, duediligence, patentability, validity and infringementopinions. We provide high quality services andsolutions that support our clients’ business goals anddeliver superior IP services in a timely and cost-effective manner. Address: 15 Yohanan Hasandlar St., Haifa 31251Tel/Fax: +972-48110007/ +972-46892283Website: www.gold-patent.co.il Email: [email protected] Contact: Marganit Goldraich
ISRAEL
To list your firm inthis section,please email
HONDURAS
BUFETE MEJIA & ASOCIADOSA full-service Intellectual Property law firm covering:Honduras and Central America offering a convenientand cost-effective regional service. The firm servicesinclude filing, prosecution, maintenance, enforcementand defense of all types of intellectual property.Furthermore, the firm has strong litigation andarbitration capabilities and is known for handlingcomplex litigation matters as well as infringement and anti-counterfeiting actions before all Courts,Administrative Offices and Customs authorities.
Tel: +504 25507744 / +1 (914) 4125719Fax: +1 (718) 7322118Website: www.bufetemejia.comEmail: [email protected]: Ricardo Anibal Mejia Mejia
& Blanca Rebeca Mejia Lozano
TML Directory of Services Issue 2 2020 4pp RHS:Layout 1 3/4/20 16:24 Page 48
For more than 50 years GLP has been offering a complete range ofservices for a structured protection of intellectual property.
Our Clients range from artisans to some of the Top Companies on theForbes 500 list, for whom we provide initial consultancy and support in
lawsuits – both as plaintiff and defendant – throughout the world.
The quality of our services and our ability to achieve ourClients' high objectives make us leaders in this field at worldwide level.
The commitment of the Group has led toGLP being a top-level European player.
different issues.one simple solution.
Your EuropeanIP Partner
EU IP Codesin your pocket
The only app to consult and getupdated on the European IP law
Welcome to EU IP Codes 2.0 by GLP —the brand new version of the first ever mobile app to consult all the European and Italian regulations on Industrial Property in one place. Since 2012 an essential toolfor IP professionals.
Get it on your device and discover all the new features: write your notes, save and share your favourite content, and much more!
GLP S.r.l.Via L. Manara 1320122 MILANO
Tel +39 02 54120878Fax +39 02 54121214E-mail [email protected]
GLP S.r.l.Viale Europa Unita 17133100 UDINE
Tel +39 0432 506388Fax +39 0432 507735E-mail [email protected]
GLP S.r.l.Via di Corticella 181/440128 BOLOGNA
Tel +39 051 328365Fax +39 051 4173102E-mail [email protected]
Other offices:PERUGIA
ZÜRICHSAN MARINO
www.glp.eu
GLP FP.indd 1 15/11/2019 10:18
50 THE TRADEMARK LAWYER CTC Legal Media
To enter your firm in the Directory of Services section please email [email protected]
Directory of Services
Deep & Far Attorneys-at-lawDeep & Far attorneys-at-law deal with all phases oflaws with a focus on IPRs, and represent someinternational giants, e.g. InterDigital, MPS, SchottGlas, Toyo Ink, Motorola, Cypress. The patentattorneys and patent engineers in Deep & Farnormally are generally graduated from the top fiveuniversities in this country. More informationregarding this firm could be found from the websiteabove-identified.
Address: 13 Fl., 27 Sec. 3, Chung San N. Rd.,Taipei 104, Taiwan
Tel: 886-2-25856688Fax: 886-2-25989900Website: www.deepnfar.com.tw Email: [email protected]: C.F. Tsai, Yu-Li Tsai
TAIWAN, ROC
Pakharenko & PartnersPakharenko & Partners provides full IP service coveragein Ukraine, CIS countries and Baltic states and hasoffices in Kyiv and London. We pride ourselves on anexclusive expertise and experience in the fields of IPlaw, anti-counterfeiting and anti-piracy, pharmaceuticallaw, competition law, advertising and media law,corporate law, litigation and dispute resolution.
Address: P.O.Box 78, 03150 Kyiv, UkraineVisiting: Business Centre 'Olimpiysky',
72 Chervonoarmiyska Str., Kyiv 03150,Ukraine
Tel: +380(44) 593 96 93Fax: +380(44) 451 40 48Website: www.pakharenko.comEmail: [email protected]: Antonina Pakharenko-Anderson
Alexander Pakharenko
UKRAINE
VIETNAM
ELITE LAW FIRMELITE LAW FIRM is born to provide professional andqualified legal services in the field of IntellectualProperty and Business Law in Vietnam as well as manycountries around the world such as Laos, Cambodia,Myanmar, Thailand,…. Standing ourselves at clientsituations helps us deeply understand customer’sbusiness thence giving the most effective solution withcost-saving to every legal problems that a customerencounters. Delivering success, effectiveness and safetyto our Clients is the ultimate goal of ELITE LAW FIRM.
Tel: (84-24) 37373051Fax: (84-24) 37373056Website: www.lawfirmelite.comEmail: [email protected]: Mr. Nguyen Tran Tuyen
Maucher JenkinsMaucher Jenkins is a leading Anglo-GermanIntellectual Property firm with multiple offices in theUK, Germany, Switzerland and China. We advise onthe respective legal systems, business cultures, andthe economic and cultural distinctions between theUK and Germany for both national and Europeanfilings, and are ideally positioned to offer British andEU IP services during and after Brexit.
Tel: +44 (0)207 931 7141Fax: +44 (0)207 222 4660Website: www.maucherjenkins.comEmail: [email protected]: Katie Cameron (Partner)
Angela Fox (Partner)
UK / EUROPE
VIETNAM
Pham & AssociatesEstablished in 1991, staffed by 110 professionalsincluding 14 lawyers and 34 IP attorneys,Pham & Associates is one of the largest legalpractices in Vietnam specialized in IP. The firm isone of the biggest filers of patents, trademarks andindustrial designs each year and has been renownedfor appeals, oppositions, court actions and handlingIP infringements. The firm also advises clients in all aspects of copyright law.
Tel: +84 24 3824 4852Fax: +84 24 3824 4853Website: www.pham.com.vnEmail: [email protected]: Pham Vu Khanh Toan, Managing Partner
General DirectorTran Dzung Tien, Senior IP Consultant
UNITED KINGDOM
IP21 LimitedThe ip21 brand is a simple, modern derivation of“Intellectual Property Services for the 21st Century.”The firm’s founders set out to establish a boutique IP Firm that could advise its clients how best toprotect, enforce and exploit IP Assets to achievecompetitive advantage and peace of mind. A broadmix of experienced IP professionals are employed todeliver this commercially focused, holistic advice.
Tel: +44 (0)1603 457008Fax: +44 (0)1603 432527Website: www.ip21.comEmail: [email protected]: Melanie Harvey,
Senior Chartered Trade Mark Attorney([email protected])Ian Bishop, Director and Patent Attorney([email protected])
TURKEY
Destek PatentWe are a multinational legal practice that hasprovided full range Intellectual Property servicesincluding trademarks, patents, designs, plant varietyprotection and more since 1983. With more than200 qualified in-house staff, including 50 patent andtrademark attorneys, we are able to assist domesticand international clients worldwide.
Address: Eclipse Business D Blok No:5, ISTANBULTel: +90 212 329 00 00Website: www.destekpatent.comEmail: [email protected]: Claudia Kaya
([email protected])Murat Bürkev([email protected])Simay Akba([email protected])
Fenix LegalFenix Legal, a cost-efficient, fast and professionalPatent and Law firm, specialized in intellectualproperty in Europe, Sweden and Scandinavia. Ourconsultants are well known, experienced lawyers,European patent, trademark and design attorneys,business consultants, authorized mediators andbranding experts. We offer all services in the IP fieldincluding trademarks, patents, designs, disputeresolution, mediation, copyright, domain names, IPDue Diligence and business agreements.
Tel: +46 8 463 50 16Fax: +46 8 463 10 10Website: www.fenixlegal.euEmail: [email protected]: Ms Maria Zamkova
Mr Petter Rindforth
SWEDEN
Young & ThompsonYoung & Thompson, established in 1903, is a fullservice intellectual property law firm focusing on U.S.patent and trademark prosecution of the highest qualitywhile maintaining costs at a moderate level. Young &Thompson has been recognized as an industry leaderfor innovation in new technologies and procedures,being among the first law firms adopting a paperlessworkplace, and co-developed an automated solution forcreating and executing all workflows.
Address: 209 Madison Street, Suite 500,Alexandria, VA 22314
Tel: 703-521-2297Fax: 703-685-0573Website: www.young-thompson.comEmail: [email protected]: Andrew Patch
UNITED STATES
TML Directory of Services Issue 2 2020 4pp RHS:Layout 1 3/4/20 16:28 Page 50
Anatip_FP_NEW.indd 1 28/07/2017 15:32