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The primary source of global intellectual property internet news and analysis
Continued on page 2
Reform an orderly queueEU copyright changes disappoint Mozilla
China UpdateA cup of tea and a WeChat
INTA ConferencePutting trademarks on TMAP
Serbia InsightEvent photos and copyright
Domain NamesDon’t stray from the non-Latin script
ConferenceSpecial
www. ipp ro the in te r ne t .com
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ContentsCover StoryDespite its best efforts to promote ‘future-proof’ EU copyright reforms, Mozilla, creator of the internet browser Firefox, is disappointed with the result
Page 8
China UpdateThe China-Britain Business Council and the owner of WeChat have recently signed a memorandum of understanding to do more in the fight against infringement
Page 12
Enforcement ChallengesA light-touch informative conversation can accomplish significantly more than a traditional law firm ‘nastygram’ or impersonal take-down notice
Page 14
Serbia CopyrightA court’s interpretation of the current events exception in Radosavljević is creative, write Bogdan Ivanišević and Marko Popović of BDK Advokati
Page 16
India TrademarksThe Delhi High Court has granted an interim injunction against Britannia for deceptively similar packaging. Lucy Rana and Bijit Das of SS Rana & Co report
Page 18
Domain NamesIt is vital for IP rights owners that their trademarks and brands are being monitored and protected at all times. IPzen’s Ava Kammer explains
Page 20
3D TrademarksFábio Leme and Nelsa Barroso of Daniel Advogados compare the registration of a 3D trademark in Brazil and France
Page 24
Patent ExceptionsYeşim Metin of Destek Patent assesses prior use rights in Turkey
Page 28
Russia TrademarksVladimir Biriulin of Gorodissky & Partners explains how Russia’s court system effectively deals with trademark disputes
Page 30
People MovesComings and goings at Bird & Bird, Allen & Overy and more
Page 33
IP viewed as ‘fair game’ online
Some 84 percent of online marketplace takedowns relate to Amazon- or eBay-listed sites, according to a UK Intellectual Property Office (IPO) report.
The annual IP Crime Report, published on 28 September, called for an effective partnership with brand owners and enforcement groups, pointing out that “piracy and counterfeiting do not occur through exclusively illegal sites on the dark web”.
“The use of widely available and trusted platforms like Facebook, eBay, Amazon and trusted brands like Google, in association with the promotion and distribution of pirate/counterfeit products means that collaboration between brand owners and enforcement groups is crucial.”
Further, a key finding of the report was that 96 percent of companies had not valued their intellectual property.
On top of this, according to the report, only 28 percent of companies check to make sure they are they are not infringing others’ IP rights.
“In the field of piracy, content providers seem to be regarded by a large portion of society as ‘fair game’.”
These opinions seem to stretch into the treatment of musical content, with the report asserting: “Consumers treatment of musical content seems to suggest that music is perceived as part of the public, not private domain.”
The report also showed that the UK creative industries have a value of £84.1 billion, with over £36 billion attributed to IT, software and games.
The next highest contributors were advertising, contributing over £13 billion, and film and TV, which accounted for nearly £11 billion.
Thomson Reuters completes sale of IP & Science
Thomson Reuters has completed the sale of its Intellectual Property & Science business to Onex and Baring Private Equity Asia for $3.55 billion.
The sale, which was announced on 3 October, includes Thomson Reuters’s well-known brands Web of Science, Cortellis, Thomson Innovation, Derwent Patents Index, Thomson CompuMark, MarkMonitor, Thomson IP Manager and Tech Street, among others.
The new company will be rebranded as Clarivate Analytics, a name that it described as speaking to “accelerating the pace of innovation with the trusted insights and analytics it provides to customers”.
Clarivate Analytics will focus on scientific and academic research, patent analytics and regulatory standards, trademark protection, pharma and biotech intelligence, domain brand protection, and IP management.
Vin Caraher, CEO of Clarivate, explained: “We’re excited to move forward as an expert, objective and agile source of authoritative knowledge.”
“Our solutions sit at the end of almost every major university, government and business, supporting those working within the lifecycle of innovation who strive to make a difference.”
When the sale was announced earlier this year, president and CEO of Thomson Reuters, James Smith, said that the divestiture of Intellectual Property & Science will allow Thomson Reuters to focus on “operating at the intersection of global commerce and regulation”.
IACC partners up with City of London Police
The International AntiCounterfeiting Coalition (IACC) has agreed a new memorandum of understanding with the City of London Police.
The memorandum, signed at the 10th Annual Intellectual Property Crime Conference in London recently, strengthens the bonds between the two and shows solidarity in fighting for intellectual property rights.
The deal is similar to the one established with the Guardia di Finanzia (GdF), in that it will strengthen existing collaborations on anti-counterfeiting initiatives and programmes.
These agreements will allow the organisations to share best practices on brand protection and bolster anti-counterfeiting operations.
IACC president Bob Barchiesi said: “Partnerships like these are an important step in winning the battle against counterfeiting.We commend the City of London Police for its dedication to intellectual property protection, and we look forward to working hand-in-hand with law enforcement to stop fakes from making their way to London and beyond,” he added.
GoDaddy hits one million .uk domain name registrations
Domain registrar GoDaddy has facilitated the registration of one million .uk domain names.
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GoDaddy’s announcement, on 6 October, also estimated that 25 percent of the UK’s most popular domains are now registered through it.
It said that both .co.uk and .uk represent “two strong elements of recognition in the UK and abroad” and that they “offer an element of national pride and trust”.
Andrew Low Ah Kee, executive vice president of GoDaddy International, said: “Reaching one million .uk domains demonstrates the value GoDaddy brings to customers by helping them create powerful digital identities.”
“What is even more exciting to us than the milestone itself is the fact that we’ve grown our .uk domains under management by 50 percent in the last 24 months. Our organic growth is a reflection that our purpose-built product and exceptional customer care resonate strongly with the UK market.”
“We’re committed to growing our UK business and are excited to continue supporting the digital revolution taking place in the UK.”
In March, Nominet, the official registry of .uk, raised the wholesale price for UK domains by 50 percent, stating that the wholesale cost of .uk domain registrations has not changed since 1999 and that pricing will now be reviewed annually.
Russell Haworth, managing director at Nominet, commented: “It’s a significant achievement to reach a million .uk and .co.uk registrations, and the rate of growth is impressive.”
“Like GoDaddy, we are committed to making the case for more businesses having their own space online, helping create new opportunities for us all.”
Microsoft’s Bing unveils new DMCA dashboard for takedowns
Microsoft’s Bing has unveiled a new online Digital Millennium Copyright Act (DMCA) dashboard to allow users to report copyright infringement listed by the search engine.
The dashboard will allow users to view their copyright removal requests in progress, as well as showing historical submission statistics where users can see how many of their requests were successful.
Bing hopes to move away from the typical email channel that DMCA requests are received and provide users with a fill-in form with guides for all the required information, or, for certain users, an application interface. In its announcement, Bing’s programme manager, Chad Foster, said: “Email is the
least efficient and prone to error, such as missing or incomplete information. When submitters leverage the online form or the API, they decrease the chance of rejection due to incomplete or incorrect information.”
“For rights owners who submit high volumes of DMCA notices, Bing’s API program is the most efficient method for requesting link removals due to copyright infringement. The API program is reserved for frequent submitters with a demonstrated history of valid submissions.”
“Bing wants to ensure that copyright owners send valid DMCA notices and that those notices are acted upon promptly. The online form and API help accomplish this. Having insight into the status of these notices helps copyright owners stay better informed and, in turn, promotes the use of such tools to help Bing respond in an expeditious manner.”
EFF in another DMCA row
The Electronic Frontier Foundation (EFF) has filed a lawsuit against the US Department of Justice (DOJ) to protect a professor from prosecution under the Digital Millennium Copyright Act (DMCA).
In the lawsuit, filed on 29 September in the US District Court for the District of Columbia, the EFF sought a preliminary injunction against prosecution for Dr Matthew Green who it says is required to circumvent certain copyright protections in order to perform his research.
Green is an assistant professor of computer science and applied cryptography at the Johns Hopkins Information Security Institute and studies the security of computer systems with the aim to “expose design flaws in computer systems so that they can be made more secure”.
The EFF said that the existence of the DMCA provisions “deters Dr Green and many other security researchers from pursuing similar lines of research”.
“The possibility of criminal or civil enforcement of the anti-trafficking rule deters Dr Green from sharing the results of his research, such as by publishing his book.”
In response, the DOJ has filed a motion to dismiss the case, stating that the EFF “fails to establish a credible threat of prosecution”.
“None of the plaintiffs claims to have been threatened with criminal prosecution. Their conclusory assertion that others have been prosecuted under the DMCA in the past, for unidentified reasons, is insufficient to establish that they face a credible threat,
as is their assertion that third parties might bring a suit against them under a separate civil private right of action.”
“Moreover, they fail to plausibly assert that the acts of circumvention and trafficking that they wish to undertake qualify as speech or expressive conduct that is entitled to First Amendment protection but prohibited by the DMCA.”
Record labels hold infringer liable
Record labels including Sony Music and Capitol Records have filed a joint copyright infringement lawsuit against the owners of mp3 ripping site YouTube-mp3.org.
The complaint, filed on 26 September in the US District Court for the Central District of California, alleged that YouTube-mp3 is “designed to infringe and facilitate the infringement of copyrighted sound recordings that are available on YouTube”.
“YouTube-mp3 rapidly and seamlessly removes the audio tracks contained in videos streamed from YouTube, converts those audio tracks to an MP3 format, copies and stores them on YouTube-mp3’s servers and then distributes copies of the MP3 audio files to users.”
“All of this occurs without the authorisation of the plaintiffs or of YouTube”.
In response to the complaint, Mitch Stoltz, senior staff attorney at consumer advocacy group the Electronic Frontier Foundation, suggested that this wasn’t just an attempt to take down one site.
He alleged that the “labels’ real target appears to be nearly every company that operates or supports the operation of the internet”.
Their request to enjoin “defendants and all third parties ... from facilitating access to any or all domain names, URLs and websites through which defendants infringe plaintiffs’ copyrights” with notice from the court is a “gross overreach”, he argued.
But Cary Sherman, chairman and CEO of the Recording Industry Association of America, said in a statement on the complaint that YouTube-MP3 is “raking in millions on the backs of artists, songwriters, and labels”.
“We are doing our part, but everyone in the music ecosystem who says they believe that artists should be compensated for their work has a role to play. It should not be so easy to engage in this activity in the first place, and no stream-ripping site should appear at the top of any search result or app chart.”
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Donuts unveils DPML Plus
Domain registrar Donuts has added an extension to its Domains Protected Marks List (DPML), which allows brands to protect their trademarks across all of its TLDs.
DPML Plus will allow users to widen protections already afforded by the original DPML, including protection against common misspellings of trademarks.
On top of this, brand owners will be able to block their marks and related terms from registration for an initial 10-year period, block one exact match term and three additional strings, and also block a trademark in premium second-level domains across all Donut’s TLDs.
Richard Tindal, Donuts co-founder and COO, said: “The DPML programme has provided a cost-effective way for owners of the world’s most recognisable brands to protect their trademarks across a significant portion of the new internet landscape.”
“The DPML Plus promotional offering provides a truly unique opportunity for us to partner with brand owners to ensure that usage of new domain extensions is correctly tailored to their precise needs.”
Registration for DPML Plus became available on 1 October and will close on 31 December, at a suggested retail price of $9,999.
Further, the price of DPML’s legacy service will be increased on 1 January 2017.
Google stays on top in Java API case against Oracle
Oracle has lost its latest bid for a renewed motion for judgment in its long-standing copyright dispute with Google over its Java application interfaces (API).
In the motion, filed in the US District Court for the Northern District of California on 27 September, Oracle asserted that bifurcation of the issues of fair use from willfulness and monetary remedies had provided “a structural incentive for the jury to return a defence verdict”.
But US district Judge William Alsup said: “It is impossible to even suspect that bifurcation somehow steered the jury to rule as it did. The court remains completely convinced that the verdict rested, after three days of deliberation, solely on the jury’s sincere assessment of the evidence and the instructions of law.”
Oracle also accused Google’s legal team of misconduct and that they had completely
concealed their Android App Runtime (ARC) project.
Judge Alsup disagreed, however, stating that Google had “produced at least nine documents discussing the goals and technical details of ARC and did so back in 2015, at least five months before trial”.
“Counsel for Oracle now acknowledges their legal team never reviewed those documents until the supplemental briefing on this motion. The court is disappointed that Oracle fostered this impression that no discovery had been timely provided on the ARC project.”
The case has been ongoing since May 2012, when Alsup ruled that APIs are not subject to copyright. Since then, Oracle appealed to the US Court of Appeals for the Federal Circuit in 2013 that then reversed the decision in 2014
Later that year, Google filed a petition asking the US Supreme Court to review the Federal Circuits decision, but it denied the petition.
The case returned to the district court in 2016 for trial on Google’s fair use defence, where Google won in a unanimous jury verdict.
Federal Circuit affirms PTAB decision in CBM review
The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) covered business method (CBM) review decision that found Intertainer’s patent for interactive video content to be invalid.
In the decision, handed down on 26 September, the Federal Circuit disagreed with Hulu’s assertions that Intertainer had waived its ability to challenge the PTAB when it argued that prior art did not disclose the “link program” in its covered business method patent, for a “system and method for interactive video content programming.”
But the court said that: “Intertainer’s position runs afoul of prosecution history because, in order to overcome written description and anticipation rejections, it relied on interpretations of these limitations that only ‘provid[ed]’ and ‘associat[ed]’ interface links, not an entire program.”
“The parties’ dispute here rests not with what a link program does, but what a link program is; specifically whether the ‘interrupt[ing]’ and ‘access[ing]’ functions require a single ‘link program’.”
“On this narrower question, we agree with Hulu that the claims, given their broadest
reasonable interpretation in light of the specification and prosecution history, impose no such requirement.”
The court found that Intertainer did not dispute the PTAB’s constructions that prior art anticipated its patent and, accordingly, the court ruled to affirm PTAB’s decision.
US ITC launches investigation into SK hynix
The US International Trade Commission (ITC) has instituted an investigation into SK hynix for potential unfair trade practices relating to RDIMM and LRDIMM computer memory products. The investigation will determine whether these products should be banned from importation into the US by reason of infringement of patents owned by rival and computer memory manufacturer Netlist.
Netlist chairman and CEO CK Hong said: “We are pleased with the ITC’s decision to investigate the unfair trade practices of SK hynix based on the unauthorised importation of our patented technologies.”
“We are disappointed that SK hynix has been unwilling to negotiate in good faith toward a resolution which fairly compensates Netlist for our valuable intellectual property. While we remain willing to negotiate such a resolution, we look forward to addressing SK hynix’s ongoing infringement in an expeditious manner in the ITC.”
Netlist filed the patent infringement complaint earlier this year after the company claimed that SK hynix had infringed six of its patents relating to the computer memory products.
Netlist said that it had been in discussions with SK hynix since last year over licensing of its intellectual property.
Mozilla wins back .com domain
Firefox developer Mozilla has reclaimed an infringing domain name that was filed in bad faith.
The World Intellectual Property Organization Arbitration and Mediation Center in September that the registrant, which had concealed its identity by means of a privacy protection service, had registered mozilla-europe.com in bad faith and that it was identical to Mozilla’s trademark, barring the descriptive term ‘Europe’.
The registrant had also registered two other domains containing the marks of well-known brands, including beatsheadphonescheapoutlet.com and ottawaredcross.org. YOUR IP SOFTWARE SOLUTION IN THE CLOUD
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6YOUR IP SOFTWARE SOLUTION IN THE CLOUD
www.ipzen.com
+33 (0) 1 84 17 45 32
Case ManagementManage files online
Track activities
Attach documents
Share Information
Trademark Management
Access your portfolios online
Automatically calculate deadlines
Integrate trademark data easily
Deadline Tracking
View all deadlines in a snap
Select people and delegate task
Domain Name Management
Manage your domain names online
Track deadlines
Sort domain names by category
Check availability online
Watch Services
Trademarks
Domain names
Social media
Integrated InvoicingGenerate invoices directly from your files
Consolidate files into a invoice
Track payments
8
Mozilla Exclusive
Despite its best efforts to promote ‘future-proof’ EU copyright reforms, Mozilla, creator of the internet browser Firefox, is disappointed with the result
Return to reform
Mozilla has been an outspoken proponent of a free and open internet since it rose to prominence and challenged Microsoft’s Internet Explorer in 2002. More than 40,000 volunteer contributors wrote its flagship product, Firefox, and Mozilla believes in the open development that underpins open source products.
It’s for this reason that Mozilla recently released a petition to “reform copyright law in the EU,” and, in standing with its goals for a free and open internet, submitted responses to the European Commission’s consultations in an attempt to shape the future of copyright and step away from “outdated” legal framework of 2001.
Digital Single Market
In this year’s State of the Union speech, EU president Jean-Claude Juncker addressed the problems with current EU copyright laws, saying he wanted “journalists, publishers and authors to be paid fairly for their work, whether it is made in studios or living rooms, whether it is disseminated offline or online, whether it is published via a copying machine or commercially hyperlinked on the web”.
Juncker then unveiled the heavily anticipated copyright reforms to modernise copyright and “increase cultural diversity in Europe and content available online while bringing clearer rules for all online players”, as part of 16 initiatives to create the Digital Single Market.
The proposals were set out to achieve three main priorities, including better access to content online and across borders. To achieve this, the European Commission proposed a legal mechanism for broadcasters to more easily obtain the authorisation they need from rights holders to transmit programmes online in other EU member states.
The commission also asked member states to set up negotiation bodies to help reach licensing deals for video-on-demand platforms.The second priority was to improve copyright rules on research and
education, facilitate the inclusion of disabled people. The proposed reforms will allow educational establishments to use materials to illustrate teaching through digital tools and in online courses across borders.
The third priority is where much of the criticism against these proposals is directed. The reforms would reinforce the position of rights holders to negotiate and be remunerated for online exploitation of their content on video-sharing platforms such as YouTube. These platforms will now have an obligation to deploy effective means such as the ContentID system already employed by YouTube.
Further, the European Commission would implement a ‘link right’ to address issues of effected advertising revenues for newspapers, magazines and other press publications, similar to the rights afforded to movie producers and record producers.
Free and open internet
For Mozilla, the proposed changes to copyright from the European Commission were a far cry from their suggestions. Mozilla said that the proposal was “inadequate” and “thoroughly misses the goal to deliver a modern reform that would unlock creativity and innovation in the single market”.
Denelle Dixon-Thayer, chief legal and business officer at Mozilla, calls the reforms “more of a regression than the reform we need to support European businesses and internet users”.
Dixon-Thayer says that the proposals would lead to “an internet with less content creation, less sharing, fewer start-ups, and more limited access to information and knowledge”.
“We are disappointed that rather than harnessing the opportunities that technology offers, these proposals would bring us backwards,” Dixon-Thayer says.
Barney Dixon reports
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§§ QQuuaalliittyy || PPrrooffeessssiioonn || EEnntthhuussiiaassmm §§ FFooccuuss Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition Licensing, Counseling, Litigation, Transaction
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10
According to Dixon-Thayer, the proposals will create an environment of “legal uncertainty” for online users and businesses that will block speech and innovation online, creating unnecessary barriers of entry for small businesses.
However, she conceded that the proposals aren’t entirely negative and provided “some exceptions for education and preservation of cultural heritage”.
But the new exceptions for text and data mining that would advance EU competitiveness and research is limited only to public interest research institutions and as such could “ultimately restrict, rather than accelerate, text and data mining to unlock research and innovation across sectors throughout Europe”.
She says: “These exceptions are far from sufficient. There are no exceptions for panorama, parody, or remixing.”
Further, Dixon-Thayer says that the proposals do not provide any flexibility to the copyright system, which, in Mozilla’s earlier calls for change, was a key focal point. In its suggestions for copyright reform, Mozilla asked that the commission ensure the proposals were “future-proof”.
Dixon-Thayer adds: “Technology advances at a rapid pace, and laws can’t always keep up. That’s why in order for our laws to remain relevant in five, 10 or even 20 years, we need to build in the necessary flexibility to ensure that we won’t have to go back to the drawing board every time a new innovative technology is developed.”
“We regret that provisions which would add needed flexibility to the copyright system—such as a flexible user clause like an open norm, fair dealing or fair use or a clearly defined alternative like Canada’s ‘UGC exception’ that would allow non-commercial transformations of works (such as memes, gifs and remixing)—have not been included.”
Reforms that don’t perform
Dixon-Thayer’s assertions of disappointment are even more evident when looking at Mozilla’s responses to the consultations, which argued that the root of the internet’s socioeconomic benefits were its “open horizontal architecture” that allows for anyone to share their views and knowledge on an unprecedented scale. Mozilla describes the reforms as a “barrier to entry to a great global conversation that would not only have been detrimental to the internet’s development had it been enacted in the past, but it would curtail and significantly stifle future uses of this medium—both from the perspective of internet users and of small publishing businesses”.
Dixon-Thayer says: “Copyright law is, ostensibly, designed and intended to advance a range of beneficial goals, such as promoting the arts, growing the economy, and making progress in scientific endeavour.”
“Maximalist protection policies and draconian enforcement benefit the few and not the many, hindering rather than helping these policy goals. For copyright law to enhance creativity, innovation and competition, and ultimately to benefit the public good, we must recognise the plurality and complexity of actors in the digital ecosystem, who can be at once IP rights holders, creators and consumers.”
“Mozilla is an example of this complex rights holder stakeholder. As a technology company, a non-profit foundation, and a global community, we hold copyright, trademarks, and other exclusive rights. Yet, in the pursuit of our mission, we’ve also championed open license to share our works with others. Through this, we see an opportunity to harness intellectual property to promote openness, competition and participation in the internet economy.”
While the proposals are concerning for companies such as Mozilla, changes may be made later on down the line and tweaking can be achieved. Mozilla says that it is up to the European Parliament and EU member states to look at the proposals and make amendments—corporations such as Mozilla will no longer have an official capacity to contribute to the debate.
Looking to the future
Despite the challenges, Mozilla’s claims endure and it has, in fact, continued its fight against the reforms with a tongue in cheek movement that asks people to send a “rebellious selfie” to the European Parliament.
The blog post on Mozilla’s website reads: “We are asking everyone reading this post to take a rebellious selfie and send that doctored snapshot to EU Parliament. Seem ridiculous? So is an outdated law that bans taking and sharing selfies in front of the Eiffel Tower at night in Paris, or in front of the Little Mermaid in Copenhagen.”
“Of course, no one is actually going to jail for subversive selfies. But the technical illegality of such a basic online act underscore the grave shortcoming in the EU’s latest proposal on copyright reform.”
It is clear that Mozilla will not give up on its mission. Dixon-Thayer says that Mozilla is looking forward to working with EU institutions to “forge a modern copyright reform that adequately reflects how content, culture, and knowledge is accessed, remixed, and shared in today’s digital world”. IPPro
Mozilla Exclusive
Maximalist protection policies and draconian enforcement benefit the few and not the many, hindering rather than helping these policy goals
12 13
What are some of the big issues affecting British businesses’ intellectual property assets in China?
There are two frequently reported problems that the China-Britain Business Council (CBBC) deals with. The first is the registration of UK companies’ trademarks including logos and company names, which are then used by third parties to make similar goods, or are offered to the UK company for sale.
The British Embassy and CBBC are working with Chinese authorities on how laws can be updated to better protect British companies IP rights, and also to help companies understand what the laws are in China and how to utilise them effectively.
Secondly, the advertising and sale of copied designs or counterfeit goods in markets most frequently is online marketplaces such as ecommerce platforms or social media. Other issues include pirated works such as books, music, film and TV shows, and the exchange of companies’ internal proprietary documentation on cloud servers and document sharing sites. Much of this type of activity happens online because it provides a level of secrecy and anonymity to the sellers that isn’t possible offline.
What have the CBBC and WeChat owner Tencent agreed in the new memorandum of understanding? How will the agreement be implemented?
The agreement covers many areas of cooperation, of which a number have been made public:
● All parties emphasise the importance of intellectual protection, and the positive step of creating the WeChat Brand Protection Platform;
● Facilitation of CBBC and International Publishers Copyright Protection Coalition in China (IPCC) members to better utilise Tencent’s IP protection systems;
● An ‘express channel’ will be set up to prioritise the needs of CBBC and IPCC members within mainland China; and
● Stated ambitions around the development of enhanced IP protection mechanisms.
The WeChat Brand Protection Platform is a portal whereby brands can make complaints about IP infringing products, which are being
advertised by third-party users for sale via the WeChat platform. If there has been an infringement of an IP right exclusively owned by the complainant, then Weixin will remove the listing and or revoke the user’s right to operate the account.
There is also an innovative mechanism whereby consumer complaints are sent directly to rights owners for them to verify if the product advertised is IP infringing or not prior to removal.
It’s important that ecommerce and social media platforms have systems such as this (usually known as notice and takedown systems), and that they evolve over time.
CBBC welcomes the development of such systems, and hopes that by encouraging companies to use the systems then we can provide a feedback mechanism that can help Tencent to continually improve its operation.
And as part of the cooperation, the express channel will be a way of expediting CBBC and IPCC members’ requests for takedowns of infringing products, while we provide Tencent with constructive feedback on how it’s working.
Other areas of cooperation include:
● The parties will work together to explore offline cooperation with law enforcement agencies;
● Support will be provided to Tencent for any construction and improvement of technical and legal measures; and
● Regular meetings will be held to discuss systemic improvements on IP protection.
CBBC will be supporting Tencent and British brands in the pursuit of criminals (in accordance with Chinese law) that use online platforms for sale of illicit goods such as counterfeits.
There are some technical and legal issues around the gathering of electronic evidence and cross-border enforcement, which will need to be worked out through dialogue and cooperation.
Dialogue is an important aspect of any cooperation agreement, so we’ll be holding regular meetings with Tencent on behalf of British industry and together with UK brand owners in the coming months.
The China-Britain Business Council and the owner of WeChat have recently signed a memorandum of understanding to do more in the fight against infringement. Michael Ryan, director and head of business environment and intellectual property at CBBC, explains plans to implement the deal
A cup of tea and a WeChat
China UpdateBarney Dixon reports
12 13
How successful has the agreement between CBBC and Alibaba Group been? What has it entailed?
The CBBC-Alibaba Group agreement on IP protection since 2014 has been hailed as a success by both UK industry and government, so we’re keen to emulate it across internet companies in China more broadly. Alibaba and CBBC meet almost every month to have in-depth discussions together with British brand owners about IP protection, or to provide training or sharing on best practices for online IP enforcement. One area we’ve made real headway with is with offline IP enforcement (catching criminals). CBBC supported a project together with Alibaba’s investigations team and leading British engine lubricant producers in 2015 where we uncovered a network of counterfeit manufacturers, distributors and sellers across six provinces. It led to 22 arrests and the confiscation of RMB 120 million ($17 million) worth of oils, which was the largest enforcement by Alibaba in 2015.
This year Alibaba and CBBC have got an even bigger enforcement project ongoing regarding the trade in counterfeits between China and Southeast Asia. These enforcements send a strong message to infringers and would be criminals to think twice before using online platforms to sell counterfeit goods. The UK IP minister, Baroness Neville-Rolfe said at the UK-China IP Symposium: “The Alibaba-CBBC IP agreement has improved the global ecommerce environment, making it safer for consumers and the small businesses that use Alibaba sites as part of their supply chain.”
What is CBBC working on in this area for the future?
CBBC is continuing and broadening the scope of our cooperation with Alibaba this year, and we’ll be looking to use our Tencent agreement as a springboard for IP protection collaboration regarding WeChat too.
We’re also having less formal discussions with business-to-consumer ecommerce platforms such as JD.com and Suning.com, which is a different situation in terms of IP protection issues because there are more restrictions for sellers. And we’re talking with search engine Baidu about copyright protection, including in support of a cooperation agreement that it has with CBBC’s close partner, the IPCC.
We’re also working with the UK government and British brands on trying to disrupt trade links in counterfeit goods between China and Southeast Asia. Note that Southeast Asia is rising as an exporter and China has been rising in terms of consumer buying power, so we’re starting to track the flow of counterfeit goods being imported into China in addition to combating traditional flow of exports from China.
CBBC will also be supporting UK government work in bilateral IP events, such as the annual UK-China IP Symposium, and important governmental visits going from China to the UK, or from the UK to China. IPPro
Michael Ryan, Director and head of business environment and IP, China-Britain Business Council
China Update
JD.com and Suning.com are a different situation in terms of IP protection issues because there are more restrictions for sellers
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When dealing with intellectual property rights enforcement, taking abrupt action is often essential to ensure a product or trademark isn’t infringed in a way that is detrimental to the copyright owner.
There are of course, other, more customer-focused rights enforcement techniques that ensure trademark and copyright owners can responsibly enforce their rights, without lawsuits.
Allisen Pawlently-Altman, former Amazon corporate counsel and new partner at Kilpatrick Townsend & Stockton, has worked closely with client-focused teams for global consumer products, entertainment, media and hospitality brands.
During her role at Amazon, Pawlently-Altman led the in-house team responsible for all IP enforcement the original content business.
She regularly advised business leadership on customer-focused rights enforcement, and still believes that these types of enforcement actions can sometimes accomplish a lot more than others.
“It all depends on the type of infringement and the sophistication of the other party,” she says.
“I’ve dealt with many cases where the infringing party wasn’t necessarily acting in bad faith and perhaps simply didn’t realise they were doing anything illegal. In those cases, a light-touch informative conversation can accomplish a lot more than a traditional law firm ‘nastygram’ or impersonal take-down notice.”
“Plus, it can help to educate would-be infringers and maintain a tone of civility in enforcement matters. Rights holders need to walk a fine line between protecting their content and nurturing a vibrant and enthusiastic fan base.”
Corynne McSherry, legal director at the Electronic Frontier Foundation (EFF), notes that rights holders can be “smart and strategic ... they can make sure to take care that they understand the limits of their rights”.
“If you aren’t happy with how someone is using your mark, make sure the use is really infringing. Is it protected by fair use or the first amendment? Don’t wait until your target raises the issue, consider whether this is a real threat worth pursuing. Many trademark owners have the mistaken notion that if they don’t go after every use they lose their rights. This is not true.”
McSherry doesn’t believe that everyone who infringes should be called an ‘infringer’. “Often, someone is using content and may or may not be infringing depending on the circumstance—a rights holder may see that person as an infringer, but a court might see it differently,” she says.
“As I see it, users of all stripes and rights holders of all stripes need education so infringement doesn’t happen and if it does, it gets an appropriate response.”
As legal director of the EFF, McSherry has dealt with various instances of rights enforcement and defended and testified in the Digital Millennium Copyright Act (DMCA) disputes.
One of highest profile cases McSherry has been involved in is the infamous ‘Dancing Baby’ YouTube copyright case. It has gone all the way to the Supreme Court, which could consider the appeal.
The argument against infringement, in this case, was that the Dancing Baby video was covered by fair use and that “rights holders who force down videos and other online content for alleged infringement—based on nothing more than an unreasonable hunch, or subjective criteria they simply made up—must be held accountable,” wrote McSherry in a petition on the case.
McSherry says that in most cases, fair use is not complicated. “Many uses are clearly fair, and many are clearly not.”
“There’s a relative small area where it can be complicated, but we shouldn’t over-state it.”
“That said, of course the internet and new technology has made it easier for folks to recontextualise, comment on, and share creative works. It makes fair use more important than ever, because it has become the underpinning for an explosion of creativity.”
According to McSherry, legal threats based on fair use, or use of materials in the public domain may not be necessary.
“Sometimes an issue can be resolved with a phone call. Sometimes we have to go to court.”
“The difficulty is that our clients tend to be folks who cannot afford legal counsel and feel intimidated by the process.”
“There aren’t a lot of pro bono IP lawyers out there to help them navigate it. So we try to encourage content holders to be more careful about where and how they invoke their copyrights, so improper take-downs and threats are rare.”
“Right now they are still far too common,” according to McSherry.
Pawlently-Altman and McSherry coalesce in the opinion that fair, customer-focused rights enforcements fits the current internet environment better than the ‘notice-and-takedown’ systems of the DMCA, but it is clear that there is still a long way to go in terms of educating both rights holders and users.
As positive and creative aspects of fair use, such as fan fiction or game modifications, become more prevalent in society, enforcement actions will need to be updated, or they will only face continued criticism from those who wish to create a more user-oriented online society.
Until then, when it comes to rights enforcement, legal counsel and representatives might opt for a more measured approach. IPPro
A light-touch informative conversation can accomplish a lot more than a traditional law firm ‘nastygram’ or impersonal take-down notice
You have the right to remain responsible
Barney Dixon reports Enforcement Challenges
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A top Serbian court recently added the weight of its authority to an expansive interpretation of the right to republish photographs of current events without seeking permission from the copyright owner.
The Appellate Court in Belgrade overturned the first instance judgement of the Belgrade High Court, ruling that the defendant did not infringe the plaintiff’s copyright by republishing online a photo pertaining to a car accident.
The photo showed the scene of the accident and was taken a few minutes after the event.
The judgement of the Appellate Court in Belgrade, dated 11 May 2016, might effectively become a precedent at least from the perspective of the judges of the High Court in Belgrade, the court which hears most copyright cases in Serbia. But the course taken by the Appellate Court is not an obvious one to follow, as the statutory text and past case law may be reasonably interpreted as recommending a more restrictive interpretation of the current events exception.
The relevant statutory provision—Article 43 of the Copyright Act (2009)—reads in the relevant part: “In the scope of informing the public with the means of the press, radio, television, and other media, it shall be permissible, without the author’s permission and without paying remuneration … to make copies of published works which appear as an integral part of a current event about which the public is being informed”.
The provision seems to posit in rather unequivocal terms that, if a copy of a published work is to be lawfully made, the work itself—as opposed to the work’s theme—needs to appear as an integral part of the event about which the maker of the copy informs the public. If so, a photo showing the site of the car incident (the current event) could not be lawfully reproduced in an article about the incident,
because, under common interpretation, the photo is not an integral part of the incident. In contrast, the same photo could be lawfully reproduced to illustrate a journalistic report about a photo exhibition of which the photo makes part.
Article 43 of the Copyright Act was present in the same form in the two previous copyright acts, from 1998 and 2005. The lawmaker has likely introduced the provision in the Serbian legislation in order to transpose Article 10bis(2) of the Berne Convention into the national law. Under Article 10bis(2), member countries shall “determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public”.
The World IP Organization Guide to the Berne Convention explains that “examples of works seen in the course of an event are a statue unveiled or pictures shown at the opening of an exhibition” (while “music performed during a ceremony would be an example of a work heard”).
Along these lines, the Belgrade High Court and the Appellate Court in Belgrade have usually rejected the arguments by the defendants that their use of photos, without the authorisation of the copyright owners, was lawful because the photos were used within the context of reporting about current events. In one such case, Marija Cvetković v Novosti AD, the Appellate Court said in a judgement of 21 August 2013 that reproduction of a photo of a well-known violin player surrounded by children was unlawful, because the article published on the defendant’s website neither related to a photo exhibition, nor it had in some other way the photo as the subject matter. The ‘current events’ exception was therefore inapplicable.
Bogdan Ivanišević, Partner, BDK Advokati
If a copy of a published work is to be lawfully made, the work itself needs to appear as an integral part of the event
A court’s interpretation of the current events exception in Radosavljević is creative, write Bogdan Ivanišević and Marko Popović of BDK Advokati
An event-full photo
Serbia Copyright
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The same court, however, hinted even before its most recent exploration of the boundaries of the current events exception that it might expand those boundaries significantly. In a judgement from May 2013, in the case Slavoljub Radojević v Novosti AD, the Appellate Court confirmed the judgement of the High Court in Belgrade to the effect that the plaintiff’s photo—showing a panoramic view of the city of Kragujevac—did not constitute an integral part of the current event about which the public was being informed. The current event was a violent crime committed in Kragujevac. The court explained that the photo was not an integral part of the current event because it “neither shows the site of the event, nor is in any other way related to the case at issue, apart from showing the city of Kragujevac, in which the case at issue occurred”.
It followed from that wording that, had the photo shown the actual site of the event, or—particularly—had the photo captured the criminal event itself, the defendant using the photo could successfully invoke the current event exception to copyright infringement. The defendant newspaper lost because the link between the republished photo (city panorama) and the crime reported about was not strong enough.
Three years later, in a case in which Radiodifuzno preduzeće 021 was sued for republishing on its internet site 021.rs a photo authored by Nebojša Radosavljević, the Appellate Court fully developed what it had hinted at in Slavoljub Radojević v Novosti AD.
In Radosavljević, the more recent of the two cases, the plaintiff snapped the photo Plavi BMW on the spot where the traffic accident had occurred a few minutes earlier. The Appellate Court concluded that Plavi BMW photo was an integral part of the event about which the defendant informed the public. A key factor in the analysis was the fact that the photo was shot on the very spot of the car accident, only several minutes after the accident. There was a strong link between the photo published by the defendant and the event the defendant reported about.
As a result of its analysis, the court determined that the defendant had the right to make copies of the photo and to make such copy available to the public, by wire or wireless means, in such a way that individuals may access the work from a place and at a time they chose, without the author’s permission and without paying remuneration.
Courts in Serbia almost never explicitly refer to other judgements of relevance to the issue, so the Appellate Court did not compare the facts and legal reasoning in Radosavljević against those in Radojević three years earlier. Had the court done so, it could have pointed to the fundamental difference between the two cases: in Radojević, the plaintiff’s photo did not show the specific location of the event (the violent crime) and was taken at the moment of time that was not related to the timing of the event.
The Appellate Court’s interpretation of the current events exception in Radosavljević is creative and adds a dash of freshness to the otherwise unexciting case law in Serbia on copyright in photographs.
At the same time, one wonders whether the court’s interpretation can be reconciled with the wording of the Copyright Act (Article 43). That provision says that, for copies of a published work to be lawfully made, the work itself needs to appear as an integral part of the event reported about. It is not obvious that the photo taken during the event or in its immediate aftermath is an integral part of the event itself.
On the other hand, the expansive interpretation advanced by the Appellate Court in Radosavljević is in line with the thrust of the provision in the EU Copyright Directive 2001/29/EC, which allows member states to provide for exception to infringement of exclusive economic rights in the case of use of a work by the media, as long as “the use of works or other subject matter [is] in connection with the reporting of current events, to the extent justified by the informatory purpose” (Article 5.3(c)). IPPro
Marko Popović, Associate, BDK Advokati
There was a strong link between the photo published by the defendant and the event the defendant reported about
Serbia Copyright
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In this case, ITC Limited took Britannia Industries to court over the violation of packaging/trade dress rights. ITC sought to permanently injunct Britannia from violating these rights.
ITC launched a new biscuit called ‘Sunfeast Farmlite Digestive - All Good’ in February 2016. The packaging consisted of a combination of the colours yellow and blue.
Britannia launched a similar biscuit under the name Nutri Choice Digestive Zero a few months later (July 2016).
The packaging of this product was also done in yellow and blue. The parties to this suit have previously been entangled in legal wrangles.
Britannia had filed a complaint against ITC before the Advertising Standards Council of India (ASCI).
In the present case, Britannia offered to replace the blue colour in its packaging with another shade of blue, but this was deemed unacceptable by ITC.
Britannia stated that the colour blue was an integral part of its packaging, as it supposedly reflects World Diabetes Day.
As there was no consensus between the parties regarding the issues at hand, the suit went to trial on 2 September 2016.
Plaintiff’s submissions
ITC asserted three unique and distinctive features of its packaging:
● The brand name ‘Sunfeast’ was written on the top-left hand side of the label on the yellow portion with the trademark ‘Farmlite’ underneath it, along with the mark ‘Digestive - All Good’ situated below ‘Farmlite’.
● The colour scheme used in the trade dress was yellow and blue. The left part of the packaging was in a yellow background and the right side of the packaging was in blue, and both colours were separated by a curved line.
● The picture of the biscuits appeared on the right-front side of the label, which was depicted with a wheat spike/sheaf of wheat with grains lying at the bottom of an individual wheat biscuit with the words ‘No Added Sugar/Maida’ written on the biscuit in a bold white font. The words ‘Sugar’ and ‘Maida’ were separated by a white horizontal dividing line between the two words.
ITC averred that Britannia had copied various elements of its trade dress, including the colour combination.
ITC also submitted that the trade channels were identical and in furtherance to that also submitted sales, revenue and advertising figures to substantiate its claims.
Lucy Rana, Managing associate advocate, SS Rana & Co
It was held that the defendant’s packaging was deceptively similar to that of the plaintiff’s product
The Delhi High Court has granted an interim injunction against Britannia for deceptively similar packaging. Lucy Rana and Bijit Das of SS Rana & Co report
Delhi High Court takes a bite out of Britannia
India Trademarks
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Defendant’s submissions
Britannia claimed that it held 66 percent of the market share, whereas ITC had a meagre 1.8 percent. Britannia also averred that the predominant colour of the packaging of its product was yellow, and that blue is merely a secondary colour used to indicate a connection to diabetes. Britannia stated that while there might have been a similarity between the two packagings, when viewed as a whole there was no case made for passing off. To that end, the defendant distinguished its packaging as follows:
● The word ‘Britannia’ itself appeared prominently against a red background in one corner of the impugned packaging.
● The words ‘Nutri Choice’ featured prominently in its packaging, and the same was not present in ITC’s packaging.
● That the shades of blue and yellow used in the impugned packaging were different from that of the plaintiff’s.
Britannia averred that a distinction had to be drawn between an action for infringement and an action for passing off. It claimed that the three essentials of passing off (establishing goodwill, demonstrating misrepresentation the to public, and establishing the loss suffered) were not demonstrated by ITC. Britannia further averred that colour per se was not an element of distinctiveness for identifying the source of the products. It was also averred that ITC failed to establish distinctiveness and secondary meaning with respect of its packaging.
The difference between infringement and passing off
The court referred to the landmark judgement of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories to elucidate on this issue—the difference being that the use by the defendant of the trademark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.
The elements of passing off
With regard to this issue, the court referred to the landmark judgement of the House of Lords in Reckitt & Colman Products v Borden, in which the elements of passing off were definitively outlined as: establishing goodwill; demonstrating misrepresentation by the defendant to public; and establishing the loss suffered.
The court’s decision
The court observed that the sales and turnover figures submitted by ITC in support of its claims were a significant factor while examining the reputation of the plaintiff’s product.
The court also opined that secondary meaning or distinctiveness can be acquired in a short span of time.
Even more so for eatables. It also observed that with respect to eatables such as biscuits, the colour scheme of the packaging plays an important role in the consumer making an initial choice and in enabling a discerning consumer to locate the particular brand of a manufacturer.
It was held that the defendant’s packaging was deceptively similar to that of the plaintiff’s product, and that the three elements of passing off are fulfilled in the present case. As per the court’s reasoning, the balance of convenience is in favour of ITC, and that granting an interim injunction would cause far less damage to Britannia as its product has been in the market for only two months. The court thereby granted an interim injunction, and restrained Britannia from using any variant of color blue in the packaging. But the court allowed Britannia to use any other distinctive colour instead, or to use the same packaging as used in the international markets for the same product. IPPro
Bijit Das, Associate advocate, SS Rana & Co
The balance of convenience is in favour of ITC, and granting an interim injunction would cause far less damage to Britannia
India Trademarks
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Internationalised domain names (IDNs) give people around the world the ability to access websites using their local language. It is estimated that there were around 400 million internet users in 2000. By 2020, there could be more than five billion people with access. The introduction of IDNs ensures that all language scripts are catered for in this brave new world of online activity. Unfortunately, this development has made the monitoring of domain names and trademarks a great deal more difficult for intellectual property rights owners.
To understand the importance of watching IDNs, it’s necessary to understand exactly what they are, and why they are needed.
What is an internationalised domain name?
The IDN was created to allow people from around the world to access domain names in their native language. Before it was introduced in 2009, everyone was forced to access domains in Latin script. Now, however, domains can be accessed using Cyrillic, Chinese, Russian and Arabic scripts.
There are already millions of non-Latin domain names on the internet, and the number is increasing all the time. While this ensures the online world is completely multilingual and fair, it poses a problem for trademark and IP owners.
While many companies have implemented sophisticated monitoring services to ensure their trademarks and domain names aren’t abused, not all of these services are capable of monitoring non-Latin characters.
The number of IDNs is expected to soar in the coming years
The Internet Corporation for Assigned Names and Numbers (ICANN) began accepting new extensions to non-Latin domain names in 2014, including unique extensions in Cyrillic, Chinese and Arabic. There are now several different panels per country regulating these extensions and establishing labelling guidelines. Countries can now make their own applications for domain name extensions in non-Latin characters, which is resulting in an explosion of new domain names that can’t be monitored by out-of-date IP portfolio management tools.
Since IDNs were introduced, many monitoring tools already in the marketplace have been rendered obsolete. And because IDNs are registered in an encrypted form, specialised tools and monitoring systems are required. IPzen’s Non-Latin Character Domain Name Watch is such a tool, and is exceptionally easy to implement.
Domain name monitoring
From the moment IDNs were introduced, domain name monitoring became a more complex process. In order to protect the interests of IP rights owners, systems need to monitor existing and new registrations for infringements against trademarks. The number of potential extensions now runs into the thousands, and it is expected to grow significantly over the course of the next decade - making the process of monitoring more complex and time-consuming.
This sophisticated monitoring tool allows IP lawyers and their clients to protect and enforce their brand rights. You can detect potential
Don’t stray from the non-Latin scriptIt is vital for IP rights owners that their trademarks and brands are being monitored and protected at all times. IPzen’s Ava Kammer explains
Domain Names
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infringements as they occur—in any language. This powerful monitoring tool then allows you to prioritise results and take action where necessary.
Constant watches are essential
The number of online fraudsters is on the rise and their methods are constantly evolving in order to avoid detection. It is vital for IP rights owners that their trademarks and brand are being monitored and protected at all times. The monitoring of non-Latin trademarks across the internet is now an essential component of domain monitoring.
The issue of so-called cybersquatting is also on the rise, and it is costing companies billions. Cybersquatting is the registration and the use of a domain name with the intent of profiting from someone else’s trademark. In reality, this involves the registration of domain names that include trademarks. These domain names are then either sold for profit or used fraudulently.
The process of surveilling billions of domain names is now more complicated than ever—as a result of ICANN’s new policy of non-Latin extension registration.
IDN watches in practice
A company that relies heavily on its name and brand for sales is concerned that fraudsters are using its trademarks to sell counterfeit goods. An old monitoring tool is used to track trademark infringement, but it only recognises Latin script.
Infringers of IP are aware that their actions may be discovered in countries such as the UK, France, Germany and the US—all of which use Latin script in their domain names. Those criminals realise that moving their illegal operations to China, Russia or Iran will allow them to use non-Latin script to make use of a valuable trademark without detection. By subscribing to IPzen’s Non-Latin Character Domain Name Watch services, trademarks and the branding that are crucial to the commercial success of the business can be monitored anywhere in the world—in any language.
This scenario is one that has been affecting Western businesses more and more in recent years. Their valuable trademarks and IP rights are being exploited through the anonymity that non-Latin script offers. Until recently, the cost of monitoring domain names and taking action on a case-by-case basis was prohibitive. This only encouraged the fraudsters to widen their illegal activity in certain countries. But the advent of IP management tools such as IPzen has changed all that. Protecting trademarks and brands is now cost-effective, easy and continuous.
Domain names are hugely precious commodities for 21st century businesses. The internet is still growing rapidly, which makes it easily the world’s biggest marketplace. Unfortunately, the Internet’s dominance makes it very attractive to fraudsters. Names, slogans and brand identities are now more valuable than ever, which means companies are now doing more to protect them from being abused and misused.
There are now more websites using Chinese, Russian and Japanese content than are using Latin-script languages such as English. It is therefore imperative that companies take steps to protect their trademarks and brands worldwide. Implementing IPzen’s Non-Latin Character Domain Name watch service will ensure that you are doing everything within your power to protect your trademark.
Protect your trademarks with IPzen’s new non-Latin character IDN monitoring tool
IPzen’s Non-Latin Character Domain Name Watch service monitors non-Latin scripts, including Chinese, Cyrillic and Arabic. This powerful tool constantly monitors non-Latin trademarks around the world, and tracks potential cybersquatters. A total of 84 IDN gTLDs and 52 IDN country code TLDs are covered. So wherever in the world fraudsters are operating, you can be sure that your IP rights are being protected.
IPzen’s non-Latin IDN monitoring tool also provides automated detection of similar and identical TLDs. The frequency of monitoring and detection is configurable, and a range of reports ensures that the very latest information on your domain names and trademarks is always at hand.
Monitoring domain names and trademarks that use non-Latin script is now easier than ever. Results are available via an easy-to-use platform. This cloud-based software ensures people can access the very latest data from anywhere in the world. Data from non-Latin character domain name watches can be easily integrated with other monitoring services, including social media watches, mobile app watches, Google AdWords watches and standard domain name watch services.
By subscribing to IPzen Watch Service Plus+, you can save both time and money. The IPzen team will filter and analyse all your watch services and deliver the results based on criteria defined by you. This means your trademarks and domain names will be monitored on an ongoing basis around the world—with minimal input required from or your colleagues.
IPzen is an intellectual property management system that takes all the hard work out of protection and enforcement. You can see it in action for yourself by signing up for an online demonstration today. IPPro
Ava Kammer, Business development and operations manager, IPzen
Until recently, the cost of monitoring domain names and taking action on a case-by-case basis was prohibitive. This only encouraged the fraudsters to widen their illegal activity
Domain Names
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In Brazil, three-dimensional trademarks are those that are recognised by the shape of a product or the packaging that covers it. Classic examples are Toblerone chocolate, Yakult and the original Coca-Cola bottle. It has been frequently discussed, including in Brazil, as to whether a possible technical effect present in the shape of the product or in its packaging would invalidate this shape as a 3D trademark.
In its Manual of Trademarks, the Brazilian Patent and Trademark Office (BPTO) declares that “to be registrable, the distinctive three-dimensional shape of a product or service should be dissociated from the technical effect.”
With all due respect, we do not agree with this position. We consider that any potential technical effect existing in the shape of a product does not remove any possible distinctive character from this visual perspective.
3D trademarks are those that are recognised by the public from the actual shape of the product. In other words, they are marks that are immediately identifiable by the consumer just from the design of the product, without any need of any other element or distinctive mark in their make-up. Therefore, if the shape of a product fulfills this function (distinctiveness), it is our understanding that there can be no reason to forbid or prohibit its registration as a 3D trademark.
Recently, one of our clients requested, in some countries, the registration as a 3D trademark of the shape of its latest model of a hermetic compressor for refrigeration. It is important to clarify that the design of the respective product is absolutely innovative and completely different from the shape, design or common form of this product in the market. Hermetic compressors typically have conventional rounded shapes similar to a globe, as occurs with our client’s other models.
There can be no doubt that when the consumer encounters the original design of our client’s product he will recognise it, identifying moreover its origin or source. It is a highly innovative shape and totally different from the conventional designs still used by its competitors for the same product. The registration application for this 3D trademark is still awaiting examination by the BPTO in Brazil. However, in France, the application was rejected by the local trademark office in a first examination of the merits.
Issued in mid-March 2014, the decision of provisional refusal was a major surprise. It was based on the examiner’s understanding that the trademark should be considered devoid of distinctive character because it represents the actual image of the product that it intends to protect and is therefore incapable of performing the function of designating its origin. On researching the jurisprudence in France, we noticed that this type of decision was common there and that the chances of a reversal were low. Claims for 3D trademarks are rarely made in the country and therefore the principle of the 3D trademark is rarely explored by doctrine or jurisprudence.
As a result, at appellate level, our office consequently spared no effort in seeking support in order to convince the French examiner that the shape of the client’s product differed significantly from the shape generally used for this product in the market. A large amount
of documentation was attached to the appeal demonstrating the conventional and usual shapes used by its competitors in their hermetic compressors.
Accordingly, it was argued that the registration application for the client’s 3D trademark was in complete harmony with that set out in Article 711-1 of the French law of trademarks, which established that a trademark of a product or service can be considered a mark capable of graphic representation in the following terms: “Figurative marks such as: labels, seals, selvedges, embossments, holograms, logotypes, synthesised images; shapes, particularly those of a product or its packaging or those that identify a service; arrangements, combinations or tonalities of colour”.
If French law admits the shape of a product for registration as a trademark, it does not make any sense to refuse or reject an application for a 3D trademark based on the foundation that the trademark should be considered devoid of distinctive character because it represents the actual image of the product. Therefore, the decision to reject the registration previously issued by the French trademark office was at odds with the local rule. However, fortunately the appeal against the rejection presented to the French trademark office was granted and the registration application of the client’s 3D trademark was approved, resulting in a significantly useful administrative jurisprudence.
For us, in Brazil, the case is of interest and contributes to removing a certain resistance that we also feel when trying to obtain protection for the shape of products or their packaging as 3D trademarks. The Brazilian legislation is very similar to the French.
It is necessary to remove barriers for the protection of shapes that have sufficient distinctiveness as 3D trademarks in Brazil and other locations, even if they are associated with a technical effect. There is an opening here for double protection: one for the shape of the product as a 3D trademark and another for the technical effect by means of patent. IPPro
Available in 3DPartner Fábio Leme and associate Nelsa Barroso of Daniel Advogados compare the registration process of 3D trademarks in Brazil and France
3D Trademarks
Nelsa Barroso Associate Daniel Advogados
Fábio Leme Partner
Daniel Advogados
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bNamed net.www.bNamed.net
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Joe AlagnaVice president, channel development
101domain
The International Trademark Association held its Trademark Administrators and Practitioners (TMAP) Meeting from 14 to 16 September this year. Washington DC made a beautiful backdrop to the event providing excellent restaurants and sightseeing venues for attendees and vendors to enjoy in their down time. The meeting venue was the Washington Hilton located in the middle of all the action.
More than 400 participants attended, mostly from North America, however, 30 percent of the attendees came from South America, Europe, and Asia. According to Ken King, INTA’s exhibit and sponsorship coordinator, this was the association’s biggest TMAP event to date.
TMAP is different to INTA’s larger annual conference. The atmosphere is more intimate, allowing attendees to network closely, mingle with solution providers and vendors, and mostly, to learn from the expert sessions provided. There is more focus on trademarks rather than patents and attendees titles include attorneys, paralegals and trademark managers. Many attendees used the opportunity to build their Continuing Legal Education (CLE) and Continuing Professional Development (CDP) points.
A new feature this year was table topics. It was the first time that TMAP offered the opportunity and Thursday afternoon (15 September) was dedicated to them. Titles revealed topics such as ‘Universal Truths in Docketing’, ‘Geolocation and Trademark Infringement on the Internet’, and ‘How Copyright Can Enhance Brand Protection’. There were 21 table topics presented in all and it went very well. I’m sure this will become a tradition at TMAP in the same way it has at INTA’s larger annual conferences. This year’s meeting had some very useful new topics. On Thursday, after welcoming remarks and introductions, the first session began on ‘Technologies of Tomorrow’. This was a panel format moderated by Marc Trachtenberg of Greenberg Traurig. The other panellists were Amanda Conti-Duhaime of Ford Chrysler Automobiles US and Catherine Mennenga of General Electric Company.
Trachtenberg has done extensive research on 3D printing, a technology through which we can inexpensively create increasingly complex objects at the push of a button. During his presentation, he pointed out that even homes are being built using 3D printing machines. We asked him how large a 3D printer could get and he explained: “The 3D printer used to build that house was over 50 feet long and could print walls with plumbing systems embedded as part of the walls.” It was a fascinating discussion.
The other topic of the morning was that the internet of things (IoT). The IoT involves ever more complex connections online between smart machines and household objects. This technology is growing exponentially. Companies such as Nest Labs are networking smartphones with home thermostats, smoke detectors, and even webcams, and that’s just the beginning. The iOT is expanding to cars, refrigerators, washing machines, and storage units. This is creating a wealth of data and information to manage.
The afternoon discussion moderated by Shelagh Carnegie of Gowling WLG (Canada) was focused on global trademark prosecution. It was perfect for this audience as it included trademark practitioners from around the globe.
The keynote address was delivered by Tina Tchen, an assistant to the president and chief of staff to the First Lady, Michelle Obama. Her presentation included information on the work they are doing at the Council on Women and Girls. She did a good job of staying out of politics even though the US is in the middle of election season.
After lunch Jennifer Bollen of Expedia moderated a panel that discussed aspects of ‘Brand Management in the Context of Expanding Social Networks’. Panellists included Ali Buttars of Twitter, Karen Carlson of AOL, and Lindsay Kaplan of the law firm, Kilpatrick Townsend & Stockton.
They pointed out that in a world where communications can spread so rapidly, sometimes it’s just as important to ‘be nice’.
Trademark enforcement doesn’t have to begin with cease and desist letters. In fact, they mentioned that sometimes all you have to do is ask nicely. They talked about ways to handle fans on social networks, for example.
Fans can often be anxious to work with brands if they inadvertently make a mistake. It was a revealing and important discussion pushing forward the topic of handling your brand in social and viral world.
On Thursday evening, at least five groups of up to 15 people per group enjoyed dinner and networking together. INTA assigned several hosts to organise dinners at some of the nicest restaurants in Washington DC. These included the Bombay Club, the Capitol Hill Club and La Perla. If only we could go to them all! It was a great way to make new friends and learn things.
Our group included people from Procter & Gamble, Data Smart Services, Seiter IP Consultants, and several IP law firms. After dinner, we all went to a wonderful reception held by Corsearch.
On Friday (16 September), the first keynote was given by Amy Myers of Mars Global Services. She offered ideas for marketers and demonstrated why brands are so important to consumers. Other sessions included ‘Managing Domain Portfolios’, and ‘How to Run Contests, Sweepstakes and Giveaways’.
TMAP was a great success. Vendors and attendees agreed that it would be worth coming to again. IPPro
Putting trademarks on TMAPJoe Alagna of 101domain provides a round-up of a successful TMAP 2016
Conference Report
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The prior use right is accepted by the Turkish Patent Law and mentioned in Article 77 (Decree Law No: 551 for Patents) under the title of Rights Conferred by Prior Use.
It reads as follows: “The rights holder of a patent shall not have the right to prevent person or persons, who, in good faith, between the date of filing of the application and the date of priority, had worked the invention in Turkey or had made serious and effective preparations to work the said invention, from continuing to work the subject matter of the patent, in the same manner as before, or from commencing its working as of the preparations made to this effect.”
“However, third persons may continue working the subject matter of the patent, in the same manner as before, or commence its working as of the preparations made to this effect, only to the extent necessary for meeting the reasonable needs of their enterprise.”
“Such right to work the invention shall only be transferable with the enterprise.”
“The rights conferred by a patent within the meaning of Article 76 shall not extend to acts related to products put to sale by persons indicated in Paragraph one this present Article.”
The aim of the prior use right is to protect the persons having used the invention by acquiring the technical teaching of the invention and putting it into use in good faith without knowing the presence of the patent before the use.
In this regard, the prior use right is an exception and the protection granted by the patent does not extend to the right of the prior user.
The prior use right is only a relative right and not an absolute right, namely the holder of the prior use right can only use its right but cannot prevent anybody from using the same right.
In other words, the holder has only the right to use but not the right to prevent third parties from using patent.
The prior use right is limited to the use of the undertaking, namely the right can be transferred only with the undertaking itself and can be subject to the inheritance or pledge.
If the party having the right to use transfers the undertaking, it cannot take advantage of that right any longer.
This is also valid for partial transfer of the undertaking, which covers the invention subject to the patent.
There are three conditions of the right to use:
(i) The person claiming the right should possess the invention; (ii) The party should have started to use the invention in Turkey’s territory or have seriously and effectively taken preparations for using the invention; and
(iii) The party should be in good faith.
Concepts and requirements of prior use rights
Nature of the possession
The holder of the prior use right should acquire the invention by its own efforts and works, or by transfer from others. In this regard, the holder of the prior use right should be in possession of the invention directly or by transfer.
The invention subject to the possession of the prior user should be complete. In other words, any incomplete possession, for example, not yet achieving the inventive step, will not be considered as possessing the invention.
The holder of the prior use right should subjectively have the technical teaching of the invention in mind and should be able to objectively put the invention into practice.
The date of the use
The holder of the prior use right should have used and taken serious steps/measures to use the invention in Turkey before the application date or the priority date (if priority was claimed) of the patent/patent application.
In Turkish jurisdictions, Article 77 (Decree Law No: 551) refers to “the date between the application date and the priority date” to set the time where the invention was firstly used by the holder of the prior use right. However, the reference date/time interval as mentioned in Article 77 is contentious in Turkey. The reference date for starting the prior use or the existence of prior use should be construed as being “on the application date” or “on the priority date”, which can also be construed “before the application date” or “before the priority date”.
However, there are adverse opinions as to the reference date, which argues that the prior use right is a right granted between the application date and priority date as from the viewpoint of the literal commentary. The same approach has taken place in the recent patent law draft prepared by the Turkish Patent Institute.
We do not agree with the second opinion mentioning the reference date for use as “the date between the application date and the priority date” because of the fact that if any priority is not claimed, there is no possibility to claim the existence of prior use. Further, in the existence of the priority claim, any person using the patent before the priority date will not be able to take advantage of the prior use right. We do not consider that the lawmaker intended to restrict the date between the application and priority dates.
Nature of the use
The nature of “the use” is not very clear in the article. In view of the leading opinions in the law, we comment that the use implies the use of the invention in the undertaking of the prior use right holder for use or in any other undertaking but in the name of the holder for use.
The manufacturing of the product for sale, selling and marketing the product, or any product derived from the method subject to
It’s your right to useYeşim Metin of Destek Patent assesses prior use rights in Turkey
Patent Exceptions
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the patent, should be accepted as being the use. On the other hand, various resources in Turkey advise that any preparation for filing patent applications, making production for samples, making any preparations for licensing, obtaining authorisation from the governmental authorities, placing orders, and taking part in auctions, are not sufficient to claim the right of prior use.
Also, any discontinuation of the use voluntarily, or abandoning the use, will prevent the claim for prior use later.
Taken preparations for the prior use
The law does not define the scope of the serious preparation subject to the prior use.
Preparing the drawings and models, entering into contractual relationships, and purchasing machinery and equipment for production, should be accepted as being the use.
On the other hand, marketing research, experiments and laboratory studies should not be construed as being serious preparation for the use.
The place of prior use
The decree law is clear enough as to the place of the prior use. The prior use can be only argued where the use has taken place in Turkey. Thus, any use or preparation for use abroad will not be accepted for claiming prior use.
The good faith
The good faith is the requirement for claiming prior use. The party should be in good faith where it has obtained the invention subject to the patent.
Before the disclosure of the invention, any illegal or unfair obtainment of the invention from the patent holder, ie, by stealing, seizing or fraudulent action, will be considered as bad faith and therefore, it is not possible to claim prior use by acquiring it that way.
Also, it is not possible to the acquire prior use right after the inventor has disclosed the invention to the public before filing
a patent application. In Turkey, it is significant to note that anyone can file a patent application within 12 months after disclosing the invention, a grace period not affecting the novelty of the invention. Even though there is no case law or obvious explanation, it is argued that it would not be possible to claim prior use based on the disclosure of the invention during the 12-month grace period.
Content of the prior use right
The extent of the use
The law states that the prior use right is limited to the “reasonable needs of the undertaking”.
The word “reasonable” requires to be evaluated case by case. But, it implies that there should not be excessive use of the invention by the holder of the prior use right.
The undertaking should be considered as being united. For example, any plants, workshops or branches are considered the undertaking and therefore any production in the parts of the undertaking should be considered under the scope of the prior use. In other words, the prior use right cannot be limited to only one or specific parts of the undertaking (for example, hub of the company, the plant in a specific region of the company, and so on).
Any expansion of the undertaking, increasing of the production or changes in the kind of use will be acceptable in terms of the prior use.
Effect of the prior use right after sales
It is largely agreed that any activities as to the products put into sale by the prior use will be out of the scope of the patent rights.
Transfer of the prior use right
The prior use right is bound to the company and is transferable with the company only. If the company is transferred without a prior use right or the company is stopped and closed, the prior use right will come to an end. It is not possible to duplicate or split the prior use right. IPPro
Yeşim Metin, Senior patent and trademark attorney, Destek Patent
It is argued that it would not be possible to claim prior use based on the disclosure of the invention during the 12-month grace period
Patent Exceptions
30 31
The tug of war between the trademark and the company name is a conflict that occasionally surfaces. It was not until 2002 when the law seemingly introduced clarity in the issue. It stated that credit should be given to the name that emerged earlier. But controversies in this area still crop up once in awhile.
A trademark, ‘Delta-Neft’ (‘Delta-Oil’, No 281426) was registered by Agronefteproduct on 25 January 2005 with priority of 27 March 2003 for fuels and other goods and services. Aside from the above word combination, it also had a simple triangular orange figure with a concave base.
‘Delta LLC’ was registered in 1999 and its namesake is engaged in the construction and operation of gas stations and similar structures. Years later, Delta LLC filed an opposition against the registration of the trademark ‘Delta-Neft’. Russia’s Federal Service for Intellectual Property, better known as Rospatent, did not satisfy the opposition and kept the trademark in force. It proceeded from the fact that even though the word ‘neft’ (oil) per se is not eligible for protection, its presence in the trademark brings some additional distinguishing capability. The compared designations are not similar on the whole because there are additional word and graphic elements. Since registration of the trademark was made before 2008 (the year of adoption of Part IV of the Civil Code), the case was considered according to the Trademark Law of 2002, which included the seniority provision of trademarks and company names.
Delta LLC did not agree with the decision of Rospatent and appealed against it in court. Delta LLC argued that the exclusive right for the company name containing the word element ‘delta’ emerged from 1999 while the priority date of the contested trademark was in 2003. The IP Court compared the designations and came to the conclusion that the word designations ‘Delta’ and ‘Delta-Neft’ are
similar and are used on the same territory in respect of the same goods and services (sale of fuels and servicing of gas stations). It sent the case back to Rospatent, asking for a re-examination of the case with consideration for all circumstances, including additional evidence that had not been previously examined by Rospatent.
This time the owner of the trademark appealed against the judgment in the Presidium of the IP Court (cassation instance). The Presidium of the IP Court cancelled the judgement of the first instance IP Court and noted that the compared designations are not identical. They may be regarded as identical only if they coincide in all elements while the contested trademark includes the word element ‘neft’ (oil) and a graphic element absent in the company name. The court emphasised that the first instance court should have examined whether those means of individualisations were identical and not confusingly similar, as was opined by the first instance court.
Delta LLC did not agree with the conclusions of the Presidium of the IP Court and appealed against the judgement to the Division of Economic Disputes of the Supreme Court. Delta LLC relied on the information letter of the former Supreme Commercial Court, which had explained in 2007 that the use of not only an identical designation is unlawful, but so is the use of a confusingly similar designation by a third party. Article 10bis of the Paris Convention also forbids any action capable of misleading in any way.
The Division of Economic Disputes of the Supreme Court confirmed the conclusions of the Presidium of the IP Court in that a trademark may be cancelled if there is combination of three conditions:
(i) If there exist a means of individualisation with earlier priority;
(ii) The means of individualisation should be identical to the contested trademark; and
Russia Trademarks
When trademarks and company names clashVladimir Biriulin of Gorodissky & Partners explains how Russia’s court system effectively deals with trademark disputes
30 31
Vladimir Biriulin, Partner, Gorodissky & Partners
This case clearly shows that the carefully built court system in Russia allows conflicting parties to obtain an unbiased judgement
(iii) The means of individualisation should be registered in respect of the same goods and services. The court confirmed that only identity of means of individualisation should be taken into account.
However, it explained that the Presidium of the IP Court was not correct to conclude that the word designations ‘Delta’ and ‘Delta-Neft’ were not identical because there were additional word elements.
This conclusion was made in serious breach of the provisions of the material law. When comparing a combined trademark and a company name, the figurative part of the trademark should not be taken into account because the name of a company is always a word.
The first instance court correctly inferred that the word element ‘neft’(oil) in the contested trademark is not protected as such, the allegation that its presence in the trademark adds to its distinguishing capability is without base and is purely hypothetical.
The non-protected element ‘Neft’ points to a kind of goods, its use shall be allowed to all persons and this shall not be considered as infringement of anybody’s rights. Hence, the court of first instance correctly judged that the word element ‘delta’ of the contested trademark is identical to part of the ‘Delta’ company name. As a result the Division of Economic Disputes of the Supreme Court cancelled the judgements of the lower courts and held valid the judgement of the first instance court, cancelling the trademark ‘Delta-Neft’.
This case clearly shows that the carefully built court system in Russia allows conflicting parties to obtain an unbiased judgement in the long run.
It may take time and the case may take different turns, but the parties may be sure that all aspects of their case will be carefully considered and an objective decision will be taken. IPPro
Russia Trademarks
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IACC 2016 Fall ConferenceDate: 19-21 October 2016
Location: Arizona
The IACC’s Fall Conferences combine the industry’s most up-to-date information and best practices with its top leaders in the front lines in law, security, government and business. Conference attendees come from a variety of locations to network and share their views on the latest IP trends and solutions.
BIP Asia ForumDate: 1-2 December 2016
Location: Hong Kong
Jointly organised by the Hong Kong government, Trade Development Council and Design Centre, the BIP Asia Forum brings IP professionals and business leaders from all over the world to discuss the latest developments in the IP world, and to explore business collaboration opportunities.
For more events visit www.ipprotheinternet.com/events/events.php
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People Moves
Bird & Bird has hired three new partners to its intellectual property departments.
Richard Vary joins the firm’s IP and tech and comms group based in London.
Vary previously worked at Nokia, where he was vice president and head of litigation.
He has experience in multijurisdictional patent litigation with a focus on mobile telecommunications patent litigation and arbitration work. He has experience managing cross-border patent litigation between Nokia, Apple, HTC and Blackberry.
Morag Macdonald, co-head of Bird & Bird’s international IP practice, said: “Richard Vary has a very wide skill set across technology, communications and intellectual property—three key areas of specialism for our firm. We are delighted to have someone of his calibre join our team.”
Vary said: “Having worked with Bird & Bird for a number of years, I am very familiar with their market-leading IP work.”
“I am very excited to join my new colleagues in Bird & Bird’s new London office, and look forward to further broadening the IP, technology and communications offering of the firm.”
As well as Vary, Bird & Bird has added Felix Landry and Felix Harbsmeier to its international IP group based in its Hamburg office.
Landry and Harbsmeier will both join the firm as partners from Uexküll & Stolberg, where they were also partners.
They are qualified German and European patent attorneys and specialise in electronics, physics and engineering.
Christian Harmsen, head of Germany and co-head of Bird & Bird’s international IP group, said: “We are delighted with the strengthening of our successful patent attorney team.”
“This team ideally complements our leading litigation practice in tech and comms. Hamburg is for us, in terms of the Unified Patent Court and the economic region, an important location, which we will continue to expand and support from other offices.”
Landry said: “We are looking forward to the challenge being in an international environment working with such a prestigious IP practice.”
“Bird & Bird has the cross-border work, the market-leading clients in our sectors and the interface between law and patent legal advice, which are excellent prospects for the future.”
Allen & Overy has hired two more partners to join its international IP practice, based in London.
Mark Heaney and David Stone both join from Simmons & Simmons, hot on the heels of Marc Döring and Marjan Noor.
They joined as partners earlier this year, also from Simmons & Simmons.
New appointments: Bird & Bird, Allen & Overy, Honigman Miller Schwartz and Cohn, and more
People Moves
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Stillwaters Law FirmADDRESS & CONTACT DETAILS2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, NigeriaTel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860Fax: +234 (0) 1 460 5470
Email: [email protected]
People . Integrity . Service
• Trademarks Patents Designs• Copyright Anti-counterfeiting• Border Enforcement Measures Domains• Data Protection IP Litigation
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,corporate and commercial, taxation and litigation. The firm operates from the commercial cities ofLagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professionalexcellence, outstanding result and realize they both require creativity and hard work. We strive to gainevery legal advantage for our clients while upholding the principles behind the practice of law. Overthe years, we have acquired considerable experience and an enviable reputation for rendering qualitylegal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,private companies, financial institutions, government institutions, industrial medium size businessesand individuals. Our practice is adequately equipped and well positioned to meet the challenges oflegal practice in an ever-changing technological age.
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People Moves
Heaney focuses on patents and patent litigation in the high tech sector, with cases relating to telecommunications, electronics and software.
Stone specialises in trademarks and registered/unregistered designs and has worked with clients ranging from life sciences to entertainment and the arts.
“We are excited to have Mark Heaney and David Stone join our team, this is step-change for us,” said Nicola Dagg, partner and head of the IP practice in London.
“Now is a time of increasing recognition of the ever-growing value and role that IP has to play in the economies our clients operate in.”
Chadbourne & Park has hired Michael Solomita as partner in the firm’s intellectual property practice in its New York office.
Solomita is an experienced patent litigator who has defended large technology clients from patent claims, prosecuted patent applications and challenged the validity of patents before the US Patent and Trademark Office.
He previously worked at Sheppard Mullin where he was partner. Before that he worked as an in-house patent counsel for the Panasonic Corporation.
Paul Tanck, head of Chadbourne’s IP group, said: “Michael Solomita is a talented and respected patent litigator with a great track record, both in and outside of the courtroom.”
“His in-house role at [Panasonic] in Japan gives him multiple layers of experience and perspective to draw upon. [His] engineering background also gives him a deep understanding of the science behind the innovations that clients are patenting, which will be tremendously valuable for many businesses we represent.”
Kirkland & Ellis has promoted 81 attorneys to partner across its US and international offices, including 10 in its intellectual property department.
All of the IP lawyers were promoted in the firm’s US offices.
In its Chicago office, Kirkland & Ell is promoted Adam Kaufmann and Vishesh Narayen, while Robert Kang was promoted in San Francisco.
In Palo Alto and Los Angeles, Eric Cheng and Ali-Reza Boloori were promoted respectively.
New York saw the most promotions with five. Alex Henriques, Ryan Kane, James McConnel, Joshua Simmons and Jeremy Wilson were all elevated to partner.
Honigman Miller Schwartz and Cohn has hired Christopher Hanba as a partner in its intellectual property litigation practice group based in Chicago.
Hanba previously worked at K&L Gates in Chicago where he was partner.
He is an experienced patent litigator, but has also defended clients in trade secret misappropriation and trademark infringement.
He has also advised clients on intellectual property strategies, procurement, licensing negotiation, and litigation arising from patent, trade secret, copyright, trademark, unfair competition and licensing disputes. IPPro
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Stillwaters Law FirmADDRESS & CONTACT DETAILS2nd Floor 11, Awolowo Road, Ikoyi
P. O. Box 56161, Ikoyi 101008, Lagos, NigeriaTel: +234 (0) 1 454 7179, +234 (0) 1 460 5471
Mobile: +234 (0) 803 324 8860Fax: +234 (0) 1 460 5470
Email: [email protected]
People . Integrity . Service
• Trademarks Patents Designs• Copyright Anti-counterfeiting• Border Enforcement Measures Domains• Data Protection IP Litigation
STILLWATERS is an award winning law firm in Nigeria that specializes in intellectual property law,corporate and commercial, taxation and litigation. The firm operates from the commercial cities ofLagos and Abuja in Nigeria, with associate offices in Accra in Ghana and Douala in Cameroon.
Professionalism, flexibility and innovation are the hallmark of our practice. We value professionalexcellence, outstanding result and realize they both require creativity and hard work. We strive to gainevery legal advantage for our clients while upholding the principles behind the practice of law. Overthe years, we have acquired considerable experience and an enviable reputation for rendering qualitylegal services in our areas of specialization.
Practice representative clients include over 660 foreign multinationals, publicly-quoted companies,private companies, financial institutions, government institutions, industrial medium size businessesand individuals. Our practice is adequately equipped and well positioned to meet the challenges oflegal practice in an ever-changing technological age.
• IP Due Diligence Annuities• Transfer of Technology Piracy• Licensing Distributorship Franchising• Customs Related Assistance• Registrations Renewals Assignments
STILLWATERS FULL PAGE AD purple .indd 1 03/03/2015 14:45
