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Representing the international trademark community

In association with

INTERNATIONAL TRADEMARK ASSOCIATION REPRESENTING TRADEMARK OWNERS SINCE 1878


The International Trademark Association (INTA) is a not-forprofit membership association of more than 5,900 trademark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce. The Association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organisation ‘to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights.’ INTA has been established for 132 years and now plays a major role in shaping global policy on trademark legislation and advancing the professional knowledge and development of the trademark community.

Networking Opportunities Membership of INTA provides a tremendous opportunity for trademark professionals and trademark owners to network with other members and make a significant web of global contacts to aid their businesses going forward. Alan C. Drewsen, executive director of INTA, says that the annual meeting attracts between 7-9,000 members each year and is an opportunity for corporate members to meet with their outside counsel. He said: “The annual meeting attracts up to 9,000 people each year, and is an excellent opportunity for corporate members to meet individually, or as a group, with their outside counsel. They don’t need to fly them in to their offices, or have teleconferences because everyone is there, they can talk and let them know what is expected for the coming year. Many also meet opponents and resolve disputes on the spot. There are real networking and business opportunities.” INTA’s latest conference event was held in Vienna in early December and focused on European trademark issues and the development of new strategies. The event was attended by Francis Gurry, Director General of the World Intellectual Property Organisation (WIPO) and Wubbo de Boer, President of the Office for Harmonisation of the Internal Market (OHIM). Mr Drewsen also attended the event and said the meeting was a good chance to combine education with networking opportunities

Shaping Policy The influence that INTA has over global bodies such as WIPO, as demonstrated by the Vienna conference, is a big advantage for members. The organisation is able to put forward its views on individual trademark legislation and protection in specific countries or to influence the decisions of bodies such as WIPO. Mr Drewsen says that influencing overarching policy is certainly one of the goals of INTA. He said: “We aim to harmonise global trademark law and policy to the greatest extent possible, as our members want the maximum certainty over protection of their trademarks. We have model trademark laws, model examination guidelines and model anti-counterfeiting processes to help members understand the protections available to them. There are also international

treaties such as the Madrid Protocol and the Singapore Treaty that provide some harmonisation regarding how trademarks are protected. We work to try and get as many countries as possible to accede to those treaties as a way of harmonising global law. If we can’t harmonise, then we go in to certain national jurisdictions and comment on their regulations, while giving them the benefit of our accumulated experience regarding the most effective way to protect intellectual property.” INTA has an international reputation, not only for knowledge and expertise, but also for a balanced perspective on trademark law and practice. It has very strong relationships with national patent and trademark offices and other organisations such as OHIM and the China trademark office. Mr Drewsen added: “We have good relationships with many intellectual property and patent organisations. We act as non-governmental observers to WIPO meetings. We nurture our relationships with them and regional agencies such as ASEAN and EU, which are valuable to our members.”

Education, Information and Country Portals INTA has a full range of academic programs providing essential educational and networking opportunities for professors and students of trademark law. There is also an e-learning program providing customised educational experiences that can be used by members in a flexible fashion and accessed via the internet. The courses cover such things as the basics of trademark law and international filing strategies under the Madrid Protocol. The courses can be important for trademark professionals as they provide Continuing Legal Education (CLE) credits to comply with state legislation in this area. INTA has developed a set of country portals which provide a valuable resource for trademark professionals. Each portal holds specific information on the trademark laws of a particular country and makes it easy to search for resources such as treaties between specific countries, case law from that particular legal system, or other IP organisations with a presence in that country. It also allows members to find other INTA members in different countries and gives them the possibility to refer clients to a trusted source.


Representing the international trademark community

Mr Drewsen says that there are more than 100 country portals designed to facilitate members who are major brand owners and doing business around the world. He said: “Almost any law firm that has a substantial trademark practice is a member and so we are able to access countries that are more in the nature of developing markets. We have members in these places who are determining what the basics of legal trademark practice are in a particular jurisdiction.” He added: “We have four electronic databases that can be accessed through country portals; they are the International Opposition Guide, Trademark Cancellations, a Practitioner’s Guide to the Madrid Protocol and Country Guides. The overall point of collecting this information by country is that trademark law is still largely national. This is a member benefit, it saves them both money and time so that, rather than having to pick up the phone for local counsel, we have collected those resources so they are particularly valuable for the in-house counsel and saves them time and money. Most will have counsel in the various countries, but if a member says they are thinking of doing business in Albania, they can go on line and get a sense of the IP protection regime in that country and start to sketch out what the challenges might be.” Members of INTA also get access to the Trademark Reporter, a journal, published six times a year, with contributions from trademark professionals, practitioners, professors and students.

Counterfeiting and the Internet The internet has revolutionised the world of trademark and IP law, by creating a whole new way for trademarks to be breached or IP stolen. One growing problem is a battle over domain names and an increase in cyber-squatting. INTA is currently involved in lobbying congress over an attempt to increase the number of generic top level domains (gTLDs) by ICANN (the Internet Corporation for Assigned Names and Numbers). Mr Drewsen said: “Working with WIPO, and other organisations, we have developed very useful dispute mechanisms, so brand owners can recover

their domain names. Counterfeiting has always been a problem, but once the internet brought the creativity and anonymity of counterfeiters to the fore, the problem increased exponentially. Medicines are one example of a counterfeited good, sold over the internet, which poses a public health threat to consumers, which is something they don’t always realise.” He added: “We have been working in opposition to ICANN and their current plan to expand the number of gTLDs. It is causing problems for our members who have to go and test and protect their trademarks across a whole slew of gTLDs, making defensive registrations and monitoring their rights. As a plan it appears to be not good for our own members and not good for consumers, so that’s an ongoing issue. We are actively lobbying on this and testified last month at a congressional hearing about ICANN and gTLDs.”

ADR Part of INTA’s 2006 – 2009 Strategic Goal is to promote the use of ADR (alternative dispute resolution) worldwide. The ADR committee has a mission to promote and expand the worldwide use of alternative dispute resolution, including the use of a qualified Panel of Neutrals (PON), as a cost-effective method of resolving trademark disputes. ADR can be an effective alternative to expensive litigation in IP and trademark disputes. Most parties opt for mediation, which involves gaining advice on the way forward from experienced experts in trademark law. INTA has an international panel of neutral mediators (PON) who are both expert in trademark and unfair competition law and trained in the art of mediating disputes. Many are fluent in various languages and understand the mediation standards for different regions of the world. The PON are available to INTA members and can be accessed via a directory on the INTA website. Mr Drewsen said: “In the brick and mortar world ADR is very useful, it got off to a slightly slow start with respect to IP, but we are aware of almost 300 IP arbitrations or mediations during the last four

years that have come about through our Panel of Neutrals. Depending on the situation, a member might not want ADR and prefer litigation, but litigation expenses are just horrific so anything that cuts them down is useful.” He added: “Sometimes we can help with arbitration, where the arbitrator’s decision is not appealable, but many times it’s just mediation. The mediator gives advice, encourages resolutions and is able to find an effective alternative which is not only cost effective but quicker.”

The future INTA is planning on more expansion in the next two or three years and hasn’t been unduly affected by the downturn. The organisation hopes to expand its membership in Asia and offer more opportunities to smaller companies to benefit from INTA resources. Mr Drewsen believes that more global offices could also be a possibility. He said: “Like any association, we are watching the effects of the downturn carefully. It hasn’t had that much affect on us and we have weathered it very well. I do expect continuing membership growth with Fortune 500 companies in the US and Western Europe. We have good penetration, but there are more opportunities, particularly in Europe and Asia. We already have a two person office in Brussels and a two person office in Shanghai, they will expand and we will give consideration to another office, part of that decision turns on finances and also on where our member’s offices are.” INTA also has plans to help smaller players to access the power of its network. Mr Drewsen believes that, during the next four or five years, the network will make greater inroads internationally in this regard. He said: “I don’t rule out membership for small businesses, but their first thought must be to make payroll, then, over time, as their business solidifies, and they begin to establish their brand in the market place, they can start to look at membership of an organisation like ours.”


Contents:

Foreword

2-3

Contents Page

4

North American Introduction

5

North American Profiles

6-14

Central & Southern American Introduction

16

Central & Southern American Profiles

17-24

European Introduction

25

European Profiles

26-33

Middle-Eastern & Africa Introduction

35

Middle-Eastern & African Profiles

36-42

Asia & Oceana Introduction

43

Asian & Oceanic Profiles

44-50

04 INTA


North America In the United States and Canada, patent infringement occurs when an individual makes, or sells a patented invention in the said jurisdiction without obtaining authority from the patent owner. In the U.S. and in Canada, the limitation period for patent infringement litigation is six years. If a party is found guilty of infringing another’s patent, with regard to damages, U.S. patent laws say that the court shall award damages adequate to compensate the owner of the patent, such as not less than a reasonable royalty along with interest and costs fixed by the court. Recent infringement cases have resulted in costly legal bills. One such case was fought over the past four years between EMC Corporation and the Hewlett-Packard Company. Both companies denied wrongdoing, but as part of the settlement finally reached, both companies agreed to a five-year patent cross-licensing agreement, and Hewlett-Packard agreed to pay EMC Corporation $325 million or to buy that amount of EMC Corporation products within five years. A new director of the US Patent and Trademark Office was installed in August 2009. The new director, David Kappos, has held various IP related roles with IBM over the past 20 years. According to the World Trademark Review, in association with INTA, trademark owners are still awaiting the appointment of the new IP enforcement coordinator (IPEC). The IPEC was created by the Pro-IP Rights Act when it was signed into law at the end of 2008. The aim of the IPEC’s office is to influence and coordinate the IP protection activities of the various departments of the US government. At the time of writing, the US administration was still trying to work out the most appropriate way of creating and positioning the role They also said online auctions were at the center of one of the leading US decisions of 2008 and 2009. Following a bench trial, the US District Court for the Southern District of New York issued the decision in Tiffany (NJ) Inc v eBay Inc (Case 04 Civ 4607 (RJS), July 14 2008). Tiffany had brought trademark infringement claims against eBay based on sales of counterfeit Tiffany products on eBay’s website. The US district court held that eBay was protected from liability under the nominative fair use defense. The court noted that both genuine and counterfeit TIFFANY-marked products were available for sale on eBay’s auction platform and that eBay always removed potentially infringing listings when notified of them by Tiffany. According to the court, use of Tiffany’s marks by eBay in sponsored links on search engines was also covered by the defense. Tiffany appealed and in July 2009 the US Court of Appeals for the Second Circuit heard oral argument from both sides. The appellate court is set to rule on the case in late 2009 or early 2010. An April 2009 ruling by the Second Circuit reignited the debacle over whether an internet search engine’s sale of a third party’s registered trademark as a keyword amounts to infringement. In Rescuecom Corp v Google Inc (Case 06-4881-CV, April 3 2009) the Second Circuit appeal court held that Google’s sale of registered trademarks under its AdWords system was a

use in commerce sufficient to subject it to, among other things, trademark infringement liability. Importantly, in reaching its decision and remanding the case to the district court for further proceedings, the Second Circuit was careful to point out that it had “no idea whether Rescuecom [could] prove that Google’s use of Rescuecom’s trademark in its AdWords program causes likelihood of confusion or mistake”. The World Trademark Review also reported on developments in Canada, which were mainly of a procedural nature. At the end of March 2009 the Canadian Intellectual Property Office (CIPO) introduced important amendments to trademark opposition procedure. The changes were as follows: simplify and clarify the registrar’s benchmarks for granting extensions of time; provide guidance with respect to the granting of extensions of time in exceptional circumstances; encourage parties to pursue settlement and mediation early in the opposition period; and introduce a new practice of granting extensions of time amounting to a ‘cooling-off’ period.

The US district court held that eBay was protected from liability under the nominative fair use defense. The court noted that both genuine and counterfeit TIFFANY-marked products were available for sale on eBay’s auction platform and that eBay always removed potentially infringing listings when notified of them by Tiffany.

Corporate INTL 05


Bennett Jones LLP

Canada

Martin Kratz Partner 403.298.3650 KratzM@bennettjones.com

Bennett Jones LLP provides comprehensive business law services to clients in Canada. With a nationally leading intellectual property and technology practice and an internationally recognized energy practice Bennett Jones professionals have the depth and breadth to handle complex and demanding challenges for clients. Particularly strong in the information technology, pharmaceutical and energy industries it has depth and breadth of relevant industry contacts, experience and relevant training among professionals in these and other fields. It provides comprehensive intellectual property application, prosecution and protection services including Canadian and U.S. patents and PCT and other treaty filings, Canadian and U.S. Trademarks, Copyrights, Industrial Designs, and the more specialized forms of intellectual property including Plant Breeders’ Rights, Integrated Circuit Topographies. The firm also has a strong IP litigation practice to defend client’s interests and pursue infringement vigorously. Especially unique to Bennett Jones are the number of top ranked lawyers in the intellectual property and technology practices. Partner Mr. Martin Kratz elaborated on the firm’s distinguishing features: “We were pioneers in addressing the emerging issues of the Internet and remain leaders in dealing with unique IP, ecommerce, data protection, and related issues affecting the Internet and social media. “Our patent and trademark practices are largely originating work. As a result our professionals work directly with the clients. As well we have a very substantial opinion practice and clear many products and services proposed to come to the Canadian market. We are also qualified to practice before both the Canadian and U.S. Patent and Trademark offices which is a further distinguishing feature that affords some cost efficiencies to our clients.” Mr. Kratz outlined the IP industry in Canada over the past two years: “While there has been an effect on most clients and firms the volume of work remains strong and we have seen an increase in the IP enforcement and related litigation work.” Bennett Jones has been members of USTA and subsequently INTA for approximately 21 years. Referring to the benefits offered by the network, Mr. Katz said: “The Online Country Portals are a service we wish to continue to explore and benefit from.”

06 INTA

Cassels Brock & Blackwell LLP

Canada

Catherine M. Dennis Partner + 416 869 5773 cdennis@casselsbrock.com

Cassels Brock & Blackwell LLP is a Torontobased law firm of more than 200 lawyers focused on serving the transaction, advocacy and advisory needs of Canada’s most dynamic business sectors. The firm places its emphasis on the core practice areas of Corporate and Commercial Law, M&A, Securities and Corporate Finance, Tax, IP and International Business. The firm is one of the largest business law practices in Canada, serving mid-market, national and multinational entities and is dedicated to value-driven public and private M&A and divestiture work. Catherine M. Dennis is a partner in the Information, Communications & Entertainment Law Group and practises in the field of IP law. She provides advice on IP matters, particularly trademarks, marketing and advertising law, copyright law and confidential information. She has appeared before various courts and tribunals, and assists clients in managing their domestic and international trademark portfolios. In order to maximise Cassels Brock & Blackwell LLP’s international scope and expertise in the provision of IP, Ms. Dennis has been affiliated with INTA since 2002. She said of the Association’s various benefits: “INTA is a great organisation, and my involvement with it has been very rewarding. I have been on INTA committees since 2002, and others within our group are in committees as well, so the committee work and the opportunity to network with agents we use around the world is invaluable.” In addition, Ms. Dennis attends INTA’s Annual Meetings as well as its Leadership Meetings. INTA’s next Annual Meeting is set to take place in Boston in 2010. In between meeting in person, INTA’s member firms exchange information and resources online via the INTA website. Ms. Dennis commented: “The INTA website is a great resource. They have so much information available, and members of INTA’s committees have been working for the past four years to produce the Trade Dress Image Library (TDIL), a growing, searchable database of case summaries compiled from published trade dress infringement cases worldwide. I have been involved in compiling summaries of case law from almost every country in the world to assist in realising this invaluable database.”

Hallihan IP Partners, LLC

US

William (Hal) Hallihan Partner +13 12.784.3000 hal@hallihan.com

Hallihan IP Partners is a law firm based in Chicago that handles matters throughout the US as well as internationally. The firm specialises in Intellectual Property (IP) law pertaining to patents, trademarks, copyright and trade secrets, including patent reexaminations, reissues and interferences as well as trademark cancellations and oppositions. The firm’s expertise includes IP litigation, including US International Trade Commission investigations. Additionally, the firm drafts IP contracts and provides advice pertaining to Hatch-Waxman Act and ANDA related issues. According to partner Hal Hallihan, each of the firm’s attorneys and agents possesses a minimum of seven years of IP experience, and the language skills of its team include French, German, Japanese, Serbo-Croatian, Spanish, and Swedish. Mr. Hallihan noted: “Our IP team has experience with extremely complex matters, including litigations involving numerous patents and products where damages ranged up to US$100,000,000.00. Hallihan IP Partners also has a track record of successfully representing defendants in the, allegedly plaintiff friendly, Eastern District of Texas.”

“INTA has been useful for crossreferrals and for providing more effective representation of clients.” When asked how the firm is distinguished in the provision of trademark and IP advice, Mr. Hallihan commented: “Members of our team identify and focus on points that we believe are most likely to be defining. In one case, a team member acquired numerous out of date magazines and developed an argument that advertisements contained therein were sufficiently detailed to invalidate the bulk of the asserted patent claims. This argument was accepted by both an Eastern District of Texas court and the Court of Appeals for the Federal Circuit.” In order to maximise Hallihan IP’s global reach as well as client base, the firm became a member of INTA, the International Trademark Association, one year ago. Concerning the resultant benefits afforded to the firm’s trademark and IP work, Mr. Hallihan commented: “I have enjoyed the opportunities to maintain new contacts and to renew old contacts. Because of these opportunities, [the INTA network affiliation] has been useful for cross-referrals and for providing more effective representation of clients.”


Cowan, DeBaets, Abrahams & Sheppard, LLP

USA – California

Steven Weinberg Partner 0013 10 457-6100 SMWeinberg@cdas.com

Cowan, DeBaets, Abrahams & Sheppard, LLP is a national and international law firm of more than 30 attorneys whose focus primarily has been in the areas of entertainment, digital media, new technologies, advertising and marketing, financial and telecommunications services, hospitality services, and consumer products ranging from food and beverages to clothing. Many of its attorneys act as general counsel for their clients, and are very well-known in their fields. The firm provides transactional, counseling and litigation services for its clients who are located both within and outside the United States. Cowan DeBaets has been at the forefront of the application of traditional IP to the online word, especially in the areas of keywords and domain names, social network environments like Twitter and Facebook, interactive media and gaming, and the use of digital copyrighted images in these online environments.

“There are extraordinary benefits from membership in INTA. These include being part of the quintessential organization for education and networking in the trademark and related fields…” Partner Steven Weinberg of the Los Angeles office was one of the first internet lawyers in the world, and one of the first to specialize in the application of trademark and advertising laws to the internet. He also was Editor in Chief of The Trademark Reporter of the INTA and has delivered many speeches at INTA meetings, particularly about trademarks and the internet. Partner Nancy Wolff in the New York Office is one of the best-known experts in copyright and digital images, and represents many of the leading photographic images trade associations. The firm also has a successful history of trademark and copyright litigations, both civil and administrative, including trade dress and internet-related litigation, as well as false advertising litigation, and has a sub-specialty in IP anti-counterfeiting litigation. A number of members of the firm have been INTA members for over 25 years. Steven Weinberg was on the Board of Directors of INTA in the 1980’s. Mr. Weinberg said: “There are extraordinary benefits from membership in INTA. These include being part of the quintessential organization for education and networking in the trademark and related fields to being the forum for exchanging new ideas and participating in the most pressing issues of our time.”

Ladas & Parry

USA - California

Mavis Gallenson Partner +1 323 934 2300 mgallenson@la.ladas.com

Ladas & Parry LLP is renowned for its international intellectual property (IP) practice. Ladas has been a leader in the IP field for almost 100 years. The firm has five offices, three in the US and two in Europe with attorneys licensed to practice in the US and Europe. It specializes in every area of IP practice and is particularly noted for its experienced handling of patents, trademarks, assignments and licensing.  Ladas does not rely heavily upon foreign associates to handle intellectual property issues outside of the US. Instead, Ladas attorneys learn the practices of each jurisdiction so that each case is handled effectively by Ladas as a keen creater and overseer of the work in every jurisdiction, thereby balancing the needs of the foreign jurisdiction with practice in the US. The foreign associate acts only as a final check of the work put together by Ladas for presentation to the patent or trademark office of that jurisdiction.    Partner at the firm, Mavis Gallenson, said: “We deal with the intellectual property laws in every jurisdiction, and as the patent and trademark offices and the courts in these jurisdictions continue to issue decisions and promulgate rules, we are cognizant of these and adjust our handling of cases in view of these.”  She continued: “Regardless of the economics of the time, intellectual property must be protected , for it is business which very much drives our world economies and business relies heavily on trade names and technology for success. Therefore, these important assets have to be protected regardless of the financial state of the world and the businesses of the world recognize this.”  Ladas & Parry  has been a member of the International Trademark Association since its inception and established the Ladas award.  Ms. Gallenson said, “INTA is a tremendously beneficial organization. It provides an excellent forum to meet people, to learn new laws, to teach people and to impact those who have the power to promulgate laws and carry out intellectual property protection.  “Online Country Portals are very useful and provide an easy reference for INTA members. INTA as a whole, has been very useful to me as a practitioner given all of the many avenues and forums it sponsors. INTA makes it that much easier to navigate the IP arena.”   Corporate INTL 07


International Strategy Group, LLC

USA - California India – Delhi, Mumbai & Cochin

Suman Naresh Chief Executive Officer +1.562.951.9736 snaresh@internationalstrategygroup.com

International Strategy Group, LLC (ISG), is a leading provider of outsourced IP support services to attorneys in law firms and in-house IP counsel in corporate legal departments. The firm is based in Long Beach, California and has three operational locations in India, in Delhi, Mumbai and Cochin. ISG’s support services include: Docketing and administrative services; patent and trademark searches; paralegal services to assist in the preparation, filing and prosecution of patent and trademark applications; maintenance of patent and trademark portfolios; recordal of assignments and licences; and the coordination of international filings in national or regional offices worldwide, with special emphasis on jurisdictions where assistance is difficult to obtain. When asked how ISG is distinguished from its competitors, Chief Executive Officer Suman Naresh commented: “ISG’s outsourced back office services are extremely cost-effective, generally lowering our clients’ costs by 40%-50%. The work is done in India, but supervised from our office in California in order to maintain the highest possible levels of quality.” Mr. Naresh added: “Our coordination services provide filing and prosecution assistance through our worldwide counsel network in all of the 200+ jurisdictions in which IP protection is available. Furthermore, by keeping our operations paperless and taking advantage of the latest developments in cloud computing, we are able to give our clients and staff secure access to relevant documents and data, regardless of their physical location. And finally, by taking advantage of the time differences between the US and India, we are able to operate on a 24-hour cycle and minimise the turnaround time for our clients’ projects.” Mr. Naresh also noted that in the US, the demand for outsourced IP support services has increased significantly – although there has been a significant decline in the international filings requested by clients. In order to maximise the firm’s opportunities for global networking, the firm has been a member of the International Trademark Association (INTA) since its formation in 2005. Mr. Naresh said: “Approximately half of our business comes from contacts made at INTA. In addition, the Association’s Online Country Portals resources have proved particularly useful, as have INTA’s online Opposition and Cancellation Guides.”

08 INTA

Stevens Law Group

USA - California

David R. Stevens Partner 0014 082887588 dave.stevens@stevenslawgroup.com

The Stevens Law Group provides legal services relating to intellectual property matters for clients of all sizes, including start-up companies to Fortune 100 corporations. The firm provides strategic counseling to help clients build and leverage an intellectual property portfolio to add revenue and to provide a competitive advantage among competitors. Conveniently located in the heart of Silicon Valley, Stevens Law Group represents a number of hightech clients that are developing the next generation of technology. Stevens Law Group strives to provide high quality service, in a timely manner and at reasonable rates. Indeed, Stevens Law Group helps build start-up companies. From conception of the original ideas, to incorporation and onward, it can provide legal services relating to intellectual property matters for clients of all sizes, including start-up companies to Fortune 100 corporations

“It gave me a chance to meet new professional acquaintances, and also meet with global firms that I have done business with for years but never met in person. This has greatly strengthened our relationships.” Partner at the firm, David R. Stevens is highly experienced in the IP field. He has, for instance, helped establish and build many startup companies; represented clients in procuring U.S. and foreign patents in a variety of technologies; and is a frequent speaker for professional organizations on topics related to intellectual property in general, developing patent portfolios strategies, standards organizations, patent licensing strategies, and other topics. A member since 2008, he said the Annual Meeting in Berlin was his first meeting. He said: “It was very exciting, and the INTA groups were incredibly welcoming and thoughtful. It gave me a chance to meet new professional acquaintances, and also meet with global firms that I have done business with for years but never met in person. This has greatly strengthened our relationships.” He added: “My second meeting was in Seattle, where I was on a panel with a few seasoned members, and that was a very good boost to my practice and my connection with INTA. I also hosted a round table, which brought together a group of us who could drill down to topics that interested all of us. I learned a great deal about INTA in this experience, and again met with some great people.”

Sideman & Bancroft LLP

USA – California

Kelly P. McCarthy Partner +(415) 392-1960 kmccarthy@sideman.com

Sideman & Bancroft LLP is a small firm with a tight knit, efficiently run Intellectual Property (IP) group consisting of all senior level expert attorneys. As a result, its partners can provide a full range of IP and technology transaction services at a fraction of the price of large US law firms. In addition, Sideman & Bancroft’s attorneys have years of experience working with foreign clients, and understand the necessity of being able to provide quality, practical and timely advice while being mindful of clients’ budgets. “Often this means offering services at fixed fees or other flexible fee arrangements,” noted Kelly P. McCarthy, a partner at the firm. She added: “When a client works with Sideman & Bancroft, the client need not choose between getting quality work product or favourable pricing – the client always gets both.” The firm offers a unique blend of services for businesses as well as individuals. Its IP group provides comprehensive IP prosecution, management, exploitation and enforcement services in the US, and its partners work with a trusted network of foreign firms to assist clients worldwide. According to Ms. McCarthy, the firm’s IP litigation and anti-counterfeiting groups are available to step in to assist businesses and IP clients when infringement or counterfeiting occur. When asked about the current state of the trademark and IP industry in California, Ms. McCarthy commented: “There are a wide number of IP laws in the US, both State and Federal, which are constantly changing and evolving. We assist clients with identifying which laws apply to a specific scenario, and we help the client obtain or protect IP in conformance with those laws. “Savvy clients understand that protection of IP is still important [during a recession]. Failing to take necessary precautions to register and enforce IP rights can result in irreparable harm to the company’s brand and other IP assets. During the economic downturn we have helped numerous clients continue to protect their IP rights while staying mindful of budgetary concerns.” In order to maximise its global scope and client base, the firm has been a member of INTA, the prestigious International Trademark Association, since 2001. Ms. McCarthy noted: “The contacts made via INTA have proven invaluable in assisting clients with worldwide branding concerns.”


Mayback & Hoffman, P.A.

USA - Florida

Catherine Hoffman Partner +(954) 704 1599 info@mayback.com

Mayback & Hoffman is a boutique intellectual property law firm, having experience with globally protecting hundreds of its clients’ trademarks and inventions. The Florida-based firm is a fast growing practice both domestically and internationally and is run by Catherine Hoffman and Gregory Mayback, who are partnered not only in running the law practice, but in marriage as well. Ms. Hoffman, the managing partner, concentrates her practice in trademark prosecution and litigation. She says the firm does a substantial amount of work with foreign clients helping them to protect and enforce trademarks in the USA. They are often asked to control and manage cases, particularly where costs need to be controlled. “We work with in-house and outside counsel or foreign firms to coordinate their IP. Foreign companies seek out our firm to lead the case and bring in experts only when necessary. We have no desire or need to staff a case with a large number of attorneys when settlement is our desired goal, not litigation. We know that our clients want to get back to business, not litigate. A keen business sense enables our clients to get back to business quickly,” explains Hoffman. Membership of INTA has helped Mayback & Hoffman on many levels. For starters, it is an opportunity to resource for learning on a global scale as INTA provides meetings and conferences at which the firm meets a worldwide network of associates. Ms. Hoffman is a member of a US Government-sponsored coalition against counterfeiting and is also a member of INTA’s Bulletin Committee. By travelling to INTA conferences and coordinating with foreign associates and clients, the lawyers at Mayback & Hoffman are continually required to manage their clients’ intellectual property portfolios on a global level, measuring the strategy and setting a course of action that fits with the client’s overall goals while always remaining aware of the client’s budget. Mr. Mayback explains: “It was actually the inhouse counsel of one of our German clients that initially recommended INTA to us. So, we took that advice and couldn’t be more pleased about our decision. As a small firm with a large international presence, INTA provides a wonderful resource and ‘go-to’ place where we can connect with colleagues worldwide on important topics and legal issues.”

BAKER & DANIELS LLP

USA – Indiana

Michelle Kaiser Bray Partner 0013 17.237.1350 michelle.bray@bakerd.com

Baker & Daniels has more than 50 intellectual property lawyers in seven offices in Indiana, Chicago, Washington, D.C. and China. The firm works with clients to protect ideas and innovations to help them stay ahead of the competition. Whether it’s preserving inventions with patents, text with copyrights, brand names with trademarks or e-commerce with monitoring searches, Baker & Daniels understands the rules and regulations. For clients with in-house intellectual property programs, Baker & Daniels’ professionals serve as “partners” by working closely with inventors, counsel and marketing representatives. Intellectual property knows no boundaries, and Baker & Daniels lawyers have experience in a wide range of technological areas. In addition to undergraduate and graduate degrees in a number of scientific and technical fields, our lawyers have professional experiences in medical devices; chemicals and pharmaceuticals; biomedical and biotechnology; electrical and mechanical arts; electronic and consumer products; computer software, hardware and e-commerce; telecommunications systems; optics; and manufacturing processes. Baker & Daniels’ service extends beyond knowledge. The firm’s lawyers take the time to get to know clients - listening to clients’ challenges, needs and goals; learning clients’ missions, operations and businesses; and collaborating on the development of intellectual strategies to take clients where they want to go. Intellectual property is one of the fastest growing practice groups at Baker & Daniels because more businesses than ever are recognizing the urgency to define and defend their creativity and innovations. The practice spans the full spectrum of U.S. and international intellectual property law. Michelle Kaiser Bray focuses her practice on trademark, copyright and e-commerce matters where she represents a diverse client base, including multinational corporations, Internet businesses and individual artists and photographers. She has extensive experience in licensing and intellectual property litigation matters, particularly in the areas of trademark and copyright protection and enforcement. Ms. Bray also provides counsel on domestic and international business and e-commerce transactions. As a member of INTA, Ms. Bray said she can appreciate the scope of influence that the network provides. It can put an individual in touch with a global audience of professional IP lawyers. INTA also provides a forum for critical discussion of leading trademark issues and cross-cultural education.

Husch Blackwell Sanders Welsh & Katz

USA - Illinois

Julie Katz Partner 312.655.1500 julie.katz@huschblackwell.com

As a result of two mergers in 2008, the law firm Husch Blackwell Sanders now comprises about 100 IP attorneys, making it one of the largest IP departments of any law firm in the US. Its Chicago Office operates under the name Husch Blackwell Sanders Welsh & Katz, unique because it combines experienced trial attorneys with specialist trademark, copyright and patent attorneys resulting in very effective results.  The firm has been recognized by Intellectual Property Today magazine as one of the “2009 Top Trademark Firms” in the country, taking the 7th spot among the 277 firms and individuals in the survey, with more than 800 trademarks issued. Examples of its most successful trademark campaigns include Ty Inc.’s BEANIE BABIES® plush toys, Brown Shoe Company footwear, Conagra Foods Rdm, Inc. foods and beverages, and Build-A-Bear Workshop, Inc. plush toys. 

“Our involvement and commitment in and to INTA helps us create an international network of people with whom we work and upon whom we are able to rely.” According to Partner, Julie Katz, significant recent developments in trademark law include further development of the trademark fraud standard with the Federal Circuit decision in In re Bose. For patent law, the firm awaits the U.S. Supreme Court’s decision in In re Bilski, regarding the issue of patentability of business method patents.     Ms. Katz highlighted the friendly relationships fostered through membership in INTA. She said: “Through the INTA network, our attorneys, and staff, have been afforded the opportunity to form friendships worldwide and build strong relationships that allow us to offer our clients international services.”   She continued: “Our involvement and commitment in and to INTA helps us create an international network of people with whom we work and upon whom we are able to rely.”   Such reliability is exemplified by a situation when Ms. Katz contacted a lawyer at a Jordan law firm regarding a client’s trademark issue and heard back almost immediately-despite that the lawyer was at the time in London and it was 11pm there. Likewise, a case concerning a domain name issue was referred by Ms. Katz to an Italian law firm on behalf of a Swiss client. “Referrals can transcend IP issues into the full spectrum of business issues.”   Corporate INTL 09


Neal & McDevitt, LLC

USA – Illinois

Kevin McDevitt Co-Founder and Member +1.847.881.2451 kmcdevitt@nealmcdevitt.com

Neal & McDevitt, LLC, is a Chicago-area based IP, marketing and IT law firm specialising in all aspects of trademark, copyright, unfair competition, marketing, advertising, promotions, IT and Internet law. According to co-founder and member Kevin McDevitt, “Neal & McDevitt’s goal is to effectively provide clients with experienced, comprehensive and decisive legal counsel.” Mr. McDevitt added: “We represent clients from across a broad spectrum of fields, ranging from individuals and start-up companies to some of the world’s largest corporations.” Mr. McDevitt noted: “The combined expertise of Neal & McDevitt, and our ability to collaborate with our clients, builds a personal partnership between us and our clients and allows us to provide efficient and highly effective legal counsel.” He added that the US trademark and IP legislative landscape has changed following a recent decision in the US Court of Appeals for the Federal Circuit in In re Bose, which redefined the standard for determining whether a fraud is committed on the US Patent and Trademark Office. “This case has significantly changed the landscape for trademark owners who file and maintain registrations with the USPTO,” he said. He also noted that the US trademark and IP industry has not been spared the ramifications of the global financial recession, stating: “Since trademarks are so closely tied to marketing efforts, the development of new trademarks has diminished on a par with the slowdown. On the other hand, IP litigation has increased as it usually does during recessionary periods.” In order to maximise potential for cross-border networking and referrals, Neal & McDevitt, LLC has been an independent member of the International Trademark Association (INTA) since the firm’s formation in 1998. On the subject of the firm’s INTA affiliation, Mr. McDevitt noted: “We have noticed numerous benefits of our membership within INTA including establishing relationships with lawyers worldwide, client referrals as well as idea sharing and keeping abreast of legal developments worldwide. In addition, Committee Portals, and the services that INTA provides for shaping trademark laws and jurisprudence on a global basis, have proven to be quite useful.”

10 INTA

Marcus Stephen Harris LLC

USA – Illinois

Marcus Stephen Harris Partner +13 12-263-0570 mharris@mshtechlaw.com

Marcus Stephen Harris LLC is devoted to the needs of the technology enterprise. Whether the firm’s clients are licensing software or technology services or acquiring Intellectual Property (IP) assets, the firm’s partners are dedicated to meeting client expectations and solving problems within set legal budgets. The firm provides a comprehensive suite of technology law services including drafting and negotiating technology contracts, copyright and patent services and representing clients in trademark disputes. Almost all of Marcus Stephen Harris LLC’s services are provided on a fixed fee basis. The firm aggressively implements technology in order to increase efficiency and lower costs.

“Almost all of Marcus Stephen Harris LLC’s services are provided on a fixed fee basis. The firm aggressively implements technology in order to increase efficiency and lower costs.” Mr. Harris is a founding member of the Firm. He focuses his practice on all aspects of technology law and intellectual property law, including domestic and international trademark prosecution, trademark opinions and counseling, due diligence, copyright and trade secret law. He has extensive experience in transactions involving technology licensing, including software licensing, ERP, SCM and CRM implementations, software development agreements and confidentiality matters. Mr. Harris has extensive legal and related business experience in the technology industry. Prior to forming Marcus Stephen Harris LLC, he spent over three years with the Legal/Contracts Department of SAP America where he negotiated hundreds of technology related agreements with SAP’s Fortune 500 client base. Mr. Harris was also Senior Corporate Counsel in charge of intellectual property at SSA Global Technologies where he developed and managed an extensive international trademark and patent portfolio, managed intellectual property litigation, conducted intellectual property due diligence and reviewed advertising material to verify compliance with legal requirements. During law school Mr. Harris completed an advanced externship at the United States Copyright Office in Washington D.C. Mr. Harris is a member of the Illinois State Bar Association, Chicago Bar Association and the Technology Executives Club.

Marshall, Gerstein & Borun LLP

USA – Illinois

Michael Graham Partner + 312.474.6616 mgraham@marshallip.com

Marshall, Gerstein & Borun LLP (www.marshallip.com) focuses exclusively on the practice of Intellectual Property law and has done so for more than 50 years. Based in Chicago, Illinois in the USA, the firm’s global practice encompasses patent, trademark, copyright and trade secret law, intellectual property licensing transactions, Internet and cyberlaw, and litigation. The firm has always offered superior trademark services, and has been at the forefront of offering those services for reasonable fixed fees. At Marshall, Gerstein & Borun, all of the important stages are handled by seasoned trademark veterans, whose quality and value of work is reflected in the success of its clients. The Lanham Act is the principal federal law governing trademarks in the USA, along with anti-cybersquatting and its anti-dilution provisions. Individual State trademark, unfair competition and deceptive trade practices acts also govern the protection of trademark intellectual property. Outside of the USA, the establishment of regional trademark registration systems in the European Union (CTM) and among the member states of the Madrid Protocol (enabling multinational trademark registration based on home country registration) has been important. ICANN’s Uniform Dispute Resolution Policy provides a quick and efficient means of challenging domain names that have been registered and used in bad faith. A statement from the firm said: “We have seen increased consolidation of trademark holdings among clients. This reflects both fewer new products and services being developed and an expansion of the use of existing marks. At the same time, we have seen an increase in domain name infringement activities and the use of trademarks to conduct illegal and fraudulent schemes on the Internet.” Partner Michael Graham added that Marshall, Gerstein & Borun attorneys and trademark administrators have attended and benefited from INTA’s educational programs, forums and the Annual Meeting, through which strong collaborations have been forged. Mr. Graham said: “The association with INTA has been extremely useful in nurturing both client relationships and relationships with other law firms. We especially appreciate the opportunities to network with foreign law firms.”


Neal, Gerber & Eisenberg LLP

USA – Illinois

Hodes, Pessin & Katz

USA - Maryland

Lee J. Eulgen Partner +312.269.8465 leulgen@ngelaw.com

Leonard Bloom Senior Counsel +(410) 769-6144 lbloom@hpklegal.com

Neal, Gerber & Eisenberg LLP (NGE) is a Chicago-based law firm providing legal services to a diverse group of clients in a wide array of domestic and global business transactions and litigation matters. Clients include privately and publicly held companies, financial institutions, not-for-profit organisations and high net worth individuals. The firm’s comprehensive client base reflects virtually every business industry, including a number of Fortune 100 companies. According to partner Lee J. Eulgen, operating from a single office has allowed the firm to promote collaboration and maintain the highest standards of legal work and client service. “The firm’s reach and client base, however, are national and international in scope,” he noted. He added: “NGE maintains a very wide breadth of practices: everything from tax and M&A, to environmental and real estate, to – of course – IP. The firm enjoys a reputation as one of the fastest growing law firms and is nationally recognised for its expertise in a number of key practice areas.” Mr. Eulgen commented that while the US statutory scheme governing trademark protection and infringement has been relatively static for some time, US law continues to evolve with respect to how this statutory scheme is applied to innovative methods of doing business. These include Internet keywords, domain names and online advertising techniques. He said: “In recent years, NGE has been on the forefront of litigating and counselling clients concerning these issues. In addition, notwithstanding the overall economic malaise that has gripped industries worldwide, NGE’s IP practice has continued to grow, and it appears as though the IP industry in the US has remained strong. International business executives continue to realise the benefits of protecting their IP in the US.” In order to maximise potential for cross border networking, NGE is a member of the International Trademark Association, of which Mr. Eulgen spoke highly, commenting: “Our INTA involvement has been an invaluable vehicle for advancing the profile of our firm’s IP practice both nationally and internationally. I hold the position of chair of INTA’s domain disputes subcommittee; meanwhile, NGE IP partner Sarah Smith is a member of INTA’s Internet committee.”

Hodes, Pessin & Katz (HPK) is a diversified, dynamic and growing law firm with over 60 lawyers, paralegals and law clerks whose practices span the legal field. HPK’s Intellectual Property (IP) department is an integral part of the firm, comprised of three registered patent attorneys who, collectively, have over 100 years of practical experience in corporate and private practice. The IP department focuses on assisting clients in meeting their business objectives and takes pride in providing excellent services to their clients at exceptional value. They represent clients in Maryland, throughout the United States, and in several foreign countries. Truly international in scope, HPK’s IP group has longstanding associates in the vast majority of foreign countries, which readily provides them with the necessary resources to adequately protect their clients’ global businesses. Leonard Bloom, senior counsel at the firm, commented: “The department stays abreast of changes in IP law, principally on cases decided or pending before the US Supreme Court, and carefully evaluates those decisions to determine how they will affect patent and trademark matters.” When asked about the resilience of the firm’s IP practice throughout the recession, Mr. Bloom commented: “The global economic problems have not seriously impaired HPK’s IP practice. If anything, the group’s clients – companies, entrepreneurs and individual inventors – have accelerated their R&D and patenting activities to develop new products and find new markets for their goods and services.” Mr. Bloom is the chair of HPK’s IP Department. Prior to his role at HPK, he organised and managed the international patent and trademark department for Black & Decker, a US corporation that designs and markets power tools and accessories, hardware and home improvement products and technology based fastening systems. Mr. Bloom maintains an emeritus membership in the Association of Corporate Patent Counsel (ACPC), an organisation of patent department directors of FORTUNE 500 companies. Through this membership, he has developed and maintained valuable contacts which are useful in licensing, technology transfer and joint venture opportunities, as well as in resolving IP conflicts for his clients. HPK has been a member of the International Trademark Association (INTA) now for two years. Mr.Bloom has enjoyed a long association with INTA

Corporate INTL 11


Reed Smith, LLP

USA – New York

Darren B. Cohen, Partner +1 212 549 0346 dcohen@reedsmith.com Dr. Alexander R. Klett, LL.M., Partner +49 (0)89 20304 145 aklett@reedsmith.com

According to Darren B. Cohen, partner at Reed Smith, LLP’s New York City branch, and Alexander R. Klett, partner at the firm’s Munich office which deals with German and EU trademark matters, the firm’s trademark practitioners can be found throughout the world. Locations include continental US, Asia and Europe and many serve, or have served, on INTA committees. The partners state that this reflects their commitment to the global trademark community. “We even boast former INTA Committee chairs among us, and Dr. Klett is the current INTA Committee Chair (INTA Bulletin Committee - Policy & Practice features subcommittee).” noted Mr. Cohen. He added: “Reed Smith’s worldwide trademark practice – from securing trademark rights, to policing and preventing trademark infringement and litigating trademark and unfair competition matters – helps establish, maintain and enhance trademark portfolios for national and international companies.” The firm’s IP Group is comprised of approximately 100 lawyers in the US, Asia and Europe, as well as a premier practice in advertising and marketing. In addition, Reed Smith’s Litigation Team was in IP Law 360’s 2006 IP Litigation Survey in the top 40 firms most frequently hired for trademark litigation. While Reed Smith has not been spared the turbulence of the worldwide financial crisis, Mr. Cohen and Dr. Klett explained that trademark and IP equities remain among the most stable indicia of corporate health. “Their value too is more stable than many other assets’,” they said. They added: “Our clients’ and prospective clients’ needs and demands changed [in response to the crisis], and we anticipated this and adapted ahead of the curve. Reed Smith’s extensive US and international attorneys help establish, maintain and enhance trademark portfolios for national and international companies in the consumer goods industry.” Reed Smith has also developed Trademark Management Mapping Program (TMMP), a proprietary software system that provides a web-enabled ‘snapshot’ of a trademark portfolio in response to the needs of several clients who own global portfolios. Clients can have immediate access to the most up-todate data, displayed either in map form, chart form or both. Mr. Cohen and Dr. Klett added: “This is especially valuable for companies with global portfolios that have a strong interest in leveraging this tracking and management capability.” In a testament to its success, in 2007 TMMP was a finalist for the College of Law Practice Management’s InnovAction Award.

12 INTA

Wuersch & Gering

USA-New York

Thilo Agthe Partner thilo.agthe@wg-law.com +1-212-509-4714

Wuersch & Gering is a full-service law firm with its focus on domestic and international corporate, commercial, intellectual property, tax and securities law. As a boutique firm, it is sensitive to the needs of entrepreneurial and mediumsized businesses and their investors and are able to efficiently address complex legal issues faced by multinational corporations. The firm’s IP services are geared mainly toward foreign clients doing business in the United States. They have developed a niche expertise in representing the interests of foreign companies and individuals who require intellectual property services in the US. It, therefore, has a unique understanding of client’s needs and, importantly, understands their concerns. Also, multilingual attorneys and staff are capable of communicating with clients from Switzerland, Austria, Germany, Italy and France in their native language. Wuersch & Gering joined INTA in February of 2003, when Thilo Agthe joined the firm. He said: “I realized from the beginning that, if W&G was going to be a player in international IP protection, especially trademarks, INTA membership was an absolute must.” “Another benefit, one that I find personally to be the most rewarding part of being an INTA member, is the opportunity to work on committees.” He added: “INTA membership is a huge benefit to our trademark practice. Not only the resources that INTA itself provides, but the extensive network of members across the globe is beneficial. If I need to find a correspondent in any country, all I have to do is pick up the membership directory, which is also available online. “Another benefit, one that I find personally to be the most rewarding part of being an INTA member, is the opportunity to work on committees. I have had the opportunity to do committee work for the last several years, first as a subcommittee member, then as a subcommittee chair and next year I will be vice-chair of INTA’s Harmonization of Trademark Law and Practice Committee. The opportunity to help shape policy and to influence the development of trademark law around the world has been extremely rewarding.”


R. Kunstadt, P.C.

USA

- New York

Robert Kunstadt Managing Attorney +1 212 398 8881 mail@rkunstadtpc.com

Robert Kunstadt established the firm R. Kunstadt, P.C. to provide prompt, innovative and effective IP service. The firm achieves this by applying technology strategically to leverage the skills of a select, closely-coordinated staff. The practice includes patent, trademark, copyright and antitrust trials, foreign and international litigation strategy and worldwide IP portfolio licensing and management. Solving difficult cases that need thoughtful study, without requiring a large litigation staff, is the firm’s forte. According to Mr. Kunstadt, managing partner, since the US joined the Madrid Protocol, foreign applicants can easily designate the US in international applications. However, new challenges face trademark owners as a consequence of the global economic crisis, and their attorneys need to redouble their efforts to manage brands efficiently. Mr. Kunstadt has litigated jury and non-jury cases involving chemistry, pharmaceuticals, software and mechanical engineering. He has experience in the economics of damages calculation for IP infringement, and served on the successful defence of the damages phase of the leading patent case Windsurfing v. BIC. A graduate of Yale University and the UCLA School of Law, Mr. Kunstadt was a postgraduate Research Fellow at the Max Planck Institute for Patent, Copyright & Competition Law, in Munich, Germany. From 1978 to 1997, he practised at New York’s Pennie & Edmonds as an associate and partner. His November 1998 article in The National Law Journal, ‘Sneak Attack on US Inventiveness’, forecast the trend to business method patents.

Mr. Kunstadt has served on the Editorial Board of INTA’s legal journal The Trademark Report, and acted as its Editorin-Chief in 2006-7. In order to maximise R. Kunstadt, P.C.’s international scope, the firm became a member of the International Trademark Association (INTA) in 1997, when the firm was founded. Mr. Kunstadt noted: “We regularly meet our associates from other countries at INTA meetings, and we can be assured that our clients are well served around the world, due to the network of known trusted correspondents RKPC has developed.” In addition, Mr. Kunstadt has served on the Editorial Board of INTA’s legal journal The Trademark Report, and acted as its Editor-in-Chief in 2006-7. ATTORNEY ADVERTISING

Wood, Herron & Evans, LLP

USA – Ohio

Thomas W. Flynn, Esq. Sarah Otte Graber, Esq. Kathryn E. Smith, Esq. Partners +(513)241-2324 tflynn@whepatent.com sgraber@whepatent.com ksmith@whepatent.com

Wood, Herron & Evans serves businesses, trade associations, universities, foundations and individuals, nationwide. The Ohio-based firm’s practice is solely focused in the area of Intellectual Property (IP) law, and its attorneys are committed to aiding clients in the acquisition, development, protection, licensing, defence and enforcement of trademark and other IP rights. Partner Kathryn E. Smith notes “We work closely with our clients to devise strategies for IP acquisition, licensing and protection that fit and enhance their business objectives which increase shareholder value.” Partner Sarah Otte Graber comments “IP rights in the US are governed by federal and state laws and as well as common law, with the federal laws generally prevailing. Recent developments in IP law include integrating the Madrid Protocol into federal trademark law, and defining fraud within the federal trademark registration process.”

“Several of our attorneys have been presenters at INTA events, including at Annual Meetings and more locally at INTA Roundtable events.” When asked how Ohio’s Trademark and IP industry has fared throughout the global recession, Thomas W. Flynn, who is Of Counsel with the firm, comments “Trademark activity for our clients, particularly for our clients with major trademark portfolios, has increased over the past two years. Those clients have been actively clearing and registering new marks, while at the same time aggressively protecting their established positions. Where appropriate, we work to resolve these matters via settlement, rather than going to court.” In order to the maximise the firm’s global scope and client base, Wood, Herron & Evans, LLP has been an independent member of INTA the International Trademark Association for some 20 years. Ms. Smith said: “Wood, Herron & Evans was a member of INTA prior to its ‘internationalisation’, when INTA was a domestic organisation known as the ‘US Trademark Association’. Several of our attorneys have been presenters at INTA events, including at Annual Meetings and more locally at INTA Roundtable events.” She added: “One of the significant benefits of being a member of INTA is the collegiality of its members and the sharing of best practices and practice tips among members.”

Cozen O’Connor

USA - Pennsylvania

Camille M. Miller Partner (215) 665-7273 cmiller@cozen.com

Established in 1970, and ranked among the 100 largest law firms in the United States, Cozen O’Connor’s 550 attorneys help clients manage risk and make better business decisions. The firm counsels clients on their most sophisticated legal matters in all areas of the law, including litigation, corporate and regulatory law. It represents a broad array of leading global corporations and ambitious middle market companies, and serves their needs through 24 offices across two continents. Cozen O’Connor is organized around its Business and Litigation practices. This structure allows it to serve clients in the most effective and efficient manner, with professionals across disciplines working collaboratively to resolve any matter. Clients turn to Cozen O’Connor to succeed in high-stakes business matters and multimillion-dollar transactions, and they boast an impressive roster of business clients who rely upon their guidance in complex areas of business law. The firm is also a recognized leader in the areas of litigation and dispute resolution. Their litigators are distinguished among their peers, both for their trial advocacy skills and their aggressive and innovative representation of clients in numerous areas. Cozen regards protecting a company’s intellectual property in this fast-paced digital and global age of utmost importance. It says, your trademarks are how consumers identify you in the marketplace, your copyrights protect your creative expressions, and your patents enable you to exclude others from practicing the patented invention. All of these help distinguish you from your competitors and give you a business edge. The intellectual property practice of Cozen O’Connor represents a vital component of this integrated, full-service law firm. The lawyers can help to develop and implement protection and enforcement strategies such as patents, trademark, trade names, domain names, service marks, trade dress, copyrights, such as software and advertising, and trade secrets, rights of publicity and privacy and franchising. The firm’s lawyers have experience handling intellectual property issues including: Patent procurement and portfolio management; Patent freedom to operate, clearance, validity, due diligence and infringement Opinions; Patent counseling; Patent enforcement; Patent interferences; Trademark clearance and opinions on availability and registrability; Trademark and trade dress counseling; Trademark and trade dress prosecution and maintenance; Trademark and trade dress enforcement; Copyright prosecution; Copyright counseling.

Corporate INTL 13


Adams and Reese LLP

USA - Tennessee

Reber M. Boult - Partner Special Business Services Practice Group Leader Nashville (615) 259-1452 mitch.boult@arlaw.com

The Adams and Reese LLP Intellectual Property Team provides a full range of legal services relating to the creation, protection, and exploitation of intellectual property rights. Team members act as outside IP counsel for an impressive list of multi-national corporations and celebrities, as well as mediumsized and start-up enterprises. Adams and Reese is a multidisciplinary, regional law firm with offices in Houston, TX; Nashville, TN; New Orleans, LA; Washington, D.C. and other U.S. cities. American Lawyer magazine recently named Adams and Reese to its distinguished list of the nation’s top 200 firms - “The Am Law 200.” The National Law Journal also lists the firm on the “NLJ 250” of the nation’s largest law firms. Mr. Reber M. Boult, Practice Group Leader for Adams and Reese has been a member of the International Trademark Association for 15 years, serving on its Emerging Issues Committee.

“In a survey released by Intellectual Property Today, Adams and Reese ranks among the Top 100 law firms in the United States for its trademark practice.” He said: “Benefits of being an INTA member include the ability to influence policy via Committee membership, and the opportunity to work closely with outstanding professionals in more than 100 countries.” In addition to basic IP services, Mr. Boult and his team advise clients throughout the U.S. and the world on cutting edge issues such as international privacy, global e-commerce strategies, and global anti-piracy strategies. The most important recent development for companies extending trademark rights to the U.S. is the rapidly changing standard used by the USPTO and U.S. federal courts for cancelling trademark registrations on the basis of non-use. Mr. Boult is listed in The Best Lawyers in America (Intellectual Property Law), and in Super Lawyers State and Regional editions for both Intellectual Property and International Law. In a survey released by Intellectual Property Today, Adams and Reese ranks among the Top 100 law firms in the United States for its trademark practice. The firm manages more than 2,000 trademark registrations in more than 120 countries worldwide.

14 INTA

Ryan Kromholz & Manion, S.C.

US

John M. Manion – Partner Garet K. Galster – Associate +1.262.783.1300 info@rkmiplaw.com

Ryan Kromholz & Manion, S.C. is a full-service law firm based in Wisconsin, offering comprehensive assistance in all areas of Intellectual Property (IP) law including procurement and maintenance of IP rights, as well as the enforcement and defence of IP in litigation representation. The firm’s services include, but are not limited to, advice in areas of copyright; trade secrets; antitrust; searches and opinions concerning patentability, validity, freedom to operate and enforceability of IP; as well as purchase and sale of IP and IP counselling and portfolio management. When asked how the firm is distinguished in the provision of trademark and IP advice, partner John M. Manion and associate Garet K. Galster com

“While we have an established network of foreign associates, in the event that we are in search of a new one, we look nowhere else other than the INTA directory” mented: “In two words: personal service. Each client has direct access to the attorney that is working for the client. Additionally, we have our own in-house draftsman who can prepare any necessary patent or trademark artwork, or who can work with the client’s engineers or designers to prepare them. By maintaining all artwork preparation within the firm, the highest level of confidentiality may be preserved.” Mr. Manion and Mr. Galster also noted: “A recent, significant development pertaining to trademark law in the US is a shift in the views of trademark ‘use in commerce’ for infringement purposes as opposed to registration purposes.” Mr. Manion and Mr. Galster further explained that recognising the important role that IP can play during economic turnaround has meant clients are maintaining steady investments in their brand recognition efforts. “Indeed,” they added, “clients that may not have invested in branding in the past are doing so now – in an effort to establish a loyal customer base, which is extremely important during tough economic times.” In order to increase the firm’s global reach and client base, Ryan Kromholz & Manion, S.C. joined the International Trademark Association (INTA) approximately 15 years ago. Subsequently, the firm has received an increased flow of referrals via the Association’s Annual Meetings. Mr. Manion and Mr. Galster commented: “While we have an established network of foreign associates, in the event that we are in search of a new one, we look nowhere else other than the INTA directory.”


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Central and South America The World Trademark Review mainly reported on developments in Brazil and Mexico for 2008/2009. While Brazil’s Trademark authority punched its weight in a landmark case, the Specialised IP section of the Federal Court of Tax began its operations. Indeed, in Brazil, the Sixth Panel of the Sao Paulo State Court of Appeals held the administrator of a shopping centre liable for the sale of counterfeit products by stall holders on its premises on the grounds that the administrator benefitted indirectly from the sales of counterfeit products due to its relationship with the retailers (Case 502.136.4/5.00). The World Trademark Review reported that the administrator argued that it had arm’s-length contracts with the store owners, who were individually responsible for the products that they dealt with and that, consequently, it could not be held responsible for their misdeeds. In addition, it asserted that legal responsibility was contingent upon a finding of direct evidence that it was involved in the wrongdoing. The court disagreed, stating that the contractual relationships existing between the administrator and the stall holders showed that the administrator was not dissociated from responsibility regarding the infringing actions committed on its premises. The court affirmed that the administrator was responsible for breach of its duties of vigilance and oversight and ordered it to pay the requested moral damages. The administrator has lodged an appeal with the Superior Tribunal of Justice, maintaining that it cannot be held responsible for the acts of third parties and that it is up to the state, and not a shopping centre administrator, to stop counterfeits. Meanwhile in Mexico, the Specialised IP Section of the Federal Court of Tax and Administrative Affairs finally began operations in early 2009. The IP section has jurisdiction to review decisions under: The Industrial Property Law, Issued by the Mexican Institute of Industrial Property (IMPI); The Copyright Law, issued by the Mexican Copyright Institute; The Law on Plant Varieties; and other IP-related laws. Most of the cases heard by the IP section are appeals against decisions of the IMPI refusing trademark registration.

16 INTA

The IP section has jurisdiction to review decisions under: The Industrial Property Law, Issued by the Mexican Institute of Industrial Property (IMPI); The Copyright Law, issued by the Mexican Copyright Institute; The Law on Plant Varieties; and other IP-related laws. Most of the cases heard by the IP section are appeals against decisions of the IMPI refusing trademark registration.


Richard A. Stuart

Belize

Richard A. Stuart Principal +501 223 3954 ricstu@btl.net

Richard A. Stuart of Stuart Law in Belize takes pride in establishing long-term relationships, emphasising personalised services to clients as its top priority. The firm’s legal team combines outstanding legal and analytical skills with an understanding of and sensitivity to its clients’ business environment. The philosophy of the firm is based on its traditional commitment to provide clients with comprehensive responsible professional services, always emphasising personal attention thus enabling its partners to provide customised and cost-effective solutions. Based in Belize City, the firm’s core practice areas include Civil Litigation, Company Law, Conveyancing, Land Registration, Corporate Law, Criminal Law, Debt Collection, Estate Administration, Family Law, Mediation, Mortgages, Personal Injury, Probate, Real Estate and Trademark Registration.

“Richard A. Stuart of Stuart Law in Belize takes pride in establishing long-term relationships, emphasising personalised services to clients as its top priority. The firm’s legal team combines outstanding legal and analytical skills with an understanding of and sensitivity to its clients’ business environment. The philosophy of the firm is based on its traditional commitment to provide clients with comprehensive responsible professional services, always emphasising personal attention thus enabling its partners to provide customised and cost-effective solutions.”

Salazar, Salazar & Asociados, Soc. Civ.

Bolivia

Lorena Salazar-Machicado Partner +591 22796282 lorena@salazar-law.bo

Salazar, Salazar & Asociados, Soc. Civ. (SS&A), founded in 1982, is a leading Bolivian law firm providing a full range of services to clients. Its major thrusts are in corporate civil, commercial, constitutional, private international law as well as IP (Intellectual Property). The SS&A IP Department provides services of legal counsel in terms of industrial property matters, with the aim of protecting these rights through a variety of actions that include the registry, renovation and opposition of Distinctive Signs and Patents. Lorena Salazar-Machicado, partner at the firm, commented: “We offer our Clients the best possible services, with efficiency and transparency, at a reasonable cost. Likewise, SS&A offers services of IP Protection that fight against Product Diversion, Parallel Trading, Counterfeiting and Grey Market infractions.” Ms. Salazar-Machicado explained that Bolivia is a member of the Can (Andean Community of Nations), and consequently employs the same Decisions that are used in all member countries. She added: “The Bolivian IP legislation is not well developed. In addition, in Bolivia we have experienced recent disruptions to business as a result of the global economic crisis. The majority of our clients are from foreign countries, and because of the crisis, the amount of new clients that we receive annually has reduced considerably.“ In order to maximise SS&A’s potential for cross border business networking opportunities, the firm became a member of the prestigious International Trademark Association (INTA) two years ago. Ms. Salazar-Machicado noted: “Subsequent to joining the Association, we have received substantial interest and our number of clients has increased accordingly. Because of this, the services we provide to our clients have improved, and we can also be located more easily than was previously the case.” In addition, SS&A is a founding member of Advoc Latin America, a group of independent law firms within Latin America including locations in Argentina, Bolivia, Brazil, Chile, Colombia, Costa Rica, Ecuador, Dominican Republic, Guatemala, Honduras, México, Panama, Paraguay, Peru and Uruguay. Likewise, it is a member of Advoc, an international association of independent legal firms with headquarters in Europe.

Corporate INTL 17


Di Blasi Parente Vaz e Dias

Brazil

Paulo Parente Partner 0055 2139 81 0080 Paulo.parente@diblasi.com.br

Di Blasi Parente Vaz e Dias is an IP boutique firm focused on Intellectual Property issues in Brazil, encompassing patent, industrial design, copyright and trademark litigation and prosecution, custom law, licensing and transactions, entertainment law, as well as biotechnology and related areas. It has a goal to provide full IP services to clients with a personalized counseling within the shortest time period. It intends to become a reference in the IP area, specifically one of the 10 main intellectual property firms in Latin America.

“Paulo Parente said being an INTA-member has put the firm in direct contact with companies, IP lawyers and agents from all over the world as well as the possibility to update in respect to trademark issues around the world.” Partner Paulo Parente said, “I consider that the trademark and IP industry fared over strengthened since they had to create alternatives in order for them to survive in the global marketing. Also, the reduction of costs associated to the reputation and quality could help them a lot to pass during this period. In particular the Brazilian companies are still filing a great amount of trademarks before the Brazilian Trademark Office (BTO) and the foreign ones view Brazil as a land of opportunities. Therefore, trademark filing locally has maintained a steady pace.” The Firm has been a member of the INTA since 1994. it is also very active in its Committees. For example, the partner Paulo Parente is a member of Famous & Well-Known Marks, the partner Gabriel Di Blasi is a member of Enforcement Committee, Committee and the partner Jose Carlos Vaz e Dias is a member of Parallel Imports Committee (PIC). Paulo Parente said being an INTA-member has put the firm in direct contact with companies, IP lawyers and agents from all over the world as well as the possibility to update in respect to trademark issues around the world. He added that the network has been useful for cross-referrals because they assist clients in Latin America and need to be updated in respect to use the best IP firms in Latin America for clients. “On the other hand, theses IP firms also use us in order to represent their clients in Brazil. Thus the network can provide us an excellent tool to fulfill our clients’ wishes.

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Mourant du Feu & Jeune

Cayman Islands

Murali Ram Associate +1 345 814 6301 Murali.Ram@mourant.com

Mourant du Feu & Jeune (Cayman) is a growing full service law firm that has a respected funds, financial services, insolvency, trust and commercial dispute resolution practice, as well as individuals with specialist IP knowledge and experience. Founded in Jersey in 1947, Mourant has 30 partners and 110 lawyers operating from offices in Cayman, Guernsey, Jersey and London. It is one of the world’s leading offshore law firms, and was named Offshore Law Firm of the Year in 2007 by Chambers Global and by The Lawyer in 2005 and 2004. In the provision of trademark and IP advice, Mourant (Cayman) is growing its practice. Mourant has been advising on contentious trademark and copyright issues, and has been attending to trademark registrations for the past ten years. The IP team comprises Hector Robinson, a partner, and two associates - Murali Ram and Sonia Bush. According to Murali Ram, an associate at the firm, the main laws that govern trademark and IP laws in the Cayman Islands are: The Patent and Trade Mark Law (2007 Revision); and The Merchandise Marks Law (1997 Revision). The former regulates the recording of trade marks that have been registered as such in the United Kingdom, including a Community trade mark registered as such in the European Union; while the latter sets out the regime for dealing with trade mark infringements and related offences. As regards potential new developments, Mr Ram commented: “There have been talks of introducing direct registration of trade marks alongside the existing process of marks reregistration.” He continued: “Whilst we have found a general decline in the number of new re-registrations of trade marks, we are happy to note that all our clients continue to maintain their marks registered in the Cayman Islands.” The firm has recently joined the International Trademark Association. Mr. Ram said, “We have benefited from membership in INTA, which provides excellent opportunities to develop and share knowledge, and to build relationships with other professionals working in this area. The membership database is a useful resource for identifying appropriate IP lawyers in other jurisdictions when the need arises.”


Romero Raad Abogados

Colombia

Danilo Romero Raad Partner and Founder +571 3490155 dromero@romeroraad.com

Romero Raad Abogados was born as a boutique firm with the mission of providing complete legal and personalised advice in Intellectual Property and Competition and Antitrust Law – to satisfy the needs of its clients both effectively and efficiently. Partner Danilo Romero Raad noted: “In the IP field, our lawyers have given counsel to national and international clients in industrial property issues, particularly regarding registration and enforcement of trademarks, patents, commercial names, slogans and domain names. Moreover, our attorneys have gathered a vast experience in different aspects of Copyright Law and, on the other hand, we are leaders in the advisory related to the protection and good management of corporate privileged information (trade secrets). Due to this, our firm is in the position of offering an integral service in any topic related to IP and the so-called Creation Rights Law in Colombia.”

“Every tool provided by INTA is extremely useful, including, of course, the online trademark information” Mr. Raad added: “Romero Raad Abogados has a number of national and foreign clients engaged in different economic areas, which have entrusted us with the protection of their IP rights in Colombia and abroad. To assist our clients internationally, we have a network of specialised correspondents around the world providing a global service which we coordinate and control – in order to render a personalised attention to our client’s IP needs.” For Romero Raad Abogados it is important to keep its lawyers up to date and aware of the latest news regarding IP. To accomplish this purpose, the firm participates actively with universities in Colombia in forums, conferences and other educational activities. Mr. Raad is a professor, thesis adviser and lecturer on the subject. In addition, in order to better equip the firm for networking with international correspondents for reasons of educating its partners and gaining referrals, Mr. Raad has been a member of the International Trademark Association for more than fifteen years. He noted: “Every tool provided by INTA is extremely useful, including, of course, the online trademark information available in the Association’s Online Country Portals resource. This, along with the periodical forums and conventions, and the numerous publications regarding IP worldwide, are incredibly valuable for those who participate in the fascinating field of IP.”

Garay Guerrero Abogados

Chile

Jorge Garay P. Partner +(56 2) 6742980 jgaray@garayguerrero.cl

The main laws that govern the Intellectual Property (IP) and Trademark industry in Chile are the Industrial Property Law (No 19.039) and the Unfair Competition Law (No 20.169), the former being modified in 2005 to account for changing free commerce agreements among developing countries. In 2007, Guerrero, Olivos, Novoa and Errázuriz formed an association with Estudio Harnecker, one of Chile’s specialists in Industrial and Intellectual Property, with the objective of providing more comprehensive advice to clients. Accordingly, the firms combined their strengths to become a key reference within the industry. In 2009, all of the lawyers that were partners of Estudio Harnecker sold their interest in that firm and decided to start a new professional project. In July of the same year, they reached an agreement with Guerrero, Olivos, Novoa and Errázuriz and formed a new firm to provide legal services in Intellectual and Industrial Property. This way, Garay Guerrero was created. Due to the experience and skillsets of its members, it strives to maintain the leadership in its field which it began to achieve in 2007, and thus maintain its position throughout the economic downturn as one of the foremost legal firms in the region. According to partner Jorge Garay P., the firm focuses its practice on the areas of Intellectual and Industrial Property Rights – primarily matters of trademarks, patents, domain names, copyright and unfair competition – as well as maintaining a significant litigation and infringement practice. Mr. Garay commented: “We provide a personalised service, focusing not only on the accuracy of our advice, but also on the efficiency of our work including adequate management of the budgets of our clients.” Mr. Garay added that although the attorneys of Garay Guerrero have been involved with the International Trademark Association for some years, the firm – in its present form – only became a member this year. He said of the firm’s INTA affiliation: “Each year you are granted the opportunity to meet many people during the INTA meetings. In most cases, we have remained in contact with these acquaintances after the meetings, allowing us to work together for different clients.”

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HarneckerCarey

Chile

Guillermo Carey - Partner gcarey@harneckercarey.cl www.harneckercarey.cl +56 2 439 7700

HarneckerCarey is the result of the integration of Estudio Harnecker, a premier IP boutique firm with 100 years of experience in the Chilean market, to Carey y Cía., Chile´s largest law firm. As a result of this integration HarneckerCarey, provides to its clients Harnecker’s longstanding expertise in patents and trademarks filings and prosecution, combined with Carey y Cía.’s experience in litigation, regulatory matters, copyright and licensing. This year, Chambers Latin America has given Carey y Cía., the Chilean Firm of the Year Award. This is the first time a Chilean law firm is recognized with this honor. Chambers stated: “Chile’s biggest firm continues to dominate the market in multiple practice areas, offering not just quantity but also the very highest quality”. Also, during 2009 Carey y Cía. was selected as Chilean Law Firm of the Year by Who’s Who Legal and International Financial Law Review, and also as Tax Firm of the Year by International Tax Review.

“We recognize a clear leadership of INTA in driving the IP tendencies and discussion of the topics that will be the base for future legislations and treaties.” Practice areas include: Anti-Counterfeiting; Copyright; Consumer Protection and Product Liability; Data Protection; Domain Names; Geographical Indications / Designations of Origin; Intangible Assets Valuation; IP Management; Labeling and Advertisement; Licensing, Distributorship and Franchises; Litigation; Patent and Industrial Designs; Pharmaceutical / Regulatory; Plant Varieties; Trade Secrets; Trademarks; and Unfair Competition. The firm has responsibility for more than 5,400 patents and 27,000 trademarks. The firm’s competitive advantage when providing IP services to its clients is its ability to offer a fast, proactive and efficient execution, both in the normal prosecution services, and mainly, in the “value added” services. Partner Guillermo Carey, says: “The firm has been active members of INTA since its origins and even before when it was referred to as USTA. We recognize a clear leadership of INTA in driving the IP tendencies and discussion of the topics that will be the base for future legislations and treaties. “In addition, INTA has proved to be a key partner to HarneckerCarey offering a “one-stop-place” to meet with clients and colleagues from all over the world, helping to create, maintain and strengthen professional relationships within this profession.”

20 INTA

Asensio, Barrios, Andrade & Asociados

Guatemala

Ignacio Andrade - Partner +(502) 23318168 iandrade@guatelaw.com Virginia Servent - Associate +(502) 23318168 vservent@guatelaw.com

Asensio, Barrios, Andrade & Asociados was established in 1975 by Julio Asensio Wunderlich and Jorge Asensio Aguirre. The firm’s partners prioritise quality, efficiency, security and responsibility, and specialise in Corporate Law, Commercial Law, Labour Law, Notarial Services, Intellectual Property, Tax Law, Administrative Law, Civil Law and Litigation. Ignacio Andrade, senior partner, commented: “Our firm is consistent in maintaining the highest ethical standards, and bringing the correct appreciation regarding the resolution of conflicts among our clients.” The firm’s Intellectual and Industrial Property department began in 1985 and was set up by founding partner Jorge Asensio Aguirre to obtain quick and professional results for clients at low cost. The Patents department was established in 1998 and has subsequently operated in patent registrations as well as in patent litigation; meanwhile, the Trademarks department was established in 1993. Trademark work encompasses oppositions to criminal actions, commercial actions to nullify and cancel trademark registries, unfair trade actions, litigations related to copyright and trademark violations as well as other administrative, civil, commercial and constitutional remedies and proceedings related to trademarks and IP within the Guatemalan territory. Guatemala is subject to the Interamerican Convention for the Protection of Trademarks and Commerce as well as being part of the Paris Convention, Berna Convention, Rome Convention, TRIPS, PCT, WPPT and WCT among others. Mr. Andrade noted: “We celebrate a TLC (free trade agreement) between the USA, all Central American Countries and the Dominican Republic which assists with cross border inquiries pertaining to trademark and IP. However, as with many other countries, the recession resulting from the economic meltdown has decreased trademark and patents applications in general while increasing litigation in such matters.” In order to increase the firm’s client base and international scope, in 2001 Asensio, Barrios, Andrade & Asociados joined INTA, the International Trademark Association. Mr. Andrade commented: “The opportunities for networking provided by INTA have improved our international visibility as an IP firm, allowing us to work with those countries with which Guatemala does not have formal relations. INTA has provided us with several opportunities to work with regional correspondent firms for regional registrations.”

Palacios & Asociados

Guatemala

Marco Antonio Palacios Director Partner +50 (2) 2385 3416 mapalacios@sercomi.com.gt

Palacios & Asociados was founded in 1994. The firm is based in Guatemala, with correspondent offices in all of the Central American Countries as well as the Dominican Republic. Palacios & Asociados provides comprehensive advice in areas of Corporate Law; Intellectual Property; Banking and Financial Law; Pharmaceutical Law; Contractual Matters including distribution, franchising and notary public services; Advertisement Law; Litigation with specialised services in IP enforcement; and Central American integration legislation and trade agreement administration. In addition, the firm is a member of global organisations including INTA (International Trademark Association), the Global Advertisement Law Association (GALA) as well as the American Chamber of Commerce of Guatemala (AMCHAM) and the Inter American Copyright Institute (IIDA). Through its network affiliations, the firm is granted access to training and referrals opportunities, also collaborating on the Doing Business Project of the World Bank Group. Director partner Marco Antonio Palacios noted of the firm’s affiliation with INTA, which it has maintained since 1999: “INTA provides an excellent forum for meetings and discussions with firms from basically all over the world. It also allows for other firms to learn from the capacities, commitment and seriousness of our firm, resulting in an increasing cross-referral practice.” Mr. Palacios also commented: “Beyond registration services, our firm addresses IP in a comprehensive manner. It provides for highly qualified counselling in the management of trademark portfolios in Central American and the Dominican Republic and has been known for its experience in the IP counselling for regional projects covering legislation, capacity building, and training.” For more than eight years, Mr. Palacios headed a USAID IP project in Central America, executed through the Central American Economic Integration Secretariat (SIECA). Mr. Palacios has also served the World Intellectual Property Organization (WIPO) as consultant in Central America, the Caribbean and India and has lecturered in several universities in C.A., Venezuela, Colombia and the Franklin Pierce Law Center as well as by the United States Patent and Trademark Office. The firm has provided services in IP training to a European Union sponsored program and to several USPTO programs executed with SIECA.


Unimark, S.A.Nassar Abogados Centroamérica

Costa Rica

Monserrat Alfaro S. Director +(506) 2257-2929 Ext. 261 malfaro@unimarkcr.com

With more than 25 years of experience, Nassar Abogados upholds a longstanding tradition of legal consulting and services designed according to first-class quality standards. The firm’s success and international recognition come from the excellent work of its professionals, their positive results and their adherence to high ethical standards. Unimark, S.A., an associated Nassar Abogados company, provides highly specialised Intellectual Property (IP) protection services. Since its inception in 1997, it has been characterised by close, unbroken relationships with its clients, offering solutions of unsurpassed technical quality tailored to their individual needs within the service areas of Trademarks, Patent and Designs, Copyright, Sanitary Registrations, Labelling and Domain Names. According to Unimark, S.A. director Monserrat Alfaro S., the international image of Nassar Abogados – as well as its strategic experience in a wide variety of legal areas – have permitted the firm’s expansion in the Central American region. Ms. Alfaro S. noted: “Through the establishment of our additional offices in Costa Rica, Honduras, Nicaragua el Salvador and Guatemala, the firm has established strategic alliances with well known firms in Panama and the Dominican Republic.” She added: “Our clients are primarily transnational corporations in Europe, Asia and North, Central and South America, with interests and commercial, industrial and service operations in the Central American Region.” When asked how the firm distinguishes itself in the provision of trademark and IP law, Ms. Alfaro S. noted: “Nassar Abogados Unimark’s leadership is reflected in a history of successful results and defined by the following characteristics: operations by means of our own offices in Central America; strong regional experience and practice; specialised professionals in each country; and standardised rates for the entire region and personalised services for clients.” In order to increase its global scope and expertise, the firm has been a member of the International Trademark Association (INTA) since 2003. According to Ms. Alfaro S., the firm’s affiliation with INTA has improved prospects for cross-border referrals, as well as opportunities for networking in person. She said: “The benefits related to the firm’s exposure, as well the opportunities to build strong relations with other firms around the world during the Annual Meetings, have proven invaluable.”

A.C Palomo & Porras

Guatemala

Hector Palomo Partner +502 2279 7474 hpalomo@palomoyporras.com

A.C. Palomo & Porras is a Guatemalan Law Firm, focused in Corporate Law and IP Law, including Trademarks, Patents, Enforcement and Litigation. Our firm focuses in the Guatemalan Market, rendering services in all the Central American countries thru their associated firms. A.C. Palomo & Porras was founded in 1978, and at this moment is one of the most prestigious Law Firms in Guatemala, for its tradition, ethics and expertise. The firm constantly attempts to provide our clients a strategic guidance in order to protect their Intellectual Property patrimony. We guarantee our clients the highest level of commitment and excellence, rendering our services thinking in the client´s needs including cost efficiency. According to partner at the firm, Mr. Hector Palomo, the national legislation regarding Trademark, Patent and Unfair Competition matters comprise the “Industrial Property Law”. For Copy Rights the legislation would be the “Copyright Law”. As well Guatemala is a Member of the Free Trade Agreement between The United States of America and The Central American Countries, as well as the Paris Convention, the PCT Agreement and TRIPS agreement, among others. He said: “The IP rights are one of the most valuable assets of a Company, so in this Economic Crisis, the Companies made a big effort to keep their portfolios, maybe not developing new Trademarks, but being very careful in renewing their IP rights, enforcing their IP rights, requesting an strict watching service, filing oppositions and other measures which helped them to maintain a healthy portfolio.” A.C. Palomo & Porras has been a member of INTA since 2004. Mr. Palomo said the benefit of being a participant has been worth more than belonging to any other IP network. “Our cross referrals have been enforced since becoming part of INTA, now we are exploring new opportunities, alliances and investments taking as a reference our INTA clients, not just in IP, but in the Corporate Area,” he said.

“…we are exploring new opportunities, alliances and investments taking as a reference our INTA clients, not just in IP, but in the Corporate Area,” He called the Online Country Portals an excellent tool, but added, “For us the Annual Meeting still is the most benefit and successful activity.”

Bufete Mejia & Asociados

Honduras

Mr. Ricardo Mejia Partner Bufete Mejia & Asociados +50 4 550 7744 rmejia@bufetemejia.com

BUFETE MEJIA & ASOCIADOS is the leading Honduran and Central-American full service Intellectual Property Firm, with an important regulatory and corporate department. The firm is committed to providing the highest quality IP services in a timely professional manner at a reasonable cost. It has a well-earned and long standing reputation for reliability and responsiveness. Indeed, it has been identified as Honduran top IP firm for many years by Latin Lawyer plc. – Chambers has also indicated that BUFETE MEJIA & ASOCIADOS is a well oiled and pro-active machine. The firm distinguishes itself in the provision of trademark and IP advice through Dependability – Permanence – Responsiveness – and Dedication. It strives to live up to its slogan: In BUFETE MEJIA & ASOCIADOS: we care. The main law that governs trademark and IP laws in Hondura is the Honduran Industrial Property Law of 2000. Also, conventions signed and ratified by Honduras including: TRIPS, Paris Convention, PCT.

“The firm has been a member of the International Trademark Association for more than 20 years. Mr. Mejia said INTA is the preeminent organization in the field of trademarks.” According to partner at the firm, Ricardo Mejia, the IP industry has suffered but in the past few months it has started to recover. The firm has been a member of the International Trademark Association for more than 20 years. Mr. Mejia said INTA is the preeminent organization in the field of trademarks. He called Online Country Portals very useful. He continued: “Attendance to meetings and participation in committees and task forces has also proved very useful both from an educational and networking point of view.”

Corporate INTL 21


Medina, Rosenthal & Fernandez CENTRAL LAW

Honduras

Presiding Partner: J. Humberto Medina Alva Tel: +504 550 2800 Email: jhmedina@abogados.hn

Founded in 1989 by three outstanding attorneys, Medina, Rosenthal & Fernandez CENTRAL LAW has risen to a prominent position among the best Honduran and Central American law firms. International and National clients recommend it as “a key strength, it saves time, money and manpower and its professional quality is guaranteed”. The firm’s commitment to serving its clients with legal services of the highest quality at cost-effective rates, enables it to meet the most demanding international standards. Main areas of practice include: Intellectual Property; Foreign Investment; M & A; General Corporate; Labor Law & Human Resources; Litigation & Arbitration; Banking; and Real Estate. The firm advises clients on all aspects of intellectual property law, including patent, trademark, trade secret and copyright, from the registration of rights at local and international offices, to the enforcement at the pertinent administrative and judicial instances.

“It has been very useful for crossreferrals, both from the quantitative, as from the qualitative aspect.” Its multijurisdictional approach which covers Central America, Panama, Dominican Republic, Mexico, Puerto Rico and Colombia from a single office in any of the countries of influence, has proven as a very valuable tool for clients. According to Presiding Partner J. Humberto Medina Alva, any violation of copyright and related rights provided by applicable law in Honduras, according to their severity will be fined 10 to 200 minimum wages. He continued: “Despite the global economic turmoil, Central America is considered as an emerging market. As such, many transnational companies have targeted the area, increasing their business in the different countries. Thus, demand for legal services for the trademark and IP industry has grown considerably in the area.” A member of the International Trademark Association for three years, J. Humberto Medina Alva outlined the main benefits as: close ties with the most important IP law firms in the world; an increase in cross-referrals; and, the opportunity to a better understanding of the IP market. “It has been very useful for cross-referrals, both from the quantitative, as from the qualitative aspect of the clients we have been able to service by means of the referrals,” he said.

22 INTA

Lic Daniel Casco L. / BUFETE CASCO

Honduras

Leonardo Casco-Fortin Partner +504 237-6577 reforma@cascomark.com

Since 1906, the mission of the law firm Helmet Law Firm (Lic Daniel Casco L.) has been to ensure its clients, both national and foreign, receive the most complete legal counselling in matters of brand and patent registration in Honduras. The requirements to proceed with the filing of a trademark, service mark, slogan or commercial name in Honduras include: name of the mark, applicant’s name and complete address, power of attorney duly legalised by apostille, class number, thirty (30) prints if colours are to be claimed, and a priority document without legalisation.

“Among the other requirements necessary to file a trademark in Honduras are: claiming priority according to the Paris Convention and an opposition system of third parties based on the application’s publication.” Among the other requirements necessary to file a trademark in Honduras are: claiming priority according to the Paris Convention and an opposition system of third parties based on the application’s publication. In addition, the following information is required to proceed with the filing of an application: name, nationality, complete address of the applicant, labels (preferably) in an electronic format or 25 labels with a size of 8 x 8 cms, a specific list of goods or services to be included in the application per class, and a power of attorney document signed for an authorised officer of the company before a notary public, which must certify the legal existence of the company, as well as the ability of the person who signs the document. The Honduras Consulate must legalise this document through the apostille according to the Hague Convention. This document may be filed along with the application or during the following 30 days after filing. A priority document is also required, which is a certified copy of the application from which the priority rights are claimed. This document may be filed along with the application or during the following three months after filing.

Goodrich, Riquelme y Asociados

Mexico

Enrique Diaz Partner 011 52 55 55251422 ediaz@goodrichriquelme.com

With 75 years of experience, Goodrich, Riquelme y Asociados has a long tradition of assisting clients in making their business objectives a reality. By means of a cross practice among service areas and industry teams, the firm’s lawyers achieve an innovative approach towards rendering advice to demanding business communities worldwide. Partner Enrique Diaz commented: “We pride ourselves in knowing what drives key industry sectors and are able to provide the most creative and costeffective business solutions possible. Our clients are medium-sized, as well as leading global companies of numerous nationalities and economic sectors.” Mr. Diaz added that the firm’s partners ensure clients are competenty represented wherever their businesses take them. He noted: “This is why, in addition to our offices in Mexico City and in Paris, as well as our network of alliances, Goodrich actively participates as founder firm of the Bomchil Group, an association of independent law firms with offices in practically every Latin American country.” In addition, Goodrich participates in trade associations and local and international bars, and the firm’s members are frequently invited to speak at both domestic and foreign conferences including those organised by INTA. Being a full-service law firm, Goodrich is divided into nine practice areas serving 15 representative industries. Practice areas include: Corporate and M&A; Commercial Transactions; Finance, Banking and Venture Capital; Intellectual Property; Taxation, Customs and Trade Regulation; and Environment and Climate Change. Meanwhile, the firm’s international client base is comprised of Fortune 500 corporations as well as medium sized companies segmented within numerous economic sectors including: Intellectual Property, which is the largest and strongest practice in the firm; Oil & Gas; Power Generation and Clean Energies; Electronics, Software and E-commerce; Mining and Natural Resources; Agriculture and Food Processing; Health Care, Pharmaceuticals, Bio-Technology and Chemical; and Media, Entertainment and Sports Law. Today, Goodrich has a professional and administrative staff of of 250. Its attorneys and the transactions handled by the firm are frequently listed among the most prestigious directories and publications worldwide, where the firm is commended for its professional ethics and effective teamwork, which ensure consistently high levels of innovation and success.


Isla Del Campo, SC

Mexico

Gloria G. Isla Partner Partner Alberto Bortoni 00 52 55 5668-9297 00 52 55 5681-2464 bortoni@isladelcampo.com

Isla Del Campo, based in Mexico, has obtained its reputation through more than 20 years of personal experience in intellectual property. This translates into credibility as well as the great confidence that clients show. The firm prides itself on its advice to clients on what is protectable or not of their intellectual assets and thereafter, take all necessary steps to protect its intangible assets such as patents, trademarks and copyright. These services may be offered since the development of an idea or concept until the drafting, filing, prosecuting of the corresponding applications, as well as the maintenance until the enforcement of such rights.

Ms. Gloria G. Isla, founder of the firm says that the networking and the exposure offered by INTA well worth the cost of the membership and the travels expenses to attend to the Annual Meetings. Partner Alberto Bortoni said, “The Economy is a factor that strongly impacts different areas and IP is no exception. The global economic turmoil has affected IP more than ever 2008 and 2009. However, it is during hard times that the IP assets are most important. We pride in designing for our clients a strategy that is both cost efficient and guarantees the most convenient protection of their assets.” Since the incorporation of our firm ISLA DEL CAMPO, SC we have been INTA members, however, its partners have been with INTA for more than 20 years. Ms. Gloria G. Isla, founder of the firm says that the networking and the exposure offered by INTA well worth the cost of the membership and the travels expenses to attend to the Annual Meetings. “Our exposure is tremendous as we see old colleagues who refer us to new and potential clients,” she said. She continued: “…no marketing effort gives better result than the reference of a happy customer.”

Link International de Mexico, S.C.

Mexico

Gilberto Sanchez Partner +55 22828800 gsanchez@linkinternational.com.mx

With offices that spread right across Mexico, the law firm Link International is both well-established and experienced. The firm is proficient in a multitude of practice areas which makes it a top choice for businesses and individuals alike. Most importantly, it functions as an organisation with juridical-contentious and counselling services that provides clients with an integrated and full service. The firm works with clients on an international level. Involved in many cross-border transactions, the firm said it is grateful to INTA, which provides an international network of competent contacts. According to partner Mr. Gilberto Sanchez, membership with INTA provides the firm with a platform and means to really fulfil clients’ wishes.

“According to partner Mr. Gilberto Sanchez, membership with INTA provides the firm with a platform and means to really fulfill clients’ wishes.” The firm’s practice areas include legislation and governmental liaisons; corporate; intellectual property; contentious areas (legal defence whenever a clients’ rights are jeopardized or threatened); administrative law; portfolio recovery (which includes due diligence, analysis of security interests, and credit/ loan portfolio assessment). Moreover, its IP practice is formed from a highly skilled and experienced team of attorneys-at-law, technical and administrative personnel. The services the team offers include, but are not limited to; analysis of copyrights; application, procedure and granting of patents of invention; registration of utility models, industrial designs and distinctive signs; protections of all types of transactions related to intellectual property rights; counselling on alternative dispute resolutions; administrative, legal and/or criminal litigation regarding IP and ancillary issues. Mexico operates under an Administrative law system. Copyright in Mexico is regulated by the Mexican Copyright Act and IP by the Industrial Property Act. Link International is in a position of strength to offer clients oversight for infringement of their obtained rights. It also employs anti-piracy investigation and enforcement proceedings before the relevant authorities. The firm will carry out infringement and lapse declarations, nullity, expiration and cancellation, Mexican Patent and Trademark Office. It will also carry out legal action to request or challenge payment of damages and losses resulting from the non-authorized use of intellectual property rights.

Novopatent International Service, S. C.

Mexico

Hugo Rodriguez Partner +52 7773106590 hugorm@novopatent.com

Novopatent International Service, S. C. is a globally focused boutique firm dedicated to the practice of industrial property law. The firm’s practice encompasses all aspects of patent, trademark and copyright law including counselling, prosecution, licensing and litigation. In addition, Novopatent’s partners provide professional services in the areas of corporate law, foreign investments and contentious causes derived therefrom. Novopatent’s international focus has recently increased in scope, as the firm became affiliated with INTA, the International Trademark Association, earlier this year. Among the mains laws governing trademark and IP matters in Mexico are the Law of Industrial Property and its Regulations; Copyright Law and its Regulations; Law of Vegetal Varieties and its Regulations; Civil Procedures Code (complementary); and Penal Code (complementary). Novopatent partner Hugo Rodriguez noted that a new Courtroom specialised in IP commenced operations at the Federal Court of Tax and Administrative Affairs (FCTAA) on January 5th, 2009. He said: “This Courtroom has jurisdiction to review decisions issued by the Mexican Patent Office based on the Industrial Property Law, as well as the Mexican Copyright Institute based on the Federal Copyright Law.” The trademark and IP industry in Mexico has not been spared the turbulence of the global economic recession. Mr. Rodriguez commented: “In our country, trademarks and IP have suffered a slump both in local numbers and foreign numbers, since the number of trademark and patent applications filed in Mexico have seen a decrease.” Mr. Rodriguez added that the firm is home to professionals such as engineers and lawyers with comprehensive experience in the industrial property field, who are helping clients realise business potential during the downturn. Mr. Rodriguez noted: “We at Novopatent seek to provide an excellent service to both our direct clients and foreign associates, in order to help them achieve maximum benefit from IP rights.” He added: “Our clients’ economy really matters, and we implement policies which keep our clients’ expenses and disbursements at the minimum.”

Corporate INTL 23


Bufete Candanedo

Panama

Rolando Candanedo N. Senior Partner 0050 7+213-0033 rolando@bufetecandanedo.com

Bufete Candanedo was founded in 1976 and offers an array of specialized corporate legal services. It has grown in experience, reputation and diversity of practice over the course of its 30-year history. It is organized into multiple departments in the following areas: Corporate & Business Law; Corporate Counseling; Taxation; Real Estate Investments; Environmental; Immigration; Mergers & Acquisitions; Business Opportunities in Panama; Intellectual & Industrial Property; Food & Drug Regulatory Affairs; Litigation; Arbitration & Mediation; Maritime Law. Bufete Candanedo is deeply involved in all forums concerning the discussion of IP issues, and actively participates in the process of approving and adopting agreements and laws for the benefit of the IP community. It is a member of ASIPI, INTA, AIPPI, ABA, Panamanian Association of Industrial Property, Panamanian Chamber of Technology and Telecommunication and Panamanian Bar Association. It offers services not only in Panama, but in Central and South America through a net of Associates committed with the same quality of service that characterized our firm. The IP group has an excellent team of professionals specialized in Intellectual Property Law, that provides full services to a wide range of clients from companies to individuals, connecting in a one-stop shopping the services required in the Intellectual Property field. The net of associates around the world (especially in Latin America), the efficient managing of the IP assets of clients and highly specialized service, provides clients with a trustworthy associate in their interests. Services include, but are not limited to, registration and protection of trademarks, patents, utility models, designs, copyrights and domain names; litigations concerning opposition and cancellation of trademarks registrations, trademarks infringement, copyrights infringement and related matters. According to the Senior Partner Rolando Candanedo N., transit through the Panama Canal and Colon Free Zone is the main concern of the companies that carry merchandise with well known trademarks, and thus, the risk of carrying the transit without the registrations titles is an incentive to file applications in Panama. Rolando Candanedo N. said the firm been a member of the International Trademark Association since1986. He said cross-referrals are very important, because you can share experience with you colleague

24 INTA

Scavia & Zúñiga Abogados

Peru

Renzo Scavia Partner 0051-1 440-8181 rscavia@syzlegal.com

Scavia & Zúñiga Abogados, based in Peru, is the result of the merger of activities between Estudio Scavia Abogados, a law firm specialized in Intellectual Property and Competition Law, founded by Managing Partner, Renzo Scavia R., and Ricardo Zúñiga N., founding partner of Estudio Morante & Abogados, a law firm which specialized in Corporate Law and Litigation. The firm offers personalized and highly specialized integral legal services to its clients in business law and foreign investment, with particular emphasis in corporate law, private and public contracting, administrative economic law, labour law, intellectual property, competition law, sanitary registrations, licensing, franchising, distributorship, domain names, e-commerce and regulation of the market, as well as in civil, commercial and administrative litigation. Managing partner Renzo Scavia said: “We provide highly efficient and timely legal advise to the economic agents when they decide to access to the market, cooperating in the election and generation of the most efficient commercial vehicle for the development of their economic activity through the incorporation of a Company or by the execution of associative agreements. Also, our team is aware that being efficient when rendering legal services to our clients is not enough that is why our slogan is, “Turning efficiency into excellence.” Scavia & Zúñiga Abogados has been an INTA member since 2004, but Renzo Scavia has been attending INTA Annual Meetings from 1999. The firm actively participates in INTA activities and, as a result, Renzo Scavia was invited by INTA to speak at one of the INTA round tables in the Annual Meeting which took place in Chicago in 2007, and has been appointed by INTA to continue being a member of the INTA Bulletin Committee for the period 2010-2012. Managing partner Renzo Scavia concluded: “INTA is, undoubtedly, the most important and prominent association on trademark issues throughout the world. It has showed to be an essential tool not only for academic purposes, but also for networking, for strengthen our relationships with friends and clients and, finally, for sending and receiving referrals to and from other INTA members.”

M. Uzcátegui & Asociados

Venezuela

Leonardo R. Uzcátegui P. Partner +58 212 693 5012 lrup@uzurma.com

Since September 2008, the government of Venezuela has applied the Industrial Property Law of 1955, replacing the Decision 486 of the Andean Community of Nations, which in turn replaced the Industrial Property Law of 1955. M. Uzcátegui & Asociados provides advisory to clients in the areas of Industrial Property (trademarks and patents); Intellectual Rights (copyright and legal deposit); and audits on matters related to maintenance of trademarks, trade names, domain names, slogans and annuities. Since its foundation, the firm has provided comprehensive services at a national and international level, culminating in more than 50 years of experience. M. Uzcátegui & Asociados partner Leonardo R. Uzcátegui P. commented: “Within our gamma of activities, we are distinguished in the execution of franchising contracts, assignments, audits and licences of trademarks and patents. We take care of processing clients’ work from the initial stages of searching and filing, to administrative prosecution, litigation, investigations and enforcement of IP rights in Venezuelan countries and all American countries.” When asked how the firm is distinguished in the provision of trademark and IP advice, Mr. Uzcátegui noted: “M. Uzcátegui & Associates has implemented a new Case Management System (CMS) where our clients will now have access to our database every day of the year. This can be used to verify the status of cases including deadlines and due dates, as well as to extract copies of trademark/patent applications and/or any other documents filed before the competent administrative office and/or Tribunals of the Republic.” Mr. Uzcátegui added that Venezuela’s trademark and IP industry has not been spared the widespread ramifications of the economic downturn, stating that in recent months the firm has noted a significant decrease in the number of patents/trademarks filed with the Patents and Trademarks Office in the country. To increase its international capacity and client base, the firm recently joined INTA, the International Trademark Association. Mr. Uzcátegui said of the resultant benefits that a number of firms had made contact for means of advice and referrals, having obtained information and recommendations for M. Uzcátegui & Associates via INTA’s comprehensive Online Country Portals, which provide a gateway to country-specific online trademark information.


Europe EU Trademark & IP Law A uniform system of protection of intellectual property rights, ranging from industrial property to copyrightand related rights, constitutes the foundation for creativeness and innovation within the European Union. Respectof the basic princi ples of the internal market(the free movementof goods and services and free competition) is based on standardisation of intellectual property atEuropean level. Protection of intellectual property is covered by many international conventions, most of which are implemented by the World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO). The European Union possesses two important bodies to carry out its mission: the Office for Harmonisation in the Internal Market (OHIM), which is responsible for the registration of Community trade marks and designs, and the European Patent Office (EPO). The Commission is currently campaigning for the effective introduction of a Community patent system, which would be less costly and more legally effective, as a guarantee of competitiveness for European industry. Finally, the protection of these rights also entails protecting them against piracy, illegal trade and counterfeiting. Copyright and related rights provide an incentive for the creation of and investment in new works and other protected matter (music, films, print media, software, performances, broadcasts, etc.) and their exploitation, thereby contributing to improved competitiveness, employment and innovation. The field of copyright is associated with important cultural, social and technological aspects, all of which have to be taken into account in formulating policy in this field. There has been significant harmonisation of the substantive copyright law to reduce barriers to trade and to adjust the framework to new forms of exploitation. Common ground is also needed with respect to the rules on the enforcement of rights, i.e. on access to justice, sanctions and remedies regarding infringements. In order to grasp the full potential of marketing intellectual property rights in the Internal Market, complementary measures on the management and licensing of these rights may also prove necessary. The Internal Market DG’s task is to enforce the “acquis� on copyright and related rights; to advance it further and to modernise and adapt it to new developments in technology or the markets concerned as this is an evolving scenario.

The copyright industries are critically important to the European Community because they involve media, cultural, and knowledge industries. Development in the industries is indicative of performance in post-industrial society especially where related to the information society. Directorate-General Internal Market is also responsible for conducting negotiations on industrial and intellectual property within World Intellectual Property Organisation (WIPO) (e.g. audiovisual, broadcasting, resale right, databases, etc.), for participating in the relevant WIPO General Assemblies, and for contributing to the work of other international fora on IPR related matters with a view to ensuring adequate protection of intellectual property rights (IPR) internationally.

There has been significant harmonisation of the substantive copyright law to reduce barriers to trade and to adjust the framework to new forms of exploitation. Common ground is also needed with respect to the rules on the enforcement of rights.

Corporate INTL 25


DLA Piper

Belgium

Louis Puts Partner louis.puts@dlapiper.com +32 (0) 2 500 1591

Cabinet Debay

France

Yves Debay Partner IP Attorney Tel : 01 39 18 46 24 E-mail : Cab.debay@wanadoo.fr

CABINET MORELLE & BARDOU, SC

France

Jacques Bardou Partner 0033 (0)5 61 754 600 bardou@morelle-bardou.fr

CABINET MORELLE & BARDOU, SC

DLA Piper’s Intellectual Property and Technology practice is one of the largest groups of IP lawyers in the world. It is ranked as a leading IP team by both Legal 500 and Chambers directories across Europe, and in the US it has been named by the National Law Journal in its prestigious Defence Hot List. Using cross-disciplinary global teams to help clients with various technologies, DLA Piper’s IP experience includes IP litigation as well as representation in areas such as applications, prosecution, and filings for patents, trademarks, and copyrights. It advises companies on how best to leverage IP assets into revenue streams through licensing agreements, royalty structures and other dispositions. It also undertakes IP due diligence and IP audits and has formulated OEM/software licensing and outsourcing agreements for some of the largest companies in the world. The Technology, Media and Communications team in the Belgium office is recognised as a leading Belgian practice advising Belgian and international corporations, public entities, IT users and outsourcers. It also helps clients to maximise and defend the value of intellectual property. With DLA Piper, you get the deep IP knowledge more commonly associated with boutique IP firms, along with the global resources and wider commercial perspective of our international practice. Increasingly, these are both essential for staying ahead in this dynamic area. Partner at the Belgium office, Louis Puts, focuses on advising on the legal issues in relation to trademarks, patents, designs, copyright, unfair competition and distribution agreements. He has extensive experience in counterfeiting, trademark, patent and unfair competition litigation. He regularly represents clients in infringement and nullification proceedings before the Belgian Courts in trademark and patent disputes. He has successfully represented clients before the European Court of Justice in relation to disputes under article 28 EC Treaty. He also assists clients in trademark licensing and technology transfer agreements. Louis is admitted to practice in Brussels is a member of the International Association for the Protection of Industrial Property (AIPPI) and the Benelux Association for Trademarks and Designs (BMM). Louis is also the author of several articles on intellectual property issues.

26 INTA

Cabinet Debay is a medium-sized Paris-suburbbased firm of trade mark experts, member of INTA since two years. However the firm has a long and successful history of offering clear and practical advice and guidance to numerous clients on trade mark searching, clearance and registration in the FRANCE, at the European Community Trade Marks Office, at OMPI (Geneva) and worldwide through a network of foreign law firms. The firm strives to ensure its clients obtain strong and enforceable trade mark rights at the lowest cost and are kept away from needless and expensive litigation whenever possible. All of the 4 practising trade mark attorneys are qualified. The firm can efficiently help to determine full trade mark strategies for clients, including worldwide trade mark protection utilising both the European Community mark as well as international protection via the Madrid Protocol.

“The network helps the firm to cultivate strong relationships with other IP lawyers across the globe.” It can also offer clear and practical advice in other trade mark related matters such as licensing, infringement, passing-off, trade mark watching and enforcement generally. Our firm is adaptable, utilises the latest available technology and can advise on matters such as copyright, domain name protection and its relationship with trade mark protection, trade mark infringement on the Internet, cyber-squatting. Partner Yves Debay said: “Our firm may also provide assistance and advice with all activities concerning industrial property and in particular patent rights, namely writing specifications, filing and prosecution of patent applications to obtain registration of French or European patents, prior art search, opposition, filing of models, software protection, protection of integrated circuits, drafting of intellectual property agreements, assistance in case of disputes, legal proceedings for infringement or unfair competition, audits of patents and trademarks and audits of intellectual property agreements.” He confirmed that Cabinet Debay has been a member of the International Trademark Association for two years. The network helps the firm to cultivate strong relationships with other IP lawyers across the globe.

CABINET MORELLE & BARDOU, SC is a medium-sized law firm based in central Toulouse, France. The firm is well recognized and wellestablished with roots that date back to more than 30 years ago. The firm is currently comprised of paralegal staff and two partners- Guy Morelle and Jacques Bardou. According to Mr Bardou 50-60 percent of the firm’s clients are located in France. However, the rest of the firm’s clients are based around the globe. The firm has recently opened a new office in Albi (80 km from Toulouse) in a area who knows an important development in the new technologies sectors. The firm dedicates its energies to its clients’ success. It has particular expertise in the trademark, new technologies, energy, and the wine and food sectors. Consequently, the firm aims to provide its global and forward-thinking client base with the most up-to-date information and an unparalleled service. Indeed, the firm has been a member of INTA since the beginning with this very intention in mind. Before the establishment of INTA, the firm was a member of the US Trademark Association which was more US orientated. Mr. Bardou said: “The main benefit is for networking. In 25 years we have made not only a lot of acquaintances, but very friendly relations with other member firms. Also, the INTA convention provides us with a platform to meet clients who attend.”

“The firm aims to provide its global and forward-thinking client base with the most upto-date information and an unparalleled service. Indeed, the firm has been a member of INTA since the beginning with this very intention in mind.”


Zacco Denmark

Denmark

Tove Graulund Director Trademarks 0045 3948 8230 Tove.Graulund@zacco.com

Eisenführ Speiser

Germany

Christian Spintig Partner +49 421 36350 CSpintig@eisenfuhr.com

Zacco Denmark is Europe’s largest intellectual property consultancy with a turnover exceeding EUR 110 million and with approximately 600 employees, many of whom are European Patent, Trademark and/or Design Attorneys. Zacco covers all technical and legal areas within intellectual property and assists clients with technical, legal and strategic advice, including handling of conflicts and litigation. In addition to assistance in protecting intellectual property rights, Zacco also offers its clients strategic advice aimed at increasing their competitive edge through a professional exploitation of these rights. The company’s history dates back to the 19th century and has always had a strong international profile. Zacco has ten offices in five European countries (Denmark, Germany, the Netherlands, Norway and Sweden) and a sales office in North America to assist American clients with their European IP requirements.

Eisenführ Speiser is an intellectual property boutique that focuses on IP work exclusively. It is a full-service IP firm that offers services related to IP prosecution as well as litigation. Based in Germany, it has four offices in Munich, Berlin, Hamburg and a head office in Bremen. However, the firm has an international client base, with half of its clients concentrated in other European countries, the US and Japan. The firm is currently comprised of 40 professionals, patent attorneys, attorneys at law, 150 non-attorney staff and 15 partners. Eisenführ Speiser prides itself on its crucial interaction with clients. It carefully accompanies clients on their projects, guiding them from start to completion. It distinguishes itself from other IP firms in the sense that it deals with the client as individuals, rather than filing applications without knowing who is behind them.

“I have enjoyed working with INTA for many years on different issues, and as a member I appreciate what they do to protect and promote users’ interests.”

“I have joined an INTA committee, which is an important opportunity to exchange ideas. Moreover, it works towards the harmonisation of international legislation a very important point.”

The current crisis has influenced everyone in the IP business one way or another. We have seen a drop in CTM and IRs coming out of our home markets as well as a drop in national filings. However, in response to requests from our clients we have expanded our service offers over the last many years, and as a result, . we have quite a significant amount of advisory work. In the end, we are on the level of last year which is not at all bad in a year of crisis. But it has been a difficult year for many working in IP, in-house as well as external advisors, and there has been a lot of time spent discussing with clients how toprioritise tasks in view of the reduced budgets. Director Tove Graulund was a speaker at the Vienna conference in December. She said: “An event like this is a great opportunity for networking and catching up with associates and friends. You have the opportunity to increase your knowledge and also to get some exposure as a firm and for some probably also as an individual towards possible future employers.” She added: “Being politically active myself for MARQUES, I have enjoyed working with INTA for many years on different issues, and as a member I appreciate what they do to protect and promote users’ interests.”

According to partner, Christian Spintig, Germany is governed by the German Trademarks Act as well as the German Act against Unfair Competition. Indeed, he said many trademark issues should in fact be treated as unfair competition. In addition, there are International frameworks to consider- such as the Madrid agreement and Community trademarks regulation. Eisenführ Speiser has been a member of INTA since the 1980s. They were members of the network when it was known as the United States Trademarks Association, well over 20 years ago. Mr. Spintig called the annual meetings, “very, very important.” He said, “It is the one single event to meet the people you work with throughout the year. Also, you meet not just associates, but also clients that have their own trademark department that invite their counsel that do work for them for brand protection meetings, for example.” He continued: “It really gets the crowd together to do some networking- essential for cross-border issues when it becomes really important to know each other. I have joined an INTA committee, which is an important opportunity to exchange ideas. Moreover, it works towards the harmonisation of international legislation- a very important point.”

LexDellmeier

Germany

Alexandra Dellmeier-Beschorner Managing Partner +49 (0) 89 - 599 887 140 info@lexdellmeier.com

Experienced - Innovative - Client-oriented LexDellmeier offers innovative and creative in-depth IP counseling in Germany and throughout Europe. In addition to the non-technical fields such as trademarks, designs & copyrights, the firm advises clients in technical fields with respect to patents and utility models.

LexDellmeier takes a fresh approach when it comes to client’s IP needs. It strives to understand the client’s business to be their “strategic partners”. It combines out-of-the-box thinking with legal and technical excellence, proactive strategies and clear communication to maximize the client’s IP protection. According to Managing Partner, Alexandra Dellmeier-Beschorner, innovation and a strong and enforceable IP portfolio remains the key to success. She said: “Companies - start-ups, SME’s or large corporations - who have kept investing in R&D, trademark, design and patent protection will be the winners after the economic turmoil cools down.” Alexandra Dellmeier-Beschorner has been an active INTA member for almost a decade. When she founded LexDellmeier, the firm immediately became an INTA member. She said: “INTA is a fantastic organization, driven by wonderful and committed people who work for the benefit of over 6,000 members. Its global outreach and recognition in the field of trademarks and related IP rights is unique. Through INTA, LexDellmeier has developed an international network of experts and associates with whom it cooperates with on a worldwide basis in the field of IP prosecution and litigation.” She continued: “INTA helps LexDellmeier to be up-to-date and on the cutting edge of legal developments in the IP field. Clients benefit and receive value added service from the fact the LexDellmeier’s firm members actively take part in training programs, webcasts and go to meetings and network with other IP professionals from around the world. “Knowledge - Power - Success - We believe that knowledge is power - the basis of our client’s success.”

Corporate INTL 27


Hanni Rosenzweig & Co.

Israel

Hanni Rosenzweig Partner +972 3 5611199 hanni@hr-iplaw.com

Hanni Rosenzweig & Co. is an IP law firm situated in Tel Aviv, Israel. Owner Ms Rosenzweig has 15 years of hands-on experience in the IP field, which began after a turbulent career in the film industry. When Ms Rosenzweig realized she was more interested in protecting the film-makers’ rights than making the movies, she went back to University, got a law degree, and specialized in IP and entertainment law. Having lived in the USA, Germany, and Israel, and coming from a business family, Ms. Rosenzweig understands the market value of ‘a good name’ and the crucial need to protect it. Her strategy is to first understand the client’s business needs by cooperating closely with legal and marketing personnel, and to then develop operational tactics that will best ensure targets are met.

““I have made friends and gained a deeper understanding of international trademark law and legislation.” The firm represents Fortune 500 multinational corporations as well as artists, designers, and leading International and Israeli companies. It has a policy of fast turnaround, personal service, and clientoriented thinking. Indeed, client-oriented thinking has always been its strongpoint and has met with consistent success. Ms Rosenzweig affirmed: “Our pro-active approach in trademark protection and anti-piracy has helped our clients to stay on top of the economic crisis and assures our capacity to give continuous service at low cost to the client.” According to Ms. Rosenzweig, Israel is a member of the Paris Convention, the Patent Cooperation Treaty (PCT) and the Madrid Protocol which it has officially joined, but is only to be fully implemented in 2010. She became involved in INTA in 2003 and soon realized that the Association is an integral part of the International Trademark community. “I enjoy the camaraderie and teamwork,” she said. INTA keeps her informed and connected, especially to colleagues in the industry. “I have made friends and gained a deeper understanding of international trademark law and legislation. The firm has benefited tremendously from the networking opportunities, gaining new clients and friends. Companies have approached our firm, as INTA members, and colleagues we met through INTA have been recommending our services in Israel,” she continued.

28 INTA

DLA Piper

Italy

Roberto Valenti Partner +39 02806181 roberto.valenti@dlapiper.com

DLA Piper’s IP and Technology practice is one of the largest IP teams in the world. Nearly 400 lawyers develop asset management and protection strategies designed to help clients manage risk, continue growth and protect market share around the globe. Giangiacomo Olivi leads the Italian IP & Technology group, while Roberto Valenti leads the core IP practice. The combination of different expertise brought by team partners Roberto Valenti (IP), Giangiacomo Olivi (practice head) and Italo De Feo (new lateral hide) creates one of the strongest Italian IP teams able to provide a wide range of services combining core IP competence with a substantial knowledge of industry sectors such as TMC, pharmaceuticals and fashion. This approach has led to a substantial increase in the number and scope of mandates, i.e. the team, supported by the Associate Alessandro Ferrari, advises Vodafone Omnitel N/V in a number of software copyright infringement cases and is acting for Conbipel, a well-known player in the fashion sector, in an industrial design infringement case against a competitor. The success of the practice attracts considerable attention. The team was shortlisted for both Best IP Department and Best IP Professional at Top Legal Awards in 2008 and 2009. The Italian team also contributed to the firm’s recent award, Best Pan-European Copyright Practice, from Managing Intellectual Property. The IP team also has an undisputed leadership on all legal surveys for the media sector. These independent market endorsements of the practice demonstrate the progress made in its market standing. Roberto Valenti joined DLA Piper in July 2007. He founded the IP boutique LGV Avvocati in 2003 after nine years’ experience in Trevisan & Cuonzo (a leading Italian law firm). He has extensive experience in IP litigation and also key experience in IP non-contentious matters, such as drafting license and transfer agreements. Moreover, Mr. Valenti has experience analysing IP portfolios and evaluating intangible assets in M&A scenarios. He is a member of the editorial board of AIDA (Annali Italiani di Diritto d’autore), IP Committee of the American Chamber of Commerce in Italy and the Task Force on Trademark Licensing of the International Chamber of Commerce (ICC) in Paris. Since 2001, Mr. Valenti organises IP seminars for the University of Pavia and Urbino.

Studio Legale SIB

Italy

Pier Luigi Roncaglia Partner +39 55263381 pierluigi.roncaglia@siblegal.com

About the Firm Studio Legale SIB was established by a group of attorneys long specialised in the contentious field of Intellectual Property (IP). With offices in Florence, Milan and Rome, as well as a liaison office in New York, Studio Legale SIB provides judicial and extra-judicial assistance in Italy and the European Union, as well as providing legal advice to Italian and foreign clients, including some of the world’s most prestigious companies in the fields of luxury goods, fashion, entertainment, information technology and pharmaceuticals. In addition, the firm is a member of INTA (the International Trademark Association) and the AIPPI (Association Internationale pour la Protection de la Propriété Industrielle). Pier Luigi Roncaglia, managing partner of the firm and member of INTA since the early ‘90s, considers membership in INTA fundamental and instrumental to his practice since this organisation is strongly committed to the protection, promotion and advancement of the rights of trademark owners.

The Practice According to Pier Luigi Roncaglia, in order to provide clients with the most qualified assistance, Studio Legale SIB has chosen to work exclusively in the fields of Intellectual and Industrial Property as well as unfair competition. Mr. Roncaglia commented: “We handle all matters relating to trademarks and distinctive signs, domain names, denominations of origin, geographical indications, patents, designs and models, and copyright.” In particular, the firm provides extra-judicial and judicial assistance, in both civil and criminal cases, as well as the drafting of agreements regarding IP rights. Mr. Roncaglia added: “We handle all aspects of anti-counterfeiting, including liaising with the Police and Customs authorities, the coordination of experts and investigators, the drafting of briefs during preliminary investigations and the filing briefs of intervention as aggrieved parties in criminal proceedings. “Thanks to our equal expertise in civil and criminal matters as well as to perfect fluency in the most important foreign languages, Studio Legale SIB is able to offer highly personalised assistance in IP law, conciliating the peculiarities of each single case with the client’s overall protection and budget concerns.”


Sorainen

Lithuania

Renata Berzanskiene Partner 00370 52 685 040 renata.berzanskiene@sorainen.lt

Sorainen is a leading Baltic-Belarus business law firm with integrated offices in Estonia, Latvia, Lithuania and Belarus. Sorainen was established in 1995 by Aku Sorainen and currently has more than 100 lawyers advising international and local businesses on all business law issues related to the Baltics and Belarus. Sorainen is widely recognised as a leading law firm in the Baltic States and has recently received international legal awards, which include: the Baltic Law Firm of the Year award at the International Financial Law Review (IFLR) European Awards 2009; the Baltic Legal Advisor of the Year award at the European M&A Awards 2008 organised by The Financial Times and Mergermarket; and the Baltic Law Firm of the Year award at the PLC Which lawyer? Law Firm Awards 2009. In addition, Sorainen is a top-tier Lithuanian law firm based on rankings by legal directories including The Legal 500, Chambers Europe, Chambers Global, IFLR 1000, PLC Which lawyer? and transaction databases such as Mergermarket, DealWatch and Bloomberg.

“The various events organised by INTA are very valuable, and several clients producing a sizable amount of work have referred to us after INTA meetings.” The firm’s client portfolio includes approximately 40% of the world’s TOP 50 corporations (based on the Financial Times’ annual ranking – Global 500). Partner Renata Berzanskiene commented: “To assure the best quality service, the firm is organised in 10 local and regional legal teams operating across the four offices. Working in such teams allows us to ensure strong specialisations, know-how sharing and seamless service throughout all our offices.” The IP practice group in Sorainen’s Lithuania office, led by Ms. Berzanskiene, a Chambers & Partners recommended practitioner in IP law, provides a comprehensive range of services including both transactional IP work and litigation. In order to maximise the firm’s global scope and expertise, Ms. Berzanskiene and associate Vyte Danileviciute are members of the International Trademark Association (INTA). Ms. Berzanskiene said of the firm’s INTA affiliation: “The various events organised by INTA are very valuable, and several clients producing a sizable amount of work have referred to us after meetings at the INTA annual conference.”

Office Freylinger

Luxembourg

Mr. Pierre Kihn. CEO +352 31 38 30-1 office@freylinger.com

Office Freylinger, headquartered in Luxembourg is an IP firm dealing with patents, trademarks, design and domains throughout Europe and all over the world with a dedicated and professional worldwide network. Office Freylinger assists SMEs and multinational companies, public-funded or private research organizations as well as business entrepreneurs in developing adequate Intellectual Property strategies, in acquiring and expanding strong market positions. It therefore leads clients through every stage of the innovation process from research to commercialisation. Office Freylinger also provides services in several countries, directly, in order to save costs and to be able to control the quality of the work, leading to a better protection of clients’ rights. Office Freylinger can advise clients on trademarks and designs, patents, copyright, domain names, IP conflicts and valuation; a large emphasis has been placed on cross-border IP litigation, oppositions and cancellation actions.

“The firm has been a member of the International Trademark Association for several decades thus the firm places great emphasis on the value of the network and the services it provides. ” The firm is able to offer a complete package of services to customers. It is also proficient to act fast and professionally to every file, legal request or information request of our customer concerning European national laws, community laws, European courts, patent and trademark offices or foreign patent and trademarks offices. Relying on more than 40 years of activity in the fields of Intellectual Property, Office Freylinger has also developed online tools empowering clients with professional support. Said tools include online trademark search and filing facilities, a domain name registration tool and an online patent search, and additional tools will be added in a near future. The firm has been a member of the International Trademark Association for several decades thus the firm places great emphasis on the value of the network and the services it provides.

Corporate INTL 29


GVTH Law

Malta

Dr. Micheal Grech Head of IP (+356) 2122 8888 michael.grech@gvthlaw.com

GVTH Law is based in the heart and capital of Malta, Valletta. It boasts a wealth of experience and practice areas that include: Corporate and Commercial, Intellectual Property, Banking and Finance, Real Estate & Construction, Insurance and Telecoms. The firm has an almost unparalleled depth of expertise in the provision of IP advice, which covers the full spectrum of IP work. It regularly advises global multinational brands on IP issues, is extremely active in anti-counterfeiting, has been involved in some of the leading IP cases in the last 10-15 years and has also been involved in drafting of IP related legislation, as is presently the case with the setting up of the law on the ad hoc Patents Tribunal.

“I find the weekly newsletters to be highly informative, while making easy and quick reading.” According to the Head of IP at the firm, Dr. Michael Grech, IP laws that govern Malta are the Maltese Commercial Code, The Trademarks Act, The Copyright Act and The Patents and Designs Act. Significant developments include the current legislation being drafted to set up the Patents Tribunal to hear cases for revocation of existing dubious patents registered under Maltese law and put into affect a new system for oppositions/refusals of new applications. GVTH is representing a syndicate of international generic pharmaceutical producers in negotiations with the Government of Malta and the drafting related to these amendments. Regarding the economic slowdown, Dr. Grech said: “In so far as Malta is concerned, we very much feel that it has been business as usual. Indeed, we have been extremely busy, even busier, particularly on anti-counterfeiting and enforcement work.” The firm has been a member of the International Trademark Association for a total of three years. Dr. Grech enumerated the benefits the network provides: “The very interesting and informative newsletters, the extremely well organised and topical conferences and the network of firms one can correspond and refer work to within INTA. He said he has found the Online Country Portals, particularly useful as they provide easy access to members the world over. In addition, “I find the weekly newsletters to be highly informative, while making easy and quick reading,” he said.

30 INTA

Polservice Patent and Trademark Attorneys Office

Poland

Andrzej Ponikiewski President of the Board +(48 – 22) 44 74 776 ip@polservice.com.pl

Polservice provides a variety of services in all fields of Industrial and Intellectual Property protection for companies and individual clients from Poland and abroad. Besides regular IP rights, the firm also specialises in copyright and unfair competition actions, litigation and dispute resolution including anti-counterfeiting, Internet domain names and anti-piracy actions. Polservice is one of the largest patent and trademark attorneys’ offices operating in Poland, providing representation for more than 2,650 clients from more than 70 countries. The firm employs nearly 40 patent and trademark attorneys specialised in various areas of technology, law and economy, as well as a team of lawyers specialised in IP protection, and a separate team of experienced interpreters. Clients are represented before the Polish Patent Office, Polish common courts, administrative and arbitration courts, prosecution and customs offices, as well as before the European Patent Office and the Office for Harmonization in the Internal Market (OHIM). President of the Board Andrzej Ponikiewski commented: “With more than 40 years’ experience in representing clients in many precedent cases, we are able to look for the best solution to each specific case. An individual and creative approach to our tasks, supported by profound legal and technical knowledge, has earned us the trust of our clients. In addition, thanks to wide international contacts our office is able to assist our clients in obtaining and enforcing IP rights in other countries.” Mr.Ponikiewski also noted that combining the highest quality of services with a cost-efficient approach is even more important in times of global economic turmoil. “Fortunately, the crisis seems to have only a limited impact on the IP industry,” he said. “Business executives are generally aware of the importance of IP rights protection and treat them as valuable assets.” In order to maximise Polservice’s cross border networking potential, the firm is an active member of INTA. Mr.Ponikiewski commented: “The benefits of the membership cannot be overestimated. INTA’s educational programs provide the opportunity to learn about recent developments in trademark law worldwide. Simultaneously, attending INTA’s meetings facilitates networking with IP professionals from around the world and assists with establishing valuable contacts.”

ABBC & Associados

Portugal

César Bessa Monteiro Partner 00351 21 358 36 20 c.bmonteiro@abbc.pt

ABBC & ASSOCIADOS is located in Lisbon, Portugal. Its clients include several Fortune 500 Companies, and a significant number of companies ranked among the 100 largest companies incorporated or operating in Portugal. Indeed, ABBC regularly provides services in cooperation with international law firms. ABBC provides services to large and medium sized domestic companies and to multinationals and their subsidiaries in Portugal, involved in a large array of business sectors. The firm’s varied client portfolio also includes public authorities, embassies, foundations, municipalities and non-governmental organizations. According to partner at the firm, César Bessa Monteiro, the firm distinguishes itself in the provision of trademark and IP advice by having an experienced team which is capable of providing a full spectrum of services in IP. César Bessa Monteiro is considered as the leading Lawyer in Portugal in IP matters and is well supported by his young but experienced team of 7 Lawyers, namely by - César Bessa Monteiro (jr) and Ricardo Henriques.

“César Bessa Monteiro is considered as the leading Lawyer in Portugal in IP matters and is well supported by his young but experienced team of 7 Lawyers.” César Bessa Monteiro is also a Patent Attorney allowed to practice before the European Patent Office at Munich and is also a professional representative before OHMI at ALICANTE as well as a member of the Council of the European Patent Institute and a member of the Professional Committee of same Institute. Moreover, César Bessa Monteiro is the Chairman of the Board of Directors of the Portuguese Association of Industrial Property Consultants. ABBC’s Intellectual Property and TMT Department was recommended in the 2009 edition of the Chambers Europe Guide to Best Lawyers for its Intellectual Property practice. The team has been praised for being, “well equipped to assist clients with all aspects of the sector” including areas such as “copyright, publishing and image rights, media, telecoms and competition law.” Ricardo Henriques was also recommended for his media-related work. ABBC & ASSOCIADOS have been member of INTA since 2007, the date César Bessa Monteiro and his IP Team joined the firm. César Bessa Monteiro has been a member of INTA for almost 15 years


Law Office Pepeljugoski

Republic of Macedonia

Dr. Valentin Pepeljugoski Partner +389 2 3211-005 vpepeljugoski@unet.com.mk

Intels

Russia

Valery Guerman Managing Partner +7 495 9214080 guerman@intels.ru

Fenix Legal

Sweden

Petter Rindforth Managing Partner 0046 (0)702-369360 petter.rindforth@fenixlegal.eu

·fenixlegaL INTERNATIONAL PATENT AND LAW FIRM

Law office Pepeljugoski represents clients in procedures for registration of patents, trademarks, domain names, industrial designs, appellation of origin and geographical indication, before the Republic of Macedonia’s Patent and Trademark Office. Partner Dr. Valentin Pepeljugoski commented: “Law office Pepeljugoski represents domestic and foreign clients in copyright and unfair competition cases. In addition, the partners at the firm provide legal due diligence pertaining to the IP assets of clients.” Dr. Pepeljugoski added that the past two years have been testing years for the survival of the Republic of Macedonia’s IP industry. He said: “I think that R&D suffered as a result of the financial crisis; therefore, we have seen less new IP (patents, industrial designs and trademarks) and more counterfeiting and piracy.” However, the firm has remained resilient, partly due to its affiliation with INTA, which began in 1999. Dr. Pepeljugoski commented on the benefits afforded to the firm through its affiliation with the Association: “Many companies make new contacts through INTA’s directory of member firms and/or through Annual Meetings [organised by the Association]. Also, if a client needs protection abroad, first we look within INTA’s directory, which is a bible of relevant companies in the field of protection of trademarks.” The firm’s clients are primarily based in Macedonia, but are also located in Kosovo, Serbia, Bulgaria and Croatia and are spread throughout Europe. Regarding the changing face of the trademark and IP industry in Macedonia, Dr. Pepeljugoski explained that the dominant laws in Macedonia are: the Law on Industrial Property, Copyright Law, the Law on Topography of Integrated Circuits, the Law on Protection against Unfair Competition and the Law on Protection of IP and Customs Measures.

“Many companies make new contacts through INTA’s directory of member firms and/or through Annual Meetings [organised by the Association].” Dr. Pepeljugoski elaborated, saying of Macedonia’s increasingly modernised legislation: “The Law on Industrial Property came into force in the beginning of 2009. Consequently, the law is in accordance with the European Patent Convention as well as with the latest developments of TRIPS (Trade Related Aspects of Intellectual Property Rights), which require member states to provide strong protection for IP rights.”

Intels is a prestigious IP firm based in the USSR in 1988 as the first alternative to the government IP institutions. Intels handles all aspects of advice, prosecution and litigation pertaining to trademarks, patents, industrial designs, utility models, firm names and domain names. Intels also provides such services as conducting searches, mediating and assisting in registration of domain names. Intels has branch offices in the CIS countries and the Baltic States and represents many leading brand owners, with a present day clientele exceeding 2000 clients. Intels has its own database for searching among trademarks registered and/or pending in Russia. When asked about the main laws that govern the Trademark and IP industry in Russia, Intels managing partner Valery Guerman commented: “Currently, trademarks and other IP objects are governed by the Civil Code of the Russian Federation. Besides, IP-related provisions are contained in the Criminal Code of the Russian Federation, the Customs Code of the Russian Federation and the Law on Unfair Competition.” Mr. Guerman added: “An important innovation in the area of domain names came into effect on the 25th of November, 2009. Now, allocation of domain names in Cyrillic characters is available in a newly-established domain zone, ‘.RF.’ To prevent cybersquatters from usurpation of domain names reproducing trademarks of fair proprietors, the Registrant offers trademark owners an opportunity to register their trademarks as domain names in Cyrillic characters on a priority basis within a period from November the 25th, 2009, until March the 25th, 2010. Upon expiration of this period of privileged registration, it will become available to the wider public.” When asked how Russia’s Trademark and IP industry has fared over the past two years of global economic turmoil, Mr. Guerman noted: “On the one hand, the global economic turmoil resulted in some reduction of the amount of IP work. On the other hand, anti-counterfeiting efforts have been increased. “Intels has been a member of the International Trademark Association (INTA) since 1992, which has increased its global capacity and resilience [during the recession] through a resultant extension of useful knowledge and a provision of useful contacts.”

Fenix Legal, with its head office in Stockholm, Sweden, is an International Patent- and Law firm specialised in intellectual property in Scandinavia, Europe and Russia / CIS. Fenix Legal offers legal solutions for the creative minds. Its consultants are lawyers, engineers, business consultants and branding experts. The firm offers all services in the IP field including trademarks, domain name registration and dispute resolution, copyrights, patents, design, media and competition law, business agreements and business intelligence investigations. Fenix Legal is the No 1 firm in Sweden regarding Internet related trademark issues, with lawyers acting as panelists for WIPO, NAF, Swedish IIS and the Czech Arbitration Court. The firm also strongly supports mediation as an efficient and business friendly way to solve disputes. According to Managing Partner Petter Rindforth, IP law in Sweden are covered by the Swedish Trademarks Act, as well as the Regulations and guidelines for the community trademarks. “There are less new trademark applications, but more disputes and consultations regarding how to use and protect existing trademarks,” Mr. Rindforth said.

“Fenix Legal is the No 1 firm in Sweden regarding Internet related trademark issues, with lawyers acting as panelists for WIPO, NAF, Swedish IIS and the Czech Arbitration Court.” Since 1989, Petter Rindforth has been active in the work for INTA, serving in several committees such as the ADR Committee and the Internet Committee. He said there are many benefits for member firms. He said: “We have expanded our networks globally via committee work, sponsorships (annual meeting and seminars) and table topic moderations.” He continued: “We have met many new direct clients from countries abroad via our activities within INTA, and also strengthen our networks with associated law firms throughout the world. The INTA membership gives great opportunities to learn from other professionals and to get that important personal knowledge of IP practitioners from countries far abroad.” In addition to the country portals, he cited the committee portals, the ADR part of the site and the International Opposition Guide as other highly beneficial services offered by the network.

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Rentsch & Partner

Switzerland

+41 44 225 70 70 office@rentschpartner.ch www.trademark.ch

Established in 2001, Rentsch & Partner has grown rapidly to become one of the largest IP law firms in Switzerland – an IP boutique presently with eight attorneys at law and nine patent attorneys. Unique within Switzerland, Rentsch & Partner provides both prosecution and litigation services for patents and trademarks. The firm takes a deliberate interdisciplinary approach, combining the expertise and know-how of both its legal and technical professionals. Rentsch & Partner offers Swiss and international clients comprehensive services in all fields of Intellectual Property (IP) law including prosecution, litigation and consulting in patent, trademark, copyright and design law, as well as legal services in related fields such as food and drug law, licensing, domain names, unfair competition and advertising law.

“Lawyers gain access to greater networking and referrals opportunities via INTA’s Annual Meetings and Online Country Portals resource, which provides extensive country-specific intelligence.” The main law that governs trademark is in Switzerland the “Federal Law on the Protection of Trademarks” and for IP laws the “Federal Law on Patents for Inventions”, “the Federal Law on Copyright”, “the Federal Law on Industrial Designs” and “the Federal Law on Unfair Competition”. The main international laws are the European Patent Convention (EPC) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). For more detailed information about Swiss Trademark and IP-Law please consult the following websites of Rentsch & Partner: www.trademark.ch, www.copyright.ch, www.patentlaw.ch, www.designlaw.ch and www.industriallaw.ch. A contributing factor to the firm’s current resilience was initiated in 2004, when Rentsch & Partner became a member of the International Trademark Association (INTA). Through INTA, leading trademark IP lawyers around the world gain access to the latest global resources through the Association, as well as gaining greater networking and referrals opportunities via INTA’s Annual Meetings and Online Country Portals resource, the latter of which provides extensive country-specific intelligence.

32 INTA

Azrights

UK

Shireen Smith Principal 0044 (0) 20 7700 1414 shireen@azrights.co.uk

Azrights is a London law firm founded in 2005 by Shireen Smith, who qualified as a Solicitor over 20 years ago. The firm specialises in Intellectual Property and Internet law, using a core of full time employees, and expert consultants who are brought in as and when a client’s matter requires their skills and specialism. This innovative resourcing solution, combined with less expensive office space means Azrights is able to offer SMEs a depth and breadth of expertise that only larger City law firms traditionally provide, but at more cost effective rates. Although the firm registers numerous trade marks, and other IP rights, having invested in technology to offer an international filing service, Azrights is not just about registering rights. It focuses on the broader objective of online brand management. As such it advises on online brand protection and brand promotion so that using the firm would give clients access to internet marketing know how, domain name, and cyber squatter expertise. The firm also assistse clients with the increasingly relevant issues of reputation management, cultivating brands on social media, taking proactive steps regarding fan sites, and handling user generated content. These as well as Google adwords, counterfeits, eBay, and web scraping, are some of the many issues that are of significance to brands on the web.

“Azrights aims to address clients’ needs holistically, and runs regular workshops and conferences.” Shireen Smith said: “Azrights aims to address clients’ needs holistically, and runs regular workshops and conferences. In the spirit of the web, Azrights also provides a lot of information on its website, and in its newsletter and white papers.” She continued: “Azrights is uniquely placed through its knowledge of online issues to think laterally outside of the box of legal injunctions and legal threats to protect and even enhance the online reputations of its clients. It is therefore among the new generation of hybrid legal practices that combines IP expertise with a sound grasp of technology and internet marketing.” Azrights joined INTA 2 years ago. “Although we have already benefited and received instructions for filing work as a result, the main benefit has been the access to a network of other trade mark professionals, and the knowledge gained at INTA conferences,” said Ms Smith.

A. A. Thornton & Co

UK

Vanessa Lawrence Partnership Chairperson +44 (0)20 7405 4044 aat@aathornton.com

A. A. Thornton & Co deals with a wide range of IP rights and issues, with a strong trademark, design and domain name practice as well as a substantial patent practice in the areas of chemistry, chemical engineering, pharmaceuticals, biotechnology, mechanical engineering, electrical and physics-related technologies and computing technologies. Clients are spread across a number of sectors including fashion, food and drink, finance, pharmaceuticals, chemical processes, biotechnology, energy exploration and drilling, as well as the automotive sector, steel, telecoms, software, wireless sensors and domestic electrical goods. According to partnership chairperson Vanessa Lawrence, the firm’s clients range from multinational corporations, to law firms, to SMEs, to individuals – and each client receives the same service. Ms. Lawrence noted: “The reputation and success of the firm has been built on the skill, expertise and professionalism of its attorneys. As a partner-led firm, the collective experience and personal involvement of the partners ensures clients’ IP rights are both properly protected and managed at all times.” Ms. Lawrence explained that UK and European Community trademark legislation now places the onus upon owners of earlier rights to a trademark to monitor and prevent by opposition the registration of identical or confusingly similar trademarks. Neither the UK Intellectual Property Office, nor the European Community Trade Mark Office will, of their own volition, refuse to accept a trademark even if it is identical to that of an earlier registration. Ms. Lawrence noted: “This makes it very important for trademark owners to police their trademark rights, to ensure that they watch for later filed applications to register confusingly similar trademarks. As for adoption of a new trademark, thorough searches and market research are to be recommended – to ensure it is free not only for registration but, more significantly, for use in a chosen market.” In order to maximise A. A. Thornton & Co’s global coverage, the firm became an independent member of INTA (then known as the USTA) some years ago. Ms. Lawrence commented: “INTA membership and attendance at the Annual Meeting has been very beneficial over the years, both in maintaining old contacts year on year and in making new contacts.”


Grant Spencer LLP

UK

Claire Hutchinson Partner +44 20 7382 1200 Claire.Hutchinson@grantspencer.com

Grant Spencer specialises in trade mark and design protection and is one of the leading practices in this field, serving clients ranging from private individuals to major multinationals with immediately recognisable names, brands and marks. The firm offers trade mark advice in relation to all stages of the life of a trade mark, from creation and development, to searching, registration, maintenance and defence, in connection with any country. Services include commercial investigations, trade mark watching, litigation, handling trade mark aspects of mergers and acquisitions, assignments, licensing, advice relating to company names, domain names and all related matters. Grant Spencer has particular experience in portfolio management, clearance of brands and dispute resolution. Its strength lies in its specialist knowledge, depth of experience and meticulous attention to the task at hand.

“In view of the international nature of trade mark work, membership of this association is an invaluable tool. INTA enables professionals to share knowledge and experience.” Partner Claire Hutchinson said: “The trade mark industry is constantly subject to changes in laws and practice and Grant Spencer always keeps abreast of new developments, ensuring clients can take advantage of new opportunities as they arise. Trade mark work has changed over recent years, to the benefit of trade mark owners who are now able to obtain protection of their signs across more than one territory in a single step, bringing cost savings and management efficiency. Of course, most industries have been affected by the economic crisis to some extent and businesses are wise to approach protection and defence of brands carefully and economically.” She added: “Grant Spencer has been a member of INTA since the firm’s foundation. In view of the international nature of trade mark work, membership of this association is an invaluable tool. INTA enables professionals to share knowledge and experience. The firm has always attended INTA meetings which provide an ideal opportunity to cement business relationships with existing clients and contacts in overseas law firms and to develop relationships with new and potential clients. The ancillary services provided by INTA, including the online country portals, have also proved informative and useful.”

Walker Morris

UK

Patrick Cantrill Partner and Head of Intellectual Property+44 (0) 113 283 2500 patrick.cantrill@walkermorris.co.uk

Walker Morris is a substantial full service commercial law firm offering legal expertise in a wide range of corporate specialist areas. Patrick Cantrill, Walker Morris partner and head of the firm’s Intellectual Property Group, commented: “We have a national reputation for strong multi-disciplinary teamwork and straightforward advice servicing a large number of national and international clients.” When asked how the Group distinguished itself, Mr. Cantrill noted: “The IP Group works as an integral whole whereby unusually for a firm of UK solicitors, we have a Trade Marks and Designs Unit with three specialist trade mark attorneys all of whom have passed the MITMA Examinations. Seamless liaison between the solicitors and trade mark attorneys has brought demonstrable efficiencies in the considerable success which we have had recently in protecting leading brands such as Cipriani, Orient Express, ghd and aigo.” In addition, Mr. Cantrill said that the IP Group at Walker Morris (comprising 10 full time specialist lawyers some of whom have high level science backgrounds) can assist on all types of contentious and non contentious matters. According to Mr. Cantrill, another key to the Group’s success has been the close working relationships which it has established with practices in other jurisdictions. “Clients appreciate the importance to their IP strategy of obtaining effective, cogent advice both within the UK and overseas,” he said. “The quality of the Group’s connections is widely recognised such that a number of leading corporations have asked us to take on the appointment and monitoring of foreign counsel.” The outstanding achievements of the Group have been recognised in one of the most prestigious awards in the legal calendar when in December 2009 it was awarded the World Leaders International IP Award for Private Practice Trademark Excellence/Litigation for Europe, Middle East and Africa. In order to maximise its global scope, Walker Morris became an independent member of the International Trademark Association (INTA) in 1992. Mr. Cantrill explained: “The international dimension of trademark protection and enforcement makes it crucial that we have access to a comprehensive source of high calibre specialist attorneys worldwide. INTA is the vehicle for making and developing such contacts.”

Vasil Kisil & Partners

Ukraine

Oleksiy Filatov Partner and Head of Intellectual Property & Dispute Resolution +38 044 581 77 77 vkp@vkp.kiev.ua

Vasil Kisil & Partners is a leading law firm in Ukraine, with an impeccable reputation and unique expertise. Since 1992, Vasil Kisil & Partners’ lawyers have advanced clients’ interests with zeal and integrity. The lawyers have established a tradition of legal excellence, and have earned Vasil Kisil a reputation as a law firm that always goes the extra mile for its clients, providing professional service of the highest quality combining technical expertise with commercial awareness, as well as a business savvy practical approach to legal issues. According to Chambers Europe 2008: General Business Law, Vasil Kisil & Partners “is one of Ukraine’s longest established firms, renowned for its provision of “comprehensive support and a balanced service.” Chambers Europe 2009: Corporate/Commercial says: “With a good-sized team, exposure to significant deals and hands-on training, this local outfit is capable of handling international transactions and provides a Western standard of service, report interviewees. In addition to its skills in corporate and commercial work, the practice stands out in the fields of M&A, real estate and litigation. Senior partner at the firm and a renowned professor of Ukrainian law, Vasil Kisil has excellent contacts at all levels of the market.” In addition, Vasil Kisil & Partners has been practising in the domain of Intellectual Property (IP) since its foundation and has accumulated extensive experience in protecting IP rights and acting for clients against various forms of unfair business practices. The firm advises clients on a broad range of issues from prosecution and oppositions, to structuring and implementation of cross-border and domestic transactions involving IP, as well as tax and regulatory advice. The litigation practice of the firm in IP is especially extensive and includes cancellation/ invalidation disputes, unfair competition and unfair trade practice cases. Attorneys of the firm successfully represent clients before the Ukrainian State Department for IP, commercial and administrative courts, courts of common jurisdiction, internal affairs and prosecution offices. The clients of the firm in IP operate in advertising, automotive, chemical, FMCG, information technology, media, pharmaceutical, and telecommunication industries.

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BASED IN MAPUTO, MOZAMBIQUE, FBLP HAS A STRONG REGIONAL AND NATIONAL IP PRACTICE SUPPORTED BY A SELECT TEAM OF ATTORNEYS. -A WORLD RENOWNED TEAM, WITH AN ESTABLISHED NETWORK OFFERING TRULY CLIENT DRIVEN ADVICE TO AFRICA AND THE WORLD.

TR ADEMA RK S • PAT E NT S • A N TI-COU N TE R F E ITIN G • L ITIGATION

AV. K E NNE TH K A U N DA , N o 59 2 , M A P UTO - M O Z A M B I QUE

Tel : (+258 ) 21 496 900 - Fax: (+258) 21 49 6 802 - fb lp @fb lp .co.mz - w w w.fb lp .co.mz


Middle East & Africa Until 1962, patent rights in the majority of francophone states were governed by French laws. The French National Patent Rights Institute (INPI) was the National Authority for each of these states, then grouped within the French Union (Union Française). The majority of the French Union member countries became independent in 1960 and found it necessary to create a body of their common territory, in respect of conventions on patent rights. This creation found its legal justification in article 19 of the Paris Convention for the protection of patent rights, which states that countries, which are signatories to this convention, serve the right to undertake separately among themselves, specific agreements for the protection of patent rights, so long as these arrangements are not in contradiction with the provisions of the said convention. It is on the basis of this provision that 12 African countries together decided to create a single body to act as the national patent rights authority for each of them. The African and Malagasy Patent Rights Authority (OAMPI) was thus born on 13th September 1962 by the agreement known as the ‘Libreville Agreement’. The conditions of the Libreville Agreement were based on three fundamental principles: • The adoption of a uniform legislation by the putting in place and application of common administrative procedures resulting from a uniform system of patent rights protection. • The creation of a common authority, as the organisation serves as a national patent rights protection department, for each of the member states. • The centralisation of procedures, as the existence of a uniform legislation and of a common authority naturally created for the centralisation of procedures such that a single title issued comprised as many independent national rights as member countries. The Libreville Agreement covers the territories of African countries of French expression and culture. The items covered by the Libreville Agreement were patents, trademarks or trade names and industrial drawings or models. The need for a larger integration brought the founding states to revise the Libreville Agreement and to create the African Intellectual Property Organization (OAPI) by the adoption of a new convention signed in Bangui on 2nd March 1977. The Bangui Agreement, revising the Libreville Agreement, legislates patent rights in each of the 16 member states which now make up the OAPI territory. These 16 member states are: Benin, Burkina Faso, Cameroon, Central Africa, Congo, Cote d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, Togo.

To date, the OAPI territory covers a surface area of 7.755.967 km square and has about 100 million inhabitants. African Regional Intellectual Property Organisation (ARIPO) ARIPO membership is open to member states of the United Nations Economic Commission for Africa or the African Union (AU). There are currently sixteen states which are members of ARIPO. These are Botswana, the Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. The history of ARIPO goes back to the early seventies when a regional seminar on patents and copyright for English speaking African countries was held in Nairobi. That seminar recommended that a regional industrial property organisation be set up. In 1973 the United Nations Economic Commission for Africa (UNECA) and the World Intellectual Property Organization (WIPO) responded to a request by these English-speaking countries for assistance in pooling their resources together in industrial property matters by establishing a regional organisation. Following a number of meetings at ECA headquarters in Addis Ababa and WIPO in Geneva, a draft agreement on the creation of the Industrial Property Organization for English-speaking Africa (ESARIPO) was prepared. This agreement, now known as the Lusaka Agreement, was adopted by a diplomatic conference held in Lusaka, Zambia on December 9, 1976. ARIPO was mainly established to pool the resources of its member countries in industrial property matters together in order to avoid duplication of financial and human resources. Thus the preamble to the Lusaka Agreement clearly states that member states are aware of the advantage to be derived by them from the effective and continuous exchange of information and harmonisation and co-ordination of their laws and activities in industrial property matters. Member states also recognised that the creation of an African regional industrial property organisation for the study and promotion of and co-operation in industrial property matters would best serve that purpose.

Corporate INTL 35


Onambele-Anchang & Associates

Cameroon

Mary Concilia Anchang Partner +(237) 2220 97 76 oaalaw@onambele-anchang-associates.com

Bibawi & Co.

Ethiopia

Lotfi Bibawi Partner 00251 115 510387 lotfi.bibawi@ethionet.et

JMB, Fa©tor & Co.

Israel

Managing Partner Jeremy Ben-David jmb@israel-patents.co.il 00972-2-571-4777

&

Bibawi

Founded in 1990, Onambele Anchang & associates is a full service law firm situated in Yaounde, Cameroon, and has been an independent member of INTA, the International trademark Organisation, since 1999. Mary Concilia Anchang joined the firm in September 1993 and became a partner in 1998. Accredited with the African Intellectual property Organisation (OAPI), the firm has since earned international recognition over the years in various areas of specialisation such as mining, infrastructure, investment, mediation, arbitration, telecommunication, banking, insurance, BOT and Intellectual Property law. Partner Mary Concilia Anchang commented: “Our offices are based in Yaounde, Cameroon. We have established a network with co-counsels in various parts of the world to facilitate assistance and representation to our clients in all five continents. The existence of the international chamber of commerce (ICC), now chaired by a senior partner of our firm, Joseph Antoine Onambele, takes its roots from a mandate executed by our office in 2001.” In addition, Ms. Anchang was the Cameroon court member of the international court of Arbitration of the (ICC) from 2006-2009. While her candidacy remains pending for a renewed mandate, she currently presides in the Intellectual Property commission of the Cameroon national Committee of the ICC. She noted: “As patent and trademark attorneys, our bilingual and bi-jurial background provides added value to our IP practice considering the fact that French and English are the authorised official languages.” Besides general IP counsel the firm also provides: preliminary opinions and clearance searches; registrations of trademarks, patents and designs; renewals and restorations; recording of mergers, assignments and registered users; change of names and addresses; preparation of agreements licensing/distribution, exploitation or production; filing and prosecution of opposition, cancellation and revocations; re-examinations, pledges and well known trademarks petitions; as well as litigation, mediation and arbitration. Ms. Anchang added: “Through INTA I have experienced a huge positive impact from membership networking.” The firm’s affiliation with INTA provides its partners with access to Online Country Portals, a comprehensive online database of global knowledge to assist with complex, modern trademark and IP issues.

36 INTA

Co.

The firm Bibawi & Co., based in Ethiopia, is a Firm of Public Accountants & Auditors offering mainly External Audit Services and relating professional advice on taxation and other maters relating to Commercial Code. Partner, Lotfi Bibawi, started operating in his name since January 2007. Previously he used to act as Director of Nawar & Co., Chartered Accountants, since 1962. He said: “Since the beginning of my activities in Ethiopia as representative of Nawar & Co., we used to offer Intellectual Property Services, mainly trademark registration. Before coming to Ethiopia, I used to deal with Intellectual Property matters in Egypt, as I was an officially recognized Trademark Agent under relevant law of Egypt.”

“We receive contracts from clients and IP Agents who are members of INTA and with whom we did not have previous knowledge or contacts.” According to Mr. Bibawi, until recently, the system of trademark registration in Ethiopia was based on regulations issued by the Ministry of Trade and Industry. The said system is based on the publication of cautionary notices calling for objections, if any. He continued: “A Trademark Registration Proclamation has been promulgated since July 2006. However, the necessary regulations for its implementation are under process for approval by the Parliament. Therefore, we are still working with cautionary notices system.” Regarding Patents, related Proclamation has been issued since May 1995 and related regulations for implementation has been issued since March 1997. The firm has been members of INTA for more than ten years operating in the name of Nawar & Co. since the establishment of Bibawi, membership of INTA has continued under Mr. Bibawi’s name. This is due to the state of liquidation of the Nawar & Co. business by end 2006 after the passing away of its Founder Prof. Y. Nawar. Mr Bibawi said the INTA network has introduced the firm to a wide range of new contacts. “We receive contracts from clients and IP Agents who are members of INTA and with whom we did not have previous knowledge or contacts,” he said.

JMB, Fa©tor & Co. is Israel’s fifth largest patent firm and provides a full range of intellectual property related services. This includes consulting, prior art searches, drafting and filing of patent applications, trademark and industrial design applications. JMB, Fa©tor & Co. assists Israeli clientele in developing and protecting their intellectual property, both patents and trademarks, in Israel and around the world. JMB, Fa©tor & Co. also represents overseas clients before the Israel Patent, Trademark and Design Office. JMB, Fa©tor & Co. clients include leading Israeli and foreign corporations, high tech companies, startups, investors and venture capitalists, universities, technology incubators and private inventors.

“The firm has been a member of INTA since 1998. Mr. Ben-David said he has seen tangible benefits of membership.” JMB, Fa©tor & Co. has among its partnership and professional staff some of the most experienced Patent Attorneys in the country, former Examiners from both the UK and Israel Patent Offices, ex-industry engineers, and alumni from such prestigious universities as Imperial College, London, Caltech and MIT, USA, and the Hebrew University, Jerusalem, Israel. Among the patent attorneys employed by the firm, a majority are also licensed to practice before the USPTO. All of the Patent Attorneys, and an overwhelming majority of the staff, hail from English speaking countries, including the UK, US, Australia and South Africa. According to managing partner Jeremy BenDavid, towards the end of 2008, the IP market in Israel shrank. He said: “Difficult to say by how much, but the Israel Patent Office reported a decrease in the rate of filings in Israel from overseas (which make up about 75% of applications), by about one third. Some firms experienced shrinkage in their workforce. 2009 has seen a gradual recovery, although levels have not yet returned to their pre-slump levels.” The firm has been a member of INTA since 1998. Mr. Ben-David said he has seen tangible benefits of membership. “Primarily, the annual meeting provides an opportunity to meet foreign associates, and to expand existing relationships and foster new ones. Smaller meetings have also provided good networking and educational opportunities.”


Iseme, Kamau & Maema Advocates

Kenya

Salama & Partners

Libya

William Ikutha Maema Partner – Commercial Department +254 20 2711021 wmaema@ikm.co.ke

Khaled Salama LLM Managing Partner (+218) 21 725 5992 ksalama@salamalawfirm.com

Iseme, Kamau & Maema Advocates is organised as a partnership comprising five (5) partners and fourteen (14) qualified associates. The firm’s areas of practice include Intellectual Property (IP), Corporate Law, Commercial Law, Conveyancing and Bank Securities as well as International Trade, Civil Litigation, Media, E-Commerce, Franchises, Immigration and Naturalisation, M&A, Product Liability, Securities, Tax Law, Arbitration, Trade Secrets, Wills and Admiralty Law. With a well-established network of corresponding law firms in many African countries, the United Kingdom and the United States of America, the firm provides legal services to both a local and international clientele. William Ikutha Maema, the partner in charge of the Commercial Department, commented: “Iseme, Kamau & Maema Advocates has a very active Intellectual Property practice that is locally, regionally and internationally recognised, having been credited as one of the top tier law firms in Kenya by the Chambers Global directory, as well as by the International Financial Law Review (IFLR 1000). In addition, the firm prides itself as being the protector of the world’s most famous trade mark in East Africa. “ In Kenya, the laws primarily governing IP rights are the Trade Marks Act, Industrial Property Act, Copyright Act and Anti-Counterfeit Act. Currently, the firm is engaged in formulating and drafting a Counterfeit Goods Bill for the East Africa Community (EAC) which will be applicable in all the five EAC Partner States. Mr. Maema noted: “Despite the negative impact of the global recession, the firm has not experienced any decline in work in the Intellectual Property space, save for numerous requests for fee discounts.” In order to increase the firm’s international clientele as well as raise awareness of global considerations among its partners, Iseme, Kamau & Maema Advocates has been a member of the International Trademark Association (INTA) since 2007 and Mr Maema has presented various papers at the INTA General Meetings. Mr. Maema stated: “The network has been very useful with regard to cross referrals and, in addition, the firm has experienced an influx of new clients contacting the firm without referrals.”

SALAMA LAW FIRM is dedicated to providing high quality professional legal services to individual and business clients. SALAMA LAW FIRM provides a service designed to meet all your changing legal requirements. The firm is comprised of a team of lawyers qualified in different international and national jurisdictions, qualified to serve clients in several foreign languages (Arabic, English French & Italian). According to managing partner Khaled Salama LLM, SALAMA LAW FIRM was founded on a simple belief: “Our success would come from our clients’ success,” he said, adding: “together with the other associates, the firm plans to carry out our mission to provide clients with expertise, efficiency and effectiveness in all your legal needs.” Mr. Salama also noted: “SALAMA LAW FIRM is one of the largest law firms in Tripoli-Libya, and offers a full range of legal services at competitive terms with our extensive legal experience in North Africa, Middle East and Europe and other parts of the world.” In addition, the firm is composed of a coordinated team of lawyers, each having expertise in a specific field and being responsible for a particular area of the practice – but able to step in – and generally assist each other as the need arises. It is noteworthy that three of the associates are graduates of European and USA Universities; therefore, they are very well acquainted with both Civil Code and Common Law Legal Systems. This also gives them the privilege of possessing a very good grasp of English, French & Italian Languages. According to Mr. Salama, SALAMA LAW FIRM has a wide international and local client base encompassing: bank and financial institutions, insurance companies, international airlines, freight forwarders and transportation companies, multi-national corporations in oil exploration and relative services, general construction and importation of goods. He noted: “Hence we have the liberty to introduce to you our law firm as a specialised body in rendering professional legal, management and financial services to our corporate clients, supported by its high qualified experienced experts, i.e. lawyers, management, finance and tax experts. Our law firm renders diversified services to a number of national and international companies.”

Kashish International Limited

Mauritius

Shishir Agarwal Partner +230 4278661 shishir@kashishworld.com

Kashish International Ltd (KIL) specialises in the maintenance of Intellectual Property (IP) including areas of trademark, design, patent and copyright as well as managing matters of international portfolio management, enforcement, sting operations, franchising and licensing. KIL is highly competitive in the regions of Africa, Asia, the Middle East and Latin America, and the firm’s partners have been proven to economise the costs of maintaining a client’s IP portfolio by 33%. As partner Shishir Agarwal explained, KIL has, over the years, built up valuable assets and experience, knowledge and client trust, and is able to announce that in January 2010 the firm will relocate to a new office in Mauritius in order to accommodate more international staff, as well as better management of IP assignments.

“INTA benefits member firms not only through references and cross-referrals, but also by providing a forum to impart information pertaining to global developments in the area of IP.” In addition, a new office located in Bulgaria will be fully operational as from the 1st of February 2010, which will provide services to European clients for Asia, Africa and Latin America. Mr. Agarwal noted: “KIL offers highly professional services with competitive and flexible fees as per the requirements of our clients. Over the years, KIL has gained expertise in Trademark Opposition and, to date, maintains a client success rate of 99.9% worldwide. Similarly, KIL has expertise in worldwide enforcement for the entertainment industry as well as within the industries of textiles and computer software.” He added that the trademark and IP legislation in Mauritius offers only limited protection, and that existing laws require major amendment for better protection of IP assets in the country. “Secondly,” he said, “the government needs to organise training and educational sessions for effective enforcement of two laws.” KIL has been a member of the International Trademark Association (INTA) since 2006. Mr. Agarwal commented: “INTA benefits member firms not only through references and crossreferrals, but also by providing a forum to impart information pertaining to global developments in the area of IP.”

Corporate INTL 37


Chris Ogunbanjo & Co.

Nigeria

Olukayode Dada Head IP Group +234(1)7277898 xrisco@compuserve.com

DAVID GARRICK, KAYODE & CO.

Nigeria

Mr. Olugboyega Kayode Managing Partner +234-1-7361902/+234-1-7361989 contact@garkaylaw.com

George Ikoli & Okagbue

Nigeria

Mrs. Omolola Ikwuagwu, Partner likwuagwu@ikoliokagbue.com Tel: 234-1-271 8060-2 Fax: 234-1-2715864

Chris Ogunbanjo & Co.

Chris Ogunbanjo & Co. is a leading international law firm, with lawyers based around the world providing comprehensive services to national and multi-national corporations, financial institutions and governments. Head of the IP Group, Kayode Dada commented: “For many years we have been at the forefront of developments in commercial law practice, and the firm is evolving faster than ever to satisfy the needs of our clients for top quality advice in an era of globalisation and rapid financial and technological change.” Mr. Dada also noted: “We are the premier indigenous full-service corporate law practice in Nigeria having been established since 1960. It is no secret that the majority of the commercial precedents in use today in Nigeria emanated from our firm, while the leading commercial practices are headed by lawyers who derived their pupilage at Chris Ogunbanjo & Co.” In addition, Chris Ogunbanjo & Co. is recognised as the first law firm to have successfully litigated a Trademark-Company name conflict under the new Companies Act and the firm has always been active in the reform of IP law, having recently provided resource persons for the new Industrial Property Bill currently awaiting legislative assent. A recent development in respect of trademarks in Nigeria is that the Registry of Trade Marks now accepts and registers service mark applications. Mr. Dada commented: “The acceptance of service mark applications has created a surge in activity, even though the jury is still out on the validity of the legal regime governing its existence. However, in view of the global economic crisis, several companies have had to cut back on their IP litigation budgets which in Nigeria can be unduly protracted.” Chris Ogunbanjo & Co. has been a member of the International Trademark Association for 14 years. Mr. Dada noted that the main benefit of affiliation with INTA is its “being the principal gateway to the IP world”. He added: “INTA has provided a veritable platform for our firm for cross–referrals and we rely on the INTA directory and country portals to initiate relationships with professional colleagues.”

38 INTA

David Garrick, Kayode & Co. is a commercial law firm with offices in Lagos and Abuja, Nigeria. The firm’s practice areas include intellectual property law, corporate/commercial law, tax, shipping and admiralty law, Oil and Gas, Real estate and general litigation. The firm is however mainly known for its unrivalled expertise in intellectual property law for which, it has won several awards from international rating agencies worldwide. The firm’s practice is mainly focused on the Nigerian jurisdiction but it assists clients and associates in protecting and maintaining intellectual property rights in other African countries through its network of associates. With over four decades of experience in legal practice in Nigeria, it represents several multi-national corporations in the acquisition, maintenance and protection of intellectual property rights in Nigeria. Attorneys have background knowledge in various sectors of the economy so they provide sound legal advice. According to Managing Partner Mr. Olugboyega Kayode, the main IP Laws in Nigeria are: Patents and Designs Act, Cap. 344 Laws of the Federation of Nigeria, 1990 and the Patent Rules of 1971. He added that Nigeria signed the Patent Co-operation Treaty (PCT) on 8th June, 2005. However, the Treaty is yet to be ratified by the Nigeria Legislature as required by the Constitution.

“Membershi p of INTA has enabled Attorneys to build a network of associates around the world.” He said that since the economic downturn, commercial exploitation of IP rights has been reduced. “Companies suspend or abandon IP rights that are of no strong commercial value to them. With signs of recovery there is noticeable improvement in this area.” The firm has been a member of INTA for over forty years. Mr. Olugboyega Kayode said, “Membership of INTA has enabled Attorneys to build a network of associates around the world. Acquisition of expert knowledge from other jurisdictions is a great advantage of membership. “The network has been of great assistance in work exchange with associates from other jurisdictions. Country Portal have been of tremendous assistance in locating IP experts in other jurisdictions. Also, the various educational training programmes of INTA have exposed our staff to the latest developments in the IP world.”

George Ikoli & Okagbue handles all aspects of Intellectual Property Rights Protection Prosecution within Africa including Trademarks, Patents & Designs, Portfolio Management, Copyright, IP watch services, product registration (NAFDAC), IP litigation and the commercial aspects of IP. The firm renders consultation and advisory services to all existing, and potential clients. It also offers clients timely and cost effective delivery of services through their dedicated team of highly skilled professionals. The following Laws govern trademarks and IP Practice in Nigeria: Trademarks Act Cap T13 Laws of the Federation 2004; Patents and Design Act P2 Laws of the Federation 2004; Copyright Act C28 Laws of the Federation 2004; National Agency for Food & Drug Administration & Control Cap N3 Laws of the Federation 2004; Standard Organization of Nigeria Act. Recent developments have moved Nigeria into further compliance with obligations under the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization (WTO).

“The International Trademark Association has provided us with an excellent networking opportunity to gain contacts with potential clients at meetings, events, and conferences.” The Firm observed a lot of structural changes in companies over the past two years, such as mergers and acquisitions, which led to the change of their counsel and transfer of their files and vice versa. The IP and trademark industry was affected in Nigeria, especially in relation to client settling professional fees. The firm been a member of the International Trademark Association for 13 years Mrs. Ikwuagwu Partner said: “Being a member of the International Trademark Association has provided us with an excellent networking opportunity to gain contacts with potential clients at meetings, events, and conferences and also network with colleagues at roundtable discussions. “It has also provided the Firm with the opportunity to have Intellectual Property contacts in other jurisdictions. This has assisted us in prosecution of Trademarks, Patent and other forms of Intellectual Property infringements in their Jurisdiction thereby meeting the needs of some our clients. “It provides us with training and educational opportunities and most importantly updates us on recent development of policies or happening in Intellectual Property worldwide.”


Johnson Bryant

Nigeria

Sym Otike-Odibi Partner +234 1 7742298 sym@johnsonbryant.com

Johnson Bryant is a full service Commercial Law firm with a tradition for excellence in the perfection of its clients’ instructions. The firm’s client base is diverse due to its capacity to tailor its services to meet specific needs of clients. The firm places emphasis on understanding clients’ objectives, priorities and requirements in order to meet their needs in the most pragmatic and cost-effective way. Johnson Bryant partner Sym Otike-Odibi commented: “We encourage close working relationships with our clients in order to maintain a tight focus on the clients’ goals.” In addition, the firm provides a wide range of services necessitated by its client base in traditional and emerging disciplines of law. Core areas of practice include: Banking and Financial services, Employment and Labour, Estates and Personal, Business Advisory & Foreign Investments, Intellectual Property, Company & Commercial, Company Secretarial, Tax & Revenue, Property & Real Estate and Litigation & Dispute Resolution. According to Mr. Otike-Odibi, one significant development pertaining to the Trademark and IP industry in Nigeria is the approval of the registration of service marks by the Federal Government which took effect from the 19th of March, 2007. He added: “However, this directive is yet to be published in the official gazette – but service marks are being filed and in recent publications of the trademarks journal, service marks were advertised. In addition, the current Trademarks Act of 1958 is outdated; however, a new bill is currently being processed before the Nigerian National Assembly to amend the Trademarks Act with relevant provisions to bring it up to speed to address current developments in Trademark Law and Practice.“

“The firm places emphasis on understanding clients’ objectives, priorities and requirements.” In order to remain savvy in matters of International trademark and IP, Johnson Bryant became a member of INTA 7 years ago. Mr. Otike-Odibi said of the firm’s INTA affiliation: “The firm has benefitted in areas of: access to high quality educational sessions and programs; participation in roundtable discussions held all over the world throughout the year; and excellent networking opportunities which help us to gain contacts with potential associates and clients at INTA meetings, events and conferences.”

O. Kayode & Co.

Nigeria

Lara Kayode Partner +2341 461 3120 lara@okayode.com

O. Kayode & Co.’s offices were set up in Lagos Nigeria in 1996. From the onset, the firm’s focus was international, and the advice and solution provided practical. Since those early days, the firm has broadened the range of its services to create a comprehensive ‘one stop shop’ for clients in relation to all of their Intellectual Property (IP) service needs. Accordingly, advice is now offered on commercial issues including licensing, acquisition, disposal and management of IP, and the firm’s partners are able to prepare all forms of commercial IP documentation. O. Kayode & Co.’s patent and trademark agency handles the maintenance and renewal of Intellectual Property rights around the world, and the firm’s partners focus particularly, but not exclusively, on the protection of IP rights. Clients range from multinational companies to start-up businesses and individuals who are interested in protecting valuable industrial property. In addition, O. Kayode & Co. is a member of the prestigious International Trademark Association (INTA), which it joined in order to maximise its potential for cross-border networking and referral. The firm’s affiliation within INTA also enables the firm’s partners to keep abreast of the trends and latest developments in IP law development globally. O. Kayode & Co. routinely advises clients regarding the availability of trademarks, as well as helping to evaluate the risks associated with the use of any particular mark. Associated activities include working with in-house/outside marketing teams to establish and implement brand strategies, licensing, review of products and packaging as well as regulatory/labelling compliance issues. At present, Intellectual Property Law and practice in Nigeria is governed by complementary statutes, supported by the common law. The major statutes are: Patent and Designs Act CAP.344 Laws of Nigeria 1990; Trademark Act and Rules CAP.436 Laws of Nigeria 1990; and Copyright Act and Rules CAP.59 Laws of Nigeria 1990.

“The firm’s affiliation within INTA enables the partners to stay abreast of the trends and latest developments in IP law development globally.”

The Law Crest

Nigeria

Anthony Nwauchei Managing Partner 00234 12714472 tony@thelawcrest.com

The Law Crest was established in 1997 as a legal consulting firm with a bias for Corporate Commercial Law, Foreign Investment and Banking & Finance. The firm has since expanded its activities to include Construction & Real Estate, Energy & Natural Resources, Regulatory, Compliance & Anti-trust Advisory Services, Information & Communication Technology, Mergers & Acquisitions, Insolvency, Admiralty & Shipping, Immigration, Labour & Employment, Alternative dispute resolution, Patents and Trademarks, Advocacy and other services. The firm is also committed to commercial dispute negotiation and resolution on behalf of its clients’. Its approach towards every dispute is always practical and result oriented. This involves anticipating problems before they arise and identifying solutions to them, drafting agreements and executing transactions expediently and effectively to avoid disputes whilst advancing the firm’s clients’ objectives. In settling disputes, our firm remains conscious of reaching an acceptable settlement which is at least as good as the likely net outcome of any litigation or arbitration. Managing Partner Anthony Nwaochei is a law graduate of the University of Benin and a Barrister & Solicitor of the Supreme Court of Nigeria. Mr. Nwaochei previously practiced as a solicitor with the law firm of Wenike-Briggs & Co prior to his engagement for several years (1994-1999) as the Company Secretary and General Counsel of Societe Bancaire Nigeria Limited (Merchant Bankers) a Nigerian Investment bank with foreign affiliation which merged with several other Nigerian Banks to form the entity now known as Unity Bank Plc. A member of the Nigerian and International Bar Associations, Mr. Nwaochei has attended several courses locally and internationally in his areas of specialization. Mr. Nwaochei heads the Corporate, Commercial and Energy Law practice team as well as the Banking, Investment, Capital Market and Insolvency practice team. Mr Nwaochei is also a member of the Real Estate, Project Finance and Project Management Practice Team. He specializes in Corporate & Commercial Law, Banking & Corporate Finance, Capital markets & Securities, Energy & Natural Resources, Construction & Real Estate, Project Finance and Insolvency. He is a member of the International Trademarks Association (INTA), Capital Market Solicitors Association and the Nigerian Institute of Management.

Corporate INTL 39


Alrasheed Law Firm

Saudi Arabia

Grace Herrington Executive Administration +966 1 201 5777 grace@alrasheedlaw.com

In the field of Trademark and IP, Saudi Arabia has its own governing laws, regulations and precedence. In the area of patents, Saudi is a member of the GCC Patent office but still maintains its own patent office. The Law Office of Omar Al Rasheed provides a comprehensive range of corporate legal services in a manner that produces recognisable value to clients. This is twinned with a specialised affordable IP department that is structured to provide services and solutions from prosecution to litigation support for Saudi Arabia, GCC, Middle East and/or Arabic countries. When asked how the firm is distinguished in the provision of trademark and IP advice, executive administrator Grace Herrington commented: “We assist clients in IP management by conducting all the required processes from search, registration, amendment, licensing, administrational appeal and litigation. Also, the firm assists with counterfeit infringement, administrational appeals, blocking the custom ports and litigations to provide its clients with a full solution for their needs. Services include trademarks, patents, industrial designs and beyond. The Law Office of Omar Al Rasheed regularly utilises services of reputable clients throughout the world stretching from Asia, the Far East, Europe and the US.” According to Ms. Herrington, Saudi Arabia’s Trademark and IP sector has not been spared the ramifications of the global economic crisis. She noted that the effect as a whole has produced more infringement work due to the decrease of employees. “However,” she added, “Saudi Arabia is considered part of the solution, not the problem, which makes it one of the few safe destinations for medium and large companies to find new, stable and healthy markets.” In order to increase its potential for overseas referrals, the firm became a member of the International Trademark Association two years ago. Ms. Herrington said: “INTA has allowed us the opportunity to meet elite, successful lawyers from all over the world at conferences, and several of these meetings have led to significant symbiotic opportunities. In addition, our office has gained quite a few clients through cross-referrals. We have also used the network to distribute work to other jurisdictions for our clients.”

40 INTA

Law Offices of Dr. Mohamed H. Hoshan

Saudi Arabia

Ms. Maren Hanson Senior Attorney 00966 1 464 9166 gulfconsultants@hoshanlaw.com

Established In 1969, Law Offices of Dr. Mohamed H. Hoshan is one of the oldest law offices in Saudi Arabia providing broad based general legal services. The cumulative expertise and experience of the firm’s lawyers in both common law and civil law, besides their knowledge of Islamic Shari’a law, well serve both its domestic and international clients. In the field of intellectual property, the firm has been registering trademarks in Saudi Arabia since its inception, and is a founding partner of Gulf Consultants for the Protection of Intellectual Property, a professional corporation established with one national firm in each of the six Gulf Cooperation Council countries. According to Ms. Maren Hanson, senior attorney at the firm “Saudi Arabia issued new trademark, patent and copyright laws in the early 2000’s after joining the WTO. The last several years have seen Saudi Arabia putting these laws into effect.”

“Ms. Maren Hanson called INTA “the prime global trademark association, having both trademark agents and company trademark owners worldwide as members.” The firm has been a member of the INTA under the name of Gulf Consultants since 1993. Ms. Maren Hanson called INTA “the prime global trademark association, having both trademark agents and company trademark owners worldwide as members. “We are able to make worldwide contacts and meet with overseas clients (something we would not be able to generally do otherwise).” She continued: “It has been extremely useful for cross-referrals because many of our clients are from the US and Europe, and they may inquire about trademark registration (or patents) not only in Saudi Arabia, but in the GCC States and other Middle Eastern countries, and even in Asia or Africa. We have made many personal contacts and have ongoing IP relationships with IP firms in these countries through our membership in INTA. “Country Portals offers a quick overview and used along with the Country Guide search database provides a wealth of instant data. We have also made use of the Practitioner’s Guide to the Madrid Agreement and Madrid Protocol. The Trademark Image Library has also proved helpful. And, of course, the Trademark Reporter® and the INTA Bulletin help keep us up to date on current issues of trademark law.”


Bouwers INC.

South Africa

Deon Bouwer Tel: +27 11 325 5530 Fax: +27 11 325 5639 deon@bouwers.co.za

Bouwers is a leading South African intellectual property law firm, specializing in the protection, enforcement and management of a wide range of intellectual property rights. In the above process, Bouwers renders a full range of trade marks, patents, designs, copyright, intellectual property commercialization and related services, such as litigation resulting from passing off, infringement of registered rights, unlawful competition, breach of agreement, enforcement of user and license agreements, revocation and expungement of registered rights. Bouwers provides highly personalised services to its clients throughout the world. Furthermore, and by virtue of the fact that Bouwers limits its representation of clients, Bouwers ensures that, no conflict of interest arises and that clients are provided with continuous and uninterrupted services and representation. According to partner, Deon Bouwer, the most important IP laws presently in South Africa are the Trade marks Act, Patent Act, Copyright Act, Counterfeit Goods Act, Merchandise Marks Act and the IPR Act.

“We have found that when approaching clients internationally, our reference to our INTA membership immediately creates trust, ensures high levels of service and co-operation” He commented that the firm has shown a slight decrease in the number of instructions received from international clients and agents. However, the number of instructions received from local clients and the number of high profile cases have resulted in an actual increase in turnover and profits. Bouwers has been a member of INTA for five years. Mr. Bouwer remarked that “the number of enquires resulting from our membership of, and exposure via, INTA (and inclusion in the INTA members catalogue) have steadily increased over recent years. Furthermore, we have found that when approaching clients internationally, our reference to our INTA membership immediately creates trust, ensures high levels of service and co-operation”. He continued further and remarked that “The online portals of INTA are of great use, especially when dealing with lesser known countries and advising clients on filing requirements and how to efficiently deal with opposition proceedings. As stated above, the members catalogue (directory) is of great use.”

Spoor & Fisher

South Africa

Kay Rickelman Foreign Counsel +27 12 676 1111 k.rickelman@spoor.com

Spoor & Fisher is an 89-year-old full-service international IP firm, with comprehensive expertise in providing IP services throughout Africa. Spoor & Fisher, and its associated office Spoor & Fisher Jersey, in Jersey (Channel Islands), focus on all aspects of IP law including trademarks, patents, copyrights, designs and related litigation including anti-counterfeiting, commercial transactions, valuations of IP, due diligence and portfolio management.

“INTA’s educational seminars and publications keep Spoor & Fisher’s professionals at the forefront of global IP developments.” In addition, Spoor & Fisher’s expertise is recognised by others as exhibited by the awards it has received which include: Best IP firm in South Africa 2005 through 2008 by Professional Management Review (PMR); as well as being consistently ranked in the first tier for patents and trademarks by Managing Intellectual Property (MIP) from 2007 through 2009. According to Spoor & Fisher foreign counsel Kay Rickelman, recent changes to South Africa’s Trademark and IP industry include the passing of: the Intellectual Property Rights From Publicly Financed Research And Development Bill, as well as the Protection Of Traditional Knowledge Through The Intellectual Property System Policy Framework and the Intellectual Property Laws Amendment Bill. Despite forward thinking in developing new laws and regulations for new trademark and IP ventures, South Africa has experienced a decrease in trademark applications filed at its registry, of which filings fell 10% in 2008 when compared to the previous year – and this trend continued into 2009. However, Ms. Rickelman also noted that despite the decline, Spoor & Fisher has fared well as a result of continuing to offer clients a business-centred IP solution and valuing its long-term relationships with clients which continue to yield positive results. In addition, Spoor & Fisher was one of the first non-US firms to become a member of the International Trade Mark Association (INTA) and has remained affiliated with the Association for 50 years. Ms. Rickelman commented: “Benefits are received through attending the INTA Annual Meeting, Leadership Meeting and additional seminars including Round Tables.” She added: “The educational seminars and excellent publications offered by INTA keep Spoor & Fisher’s professionals at the forefront of global IP developments.”

Mkono & Co

Tanzania

Mr. August Mrema-Mkono Advocate +255 22) 211 8789; 211 87904 info@mkono.com

Mkono & Co. Advocates is a leading law firm in Tanzania. Founded in 1977 by Honourable Nimrod E. Mkono, MP, the firm has developed to become a prominent corporate, IP, commercial and financial practice in the region. Mkono & Co.’s growth is reflected by the unique mix of people within the firm’s offices in Dar es Salaam Tanzania and Bujumbura Burundi, which house lawyers from all over the world. The firm indeed benefits from its well balanced group of lawyers coming from the US, Europe, India, Uganda and Tanzania and including, besides the renowned Hon. Nimrod Mkono himself, the well-respected Dr. Wilbert Kapinga, former senior state attorneys and parliamentary draftspersons, professors, bankers, experts of IP and international law firms, chartered accountants and chartered secretaries. The main practice departments at Mkono & Co. Advocates are: The corporate and commercial practice, the banking and finance practice, the securities and capital markets practice, the intellectual and real property practice and the dispute resolution practice. According to Advocate, Mr. August MremaMkono, the present United Republic of Tanzania (“Tanzania”) is a union of two countries, Tanganyika and Zanzibar. The Intellectual Property (IP) regime in Tanzania is regulated by two separate and independent legal systems because IP matters are not union matters. He said: “The main laws that govern the IP landscape in Tanganyika are the Copyright and Neighbouring Rights Act, the Trade and Services Marks Act, the Merchandise Marks Act, the Patents Act and the United Kingdom Designs (Protection) Ordinance. The only significant development is the Amendments made to the Merchandise Marks Act and the promulgation of the implementing Regulations under the Merchandise Marks Regulations, 2008. These legal changes are significant developments in the country’s recent efforts to stamp out counterfeiting and piracy.” Furthermore, the Zanzibar Industrial Property Act, 2008 repealed the archaic laws in Zanzibar and radically changes the IP landscape for the better. The firm has been a member of the International Trademark Association for more than 10 years. Mr. Mrema-Mkono called the Online Country Portals very useful. “Other useful services are members’ directory, Country Guides, Trademark Checklist, trademark Reporter, Regional and Topic Updates, International opposition Guide etc.,” he said.

Corporate INTL 41


Salih El Amin Intellectual Property

Salih El Amin Intellectual Property

Salih El Amin Managing Partner 00971 (50 ) 450 3212 iplaw@saips.org

Salih El Amin Intellectual Property is a full service IP firm based in Dubai, United Arab Emirates. The firm is comprised of attorneys who practice intellectual property law on a special and exclusive basis. The firm provides full range of intellectual property services. These primarily include registration, prosecution, maintenance and enforcement of trademarks, patents, industrial design and models, copyrights and domain names. The firm’s founder and most senior partner, Salih El Amin, has been practicing in the legal profession, with concentration on intellectual property matters since 1979. Indeed, he has 30 years of experience in the legal profession with 16 years concentrating on Intellectual Property. Salih El Amin worked with other firms in Saudi Arabia and the UAE until he founded Salih El Amin Intellectual Property in June 2003.

“INTA actually provides the best means which other people come to know us. From the INTA directory we receive enquiries from different parts of the world.” From its base in Dubai, the firm practices in all other jurisdictions internationally, with concentration on the Middle East. Indeed it covers all countries on all continents on the world. Furthermore, it practises corporate law and other areas such as franchising. The firm aims to excel and provide the highest level of professionalism possible. According to Mr. Amin, intellectual property law practises are still evolving in the region. Therefore, Salih El Amin Intellectual Property tries to learn from its counterparts elsewhere and revise the way they handle their professional practises to espouse them. He added: “We are the only firm in the region that has developed a webpage application system so clients can view case files online. It means they can access files around the clock from anywhere.” The firm employs lawyers from diverse legal backgrounds and nationalities. INTA helps the firm to elaborate its international outlook. Mr. Amin said: “INTA actually provides the best means which other people come to know us. From the INTA directory we receive enquiries from different parts of the world.” He continued: “IP summits provide the opportunity to sit face to face with people from selected companies in the industry or in commerce and introduce yourself and services.”

42 INTA

SIPI Law Associates

Uganda

Paul Asiimwe Partner +256 (712) 403 763 paul@sipilawuganda.com

Based in Uganda, SIPI Law Associates primarily focuses on brand protection through registration of trademarks, enforcement through litigation and protection of local and foreign patents in Uganda and the ARIPO member states, also filing trademarks in Rwanda. The firm offers comprehensive advice in areas of Trademarks, Copyright Protection, Telecoms and IT Law, Trade and Investments, Land Natural Resource and Environmental Law as well as Corporate and Enterprise Law. Paul Asiimwe, SIPI Law Associates partner, noted: “Our firm strives at all times to provide its clients with timely, competitively priced services in all IP matters. SIPI Law Associates’ staff also strive to keep abreast of technological developments that affect IP both locally as well as overseas.” Trademark law in Uganda is currently governed by the Trademark Act, Cap 217, the Trademark Rules, and Trademark (amendment) Rules, 2005. There is an ongoing debate on the amendment of the Trademarks Bill of 2008 that will extend protection to registration of service marks, registration of sound and smell marks and also create penalties for trademark infringement. Mr. Asiimwe added that the registration and protection of patents and utility models is governed by the Patents Act, Cap 216, Patent Regulations, 1993 and the Patent (Amendment) rules, 2002 which makes possible the filing of regional patent applications through the ARIPO system, as well as the PCT system. Meanwhile, the Copyright Act & Neighboring Rights Act 2006 provides protection for the rights of individuals in musical, literary and artistic works, cinematography works, gramophone records and broadcasts.

“Since joining INTA, we have experienced increased exposure for our services.” In order to maximise the firm’s international capacity, SIPI Law Associates became an independent member of the International Trademark Association (INTA) two years ago, which has helped the firm to remain resilient during the economic recession. Mr. Asiimwe said: “Since joining INTA, we have experienced increased exposure for our services. We also hope to receive a greater number of referrals in the near future – INTA Online Country Portals has proven to be very useful for this type of research.

BW Kahari

Zimbabwe

Brenda Kahari Managing Partner 00263-4-250994 bwkaharilaw@aol.com

BW Kahari, based in Zimbabwe, has a special interest and focus on intellectual property. The firm assists clients in the areas of patent, design and trademark protection in Africa, primarily in Zimbabwe and ARIPO but also through their correspondents at OAPI and national offices. It has distinguished itself as leaders in Africa for protection of intellectual property rights by actively participating in INTA, ARIPO and WIPO as well as participation at national level in Zimbabwe. At INTA the firm is a member of committees and contributes to publications and articles. At ARIPO they not only file applications for patents and trademarks, but also participate in the organization’s administrative meetings and provide advice and assistance on legislation, agreements and other matters of interest to ARIPO and its Member States. For WIPO, BW Kahari has participated as resource person and lecturer in Colloquia and seminars for Judges and others in the legal profession; in the Master’s in Intellectual Property Degree and the online degree programme sponsored by the WIPO Academy. They have had a long standing relationship with the national office and ARIPO for over 20 years, providing advice on legislation and practice guides as well as assisting with the presentation of IP Expo for inventors in Zimbabwe and the Southern Africa region. According to Partner Brenda Kahari, in Zimbabwe the number of applications for trademarks and patent has declined by approximately 20% in the past two years. It is anticipated that this will improve since the signing of the Global Political Agreement by Zimbabwe political parties and as the recession is overcome in developed countries. During the same time period, however, applications for patents at ARIPO increased due the passing of the Patent Cooperation Treaty by 15 ARIPO Member States. The firm has been a member of the International Trademark Association for 15 years. Managing Partner Brenda Kahari said trademark owners and other agents use the INTA Directory to identify the firm to handle their trademark work in Zimbabwe and other countries in Africa. She enumerated the services that have been particularly useful which included: Meetings of INTA both Annual and Leadership; Publications; Directory; Participation on Committees.


Asia & Oceania In the past, Asia has been a site of numerous contestations over IP as it is home to a variety of countries at different stages of economic development and levels of openness to IP reform, despite pressures from multilateral trading systems and the USTR to standardise and harmonise national IP legislations with global requirements. However, with most Asian countries having signed on to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and become members of the WTO, the current situation is slightly different. Although TRIPS has created a disconnect between the IP laws of non-industrial, developing countries and their social and economic conditions, since TRIPS did not emanate from the willingness or determination of these countries for forms of IP protection adequate for their needs, these countries are now obliged to ensure that their national legislations are in conformity with the minimum standards set by TRIPS. They are also required to enforce IP laws in accordance with global standards. As the relative value of intellectual property increases, Asian businesses are beginning to recognise the importance of protecting IP and are taking infringement issues more seriously. In addition to this, government agencies are realising the importance of IP and the role it plays in economic development, with many establishing bilateral agreements. Most recently, economic ministers from Japan and china have established a working group to protect IP rights as part of an attempt to strengthen economic links during the recession. Japanese minister of economy, trade and industry Toshihiro Nikai and Chinese commerce minister Chen Deming signed a memorandum of understanding in June this year to set up a group that will meet once a year.

In a bid to further unite countries in the Asia region and facilitate the spread of IP related information numerous organisations have been created to promote the effective management of intellectual property rights, both locally and across borders. For example, the Asia Pacific Intellectual Property Association (APIPA) was established in 1994 to assist enterprises in establishing management of intellectual property rights and commercialise their R&D results in Taiwan. APIPA also aims to develop Taiwan R.O.C. into an Asia-Pacific regional intellectual property rights information centre, while strengthening and maintaining fair economic and trade relationships between the Taiwan, R.O.C. and other countries for mutual benefits. For over a decade the Asia Pacific Intellectual Property Law Institute (APIPLI) has pioneered intellectual property research and education in the Asia Pacific region. The Institute is available to perform consultancy services for industry and government and within the University community. In this regard, the Institute has prepared advices for both State and Federal Government authorities on Intellectual Property policy as well as consulting with the commercial

In a bid to further unite countries in the Asia region and facilitate the spread of IP related information numerous organisations have been created to promote the effective management of intellectual property rights, both locally and across borders. Corporate INTL 43


Mulla & Mulla

Mulla & Mulla

Advocates, Solicitors and Notaries

Advocates, Solicitors and Notaries

& Craigie Blunt & Caroe

E.A.K. Faizullabhoy

Partner

Chrysiliou Law

Australia

Andy Chrysiliou Co Founder ip@chrysilioulaw.com.au +61 2 9905 1033

& Craigie Blunt & Caroe

Mulla House, 51, M. G. Road, Mumbai - 400 001

HJM Asia Law & Co LLC

China

Caroline Berube Managing Partner +86 20 8121 6605 cberube@hjmasialaw.com

Mulla & Mulla & Craigie Blunt & Caroe

Mulla & Mulla

Advocates, Solicitors and Notaries

Advocates, Solicitors and Notaries

B.S. Bhesania

India

& Craigie Blunt & Caroe

Mulla House, 51, M. G. Road, Mumbai - 400 001

Partner Tel: +91(22) 2204 4960 / 2287 5121 Chrysiliou Law (practicing in Australia, New ZeaHJM Asia Law & Co LLC, founded by Managing PartDirect: +91(22) 2204 7201 land and Papua New Guinea) is one of the most ner, Caroline Berube , is a boutique law firm based Fax: +91(22) 2204 0246 / 2204 4717 respected Firms in the intellectual property field. in Asia (offices in Guangzhou (China), Shanghai and Tel / Fax: +91(22) 6631 4090 It combines specialist knowledge of intellectual Singapore). bsbhesania@mullas.net property, consumer law and technology law into HJM combines an in-depth knowledge of Asian a patent and trade mark attorney practice. legal systems and the Western understanding of the Chrysiliou Law was founded in 1987 by Andros way of doing business. With more than a decade of Chrysiliou and Kerry Chrysiliou, who had for Asian legal experience, HJM assists in all aspects of many years previously been senior partners in doing business in the People’s Republic of China, another Patent and Trade Mark Attorney practice. including the provision of legal advice, the drafting Between them Andros and Kerry have well over review and negotiation of agreements, intellectual 70 years specialisation experience in practisproperty strategy, infringement and registration ing exclusively in the intellectual property field. dispute and litigation based services. & Craigie Blunt Chrysiliou Law came to prominence with its suc- & Caroe HJM offers a full range of intellectual property and Advocates, Solicitors and Notaries cessful handling of important contentious mattechnology services, ranging from traditional copyters, and to this day has been known as the Firm right, trademark, trade secrets and patents issues to to approach for solutions to difficult problems. the developing internet and broader technology based Mulla House, 51, M. G. Road, Mumbai - 400 001 Cyrus .N. Mistry Tel:with +91(22) 2204 and 4960litigation / 2287 5121 Partner Chrysiliou Law has a technically qualified law along licensing services. Fax: +91(22) 2204 0246 / 2204 4717 Berube, group of patent attorneys as well as trade marks According to managing partner, Caroline cnmistry@mullas.net attorneys and intellectual property lawyers. It has the registration of intellectual property rights with offices in Sydney and Melbourne. Melbourne is local authorities might be not enough in China to headed by two Patent and Trade Mark Attorneys keep them safe. “We can advise clients on how to who are highly experienced in both the commerreduce their risks of having their intellectual property cial and legal side of intellectual property. infringed, as well as how to take firm action against The area of practice of the Firm is basically infringers and violators,” she said. summarised as the full spectrum of intellectual HJM Asia Law & Co LLC joined the International property law, providing a complete package of Trademark Association (“INTA”) in April 2009. services in the trade mark, design copyright, patMs. Berube said: “For a regional law firm based in ent and IP marketing law fields. The services are Asia, the INTA network enables us to stay current on provided in accordance with the Firm’s mission trademark laws and develoments around the world to exceed clients’ expectations and to add value to and especially in non-Asian jurisdictions. Moreover, the client’s businesses. the INTA is also a forum within which members Chrysiliou Law has an associated solicitor praccan discuss issues of common interest, share their tice, CMC Legal, which has conducted significant experience and find solutions to common problems. Federal Court cases in the intellectual property and Our staff are excited by the idea that their attendance consumer protection law fields. This is a compleat annual meetings and conferences often strike off mentary adjunct to the Firm’s services in allowing some of their CLE/CPD credits!” immediate access to Courts for urgent relief. She continued: “Under the online country portals, INTA has assisted Chrysiliou Law by providing the INTA provides us with a collection of legal a forum where Andros Chrysiliou has on several resources and an introduction to international orgaoccasions addressed the world community of nizations. This has proved to be easy to use and very intellectual property practitioners. It also has helpful with our research, being especially appropriprovided an annual meeting venue for networkate now that many companies opt for worldwide ing with clients. The first INTA annual meeting trademark protection and use.” attended by Andros Chrysiliou had fewer than 1000 attendees. That figure is now approaching close to 10,000! With the increase in the size of the profession, & Craigie Blunt & Caroe Chrysiliou Law strives to maintain a point of difAdvocates, Solicitors and Notaries ference through its caring attitude, coupled with delivering real value and providing a personal and pleasing experience to its clients. Tushar A. Mavani Mulla House, 51, M. G. Road, Mumbai - 400 001 Partner Tel: +91(22) 2204 4960 / 2287 5121

Mulla & Mulla

Mulla &

Mulla House, 51, M. G. Ro

Tel: +91(22) 2204 4960 Fax: +91(22) 2204 0246 hdnanavati@mullas.net

Shardul Thacker Partner +91 (22) 2204 4960 / 2262 3191 shardul.thacker@mullaandmulla.com

Mulla & Mulla & Craigie Blunt & Caroe

44 INTA

Hoshang D. Nanavati Partner

Tel: +91(22) 2204 4960 / 2287 5121 Direct: +91(22) 2204 0957 Fax: +91(22) 2204 0246 / 2204 4717 eakfrkk@mullas.net

“Our staff are excited by the idea that their attendance at annual Mulla meetings and conferences often strike off some of their CLE/ CPD credits!” Fax: +91(22) 2204 0246 / 2204 4717 tamavani@mullas.net

N.N. Mulla

Mulla House, 51, M. G. Ro

Partner Tel: +91(22) 2204 4960 Mulla & Mulla is a broad practice based firm with Direct: +91(22) 2204 77 its main offices in Mumbai and branches in New Fax: +91(22) 2204 0246 Delhi and Bangalore. The firm is one of the largest mullas@vsnl.com law firms in India and has been in existence for more than 100 years. It has a very strong IP practice which provides advice on issues such as franchising and licensing. Mulla & Mulla also has a Media & Entertainment practice and acts for clients such as the Times Group, LexisNexis and Reed Elsevier. The firm has been a member of the International Trademark Association for about a year, but has interacted with various in-house legal counsels of global clients that have been members and directors on the board&ofCraigie INTA. Blunt & Caroe Advocates, Solicitors and Notaries INTA has achieved significant prominence in India during the last few years, influencing the Mullaof House, 51, M. G. Ro YazditoDandiwala decision of Mulla & Mulla become a member +91(22) 2204 4960 Partner Tel:has INTA. The firm believes that the membership Direct: +91(22) 2287 11 significantly increased referral work. Mobile: +91 982018462 A spokesman for the firm said: “Our firm has a Fax: +91(22) 2204 0246 very strong trademark practice and litigation departDir Fax: +91(22) 2281 5 ment, and our IP litigation department has acted in yaz@vsnl.com, ypdandiw various passing off / infringement actions and High Court reported decisions during the last 30 years. We have developed significant expertise and experience in our long standing IP law practice and we ensure that our IP partners and senior associates deal directly with clients and the Trademark Registry.” India has a well-established statutory, administrative and judicial framework to safeguard intellectual property rights, whetherBlunt they relate to patents, trade& Craigie & Caroe Advocates, Solicitors and Notaries marks, copyrights or industrial designs. Stringent Intellectual Property legislation ensures progress in different fields and results in the growth of a counJehangir N. Mistry Mulla House, 51, M. G. Ro try’s knowledge bank. The greatestPartner importance of Tel: +91(22) 2204 4960 the strong IP laws must be supported by an equally Fax: +91(22) 2204 0246 strong enforcement mechanism. The common jnmistry@mullas.net intellectual property laws are copyrights, industrial design rights, patents, trademarks, and trade secrets. Mulla and Mulla believe the impact of the global economic turmoil has curtailed trademark and patent applications. The firm said: “This economic meltdown is a trend towards more selectivity with respect to maintaining existing trademarks / patents / copyrights / designs etc. The overall picture appears to be somewhat complex; however, in view of the recent improving economic climate, we find a larger & Craigie Blunt & Caroe volume of corporate entities considering filing more Advocates, Solicitors and Notaries trademark / patent applications / oppositions. There is also more litigation activity surrounding the protection of intellectual Rustam property.”N. Mulla Mulla House, 51, M. G. Ro Partner Tel: +91(22) 2204 4960

Mulla & Mulla

Mulla & Mulla

Mulla & Mulla

Direct: +91(22) 2288 53 Mobile: +91 982010665 Fax: +91(22) 2204 0246 rustammulla@mullas.net


Solomon & Roy

India

Mahua Roy Chowdhury Partner +91 22-2204-2310 mahua@solomonandroy.com

Solomon & Roy is a specialised IP boutique established by Aaron Solomon and Mahua Roy Chowdhury, two experienced legal professionals. Solomon & Roy is affiliated with Solomon & Co., a leading Indian law-firm that has been in existence for 100 years [Estb.1909]. The firm has its main office at Mumbai, in the heart of Mumbai’s legal district. Mahua Roy Chowdhury is a qualified advocate and a registered Patent Attorney. Ms. Chowdhury holds a LLM in Intellectual Property Law from Franklin Pierce (now Pierce Law), USA. She has practised at the Delhi High Court and the Supreme Court of India and has represented the Faculty of Law, Delhi University before the High Court and District Courts. In addition, Ms. Chowdhury has been a speaker in INTA Roundable in India. She also addresses senior executives of clients in in-house IP orientation workshops. Ms. Chowdhury manages IP portfolios worldwide for several clients. She negotiates licensing and cross licensing of IP rights. Ms. Chowdhury also represents clients in Border Enforcement and advises web service providers related to online infringements and regarding liabilities. Ms. Chowdhury had initiated and led HP AntiCounterfeiting actions during 2002-2005. She has coordinated more than 400 criminal IP enforcement actions (raids) throughout India. She was also responsible for procuring injunctions against prime counterfeiters from Delhi High Court. Mahua now advises BMW in relation to its trademark infringement and anti-counterfeiting in India Ms. Chowdhury’s experience includes: • Strategising various actions for IT companies to combat counterfeiting in India and execution of the same. Day-to-day co-ordination with investigation agencies, police and local counsel in 40 cities across India. Successfully initiated criminal and civil actions against counterfeiters. • Initiated formation of a core group of IT companies such as HP, Microsoft, Epson, Canon, Logitech etc. to combat counterfeiting and piracy under the aegis of MAIT (Manufacturers’ Association of IT companies). Successfully organised workshops under the aegis of MAIT for Police, Customs officials and Public Prosecutors in several cities across India. • Liaised with Police and Customs officials for promoting IP enforcement and amending existing Customs laws.

CITA CITRAWINDA NOERHADI & ASSOCIATES

Indonesia

Dr. Cita Citrawinda Noerhadi Founder +62 218354055 cita_p@ccpassociates.com

Dr. Cita Citrawinda Noerhadi is the founder and IP consultant at Cita Citrawinda Noerhadi & Associates in Indonesia. She explained to Corporate INTL that the firm’s practice areas encompass: preparation and drafting of patent specification and claims; the filing and prosecution of patents, trademarks and copyrights in Indonesia and abroad; as well as comprehensive assistance in areas of defending clients’ IP rights, and advising on IP matters including searches and opinions on registration and protection. When asked how the firm can be distinguished from its competitors in the provision of trademark and IP advice, Dr. Noerhadi commented: “We pay attention to every aspect relating to the protection of trademarks, their use and commercialisation. Accordingly, we remain up-to-date regarding relevant legal developments in Indonesia, as well as internationally. We achieve this through participation in national seminars and workshops.” The global economic crisis has shown significant impact on the global trademark and IP industry. According to the Directorate General of Intellectual Property Rights (DGIPR), there was a reduction in patent, trademark and industrial design applications during the period 1998 to 2003. Among the DGIPR’s suggestions for recovery are: reducing the cost of filing applications for patent, trademark and industrial design, and affording loans to the research institutes or universities that produce valuable inventions for communities. Cita Citrawinda Noerhadi & Associates has been a member of INTA since 2004, while the founder of Cita Citrawinda Noerhadi & Associates, Dr. Cita Citrawinda Noerhadi, joined INTA since 1993. When asked about the benefits of being affiliated with the Association, Dr. Noerhadi commented: “We can follow any development related to trademarks, as well as meet the needs of the global trademark community. Referrals organised through the Association have also been useful for our company, for the clients and also for associates abroad who represent our clients.” Online Country Portals is just one service provided by the Association, and provides a gateway to country-specific online trademark information. Dr. Noerhadi noted: “Online Country Portals is very useful, since through this we may obtain information on the latest issues with regard to the development of IP matters in all members firms around the world.”

Iman Sjahputra & Partners

Indonesia

Iman Sjahputra Partner +62 (21) 5793 6750 mail@imansjahputra.com

Iman Sjahputra and Partners has been a member of the International Trademark Association (INTA) for 10 years and has used the global strength of the organisation to enforce the international protection of domestic Indonesian trademarks in international trading, and to ensure copyright protection for areas of the Indonesian Culture, such as Batik Painting. Iman Sjahputra, managing partner of the firm, says that he was able to gain advice recently on a court proceeding for a client. He said: “We gained patent protection for our client on Container dessicant patent, where a court proceeding took place between PT. Indonesia Container Dessiccant and PT. Super Dry Indonesia. The INTA network has been very good for referrals and members can contact each other on any problems or on any new issues.” Mr. Sjahputra is currently working on international trademark infringement which he has required advice from INTA on. His client has a trademark on the brand “beauty code” which was infringed by another Indonesian company using the same brand. He said: “The other company, PT. Berjaya Cosway Indonesia, claim that they are an International company and that their product is made in Switzerland and marketed by Cosway Sdn. Bhd. of Malaysia, so is therefore not governed by Indonesian law. The product is imported to Indonesia by PT. Berjaya Cosway Indonesia, so we feel the trademark has been infringed.” Mr. Sjahputra says that the Indonesian business community is only just becoming aware of the possibility of patents and they are therefore seeing more and more patent applications. He said: “The main laws that govern trademarks were put in place in 2001 and 2002. There are increasing numbers of new patent applications and trademark in the country and, luckily, the trademark and IP industry in Indonesia has shown no sign of suffering, despite the global economic turmoil.” Other trademark protection cases handled by Iman Sjahputra and Partners include the Novotel case and the Warung Pojok case. Mr Sjahputra said: “In the Novotel case we were handling the criminal and civil aspects of the case in Medan. The case of Warung Pojok was fought through the District Court and ended up at The Supreme Court where our client eventually won the case.”

Corporate INTL 45


Rouse & Co

Indonesia

Brett McGuire Partner +62 -21 -769 7333 bmcguire@iprights.com

Rouse & Co was established in London in 1990 and provides services to clients concerned with the exploitation of Intellectual Property Rights (IPR) throughout the world. This includes advice in relation to trade marks, copyright, designs, passing off and unfair competition, breach of confidence, patents and other intellectual and industrial property rights.

“The business has grown dramatically since 1990 and presently has an international team of over 100 people, drawn from industry and private practice, providing a unique mix of skills and experience.” The business has grown dramatically since 1990 and presently has an international team of over 100 people, drawn from industry and private practice, providing a unique mix of skills and experience. Rouse & Co International specialises exclusively in the protection, exploitation, enforcement and management of IP. With its team of lawyers qualified in a variety of jurisdictions, trade mark agents, investigators, linguists and administrators, the firms aims to provide a service that is second to none. With its proven track record in relation to all aspects of IP litigation, including disputes relating to trade marks, designs, copyright, patents and parallel imports, Rouse & Co aims for the best results at the least cost. In the UK, its services have attracted high profile attention in some of the most important IP cases recently brought before the English High Court. The firm also offers a variety of services to include: a proprietary global trademark search; a clearance and evaluation system, which answers the need for technological solutions to overcome the shortcomings of traditional clearance procedures; file and prosecute applications through to grant; filing and prosecution of trademarks and registered design applications both in the UK and abroad; searching and registration of domain names throughout the world; and a data unit which designs and builds databases to facilitate clients’ management process. In addition, the firm runs a number of training initiatives ranging from informal in-house training sessions to an intensive forum for senior management.

46 INTA

Asamura Patent Office, p.c.

Tokyo - Japan

Kiyoshi Asamura President, CEO +81 3 3211 3651 asamura@asamura.jp

Asamura Patent Office was founded in 1891 by Mr.Saburo Asamura on the advice of Mr. Korekiyo Takahashi (the first Commissioner of the Japan Patent Office). In 1947, Asamura Patent Office moved from Osaka to Ohtemachi, Tokyo, the capital. Its main service is acting on behalf of clients filing applications for intellectual property rights, including patents, utility models, designs, and trademarks, etc. Marking the one hundred and sixteenth anniversary of its origins, Asamura Patent Office, p.c. started services in 2008. The firm’s attorneys offer clients a full range of trademark and IP protection services including preliminary clearance searches, prosecution of applications, appeal and oppositions, licensing, enforcement and litigation. Attorneys handle both domestic cases ordered by clients abroad and foreign cases ordered by clients in Japan. Such cross-border cases occupy more than 90 percent of the total cases handled by our firm. Our firm utilizes a globally connected network with more than 2,000 businessrelated offices abroad. Clients can therefore access trademark services anywhere in the world by approaching our extensive international network. According to President, CEO, Mr. Kiyoshi Asamura, the Japan Patent Office is initiating a study in connection with new types of marks such as motion signs, holograms, color marks, position marks and sound marks. According to recent reports, the Industrial Structure Council on the Law of Trademarks is planning to present a bill to amend the Trademark Law to protect these marks in the future. The Japan Patent Office implemented sharp cuts in official fees effective June 1, 2008; the trademark registration fee for one class was reduced from 66,000JPY to 37,600JPY and the renewal fee for one class was reduced from 151,000JPY to 48,500JPY. The firm has been a member of INTA for almost 30 years. Mr. Kiyoshi Asamura said, “The membership of the International Trademark Association (INTA) contributes greatly to our cross-border business. It provides us with ceaseless international networking opportunities through the diverse activities of INTA including the Annual Meeting.” He continued: “INTA activities include frequent information exchanges keeping each of our international IP information resources enriched and updated. These excellent relationships lead to new business opportunities.”

Agency of Intellectual Property Tagbergenova and partners

Kazakhstan

Modangul Tagbergenova - Partner +7 (727) 2727709 modangul_tagbergenova@intellectual.kz Alma Tagbergenova - Partner +7 (727) 2611847 alma_tagbergenova@intellectual.kz

The Agency of Intellectual Property “Tagbergenova and partners” is one of the leading firms in the field of Intellectual Property in Kazakhstan and former Soviet Republics of the Middle Asia. The Agency’s history goes 30 years back. It was established on the basis of the former Alma-Ata Branch of the USSR Patent and Trademark Center. In 1992 it was reorganized into a firm of Patent Attorneys. The Agency has a broad practice related to the protection and enforcement of patents, trade and service marks, integrated circuits, plant varieties, trade names, copyright, licensing and assignment of intellectual property rights, unfair competition. It represents its clients in dispute resolution and in any official authorities. It provides its clients with a wide range of services all over the world. Its patent attorneys are supported by a team of associates and advisors qualified in a broad range of technologies from biotechnology to software. The Agency includes three registered Kazakhstan Patent Attorneys specialized in different areas, and one Eurasian Patent Attorney. All the objects of intellectual property in Kazakhstan are protected by the Civil Code and five Laws:

1. Law of copyright and allied rights 2. Patent Law of the Republic of Kazakhstan 3. Law of the Republic of Kazakhstan “On Trademarks, Service marks and Appellations of Origin” 4. Law of the Republic of Kazakhstan “On Protection of Selection Achievements” 5. The law of “Legal Protection of the Topology of Integral Microchips”.

Patent Attorneys at The Agency of Intellectual Property “Tagbergenova and partners” take an active part in elaborating and debating new bills in the IP field. Partner at the firm, Modangul Tagbergenova, said: “We keep tracking all latest legislation and technology developments in order to preserve our leading position and are able to protect our Client’s intellectual property in the most professional, costeffective and time-saving manner.” Please take into account that the name of company was changed to the Agency of Intellectual Property “Tagbergenova and partners” at the end of 2009.


Salans

Kazakhstan

Yuliya Mitrofanskaya IP practice head +7 7272 58 2380 YMitrofanskaya@salans.com

Founded in Paris in 1978, Salans is a full service international law firm with over 750 lawyers of more than twenty nationalities across 21 offices in 16 jurisdictions. Salans has one of the most extensive office and local counsel networks in the CIS, which reflects its serious, long-term commitment to the region. This capability allows clients to access a wealth of on-the-ground, local talent and experience. The firm’s CIS practice composes of more than 200 Western-trained and locally-qualified practitioners that specialise in all aspects of doing business in the region, including working with federal and local governments to bring projects to fruition. Major practice areas in the CIS include; IP/ Trademarks; IP/ IT/ Telecommunications; Mergers & Acquisitions / Corporate; Tax / Customs; Real Estate/Construction; Hotel/Hospitality; PPP/Infrastructure Projects; Litigation/Arbitration; Banking/ Finance; Energy/Natural Resources; Labour Law / Employment; and Competition Law. Salans has a specialized practice in intellectual property litigation involving copyrights, patents, trademarks, industrial designs, computer software, and unfair competition in a broad range of media, including the printed word, music, art, graphics, film, photography, the Internet, etc. We have been involved in some of the most prominent, important, and groundbreaking intellectual-property cases in the CIS. Salans’ IP lawyers are experienced in filing and prosecuting applications for patents, trademarks, and copyrights, maintaining, renewing and enforcing these rights, and recording licenses, liens or transfer agreements with the appropriate registrars. According to IP practice head Yuliya Mitrofanskaya, “Kazakhstan is a party only to the Madrid Agreement Concerning the International Registration of Marks but not to the Madrid Protocol. The Government is currently conducting work on accession to the Madrid Protocol.” She added: “Kazakhstan practice is seeing a significant increase of a number of litigation cases. IP rightholders seem to be intolerable to the infringement even in the current economic conditions and seek for reinstatement of their rights” The Salans’ Kazakhstan practice has been a member of the INTA since 2007. Ms. Mitrofanskaya said membership to the network broadens clients’ portfolios.

ACACIA LAW

Australia & New Zealand

Cathryn Warburton Managing Partner 0064 4 232 2486 inta@acacialaw.com

Acacia Law deals quickly and efficiently with patents, designs, trade marks, and copyright issues in New Zealand and Australia. They place particular focus on litigation and contentious or difficult IP work and commercial contracts have a particular IP focus. Indeed, they have a significant number of local patent attorneys to instruct them on IP opposition and litigation cases. Managing Partner Cathryn Warburton enumerated the ways the firm can distinguish itself in the provision of trademark and IP advice. First, they were the 2009 Winner in the Porirua (New Zealand) Business Awards Sustainability Category. Second, they have fostered both strong and trusted client relationships. Third, the firm is competitive and therefore, highly cost effective. Last, because they service a wide demographic/market, they can offer practical advice to large established corporations or individuals/entrepreneurs. Elaborating on the firm’s strengths, Ms. Warburton said: “We get to know our agents and clients and adapt our methods to best suit the agent/client’s own business model.” She added: “Our fixed fee structure for trade marks means that there is NO ADDITIONAL fee for prosecution, reporting acceptance or forwarding Certificates of Registration. In our addition, our filing fee is more cost-effective than the filing fee of most of our competitors! We are able to achieve such cost-effective rates because of smart use of technology. This means that our internal services are streamlined to give our agents and clients the best financial advantage, while being of excellent high quality.” She identified the laws that govern trademark and IP laws in Australia and New Zealand as the following: Trade Marks Act 2002 (NZ); Trade Marks Regulations 2003 (NZ); Patents Act 1953 (NZ); Copyright Act 1995 (NZ); Fair Trading Act 1986 (NZ); Trade Marks Act 1995 (AUS); Trade Marks Regulations 1995 (AUS); Trade Practices Act. The firm has been a member of the International Trademark Association for less than a year. However, they have already noticed increased enquiries. Ms. Warburton pointed to the annual conferences as a particular benefit because it provides the perfect opportunity to meet with other members and she is particularly looking forward to attending the conference in Boston in 2010 and meeting other members. Anyone wishing to meet with Cathryn at INTA 2010 is welcome to email her on inta@acacialaw.com

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Vellani & Vellani

Pakistan

Badaruddin F. Vellani Senior Partner +92 215801000 bfv@vellani.com

Cadiz & Tabayoyong Law Offices

Philippines

Jose Anselmo Imperial Cadiz Partner + 632 638 0084 jaicadiz@ct-lawfirm.com

Pyprus Pte Ltd

Singapore

Constance Mah Partner +65 6734 8523 constance.mah@pyprus.com

Cadiz & Tabayoyong Law Offices

Vellani & Vellani Advocates and Legal Consultants continue a practice first established in 1937 under the name of Wali Mohammad Vellani & Co and carried on under various names thereafter. It also incorporates the practice formerly carried on in the firm name of Fatehali W. Vellani & Co. The firm’s client base includes national and international corporations, major investors and commercial banks, as well as government organisations. Vellani & Vellani has a wide range of practice groups which evolve continuously to provide clients with expert legal advice taking into account the IP requirements and commercial aspects of clients’ businesses. The Firm is at the forefront of providing advice on matters ranging from Intellectual Property, Corporate law, anti-trust, competition and regulatory issues, dispute resolution, employment, pension and benefits, finance, real estate and taxation. It also has efficient systems in place that are complimented by staff dedicated to trademark and IP work. The firm works to ensure that clients’ needs take top priority without delay and in the most cost-efficient manner. According to Senior Partner, Badaruddin F. Vellani, Pakistan remains an attractive location for conducting business. He said: “Moreover, on account of the business opportunities available in Pakistan, as well as to tackle the global menace of counterfeiting and piracy, the trademark filings have in fact increased in the recent past in order to avail the available statutory IP protection under the laws in Pakistan.” He added: “The Firm has been a member of INTA since 1997 and, as such, has been an active participant at the INTA meetings for over a decade. The membership has proved to be a boon in increasing the Firm’s connectivity and accessibility with existing clients and has also increased its client base. It has provided a forum where clients are able to meet and engage in one to one discussions with counsel. “Since the Firm also deals with corporate and commercial work, in addition to trademark and IP matters, such contacts have proved to be of great assistance in identifying for our clients, counsel in other jurisdictions who have assisted our clients in protecting their interests abroad.”

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The prestigious law firm Cadiz & Tabayoyong Law Offices is conveniently located in the capital area of the Philippines. It diligently covers various practice areas that includes corporate and business law, plus labour law and election law. Partner Jose Anselmo Imperial Cadiz called the latter pertinent because elections are forthcoming in the Philippines in May The law firm likes to concentrate directly on its region in the Philippines. However, it does not limit its activity and works on international transactions regularly. Indeed, its IP practise is involved in a lot of international work. Mr. Jose Anselmo Imperial Cadiz said: “We are usually recipients, we have clients as far as trademarks and patents are concerned, all over world, particularly in the US, South America, and Asia.” As a consequence of expansion and success, the firm joined the International Trade Association around 4 years ago.

“At the conferences, we are introduced to fellow lawyers that engage in the practice of intellectual property. There is a great amount of interaction at the conferences.” Mr. Jose Anselmo Imperial Cadiz said: “We started to become aggressive in our efforts to do more IP work. Our practice started to become more extensive and more foreign clients were beginning to approach the firm.” Mr. Jose Anselmo Imperial Cadiz has experienced a great amount of referrals from the network. He said a lot of referrals are facilitated through INTA and the many seminars and conferences. The firm likes to attend as many of the conferences as possible if time permits. He elaborated on the international conferences: “At the conferences, we are introduced to fellow lawyers that engage in the practice of intellectual property. There is a great amount of interaction at the conferences. In fact a lot of referrals are made through the conferences and INTA directory.” Partner Jose Anselmo Imperial Cadiz completed studying law in the Philippines in 1987, and IP was one of his primary interests, so he initially worked at some of the biggest law firms before he put up his own practice in 1993. More recently he attended the Kennedy School of Government in Harvard and completed his Masters.

Pyprus Pte Ltd is a firm of Singapore and Malaysian patent, design and trade mark agents. It has offices in Singapore and Malaysia. Pyprus has a history of 17 years. Besides filing and prosecuting patent and trade mark applications directly in Singapore and Malaysia, it also files applications in more than 100 countries through its network of foreign associates. This excludes trade mark applications filed under the Madrid Protocol. In the area of original patent drafting, Pyprus drafts and files patent applications in various fields. It also undertakes valuation work and issues freedom to operate opinions and infringement opinions. The main legislation governing IP rights in Singapore are the Patents Act, Trade Marks Act, Registered Designs Act, Copyright Act, Geographical Indications Act, Layout-Designs of Integrated Circuits Act and Plant Varieties Protection Act. The common law of passing off also protects unregistered marks in Singapore.

“INTA’s Online Country Portals service has been a useful and ever-available tool for quick reference” Constance Mah, partner at Pyprus, says that the recent global economic turmoil has created a recession in Singapore that has affected its industries and concomitantly, the number of IP applications filed. She believes that there are signs that the recession is lifting and that there have been encouraging signs of recovery during the last quarter. Pyprus has been a member of INTA since 2004 and has enjoyed the benefits of networking and professional advice. Ms. Mah said: “A small amount of our inbound trade mark work results from our INTA membership. We have also had good experiences of using INTA members in some of our foreign filings. INTA’s annual meetings are also very convenient for building upon our ties with our foreign associates over a short period of several days.” She added: “On a professional level, INTA’s Online Country Portal service has been a useful and ever-available tool for quick references. This is very useful for us in view of the large number of foreign filings that we assist our clients with.”


PATENT 100 SIPPT

South Korea

Duk Yeul Baek Partner +82 2 552 3600 dybaek@patent100.com

Yoon & Lee

South Korea

Dong-Yol Yoon Partner +822 5671107 yoon@yoonpat.com

Annam IP & Law

Vietnam

Mr. Chien Partner 00844 3761 7077 annamlaw@vnn.vn

Annam IP & Law

Under the tagline of ‘Complete Satisfaction to Clients’, PATENT 100 SIPPT was established in 1984 by Duk Yeul Baek, in association with LEE & KO, to provide a broad range of patent and IP related services. In 2005, after 21 years of steady expansion and representation of well over 300 clients ranging from individuals to large multinational corporations, PATENT 100 SIPPT moved to a new location, separate from the law offices of LEE & KO, to offer a more comprehensive and bespoke service to clients. PATENT 100 SIPPT provides a wide range of services in the field of IP, not only in the filing and prosecution of applications, but also in the maintenance and enforcement of their rights. Founding partner Duk Yeul Baek commented: “With our skilled professional engineers, we excel at handling and managing cases in all scientific and technical fields, especially in the areas of mechanical and civil engineering, electronic and electrical engineering, telecommunications, and chemistry and biotechnology.” Mr. Baek added: “Our trademark department is committed to offering a full range of services in trademark and service mark rights, with a full understanding of their importance in today’s complex business world.”

“The Association’s Online Country Portals provides a gateway to country-specific online trademark information.” PATENT 100 SIPPT handles a wide range of IP fields including patents, utility models, design, trademarks, computer software, domain names, semiconductors, trade secrets and copyright. In particular, the firm maintains a thorough expertise in IP and provides guidance in areas of: prosecution of patents, utility models, design and trademarks; registration and dispute resolution of domain names; copyright-related disputes; protection of software and semiconductors; prevention of unfair competition and protection of trade secrets; franchising & licensing; and IP-related dispute resolution. The firm’s growing experience and esteem over the past 25 years can be partly attributed to its affiliation with INTA, which began 20 years ago. Mr. Baek noted that the benefits afforded to the firm via its affiliation with the Association include referrals, conferences, and access to the Association’s Online Country Portals which provide a gateway to countryspecific online trademark information – all of which have been highly beneficial factors in developing the firm’s business.

The 21st century is an age of boundless opportunity for technology according to partner Dong-Yol Yoon at Yoon & Lee in South Korea, who noted it is important to understand and utilise Intellectual Property (IP) rights in order to take the lead in the competition for technology. “We long ago recognised the importance of IP and prepared for this,” said Mr. Yoon, “therefore, YOON & LEE has performed a pacesetting role in protecting IP rights since the foundation of our firm in 1982.” The firm has accumulated extensive knowledge through many years of acquired experience in the fields of patents, utility models, designs and trademarks. Its customers have used its specialist knowledge in many business areas including electronics, telecommunications, machinery, chemistry, pharmaceutics, cosmetics, genetic engineering, and in service industries and business models. Yoon & Lee patent attorneys combine professional learning and experience in all fields of IP rights, in domestic and foreign applications, registration, trial and litigation – in order to find the best solution for clients’ problems. In 2007, the firm celebrated 25 years of supporting customers in recognising the value of their knowledge and in protecting their IP rights. Although the speed of expansion and advance in the fields of high technological achievement and the countless changes in the protection of IP have left many behind over these 25 years, Yoon & Lee has retained its commitment to outstanding quality and service for all of its customers. Furthermore, partner Dong-Yol Yoon has gained comprehensive knowledge of the processes and issues involved in IP law, both from experience in product design as a patent applicant, and as a patent attorney and founder of Yoon & Lee. His expertise in polymer synthesis and other chemical processes stems from his work in the research and development department of a major Korean chemical company, where he first began to concentrate on IP law.

Dong-Yol Yoon has gained comprehensive knowledge of the processes and issues involved in IP law, both from experience in product design as a patent applicant, and as a patent attorney and founder of Yoon & Lee.

Annam IP & Law is located in Vietnam. It diligently provides its clients with a full range of IP services to protect their inventions, trademarks, industrial designs and related matters not only in Vietnam, but also in Laos, Cambodia, Myanmar and other jurisdictions. In addition to full IP services the firm also provides its clients with legal advice on Corporate and Business Law. The firm has a rule to provide trademark and IP advices in a “comprehensive and quickly” manner. Partners Mr. Chien and Ms. Hahn enumerated the various laws that govern IP in Vietnam. They are: Civil Code; Criminal Code; The Intellectual Property Law (enacted in 2005, to be effective on 1 July 2006); Custom Laws; Competition Laws (2005); The Ordinance on Handling the Violation of Administrative Regulations (2005); Decree No 100/2006/ND-CP on copyright and related rights; Decree No 103/2006/ND-CP, on industrial property rights; Decree No 104/2006/ND-CP of September 22, 2006, on industrial property rights to plant varieties; and Decree No 106/2006/NDCP, on sanctioning of administrative violations related to industrial property.

“The firm been a member of the International Trademark Association for 1 year. The firm is grateful to the network which ensures that the firm has updated information in the IP field.” Both partners also enumerated recent and significant developments in the law. They are: Requirements for establishing IP right are simpler than before; Procedures, terms for establishing IPR are clearer; Opposition’s procedure is firstly introduced; Definitions of “well-known” and “certification” marks are provided under IP Law; IP Law of 2006 encourages brand owners to enforce their IP rights through the courts. They added that since the economic recession the trademark and IP industry has fared relatively well with reduced costs and an enhanced quality. The firm been a member of the International Trademark Association for 1 year. The firm is grateful to the network which ensures that the firm has updated information in the IP field.

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A HOA LAW OFFICE

Vietnam

Nguyen Minh Huong (Mrs.) Chief Attorney Managing Partner 84-8-38342 361 ambys-saigon@hcm.fpt.vn

The law firm, A HOA LAW OFFICE, based in Vietnam, has numerous practice areas and a high level of expertise. The firm’s practice areas include: Industrial Property & Copyright Agent; Legal Consultancy & Court Proceeding; Business & Investment Consultancy Areas of expertise and significant about our firm’s profile: Settlement of IP infringement. We can say our firm is a Master in Anti - Counterfeiting in Vietnam. We are the leading firm in the provision of trademark and IP advice. Our opinion is often considered by Vietnamese government Agencies and have been taken to legal documents. According to Mrs. Nguyen Minh Huong, Chief Attorney and Managing Partner at the firm, the Intellectual Property Law of Vietnam was adopted by the National Assembly of Vietnam and came into effect since the 1st July 2006. She said, “It is the first legal documents at law level adopted in our country (Vietnam), which was legal instrument for Vietnam becoming WTO member.

“We really appreciate information that INTA can provide not only for education purpose but also for cross-referrals.” “The significant development of our IP Law was issuance of separate chatter of enforcement of intellectual property rights, which was corresponding to TRIPS agreement.” She called the economic downturn a really difficult time for the IP industry. “There were many IP applications withdrawn or abandoned. Almost brand owners had to cut down their budget for IP enforcement activities. We may say for 2009 it seems no significant event in term of the trademark and IP industry in Vietnam.” The firm focuses mainly on the Indochina countries including Vietnam, Laos, and Cambodia. However, international demands from clients have been helped by INTA membership since 2004. Mrs. Nguyen Minh Huong said, “We can easily to find any firm over the world to assist us for overseas registration of trademark and other IP objects.” She added: “We really appreciate information that INTA can provide not only for education purpose but also for cross-referrals.” The firm often seek cases at “The Trademark Reporter,” and said they appreciate the INTA annual meeting, calling them a real festival in terms of worldwide networking as well as education.

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PHAM & ASSOCIATES

Vietnam

Mr. PHAM Vu Khanh Toan Managing Partner +844 38244852 hanoi@pham.com.vn

Pham & Associates (P&A) is one of the largest IP law firms in Vietnam. With a staff of over 100 professionals fluent in both English and Vietnamese, P&A advises domestic and international clients on Company Incorporation, Investing, Banking & Finance and Tax & Employment Law Consultation in addition to its high quality legal services in the field of IP. P&A was voted one of the best four IP law firms in Vietnam by Asia Law & Practice in 2004, 2005 and 2006; was ranked number one for its Patent and Trademark practice by IP professionals according to Managing Intellectual Property Magazine; and was recipient of the Vietnam IP Firm of the Year Award in 2007, 2008 and 2009 from Managing Intellectual Property Magazine. According to Mr. PHAM Vu Khanh Toan, P&A distinguishes itself from other law firms by having a long-standing policy of providing high quality services. This is achieved by partnering with clients to achieve their particular goals in the most efficient and effective manner possible. P&A’s professional staff strive to ensure not only IP rights prosecution but also IP rights enforcement, and operate from four offices in the major commercial cities of Ha Noi, Ho Chi Minh city, Hai Phong and Da Nang, enabling the partners to easily meet with clients at their respective companies. In addition, P&A has been a member of the International Trademark Association (INTA) since 1993. Mr. Pham said that the firm has benefitted from its membership within the Association through participation in seminars, workshops and conferences organised to improve member firms’ skills, and update their knowledge through liasing with other professionals in the trademark community.

The firm has benefitted through participation in seminars, workshops and conferences organised to improve member firms’ skills. Mr. Pham also said, of Vietnam’s changing trademark and IP legislation: “The Intellectual Property Law (Law No. 50/2005/QH11) was passed by the National Assembly of Vietnam in November 2005. In June 2009, a new IP Law was passed to amend a number of articles of the above mentioned IP Law. The amended law aims at encouraging innovation, improving IP management systems and bringing them into compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS). It will come into force on January the 1st, 2010.”

Vietnam

Investconsult Group

Nguyen Tran Bat Chairman / General Director +844 35373262 incom@hn.vnn.vn

Founded in 1989, Investconsult Group is one of the first and leading professional consultancy firms in Vietnam providing multi-industry services such as: IP services, consultancy for investment projects, consultancy in development and technical assistant projects, as well as legal consultancy. Investconsult Group has more than 200 full-time employees working in the Head Office in Hanoi, the Southern Office in Ho Chi Minh City and the Branch Office in Can Tho City. The firm has been recognised by international businesses and The Asia Pacific Legal 500 as one of the leaders in Vietnam in the field of IP services, corporate, investment and finance. General director Nguyen Tran Bat noted: “With over 20 years’ experience in the field of IP, our firm has given substantial professional and expert advice pertaining to a wide range of IP fields including the registration of patents, industrial designs, trademarks and copyrights. In addition, we assist clients in prosecution related to the above matters as well as franchising, licensing and branding. Investconsult is one of the leading IP firms in Vietnam and a representative for many famous clients from all over the world including Walt Disney, FIFA, Sanofi, Novartis and Japan Tobacco in both IP registration and infringement settlement.”

“The firm has benefitted through increased opportunities to meet with likeminded firms.” tThe prevailing laws that govern trademark and IP in Vietnam are the IP Law 2005, Decree Nos. 103, 105, 106 guiding the implementation of the IP law and the Circular 01/2007/TT-BKHCN guiding the implementation of Decree 103. Previously, IP matters were regulated by separate Decrees and Circulars. From the issuance of the IP Law 2005, this is the first time all IP matters have been governed by a unified and complete governing tool. According to Mr. Bat, this is one factor which has assisted Vietnamese business to fare comparatively better than other regions’ business through the global financial crisis. As a further way of enhancing the firm’s global scope and reach, the firm became a member of INTA, the International Trademark Association, in 1994. Consequently, the firm has benefitted through increased opportunities to meet with likeminded firms in order to exchange experience and gain contacts with potential clients.


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