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Representing the international trademark community

In association with

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CAN NOW BE READ IN ITS ENTIRETY ONLINE PLEASE VISIT WWW.EMAG.CORP-INTL.COM FOR MORE INFORMATION ON OUR FREE E-MAG

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CONTENTS

4

INTA INTRODUCTION

6

NORTH AMERICA & THE CARIBBEAN

12

CENTRAL & SOUTH AMERICA

18

EUROPE

25

AFRICA & THE MIDDLE EAST

31

ASIA & OCEANIA

39

GLOSSARY

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INTA – Representing trademarks for more than 132 years

Companies work hard to build reputation and trust with their customers. Registering their trademarks helps to assure that they, not an imitative competitor, will reap the rewards associated with the product. More importantly, trademarks allow the public to identify the type of good or service they are receiving with the company that supplies it. Laws that protect trademarks ultimately protect consumers from being confused about the source of the goods or services. Working to promote and support the advancement of trademarks and intellectual property is the International Trademark Association (INTA). INTA is a not-for-profit membership association of more than 5,700 trademark owners and professionals from more than 190 countries. The Association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization “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 plays a major role in shaping global trademark policy and advancing the professional knowledge and development of the trademark community. A truly global organization, INTA is headquartered in New York City with offices in Brussels and Shanghai, and representatives in Washington D.C., Geneva and Mumbai.

Networking Opportunities INTA member companies and firms find true value in the organization’s networking opportunities. The Association regularly holds conferences, roundtables and receptions throughout the year, giving its members from every corner of the globe an opportunity to meet colleagues and enhance their industry knowledge through educational discussions and presentations. INTA’s Annual Meeting, the largest gathering of trademark professionals from across the globe, is a multi-day conference featuring networking events, educational sessions, receptions and an exhibition hall. The meeting attracts more than 8,000 trademark professionals from around the world each year. Corporate legal teams utilize the Annual Meeting to meet with their outside counsel, network to find counsel, and take advantage of top-tier educational sessions and discussions on up to date issues that affect brand owners. Last October, INTA held its first two-day anticounterfeiting event in Hong Kong. Judge Yin Sahoping of the Supreme People’s Court of the People’s Republic of China and Judge Sinthavathavorn Chankrapor of The Central Intellectual Property and International Trade Court in Thailand were among the high caliber speakers and attendees at this event. The organization’s annual Trademark Administrators (TMA) Conference, which offers a wide variety of educational sessions for trademark professionals, was also held in early October. This year’s conference took place in Washington D.C., and a number of speakers from the United States Patent and Trademark Office participated.

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In addition to face-to-face networking opportunities, INTA will be launching a new website, which will feature a social network where members will be able to interact with one another in a secure online environment.

Shaping Policy Aside from the networking opportunities, companies find great benefit from INTA’s influence on trademark policy. The ultimate goal of INTA’s advocacy work is to promote more harmonization of trademark law and enforcement. For example, INTA is a strong supporter of the promotion and use of the community trademark in the EU, a trademark registration system where one registration provides protection in all member states of the EU. On a more global level, the AntiCounterfeiting Trade Agreement (ACTA), has been an issue that received strong support from INTA and its members. ACTA is currently being negotiated by 37 countries including, members of the EU, Canada, Japan, Mexico, Morocco, South Korea, Switzerland and the United States. If signed, ACTA would be one of the first international agreements designed specifically to combat counterfeiting in a harmonized and coordinated way. INTA also works with the Internet Corporation for Assigned Names and Numbers (ICANN) to ensure that brands are protected in the Internet space. ICANN is a not-for-profit public-benefit corporation that coordinates and manages the Internet’s domain name system. In 2008, ICANN approved a policy for introducing an unlimited number of new generic top level domains (gTLDs)—such as

.com or .org—to be added to the Internet’s domain name system. This may lead to high levels of trademark and intellectual property abuse on the Internet. Additionally, it could cause consumer confusion and require brand owners to incur extensive additional costs to protect their trademarks online. INTA has provided extensive input to ICANN on the potential impact of its unlimited new gTLD proposal on trademarks, consumers, competition, and Internet stability and security. The organization’s efforts led to ICANN’s recognition of several “Overarching Issues” within its proposal, including the need for trademark protection and an independent study on the economic impact and intellectual property rights. Since then, INTA has continued to assess ICANN’s proposal in terms of whether its provisions are sufficient for protecting trademarks, preventing consumer harm and addressing the other “Overarching Issues” identified within its proposal for unlimited numbers of new gTLDs.

Global Trademark Research Member firms and companies of INTA receive access to information and research tools in trademark law and practice. The most recent products to become available to INTA’s members include the Trade Dress: International Practice and Procedures, Country Portal and Country Guides. The Trade Dress: International Practice and Procedures is a searchable, online database of comprehensive country profiles on trade dress protection and enforcement. INTA’s Country Portal is an online gateway to the organization’s country-specific content. The database also includes external resources, including countries’ national and regional

trademark offices, searching and filing tools and fees, laws, regulations, case law and treaties. Country Guides: Essential Information on Trademark Protection Worldwide is a searchable database of country profiles offering basic, practical information on trademark filing, prosecution, registration, maintenance and enforcement. Member companies and firms can access these tools through INTA’s website, www.inta. org. They also get access to The Trademark Reporter®, the world’s only scholarly journal dedicated solely to trademark law and related topics. Published six times a year, The Trademark Reporter features works of high-quality legal scholarship by trademark practitioners and professionals, academic faculty and law students.

The future While companies and firms have much to benefit from INTA’s member offerings, aggressive plans are in place to further support trademark professionals and promote trademark law. An example of what is included in INTA’s 2010–2013 Strategic Plan is the goal to continue to develop and advocate positions on public policy for trademarks and related intellectual property rights. Another goal is to enhance INTA members’ volunteer experience, including an expansion of its academic membership and the development of INTA as a resource for trademark-related pro bono advocacy work. To assist in this endeavor, INTA expects to expand its presence throughout the world. Lastly, INTA also plans to to build the Association’s capacity to educate nonmembers, which includes developing its programs and services to serve and attract small and medium-sized enterprises.

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NORTH AMERICA & THE CARRIBEAN Globalisation and the rapid proliferation of technology have elevated the importance of intellectual property protection for small and medium sized enterprises (SMEs). The intangible nature of intellectual property and the worldwide inconsistency of standard practices create challenges for US businesses wishing to protect their inventions, brands, and business methods in foreign markets.

Globalisation and the rapid proliferation of technology have elevated the importance of intellectual property protection for small and medium sized enterprises (SMEs). The intangible nature of intellectual property and the worldwide inconsistency of standard practices create challenges for US businesses wishing to protect their inventions, brands, and business methods in foreign markets.

CONTENTS

The United States provides a wide range of protection for intellectual property through the federal registration of trademarks and service marks; through federal patent protection and copyright protection; and, under state laws, through protection of trade secrets and marks. Federal protections extend only throughout the United States, its territories and possessions. The ease of IPR enforcement depends on local law, the resources of the intellectual property owner, the attitude of local officials, and many other factors. In the United States and many countries, intellectual property owners pursue infringement claims through civil litigation.

7 Jamaica – DunnCox 7 Jamaica - Foga Daley 7 Jamaica - Grant, Stewart, Phillips & Co 8 Puerto Rico – McConnell Valdes LLC 8 USA – California - Duane Morris LLP 8 USA – Connecticut - Ohlandt, Greeley, Ruggiero & Perle, L.L.P. 9 USA – DC - Rothwell, Figg, Ernst & Manbeck, P.C. 9 USA – DC - Sterne Kessler Goldstein Fox 9 USA – Massachusetts - Hamilton Brook

“The ease of IPR enforcement depends on local law, the resources of the intellectual property owner, the attitude of local officials, and many other factors. In the United States and many countries, intellectual property owners pursue infringement claims through civil litigation.”

Smith Reynolds 10 USA – Massachusetts - Brown Rudnick 10 USA - New York - R. Kundstadt PC 10 USA – Oklahoma - McAfee & Taft 11 USA – Virginia - Birch, Stewart, Kolasch & Birch, LLP

Internationally, avenues to address IP infringement vary by country, and will be dictated by local law. As required by the TRIPs Agreement, criminal procedures and penalties in cases of willful trademark counterfeiting and copyright piracy must also be available in WTO member countries. It is important to seek proper legal advice on any issues related to IPR enforcement.

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DUNNCOX

Jamaica

Joanne E. Wood Rattray - Partner +14 876 922 1500 info@dunncox.com www.dunncox.com

DunnCox is a general service law firm with practice spanning the full range of civil law matters. The firm has been a member of INTA for 14 years. Joanne E. Wood Rattray, partner, commented: “INTA membership facilitates interaction with trade mark counsel from all over the world, including the very best. Membership carries with it the benefit of being recognised as one of an exclusive group of firms able to provide the highest quality service in relation to IP rights. “We aim to provide IP owners, creators and licenses users with the most insightful commercial advice in a timely manner. With this in mind, we put a high premium on being responsive and alert to our client’s commercial needs and imperatives.” Ms Rattray believes that Jamaican companies are not very conscious about safeguarding their IP assets, though IP protection is commonly considered to be costly and hence non-prioritised. She commented: “Approaches vary widely across industry sectors, with businesses involved in the producing of mass consumer goods being the most aware. Smaller producers and providers of services give less weight to safeguarding their IP interests.” Jamaican law provides a range of civil and criminal remedies for enforcing IP rights. Of particular interest, according to Ms Rattray, a registered proprietor or licensee of a trademark can notify the Commissioner of Customs that good expected to arrive in Jamaica be treated as ‘prohibited goods’ where the application of a mark would constitute an infringement. She concluded: “The commissioner can seize the infringing goods at the point of entry, and order forfeiture and disposal. In-transit goods are also covered. However, registered trademarks holders can avail themselves of this remedy, the protection not extending to unregistered marks. Further, without notice to Customs of an expected shipment of ‘prohibited goods’, there is no monitoring of goods entering the country.”

“Jamaican law provides a range of civil and criminal remedies for enforcing IP rights.”

FOGA DALEY

Jamaica

Dianne Daley Attorney-at-Law, Intellectual Property Partner +(876) 927 4371 daley@fogadaley.com / info@fogadaley.com www.fogadaley.com

“INTA membership provides a unique opportunity to interface with associated agents and access information that can be readily applied to enhance our practice and increase our competitive advantage. Active INTA membership is also considered a mark of recognition and achievement in the field of trademarks.” - Dianne Daley. FOGA DALEY is the first boutique Intellectual Property and Communications law firm in the English-speaking Caribbean. The practice extends to entertainment and media law, advertising, merchandising and franchising. In addition to IP rights acquisition, the firm offers litigation support services for IP infringement actions. The firm provides strategic advice to corporations on IP portfolio management and on privacy and publicity in the context of cyberspace. The firm has distinguished itself in the handling of complex commercial matters involving IP and offers specialist advice to clients in the creative industries and ICT sectors, including entertainers, celebrities, businesses and trade associations. According to Dianne Daley, the firm’s founding partners have advanced law degrees covering the fields of IP and international transactions and are accomplished in presenting and staging seminars and workshops, lecturing at universities and publishing widely on Caribbean IP perspectives. Ms Daley said: “Our experience in the public and private sectors and knowledge of the policy and legislative processes relating to IP, has equipped us to bring a unique perspective in our advice to clients.” Furthermore, Ms Daley explained that Jamaica has fairly modern Copyright and Trade Mark Legislation, a new Protection for Geographical Indications Act which came into force in 2009 and a Layout-Designs (Topographies) Act (1999) which implement standards of the WTO TRIPS Agreement. “The Copyright Act is being revised to implement the WIPO Internet Treaties. Jamaica’s Patent Act dates from 1857 and foreign patentees can be granted Jamaican patents for the same invention for as long as the first foreign patent subsists. The Patent Act and Designs Act (1937) are slated to be modernized through a Patents and Designs Draft Bill which has been under discussion for the past 10 years,” she added.

GRANT, STEWART, PHILLIPS & CO

Jamaica

Arturo Stewart - Partner +18 76-9261880 arturo.stewart@gspco.net www.gspco.net

Grant, Stewart, Phillips & Co. saw its beginnings in 1977 when a group of young, zealous, confident attorneys set out to carve a niche in the legal fraternity, aiming to deliver the highest standard of legal services to their clients. The founding partners were Lloyd Edward Perkins, Denis A. Tomlinson, Herbert W. Grant and S. Arturo Stewart. Soon after its inception, the firm recruited Hilary Phillips who would become Queen’s Counsel, taking silk in 1998, and who became one of Jamaica’s leading attorneys in complex commercial transactions, construction claims and contracts and complex family law matters. Herbert Grant remains the senior partner with a focus on Real Estate transactions, while Arturo Stewart heads the firm’s commercial, trademark and patent departments. Denise E. Kitson, joined the firm in 1983. She is currently the managing partner and the corner stone of the litigation and commercial departments. More recently, Abiola Pereira Bertram was admitted to partnership in September 2009. Her forte is Labour Relations and Estate Administration. Suzanne Risden-Foster formerly of Livingston, Alexander and Levy, became a partner in January 2010. She also practices in the litigation department. The core partnership of the firm has withstood the vicissitudes of an ever evolving practice and is responsible for the formation of the expansive and detailed platform of legal services of the highest quality with the clients’ legal concerns and holistic welfare as its focus. The areas of practice span commercial and corporate law, advising borrowers and lenders, securitisation and mortgages. The negotiation and litigation of construction claims and contracts, advising on banking and finance law, labour law and industrial relations and pension plans also form part of the firms offerings. We offer services to a comprehensive range of local and international companies as well as individuals covering all aspects of licensing, registration and renewal of trademarks and patents, copyright infringement protection including passing off claims and general intellectual property law. We offer intellectual property litigation services in conjunction with our litigation team. Our copyright, trademark and intellectual property portfolio is managed by Arturo Stewart, Denise Kitson and Abiola Pereira Bertram. Corporate INTL 07

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MCCONNELL VALDES LLC

Puerto Rico

Antonio Escudero-Viera - Member +787 250 5625 aev@mcvpr.com www.mcvpr.com

McConnell Valdés LLC is home to one of the most accomplished intellectual property practice teams in the whole of Puerto Rico. The team helps clients to select and attain the best form of protection for their trademarks, service marks, and copyrights under both US and Puerto Rican IP laws. The IP practice team is comprised of attorneys from both the corporate and litigation practice groups of the firm. The team has been successful in obtaining injunctions against the importation of counterfeit, infringing and gray market products into Puerto Rico; injunctions in false advertisement cases; and injunctions in right-ofpublicity cases. Clients are represented in federal and local courts, before the Puerto Rico trademarks, commercial names, and moral rights registration agencies, and before the US Patent and Trademark Office and the Copyright Office to defend or oppose registrations. McConnell Valdés LLC has been a member of INTA since 2001. Antonio Escudero-Viera described the advantages of being affiliated with the association; “One of the main benefits of being an INTA member is keeping our attorneys and staff abreast of new developments through meetings and publications. Our firm hosted the first INTA Round Table in Puerto Rico.” Mr Escudero-Viera also commented on how widespread IP awareness is in Puerto Rico; “Many US registrants may not be aware that a local registration strengthens the protection of a federal registrant’s trademark rights. Although a federal trademark registration is enforceable in the United States District Court for the District of Puerto Rico, under the Dawn Donut rule, a federal registrant and senior user would only be able to enjoin a junior user if the marks are actually being used concurrently in the same trading area or if the registrant’s expansion into the junior user’s trading area is likely in the normal course of the registrant’s business. “Therefore, there may be instances in which a federal registrant may not be able to enforce its rights. In such instances, a Puerto Rico registration (with or without use in commerce) would provide additional rights to the federal registrant by allowing the registrant to seek injunctive relief and statutory damages, among other remedies, under Puerto Rico law.”

DUANE MORRIS LLP

USA - California

Shlomo Franco - Marketing +14 15 957 3139 sfranco@duanemorris.com www.duanemorris.com

The Intellectual Property practice at international law firm Duane Morris is recognized as one of the leading IP groups in the United States. National publications such as Intellectual Property Today, IP Law & Business, IP Law Bulletin and IP Law360 have all ranked Duane Morris among the leading law firms handling patents, trademarks, copyrights and related IP litigation. Duane Morris’ IP attorneys focus on leveraging their clients’ intellectual property to help them achieve success in the marketplace. Our IP lawyers provide counsel on the most efficacious methods of establishing and developing IP holdings and protecting IP rights so clients can realize the most value from those assets. From patents to trademarks and copyrights to licensing and technology transfers to IP audits and IP asset due diligence, our attorneys offer clients portfolio management and strategic advice on obtaining and protecting valuable intellectual property. The firm’s IP lawyers represent clients ranging from large multinational corporations to individual inventors, authors and owners of creative works. Our IP team includes highly trained attorneys with multiple technical degrees and jury trial experience as well as former patent examiners and patent agents, former corporate patent and trademark counsel and professors of IP law. A sampling of matters the IP Practice Group handles includes biotechnology, pharmaceuticals, consumer products (particularly in the food and home and personal care categories), entertainment, media, biotechnology, franchising, distribution, trade secret matters and licensing projects. Our IP attorneys also assist clients in disputes regarding rights of privacy and publicity, antitrust and Internet and e-commerce issues. Unlike IP boutique firms that limit their practice solely to intellectual property matters, Duane Morris is a full-service firm with attorneys supporting our IP lawyers in all practice areas, including litigation, tax, corporate law, customs enforcement, antitrust, employment, business and finance, international law, government contracts, bankruptcy, banking, personal financial planning, insurance and securities. Our firm also has offices in major markets across the United States, as well as offices in London, Singapore and Vietnam, and has strategic alliances with international networks of law firms to help us service our clients’ needs worldwide.

OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.

USA – Connecticut

Terrence J. McAllister, Esq. – Partner 001 203 327-4500 tmcallister@ogrp.com www.ogrp.com

Ohlandt Greeley Ruggiero & Perle, LLP is a diverse intellectual property law firm with the capacity to meet the varied and changing needs of a growing U.S. and international client base. We provide a full line of services to our clients, including: patent, trademark and copyright clearance searches; patent and trademark prosecution; counseling; litigation; licensing; infringement and validity studies; handling IP issues that arise in mergers, acquisitions, venture capital transactions, and research financing; joint ventures and joint developments; and intellectual property law audits. We also handle related transactional and contract matters, including agency & talent negotiations, as well as advertising claims substantiation. We provide worldwide representation for our clients through our experienced lawyers and network of international contacts. Many of our attorneys have degrees in engineering or scientific disciplines, and/or have significant experience working in different business industries, and can serve as a resource for strategic planning. Our highly specialized practice serves a diverse and ever expanding national and international client base that includes many Fortune 500 companies, international businesses, private institutions and major U. S. research universities. We serve clients ranging from privately held entities, including new venture start-up companies, to major, publicly held corporations. Our clients are engaged in a variety of businesses including consumer products, chemicals, semiconductors, computers and software, telecommunications, oil and gas, membrane systems, medical and life sciences, financial services, electronics, foods and beverages, clothing, retail services, pharmaceuticals, biomedical enterprises, print and electronic publishing and entertainment services. Mr. McAllister, who heads up the Trademark Practice Group, practices in all areas of trademark and copyright law. Before joining OGRP, Mr. McAllister was Trademark and Copyright Counsel for NYNEX Corporation. He has extensive experience counseling clients on all facets of protecting U.S. and foreign trademark portfolios.

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ROTHWELL, FIGG, ERNST & MANBECK, P.C.

USA - D.C

Anne M. Sterba - Member +1 202 783 6040 asterba@rfem.com www.rfem.com

Rothwell, Figg has been an INTA member law firm since 1987. Rothwell, Figg practises intellectual property (IP) law on a global basis. In addition to traditional legal services in the patent, trademark and copyright arena, which include securing IP protection, rendering opinions and providing advice on activities within the IP field, the firm also renders professional services in related litigation, contract and other matters involving IP law. Anne M. Sterba explained that Rothwell, Figg is comprised of attorneys with unique and diverse technical and legal expertise in all areas of intellectual property practice, including patent, trademark, copyright, trade secret and unfair competition law, and in a wide range of technological fields. “These capabilities enable Rothwell, Figg to provide superior quality, cost-effective representation to our clients that surpasses our competitors in large general practice firms trying to handle IP matters in the US,” she added. Ms Sterba also pointed out that in the US, one recent relevant legislative issue has been discussed, namely better IP protection for fashion designs. Ms Sterba said: “Congress is considering new copyright protections for fashion designs, which would be more in line with the rest of the world. It will still be awhile before any real change is shown but the fact that Congress has renewed its discussions on the matter is encouraging.” Furthermore, Ms Sterba highlighted that in the current economic climate companies in the United States and around the world are looking to reduce their budgets, and one way companies are doing so is reducing their legal expenses. “In the United States, a company gets some trademark and copyright protection even without registering the IP, so companies are forgoing new filings at least in the short term. These reductions in new filings do not seem to be industry specific. However, the number of new litigations has increased with the economic downturn. It appears as though companies are protecting their existing IP with a vengeance,” she concluded.

STERNE KESSLER GOLDSTEIN FOX

USA - DC

Monica Riva Talley - Director +1 202 772 8688 mtalley@skgf.com www.skgf.com

Sterne, Kessler, Goldstein & Fox P.L.L.C., founded in 1978, helps companies strategically build and enforce worldwide intellectual property portfolios, including inter partes matters (lawsuits, appeals, oppositions, and reexaminations), preparing and prosecuting trademark, copyright, and patent applications before the US and foreign trade mark, copyright and patent offices, advising on portfolio strategies (valuation, acquisition, licensing, due diligence, etc.), and inventorship dispute resolution and employment issues, as they relate to IP, with a focus on meeting client business objectives. SKGF represents a broad range of innovative entities, many with names that are recognised around the world like Apple, Google, Phillips Foods Inc. and Seafood Restaurants, adidas, and The Washington Post. Others include emerging and established, and publicly- and privately-held companies, venture capital firms, universities, and select individuals, throughout the US and across the globe. SKGF is consistently recognised as a leader in the field of intellectual property law, including ranking in Chambers USA as a “leading firm,” appearing on The National Law Journal’s inaugural Midsize Hot List, and achieving “top firm” status in Managing Intellectual Property’s 2010 MIP Handbook. Monica Riva Talley has a dynamic practice that includes protecting some of the world’s most recognizable brands. She specialises in trademark prosecution, clearance, portfolio management, and client counseling. She also has significant expertise in trade mark infringement and dilution litigation, Internet-related trademark disputes, and opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the US Patent and Trademark Office. Ms Talley serves a broad base of international clients in the consumer products, manufacturing, telecom, biotechnology, computer, media, and entertainment fields. She also works with clients in registering and enforcing certification marks. In her prosecution and counseling practice, Ms Talley advises on the selection and adoption of marks, and renders opinions on the availability and proper use of trade marks. She prepares, files, and prosecutes US trade mark applications through the opposition and appeal process, and works with US companies in planning international filing strategies.

HAMILTON BROOK SMITH REYNOLDS

USA - Massachusetts

John L. DuPré – President and Principal +1 978 341 0036 x3284 john.dupre@hbsr.com www.hbsr.com

Hamilton Brook Smith Reynolds is a full-service intellectual property law firm providing solutions to intellectual property challenges and strategic approaches for its clients’ business goals. The firm designs IP protection strategies, including trademark selection, use and registration strategies, in light of the nature of the client’s products as well as their competitive considerations and specific business objectives. The firm has particular expertise in high-tech areas and has developed a very strong trademark practice to select and protect marks for products and services in these fields. John DuPré, president and principal, commented: “We guide our clients through the specific issues they encounter as they select, obtain and use marks, so as to avoid conflicts with the rights of other mark owners. Through the firm’s experience in performing appropriate searches for marks on a variety of levels and providing clearance opinions, clients can be confident in their adoption and use of new marks.” The firm prepares and prosecutes trademark applications for its clients focusing on federal registration in the United States Patent and Trademark Office with procedures to streamline the prosecution time and expenses for its clients. The firm emphasises electronic filings and interviews with the examiners for quick, efficient prosecution. Mr. DuPré added: “Once a mark is registered our work for our clients is not finished. In order to assure that new marks are not being sought that would conflict with rights of our clients, we regularly review the Official Gazette for Trademarks. We bring marks of interest to the attention of our clients and when appropriate, we bring opposition or cancellation proceedings to protect the exclusive position of our clients. The firm also has substantial experience in defending and enforcing its client’s trademark rights in the courts. “Our focus in these matters is in crafting creative solutions for resolving trademark disputes so as to achieve the client’s business and marketplace goals, by the use of Consent Judgments, Concurrent Use Agreements and Licenses, in a cost-effective and efficient manner,” Mr. DuPré concluded. Corporate INTL 09

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BROWN RUDNICK

USA - Massachusetts

Mark S. Leonardo - Partner +1 6 17-856-8145 mleonardo@brownrudnick.com www.brownrudnick.com

“There is no organization as ‘in tune’ with the needs of trademark and branding attorneys as INTA, and membership in INTA is step one in a successful trademark practice.” - Mark S. Leonardo In this increasingly information-based commerce economy, one’s brand is the first and sometimes the only interaction that a brand holder may have with its customers and clients. Be it a golf club or the latest pair of running shoes, a company’s brand – and consequently the trademarks making up the brand – is the quintessential link between company sales and a consumer’s sometimes finicky choice of products or services. Only those companies that truly understand their industry sector, such as, for example, the highly branded areas in the consumer product space, can understand the need to devote appropriate resources and time in building and policing their valuable brands. At Brown Rudnick, we find counseling companies to first understand this vital link results in better brand recognition and ultimately consumer choice of those company brands. Brown Rudnick’s Intellectual Property Group combines legal, business and technical backgrounds to help our global clients maximize their intellectual property assets worldwide. We work to identify, procure, optimize and enforce clients’ intellectual property; and we undertake a full range of transactions relating to these valuable business assets. Our IP group, with team members in the US and the UK, offers perspective and experience in trademarks, patents, trade secrets and copyrights, including the technology development, transactions and litigation related to these assets. Unlike most other firms with IP practices, our team is fully integrated with our corporate and finance attorneys. We are recognized for our ability to deal with IP assets in the broad business context including: evaluating options and implementing decisions in trademark, copyright and patent procurement matters; counseling clients on technology development strategies; advising on unfair competition and deceptive trade practice matters; and evaluating options and implementing decisions in complex IP litigation.

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, closelycoordinated 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. 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-inChief in 2006-7.

MCAFEE & TAFT

USA – Oklahoma

Rachel Blue - Partner +1 918 574 3007 rachel.blue@mcafeetaft.com www.mcafeetaft.com

McAfee & Taft is an established law firm based in Oklahoma. The main strengths of their IP team can be summed up in three words; talent, experience and value. Their talent includes Rachel Blue, a former trademark examining attorney with the US Patent and Trademark Office who brings extensive experience and insider knowledge to her practice in intellectual property law. “Although we’re located in the mid-sized US market, we’re able to compete with higherpriced law firms in larger markets,” said Blue. “To use a baseball analogy, we’re a winning team that provides big league talent on a minor league budget.” In addition, the firm operates from a position of exceptional strength and stability, the result of strong leadership, steady growth and fiscal responsibility for nearly 60 years. The result is the ability to deliver exceptional value to clients. The firm’s membership in INTA dates back to 1998 when McAfee & Taft established its Intellectual Property Practice Group by merging with Dougherty & Hessin, an Oklahoma-based boutique IP law firm. The senior member of the group, who was formerly with Dougherty & Hessin, has been a member of INTA and its predecessor, USTA, for more than 20 years. “One of the main benefits of being an INTA member is the security that comes with knowing you’re working with other trademark specialists from around the world who truly understand the ins and outs of trademark law in their respective countries and who can provide consistent, reliable results and service,” said Cliff Dougherty, the group’s senior member. McAfee & Taft can offer companies a costeffective service without sacrificing quality or talent. This is of paramount importance in the current economic climate. McAfee & Taft’s Intellectual Property Group provides the winning combination of big league talent, value and experience at rates that are easy on the budget. The firm’s commitment to quality work and attentive service has earned them the respect of their clients and the recognition of leading industry publications, including Go-To Law Firms of the World’s Leading Companies, Chambers USA Guide to America’s Leading Lawyers for Business, The Best Lawyers in America and Benchmark Litigation.

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BIRCH, STEWART, KOLASCH & BIRCH, LLP

USA – Virginia

Robert J. Kenney - Partner +1 703 205 8000 rjk@bskb.com James M. Slattery Partner +1 703 205 8000 +1 703 205 8050 jms@bskb.com www.bskb.com

BSKB has been providing a full range of intellectual property services for over 30 years. We specialize in chemistry, medical devices, biotechnology, pharmaceuticals, diagnostics, healthcare, computer science and mechanical and electrical technologies, the practice of reissue and reexamination, as well as in obtaining and enforcing trademark and copyright protection for our clients in the United States and internationally. BSKB attorneys counsel clients in the selection, adoption, registration and enforcement of their trademark and trade dress rights. The firm files and prosecutes hundreds of federal, state, and foreign trademark applications each year. BSKB also conducts trademark availability searches and provides trademark-monitoring services of third-party trademark use. BSKB counsels clients on copyright issues in a wide variety of fields, from computer software to publishing. BSKB has developed strong relationships with foreign counsel to ensure that our clients’ rights are protected. BSKB attorneys are licensing experts and also offer substantial litigation expertise, both in administrative proceedings before the U.S. Patent and Trademark Office and the Copyright Office, and in civil litigation. Our attorneys frequently conduct and participate in seminars and conferences for intellectual property associations, trade associations and within the private sector on recent developments in trademark and copyright practice. BSKB attorneys are also active in various trademark associations, holding positions in the International Trademark Association (INTA), the Licensing Executives Society and state and local bar associations. The firm keeps on top of legal, policy and practice developments which may impact our clients. We are committed to sharing this information with our clients through our annual U.S. Trademark Practice Seminar held each spring. This week-long course provides attendees with practical information on selecting, adopting, enhancing and enforcing their trademarks. Our newsletter also keeps clients up-to-date on legal and commercial implications of trademark prosecution. Corporate INTL 11

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CENTRAL & SOUTH AMERICA Much of the Americas, including Argentina, the Bahamas, Brazil, Ecuador, El Salvador, Paraguay and Venezuela belong to the World Intellectual Property Organisation (WIPO) and/or the WTO, and adhere to most international agreements regarding IP.

Much of the Americas, including Argentina, the Bahamas, Brazil, Ecuador, El Salvador, Paraguay and Venezuela belong to the World Intellectual Property Organisation (WIPO) and/or the WTO, and adhere to most international agreements regarding IP. However, not all of the countries of the Americas share the same IP rights. Differing spins on legal issues are joined with socially sensitive questions of technology transfer, and commercial and economic interests are complicated by variations in political, nationalist and ideological viewpoints. In this context, the Summit of the Americas Center (SOAC) at the Latin American and Caribbean Center (LACC) of Florida International University (FIU) and the Center of Studies on Economic Integration and International Trade (INTEGRAL) have established a Joint Working Group on Trade and IP to address the evolution of this field.

CONTENTS 13 Chile - Albagli Zaliasnik 13 Colombia - Romero Raad Abogados 13 Ecuador - Bustamante & Bustamante 14 Guatemala - Fernandez & Fernandez 14 Guatemala - Mayora & Mayora 14 Guatemala - Palomo & Porras 15 Guatemala - Umaña & Asociados

“In this context, the Summit of the Americas Center (SOAC) at the Latin American and Caribbean Center (LACC) of Florida International University (FIU) and the Center of Studies on Economic Integration and International Trade (INTEGRAL) have established a Joint Working Group on Trade and IP to address the evolution of this field.”

15 Honduras - Bufete Casco 15 Honduras - Bufete Mejia & Asociados 16 Honduras - Medina, Rosenthal & Fernandez 16 Mexico - Bufete Soni 16 Mexico - Goodrich Riquelme Asociados 17 Mexico - Novopatent International Service 17 Mexico - Quiroz, Muñiz y Bolio, S.C. 17 Nicaragua - Molina & Asociados

The patents, trademarks, industrial designs, models and copyrights of the Americas are generally protected by the provisions of the International Convention for the Protection of IP (the Paris Convention). However, while it is possible to register patents and trademarks in, for example, Belize, other creative works still remain relatively unprotected in the country. Belize is a member of the Universal Copyright Convention, though not a member of the WIPO or the Bern Convention on Copyrights. As a consequence, piracy is still common, particularly of recorded music and computer software.

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ALBAGLIZALIASNIK ATTORNEYS

Chile

Rodrigo Albagli - Managing Partner Email: ralbagli@az.cl T: + 56 2 445 60000 F: +56 2 3611789 www.az.cl

Due to the constant changes in technologies, globalization and most importantly in order to offer comprehensive advice to our clients, our IP team today has become a dynamic department. The later means that in today’s world and taking in account our clients needs, our IP team has reached out to several areas of practice such as advertising law, domain names and internet regulation, copyright, regulatory issues and anti-counterfeiting among others. We also understand that in today’s world not all industries seek and need the same advice and services, we have been able to understand and fulfill the specific needs of a large number of different industries such as advertising companies, banking, retail, etc.; being successful in providing our clients different support, taking in account the industry of their interest, has resulted in a more personalized and effective service. Covering effectively all areas related to IP and personalized to each of our clients industry, results in a full and comprehensive protection of our clients Brand Protection needs.

•What are the main strengths of your firm’s IP team?

The main strengths of our firm’s IP team are connected to the possibility of finding a unique set of lawyers who handle a large different variety of issues regarding IP Law, not leaving aside a major level of expertise that each one of them has and continues to develop on different and most specific aspects of the IP world. The fact that we are a Full Service Firm we are involved in many areas of practice such as Business Law, M&A, Financial and Banking, Litigation and Regulatory, Antitrust, allows our clients to seek for one stop shopping service and grants our IP Group the possibility to be working on a daily basis with all other aspects of law, being up to date with all other major topics of our clients interest.

• For how long has your firm been a member of the International Trademark Association?

Albagli Zaliasnik has been a member of INTA since 1996. Since that date we have participated actively in several activities of INTA, creating long lasting and trustworthy relationships with other members worldwide, either Law Firms and Corporations.

ROMERO RAAD ABOGADOS

Colombia

Danilo Romero Raad – Partner and Founder +571 3490155 dromero@romeroraad.com www.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). Likewise, our antitrust law unit provides our clients with advice and assistance regarding mechanisms to deal with third party’s behaviors that can be identified in the market as unfair or restrictive of free competition, and all practices aimed at avoiding antitrust regulation infringement. 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.” Mr. Romero 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. Romero 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. Romero Raad has been a member of the International Trademark Association for more than fifteen years, and has recently been elected as a member of its Academic Committee. 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.”

BUSTAMANTE & BUSTAMANTE INTELLECTUAL PROPERTY LAW FIRM

Ecuador

Sebastián Donoso Bustamante Attorney at Law +593 2 2 562 680, extention 433 bustamanteybustamante@bustamante.com.ec bustamanteybustamante.com

Ecuador has its own modern Intellectual Property Law since 1998 and has signed the major Intellectual Property International treaties and conventions, including the PCT, the Paris Covention, the Berna Treaty and the TRIP’s. As member of the Andean Community, Ecuador is also part of the Andean Comminitary legal regime, which includes important communitary legislation which covers the four member countries of the Andean Community. Intellectual Property protection is very important in Ecuador, as it is worldwide. International and national companies are fully aware of the need to protect their Intellectual Property assets, and the awareness is expanding. Unfortunately, Ecuador is also a country with a high level of Intellectual Property piracy in all levels, which makes it necessary for any company interested in investing in Ecuador to be well guided and counseled by professional experts in the Intellectual Property field. BUSTAMANTE & BUSTAMANTE is a law firm of national and international standing with one of the most reputable legal practices in Ecuador. Due to their reputation for integrity, professionalism and superior service, practitioners at the firm have been able to advise national and multinational corporations, financial institutions and governmental organisations of the United States, the United Kingdom, Canada, France and Italy for 54 years. In fact, Bustamante & Bustamante was originally established in Quito in 1956 by the founding partners, the brothers and reputed Juris Doctors Diego and Roque Bustamante Cárdenas. Since its beginning, the firm was specialised in Intellectual Property, being a true pioneer in the field in Ecuador. Sebastián Donoso Bustamante, the firm’s Attorney at Law, said: “We are a well established firm able to accommodate the needs of our clients in all aspects of Intellectual Property with an enthusiastic, professional and well-experienced team who offers powerful solutions based on strong technical and educational backgrounds; and supported by a dynamic and vibrant management.” BUSTAMANTE & BUSTAMANTE has a very complete team of professionals comprising around 30 men and women, including trainee Law students, and is a 100% bilingual Spanish-English team. Corporate INTL 13

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FERNANDEZ & FERNANDEZ

Guatemala

Carina Fernandez - Partner +502 2365 6933 cfernandez@fernandezip.com www.fernandezip.com

With more than 60 years of experience, Fernández & Fernández is distinguished by its long tradition of service, and continues to be a key player in the Guatemalan IP market. It is known as “one of the most prominent IP law firms of Guatemala”. Its founding partner, Carlos Fernández, had a vision to focus on providing clients with specialized legal advice in all aspects of intellectual property. His vision has been honored and developed through the years, making our firm known for its dedication to provide clients with superior, experienced, comprehensive, ethical and effective legal counsel and service. The hallmark of Fernández & Fernández is the breadth of experience and talent which can be offered to overseas, international clients. Although there is a significant Guatemala domestic practice, approximately 80% of the firm’s clients are foreign corporations doing business in Guatemala. Fernández & Fernández attorneys are well experienced in serving the needs of corporate clients from all jurisdictions throughout the world. According to Carina Fernandez, Guatemalan companies have become conscious of the role that intellectual property protection plays in their economic development and, as a consequence, its impact in the country’s economy, realizing that it is an important tool to expand their business locally and to other countries. “They have learned that, if their products and services are duly protected through intellectual property rights, they acquire a significant increase in value. Intellectual property rights tend to assume greater significance in the pharmaceutical industry,” she added. Fernández & Fernández has been an active member of INTA for more than 30 years. Ms Fernandez said: “INTA membership has been of great value, providing us the opportunity to be in contact with clients and colleagues around the world who seek for and trust in the high reputation that is carried by being an INTA member, it constitutes an

MAYORA & MAYORA, S.C.

Guatemala

A.C. PALOMO & PORRAS

Guatemala

Eduardo Mayora Dawe Founder and Senior Partner PBX 2223-6868 emayorad@mayora-mayora.com www.mayora-mayora.com

Mayora & Mayora, S.C., is an institutional law firm with four partners and 16 associates. It is one of the two largest law firms in Guatemala in the intellectual property sector. The firm has been a member of INTA since 1966, when the organisation was known as USTA. Eduardo Mayora Dawe, founder and senior partner commented: “INTA provides academic information of the creation of new trademark institutions as well as industrial and intellectual property with high class speakers. This grants to the member reputation because it shows interest for a better education for advising clients.” Most of the firm’s instructions to shore services are to Central America, Mexico and Latin America. Very few are for the USA, Canada and Europe, and none are for Asia and Africa. Mr Dawe commented: “We enjoy first class relationships with correspondence in those countries, most of them are members of the lawyers at Lex Mundi and The Bomchil Group, to which our law firm is a member.” Mr Dawe noted that Guatemalan companies generating industrial property rights concerning trademarks are familiar with granting juridical security to such signs. He added: “They enjoy permanent legal advice of well known trademark attorneys and their general managers. Marketing managers are also familiar with the basic principles of the trademark law and the fair competition. At the company’s offices are hired watchers employees checking the official gazette for learning of any imitation by third persons of their registered trademarks. The American, Industrial, Commercial Chambers promote conferences for the industrial property divulgation, also OMPI, ASIPI and other local institutions related with such matters. “At the Intellectual Property Registry, the industrial property registrations, patents and different procedures are in general satisfactory, the remedy oppositions have a long term because there are not enough legal advisors to take care of the pertinent resolutions due to budget limitations. Despite the efforts to grant

essential tool for networking, referrals and

industrial property legal illustration, there are

constant education in recent developments in

not many judges well prepared, neither do we

trademark law at an international level.”

have a special jurisdiction.”

Héctor Palomo - Partner +502 22 797 474 hpalomo@palomoyporras.com www.palomoyporras.com

“IP in Central America? Think A.C. Palomo & Porras!” The IP Department of A.C. PALOMO & PORRAS is a young but experienced department established in 1976. Our IP Practice includes not just trademark and patent registrations, but also IP litigation, licensing and enforcement. Although we are a Guatemalan Firm, our slogan is “IP in Central America? Think A.C. Palomo & Porras!”, with which we want to send the message to our clients that we not only provide services in Guatemala, but also in all the Countries in Central America, which clients abroad find very comfortable and convenient. All our IP team members are specialized IP professionals who are committed to the private practice, but also are involved in teaching at Universities, participating in projects of the development of IP in Guatemala, and training judges and other administrators of justice in these matters. Having signed a Free Trade Agreement with the USA and all of the Central American Countries and Dominican Republic, as well as with the European Community has forced our country to update its legal system and regulations with the highest standards. A.C. Palomo & Porras is always conscious that the IP rights is one of the main assets of a company, that’s why our compromise is to asses our clients in a specialized and cost effective way to safeguard such assets. It’s important that the IP International Community knows that the IP rights in Guatemala can be effectively enforced and protected through the selection of the right IP firm. In the several years that our firm has been an INTA member, our benefit has been not only the working and the educational matters, but also it has helped us in being aware and informed of the best ways to render the IP services with the international highest standards. INTA helps us to be in touch with the best IP professionals from around the world, and it shows us the different cultures and scope of those IP colleagues rendering these services in other regions in the world.

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UMAÑA & ASOCIADOS

Guatemala

Cristina Umaña - Attorney and Notary, Junior Partner +502 23616657 502 23616697 cumana@umana.com.gt guatelex@umana.com.gt www.umana.com.gt

UMAÑA & ASOCIADOS is a law firm that offers services in different practice areas. Intellectual Property is a field where the lawyers in charge are highly, uniquely qualified, both in legal practice and legal training, having obtained Master’s degrees in such area, in Guatemala and Spain. The firm’s services include the protection and enforcement of IP rights. The IP team at UMAÑA & ASOCIADOS has many years of experience dealing with IP. The firm’s senior partner, Ricardo Umaña, acted as Magistrate and President of the Supreme Court of Justice of Guatemala. Recently, he published a booklet about Guatemalan IP Jurisprudence from the years 1972 to 2001. His second booklet that covers IP jurisprudence from 2002 to 2009 is still in the process of being published. Guatemala has a civil law system and protects IP through different laws: the Constitution, Industrial Property Law, Copyright Law, Criminal Code and Commercial Code (related with Antitrust). Guatemala is a member of the Paris Convention, TRIPS and PCT among other treaties. According to the Statistics prepared by the Registry of Intellectual Property of Guatemala, during the period of 2006-2009 the trademarks granted were 28,228 and the patents granted were 961. UMAÑA & ASOCIADOS has been a member of INTA since 1997. Being part of a well known association such as INTA, allows sharing with other practitioners relevant information as well as changes in the local and international arena. “It helps us improve towards excellence, gives us recognition and the opportunity to introduce ourselves,” said Cristina Umaña, junior partner at the firm. There are certain difficulties in establishing and enforcing IP rights on an international scale, such as differences in language and legislation, cultural factors and economical disparities. “It is our duty as IP lawyers to aid the international unification of this field,” added Ms Umaña.

Honduras

BUFETE CASCO

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

BUFETE MEJIA & ASOCIADOS

Honduras

Ricardo Anibal Mejia M. – General Director IP Telephone (504) 25507744; (504) 25528615; (504) 25502624 Fax (504) 25500795; (504) 25528570 rmejia@bufetemejia.com www.bufetemejia.com

“Our commitment is to SERVELIC. ourDANIEL customers CASCO L.“BUFETE MEJIA & ASOCIADOS – TRADEMARK & PATENT ATTORNEYS OFFICE with the best and proactive service every We care – We never abandon a case unless BUFETE CASCO ESTABLISHED IN 1906 day, being our main expertise the areas specifically instructed to do so – Your one of PATENTS, TRADEMARKS AND step shop for quality and reasonably priced COPYRIGHTS, since we are the first 24/7 full Intellectual Property services in Honduras and Established before 1906, we are a family venture and the most solid law office in Industrial Property matters withfi more than 100 years in businessthe in HONDURAS. time exclusive IP practice law rm.” Central-American region.” Our commitment is to SERVE our customers with the best and proactive service every - Ricardo Anibal Mejia M. day, being our main expertise the areas of PATENTS, TRADEMARKS AND COPYRIGHTS,

Established before 1906, we are a family venture We have our offices properly design for this type of business with employees duly trained for years in these particular areas of IP matters andBufete the latestMejia hardware& and and the most solid law office in Industrial Asociados, a member of INTA software system specially design for us. Be with sure that the mission of the LIC. DANIELin CASCO L. - BUFETE CASCO law firm is to Property matters more than 100 years since 1989, off ers the full spectrum of Intellectual ensure its global, regional and national clients with the most complete legal counseling in Industrial Property matters in HONDURAS. business in HONDURAS. Property services including: prosecution, For other matters and litigations you can contact our associate office from THE LEGAL Our commitment to SERVE our customers CASCOisGROUP at CASCO-FORTIN, CRUZ & ASOCIADOSenforcement in the areas of banking, and defence of IP rights, counselling, administrative, foreign investment, corporate and general office ( www.cascolaw.com) with the best and proactive service every day, litigation before all Administrative Offices and being our main expertise the areas of PATENTS, Courts including the Honduran Supreme Court, Col. La Reforma Calle Principal No. 2402, TRADEMARKS AND COPYRIGHTS, since we are Tegucigalpa, Honduras Anti-counterfeiting, criminal seizures and causes; Phone: (305) USA,law (504) fi 237-6577, the first 24/7 full time exclusive IP433-7314 practice rm. (504) 237-6459 Fax: (504) 238-3361, (504) 2384097regulatory matters and permits before the Health Email: mail@cascomark.com / reforma@cascomark.com We have our offices properly design for this Authority; Enforcement of IP rights before the type of business with employees duly Honduran Customs Office and the IP special unit trained for years in these particular areas of of the Attorney’s General Office. The firm handles IP matters and the latest hardware and software the entire range of related legal matters including system specially design for us. Distribution and Agency agreements, Franchising Be sure that the mission of the LIC. DANIEL and Licensing Contracts and Agreements. CASCO L. - BUFETE CASCO law firm is to The main strengths of your firm’s IP team ensure its global, regional and national clients are dedication, experience and hard work; with the most complete legal counseling in more than 60% of the staff, key partners and Industrial Property matters in HONDURAS. Department leaders have more than seven For other matters and litigations you can years working with the firm. contact our associate office from THE LEGAL since we are the first 24/7 full time exclusive IP practice law firm.

CASCO GROUP at CASCO-FORTIN, CRUZ & ASOCIADOS in the areas of banking, administrative, foreign investment, corporate and general office ( www.cascolaw.com).

“Be sure that the mission of the LIC. DANIEL CASCO L. - BUFETE CASCO law firm is to ensure its global, regional and “Being part of a well known national clients with association such as INTA, the most complete legal allows sharing with other practitioners relevant counseling in Indusinformation as well as trial Property matters changes in the local and in HONDURAS.” international arena.”

Ricardo Anibal Mejia M. explained that

Honduras’ Industrial Property system is more than 100 years old. Mr Mejia said: “The first Law (although some IP provisions were already included in the 1906 Civil Code) was enacted in 1919. In 1977 it was amended and on 1993 a New Law was enacted taking as an example the Mexican Law enacted a couple of years before for complying with the regulations contained in the TLC with the U.S.A. and Canada. – In 2000 a new Industrial Property Law was enacted to comply with TRIPS and in preparation of the discussions of the DR-CAFTA (Central-America and Dominican Republic Free Trade Agreement with the U.S.A.). Honduras is a member of TRIP, WTO, PARIS CONVENTION and the PCT.” Mr Mejia maintains that if you are an IP firm you must be a member of INTA. “The professional sessions, the meetings, the networking opportunities, the reputation of the organization, its publications and newsletters are a reference in the IP world. It is also an enjoyable experience, “ he concluded. Corporate INTL 15

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Medina, Rosenthal & Fernández CENTRAL LAW

Honduras

Jesús Humberto Medina Alva, Presiding Partner T. +504 2550 2800, +504 2550 8873 F. +504-2550-2159 jhmedina@central-law.com www.abogados.hn

BUFETE SONI

Mexico

Mariano Soni - Managing Partner +52 55 21673252 sonim@soni.mx www.soni.mx

GOODRICH RIQUELME Y ASOCIADOS

Mexico

Enrique a. Diaz + (52 55) 55 25 14 22 EDiaz@goodrichriquelme.com

Juan Carlos Suarez + (52 55) 52 07 92 61 JSuarez@goodrichriquelme.com www.goodrichriquelme.com

Medina, Rosenthal & Fernández CENTRAL LAW Honduras has risen to a prominent position among the most prestigious Honduran and Central American law firms. With 11 offices in 7 countries – Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama and the Dominican Republic – as well as a team of 222 professionals, the firm is committed to providing comprehensive client services. Medina, Rosenthal & Fernández CENTRAL LAW Honduras is backed by lawyers with an experience of more than 30 years in the global markets. Besides Intellectual Property (IP) Law, the firm’s main practice areas include Arbitration, Alternative Dispute Resolution and Litigation, Banking and Finance, Constitutional and Administrative Law, Energy and Natural Resources, Environmental Law, Foreign Investment / Free Trade, Franchising, Immigration, Insurance and Reinsurance as well as many more. When asked to summarise the strengths of Medina, Rosenthal & Fernández’s IP department, Mr. Medina Alva noted that the firm’s dedicated team provide its clients with the necessary counsel to obtain optimal results in the shortest time frame possible, and is also capable of producing immediate responses in case of oppositions from third parties. He said: “When Honduras enacted the Related Rights and Copyright Law in 1999 and the Industrial Property Law in 2000, the country updated the IP laws in order to correspond with World Trade Organization (WTO) treaties regarding the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). These laws are also supported by statutory provisions in the Commercial and Criminal Code.” He added: “Approach to IP has increased in the different Honduran industries. The highest numbers of trademark applications or patents that we file at the government office are local or international companies that wish to protect their mark in the country. Honduran industrials and professionals have begun to understand that protecting their brands, manufacturing processes, computer programs, etc. constitutes a very important asset of their company and, therefore, must be duly protected to secure their investments.” “Being an INTA member means connection with the most important IP law firms in the world, and a subsequent increment in cross-referrals.”

Bufete Soni is a full service IP law firm based in Mexico. Since the firm was founded in 1963 it has built a reputation for providing a high standard of personal service to its domestic and international clientele. Clients benefit from Bufete Soni’s substantial economic and technological knowledge and more than ample understanding of the intellectual property systems in Mexico and abroad. The firm’s IP department is supported by a successful litigation practice and complemented by its corporate and commercial law practice. Through close working relationships with trusted international associates, Bufete Soni obtains worldwide filing, prosecution and enforcement of IP matters. “We are constantly advising our clientele about current IP trends, particularly regarding policies and criteria adopted by the Mexican Institute of Industrial Property (MIPI) in order to achieve the best possible IP rights protection,” said managing partner Mariano Soni. Mr Soni said that one of the main problems in Mexico is the sale of counterfeit goods. He said that the legislation needed to be improved in order to expedite counterfeit goods and successfully recover damages from infringers. When discussing legislation that is currently being evaluated, Mr Soni mentioned that the Mexican Customs had been constantly taking actions in order to prevent the smuggling of products. “At this moment, the Mexican Congress is currently reviewing a bill to amend Customs Law, which would create a Trademark Registry to expedite Customs actions.” When questioned about how conscious Mexican companies were about the importance of safeguarding their IP rights, Mr Soni said that in general all sectors were aware. “Perhaps the pharmaceutical industry is more active in order to prevent individual buyers from consuming counterfeit products that may be lethal.” Bufete Soni has been a member of INTA since the 1960’s. “Members of our firm have been and are active in various committees allowing us to be always up to date in current IP issues to the benefit of our clientele. The membership has also allowed us to further expand our networking,” commented Mr Soni.

GOODRICH RIQUELME Y ASOCIADOS is a full-service law firm with 75 years of experience. It is comprised of lawyers who have diverse fields of legal specialization. Goodrich´s overall strength is a result of the way in which we bring this specialized expertise together in the service of our clients. As a leading IP law firm in the country, we regularly handle prosecution of over 3500 trade marks and more than 1000 patents every year; we also file and handle more than 400 litigations in both fields every year. The vast majority of our intellectual property work is for non-Mexican companies conducting business in Mexico. Our staff of attorneys, engineers and computer specialists helps adapt foreign patent specifications and claims to Mexican law, register patents and trademarks and maintain them by handling the necessary renewals. Our computer system, which is linked to the Mexican Patent and Trademark Department, permits us to provide our clients with a timely notice of the dates important for the protection of intellectual property. We also perform trademark searches and prepare and register user agreements. We register copyrights and draft agreements between authors and publishers. Due to recent changes in technology, we are increasingly being called on for assistance in licensing and litigation relating to computer software. We are focused in facilitating the exchange of specialized knowledge and are pleased to assist biopharmaceutical companies, banking institutions, and research organizations. We offer particular expertise in relation to the acquisition of rights and in transactions involving licensing and transfer of technology, as well as in technology joint ventures, research and development, supply and distribution agreements and dispute resolution. Goodrich recognized long ago that our clients’ needs required us to extend our presence beyond Mexico City. Today, we have collaborating attorneys throughout Mexico. Since 1971, the firm has had an office in Paris, which has consolidated a strong presence in the European Union. Our office in Paris and participation in the Bomchil Group associated with offices in every Latin American country enable us to ensure that our clients are competently represented wherever their business take them.

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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.”

QUIROZ MUÑIZ Y BOLIO, S.C.

Mexico

Ulises Muñiz - Partner +5255 56165020 umuniz@qmb.com.mx www.qmb.com.mx

Quiroz Muñiz y Bolio’s (QMB) practice mainly comprises litigation, registration, opposition, cancellation, general counselling, due diligence analysis and protection of IP rights. The firm has been a member of INTA for three years, and provides its clients with world-class services and assistance when pursuing the registration and protection of their intellectual property rights in Mexico. Ulises Muñiz, partner, believes that the firm’s strengths include its profound knowledge of the Mexican Intellectual Property legal framework, the expertise obtained through the years by each of QMB’s IP members, as well as its professional relationships with qualified international law firms that have allowed it to both exchange information and work together when providing IP services. Intellectual Property is federally regulated in Mexico and grants exclusive rights to authors and creators of copyrights, patents, trademarks, industrial designs, trade secrets, and trade names that have been standardised by means of international agreements. Mr Muñiz said: “Large companies are conscious of safeguarding their intellectual property. However, our economy is primarily based on small and medium sized companies, which are in the process of learning about the importance of safeguarding their IP. An integral part of our services includes making clients aware of these main assets.” Mr Muñiz added that Mexico is not a member of the Madrid Protocol. “Consequently,” he explained, “prior to entering the Mexican market, a specific registration is recommendable in Mexico to protect owners’ rights over notorious trademarks not marketed here. We counsel clients with previous searches and legal claims when such prior registration may be void.” Commenting on the complexities involved in establishing and enforcing IP rights on a cross border or international scale, Mr Muñiz concluded: “Counterfeiting problems have arisen with the foreign trade of goods and services; likewise, the enforcement of foreign registrations in Mexico against Mexican parties which may have registered a similar or identical trademark before and therefore may have better right over the same in this jurisdiction is also an ongoing challenge.”

MOLINA & ASOCIADOS CENTRAL LAW

Nicaragua

Alvaro Molina - Partner +505 2278 6045 amolina@central-law.com www.central-law.com

According to Alvaro Molina, Molina & Asociados Central Law offers all the services to safeguard a company’s intellectual property, from carrying out searches to infringement of right litigation. Mr Molina said: “We are the only firm in our jurisdiction that can provide these services in all of the Central American countries, including Panama and the Dominican Republic, allowing our clients to safeguard their intellectual property in the region through one single point of contact. This is possible, because we are the only firm (CENTRAL LAW) in the region that has fully operational offices in all of these jurisdictions.” Mr Molina also pointed out the main strengths of the firm’s IP team. He said:

“Besides the service of carrying out searches, filing applications of trademarks, patents and copyrights, we pride ourselves in the dedication we put forth safeguarding the rights of our clients over their intellectual property taking on the task of painstakingly going over all applications that are filed and keeping the client constantly informed. Our firm also has a strong litigation department with over 25 years of experience and with a strong reputation among our colleagues.” Furthermore, Mr Molina went on to explain that, at present, most of the local companies in Nicaragua are not conscious of the importance of safeguarding their intellectual property. “I attribute the aforesaid to the fact that intellectual property is not a tangible asset and to the fact that there’s little information on the possibility of pledging intellectual property,” he concluded. Corporate INTL 17

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EUROPE A uniform system of protection of intellectual property rights, ranging from industrial property to copyright and related rights, constitutes the foundation for creativeness and innovation within the European Union. Respect of the basic principles of the internal market (the free movement of goods and services and free competition) is based on standardization of intellectual property at European 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).

CONTENTS

19 Austria - schmid-ip 19 Finland - Papula-Nevinpat 19 France - Law Firm Dupuy Manaud 20 Germany - LexDellmeier 20 Germany - Maiwald Patentanwalts GmbH 20 Greece - Dr. Helen Papaconstantinou, John Filias & Associates 21 Italy - Studio Legale SIB 21 Malta - GVTH Advocates 21 Poland - POLSERVICE Kancelaria Rzeczników Patentowych Sp. z o.o. 22 Russia - Gorodissky & Partners 22 Russia - IN Eureka 22 Russia - Vakhnina and Partners 23 Russia - Young & Wassermann 23 Serbia - KASHISH INTERNATIONAL LTD 23 The Netherlands - Lawton Brands 24 The UK - Bison River Limited

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.

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SCHMID-IP

Austria

Dr. Katharina Schmid – Owner +43 1 521 75 - 0 office@schmid-ip.at www.schmid-ip.at

schmid-ip is an “IP-boutique” focusing on Austrian, Community and international trade mark law, copyright and design law, domain and internet law as well as unfair competition law. The firm’s services include a full range of prosecution, counseling and litigation services in those fields. schmidip represents national and international clients before Austrian administrative bodies and Courts, as well as before the WIPO, OHIM and the EU Courts. According to Dr. Katharina Schmid, the firm’s main strengths are a profound knowledge of IP and having a business focused and personalized approach. Dr. Schmid said: “We are sensible to the individual needs, targets and preferences of our clients. We try to ‘speak their language’ rather than relying on formal legal speech, and take part in their decision taking wherever this is required. As a ‘boutique’ firm with a competent internal and external network of cooperations partners, schmid-ip combines the advantages of a small firm with a service level, which lives up to the standards of the ‘big firms’. I believe that the extent of work we receive from large international firms and international companies proves that. “ schmid-ip joined INTA in 2007, when Dr. Schmid established the firm. “My first INTA was in Berlin in 2008 and I greatly enjoyed it. I really look forward to the INTA annual meeting in San Francisco and am thrilled that I will be acting as a speaker in the Regional Update for OHIM / Europe - What’s New in the World of Trademarks and Domain Names?” she added. Dr. Schmid maintains that INTA membership certainly does carry huge benefits. “Since I joined INTA, I have met many great people and have made a number of lasting friendships among clients and colleagues. I also receive a lot of enquiries and have been appointed local counsel by reputed international law firms. With respect to daily work, I find the INTA information resources extremely helpful,” she concluded.

“My first INTA was in Berlin and many are to follow”

PAPULA-NEVINPAT

Finland

Riikka Palmos European Trademark Attorney +358 9 348 00 626 riikka.palmos@papula-nevinpat.com www.papula-nevinpat.com

Established in 1975 by Patent Councellor Antti Papula, Papula-Nevinpat is today one of the largest and recognized patent, trademark and design agencies in Finland. Papula-Nevinpat has offices in Belarus, Russia, Kazakhstan, Ukraine and Uzbekistan. Our head office is located in Helsinki. In other parts of Eurasia, we represent our clients through our cooperation network. Our strong expertise in Russia is a result of groundbreaking work – we were the first Western agency to start in St. Petersburg in 1990. We file more than 2500 new cases in the Eurasian area each year. Our experience in industrial property rights in Russia is recognized throughout the globe. We have direct representation in the European and Eurasian patent, trademark and design offices. We also have a wide network of contacts to assist our clients in IPR matters all over the world. Papula-Nevinpat provides a vast range of services related to intellectual property. Our clients can rely on our expertise because our attorneys have extensive knowledge about IP and are up-to-date with the newest developments in the field. One of our primary goals is to provide our clients with personal advice and service suited to the needs of every individual. This personalised attitude has earned us a great reputation among our clients. Riikka Palmos is a Master of Laws and EU trademark attorney and is based in the head office. She joined Papula-Nevinpat in 1995, and is a partner of the company. Ms Palmos specialises in the trademark rights and practices in Russia and in the states created in the territory of the former Soviet Union. She has extensive experience in Finnish and EU trade mark processes.

“Our clients can rely on our expertise because our attorneys have extensive knowledge about IP and are up-to-date with the newest developments in the field.”

LAW FIRM DUPUY MANAUD

France

Jean-Denis Dupuy-Manaud, Partner Law Firm Dupuy Manaud +33 5 61 56 39 09 www.trademarkers.fr

The firm, established in 1996, focuses on the management of international trademark portfolios - INTA circulates valuable information to build the necessary network- and on the assistance to French or foreign clients in domestic or international contracts involving IP rights, including hi-tech start-ups (software, electronics, health, TIC etc.). In such niche industries, new clients usually focus on patents, trademarks are (a)- “useless, our clients will know us anyway”, and (b)“very costly, perfectly suited to lawyers’ squabbling”. But experience shows that they end up in revising this snap judgment and in building their own portfolio! Both activities converged in imposing to continuously improve our competence in prior trademarks searches and opinion letters (in French and in English) for word trademarks, as usual, but we increasingly felt that concerning design trademarks, the existing offer is too scarce and not fully satisfactory. We wanted to propose an original answer and we recently launched a dedicated WEB site, www. trademarkers.fr (trademarks having effect in France, more to come). For each design submitted, we determine the number of prior trademarks based on Vienne + Nice classes and propose (free of charge) a price according to a publicized fee structure, proportional to this number. We also offer a discount to favor orders concerning both a design trademark and an associated word trademark. To facilitate the information and reduce the administrative costs, we developed our own ordering forms, carefully designed to be easily understood and accurate (practitioners will recognize the logics found in the OHIM forms) and utmost care was devoted to the confidentiality, as deliveries are loaded into a secure section, access being controlled by client’s own password. We look forward to receiving your visit!

“We also offer a discount to favor orders concerning both a design trademark and an associated word trademark.” Corporate INTL 19

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LEXDELLMEIER IP LAW FIRM

Germany

Alexandra Dellmeier-Beschorner Attorney at Law, Managing Partner +49 89 55 87 9 87 0 info@lexdellmeier.com www.lexdellmeier.com

MAIWALD PATENTANWALTS GMBH

Germany

Stephan N. Schneller Attorney-at-Law, Partner +49 89 747266-0 info@maiwald.eu www.maiwald.eu

Experienced - Innovative - Client-oriented - LexDellmeier offers innovative and creative in-depth IP-counselling and has won the award “Small IP Firm of the Year in Germany 2010”.

Maiwald Patentanwalts GmbH is a professional association of intellectual property attorneys with extensive experience in securing and defending the intellectual property rights of its clients.

Experienced - Innovative - Client-oriented LexDellmeier offers innovative and creative in-depth IP-counselling and has won the award “Small IP Firm of the Year in Germany 2010”.

Established in 1995, our firm was the first German patent attorneys’ office to be incorporated as a “GmbH” (limited liability company under German law) and is a continuation of the former Maiwald & Partner, founded in 1993. Since 2006, the journal Managing Intellectual Property has rated us in its worldwide ranking as one of the ten leading German IP firms. Size-wise we rank among the top five IP firms in Germany. The firm presently has more than 180 staff members, including more than 60 attorneys, associates and trainees. It has offices in Munich, Hamburg, Düsseldorf, Zurich and New York, and has plans to establish further offices in other European cities. We advise and represent major domestic and international clients, covering all technical fields and all aspects of national and international law relating to intellectual property, including patents, utility models, trademarks and design, design and copyright law, intellectual propertyrelated copyright, unfair competition, computer and software law, internet law, business and commercial law, licensing and litigation. Stephan Schneller, born 1966 in Munich, Germany, studied law at the Universities of Konstanz (examinations as Referendar, 1994, and Assessor, 1996) and Cape Town and Stellenbosch, South Africa. Stephan Schneller has been admitted to practice as a Rechtsanwalt (attorney at law) in Germany since 1996. He joined Maiwald Patentanwalts GmbH in 1998 and has been one of its managing directors since 2006. In 2009 he was appointed as certified specialist for intellectual property law by the Munich Bar. Mr Schneller speaks German and English. His main practice areas include German and international intellectual property law, in particular trademark, patent/utility model, design and unfair competition law; contract law, in particular relating to licence, cooperation and know-how. Mr Schneller is particularly specialised in handling complex main and interim injunction as well as opposition proceedings in combination with cancellation and invalidation actions regarding intellectual property rights before the civil courts (including the ECJ) and the offices respectively.

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.”

DR HELEN PAPACONSTANTINOU, JOHN FILIAS & ASSOCIATES

Greece

Dr Helen Papaconstantinou Senior Partner +30 210 3626624 mail@hplaw.biz www.hplaw.biz

Established in 1920, Dr Helen Papaconstantinou, John Filias & Associates is one of the largest specialist IP law firms in Greece. It currently operates jointly with its sisterbranch Dr P.D. Theodorides- Dr H.G. Papacostantinou law offices. The two firms offer a wide range of services in all matters of intellectual property law, ranging from patent, trademark, domain names & internet, copyright, anti-trust, customs monitoring, licensing, competition and advertising law, including related consultancy, litigation and ADRP procedures. “We have a strong team working on patentrelated generics litigation and an increasing volume of work in brand-name protection both nationally as well as on a community and international level. Indeed, the firm has established extensive links and collaborations with leading IP law firms around the world, with which we have built a relationship based on collaborative work reciprocity,” commented Dr Helen Papaconstantinou, senior partner at the firm. Both branches of the firm have been certified as per the ISO 9001:2008 standard, making them the only ones in the IP field in Greece to have ever obtained such a certification. Moreover the firm has consistently been voted as a Top Tier Greek law firm in all fields in the worldwide annual survey conducted by the prestigious magazine, Managing Intellectual Property. LEGAL 500 has also placed Dr Helen Papaconstantinou, John Filias & Associates in the Top Tier of their recommended IP Law Firms in Greece, while ACQ magazine honoured the firm with the “Intellectual Property Law Firm of the year” award for 2009. Dr Papaconstantinou said that the firms provide up-to-date, cost-effective and quality services from an efficient team of qualified attorneys who have extensive knowledge and practical experience working in Greece as well as abroad. Dr Papaconstantinou has been a member of INTA since 1975. She is also president of the Greek AIPPI Group and a member of the ExCo of the AIPPI; president of the Greek FICPI Group and an ExCo member of the FICPI Association; a member of the council and the board of the EPI and a member of the council of ECTA.

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STUDIO LEGALE SIB

Italy

Pier Luigi Roncaglia – Managing Partner T +39.055263381 F +39.0552633800 pierluigi.roncaglia@siblegal.com www.siblegal.com

GVTH ADVOCATES

Malta

Dr. Michael Grech – Head IP Department +356 2122 8888 michael.grech@gvthlaw.com www.gvthlaw.com

Studio Legale SIB was established by a group of attorneys long specialised in the contentious field of Intellectual Property (IP).

GVTH Advocates has been a member of the International Trademark Association for five years.

With offices in Florence, Milan and Rome, as well

According to Dr. Michael Grech, GVTH

as a liaison office in New York, Studio Legale SIB

Advocates is a market leader in IP practice in

provides judicial and extra-judicial assistance

Malta as the firm has considerable depth of

in Italy and the European Union 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. 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 In order to provide clients with the most qualified assistance, as Pier Luigi Roncaglia underlined, 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

expertise, second to none, that covers the full spectrum of IP related services. He said: “The team is comprised of specialised practitioners who are experts in the field, are extremely dedicated and offer immediate response to client needs as and when they arise.” As such, the firm has been extremely active in enforcement and anti-counterfeiting measures, representing some of the most important multinational brand owners in local seizures of counterfeit products being transshipped through Malta. “We continue to represent a syndicate of international generic pharmaceutical producers in negotiations with the Government of Malta to approve major amendments to the Maltese Patents Act and also to set up a 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,” Dr. Grech explained. Dr. Grech also pointed out that EU norms, that have tended to harmonise legislation in this field have rendered the matter less complex and far more manageable to brand owners. “Following Malta’s accession to the EU, as stated above, these norms have, for the most part, been incorporated into local legislation and, as a result have provided more accessible means of enforcing

of anti-counterfeiting, including liaising with the

IP rights on a cross-border level, particularly in

Police and Customs authorities, the coordination

the field of anti-counterfeiting which is an ever

of experts and investigators, the drafting of

growing area of our practice,” he said.

briefs during preliminary investigations and the filing of briefs of intervention as aggrieved parties in criminal proceedings.” “Thanks to our equal expertise in civil and

Dr. Grech believes that INTA membership carries with it a certain kudos and high reputation. “There is a sense of belonging to a highly effective organisation that comprises

criminal matters as well as to perfect fluency in

practitioners from every corner of the globe

the most important foreign languages, Studio

with which one can correspond and refer work

Legale SIB is able to offer highly personalised

to. It also offers constant access to information

assistance in IP law, conciliating the peculiarities

on all aspects of IP as and when this becomes

of each single case with the client’s overall

available, as well as topical conferences on

protection and budget concerns.”

various matters as they evolve,” he added.

POLSERVICE KANCELARIA RZECZNIKÓW PATENTOWYCH SP. Z O.O.

Poland

Anna Stopiska – Slefarska Member of the Board Head of Trademark Department Phone: + 48 22 44 74 600 Fax: + 48 22 44 74 646 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 industrial property rights we also specialize in copyright and unfair competition actions, litigation and dispute resolution, including anti-counterfeiting, Internet domain names and anti-piracy actions. Our firm employs nearly 40 patent and trademark attorneys specialized in various areas of technology, law and economy, a team of lawyers specialized in intellectual property protection and a team of experienced interpreters. We represent our clients 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). POLSERVICE is one of the biggest patent and trademark attorneys’ offices operating in Poland. We represent more than 2650 clients from more than 70 countries, for whom we provide our services directly or in cooperation with our foreign associates. 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. Individual and creative approach to our tasks, supported by profound legal and technical knowledge, has earned us the trust of our clients. Thanks to wide international contacts our Office is able to assist our clients in obtaining and enforcing intellectual property rights in other countries. 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 IP industry. Business executives are generally aware of the importance of IP rights protection and treat them as valuable assets. Our firm is a long-time active member of the International Trademark Association. The benefits of the membership cannot be overestimated. INTA’s educational programs provide 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 establishing new contacts. Corporate INTL 21

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GORODISSKY & PARTNERS

Russia

Valery Medvedev - Managing Partner + 7 495 937 6112 pat@gorodissky.ru www.gorodissky.com

“G&P is the largest IP law firm which handles all kinds of IP problems. Thanks to our large workforce we can afford having best experts in narrow fields within IP which in turn allows us to solve the most intricate IP problems.” - Valery Medvedev Gorodissky & Partners has an international reputation of the Russian IP law boutique. Gorodissky & Partners is a leading Russian IP law firm, provides full range of IP services, including prosecution, litigation, licensing and IP due diligence. We have the largest IP practice in Russia and Ukraine and are in the list of the 10 largest IP practices in Europe. Our branch offices are in St. Petersburg, N. No vgorod, Kazan, Krasnodar, Samara, Ekaterinburg, Perm (Russia) and Kiev (Ukraine). We have a staff of more than 370 employees, including 120 patent/trademark attorneys and

IN EUREKA

Russia

Victor A. Ezhevskiy Managing Partner and General Director + 7 495 650 68 66/ 495 629 79 32 org@ineureka.ru www.ineureka.ru / www.ineureka.net

The Patent Office INEUREKA was set up in Moscow (Russian Federation) in 2001. Since then INEUREKA has proved to be one of the most reliable partners among the leading IP Law firms of the Russian Federation. The company has extensive experience and offers a full range of services in regards to Intellectual Property Protection as Industrial Property Rights and Copyright.

VAKHNINA AND PARTNERS

Russia

Tatyana Vakhnina Managing Partner, Advocate Tel: +7-495-225-7545 Fax: +7-495-7376366 mail@vakhnina.ru www.vakhnina.ru / www.vakhnina.com

Vakhnina and Partners (Innotec Group) is one of the leading Russian Intellectual Property law firm. Vakhnina and Partners has its branches and representation in all ex-USSR (CIS) countries and Baltic States, including Ukraine and Kyrgyzstan. Innotec Group was established in 1990, in the period of birth of Russian private business. Currently, the staff of Innotec Group includes more than 80 people. It gets one of the first places with

According to Victor Ezhevskiy, the firm’s Patent

respect to number of employees and Patent At-

Attorneys and Lawyers are highly experienced

torneys working in the firm offices (more than 80

in intellectual property protection matters and

employees and about 20 Patent and Trademark

in exercising effective professional cooperation

Attorneys in 3 offices in Moscow, Russia).

with corresponding legal institutions of the Russian Federation responsible for IPP, as well

“Providing high-quality expertise in trade mark

as with the Eurasian Patent Organization, thus

and patent protection and registration, this outfit

providing up to date assistance to the company’s

has a network of branches and representative

Patent Attorneys and Lawyers in successful

offices across the Commonwealth of Independent

accomplishment of the most complicated tasks.

States, allowing it to protect the interests of its

INEUREKA clients are both individuals and

clients throughout the region. While the firm pre-

lawyers, 22 Eurasian patent attorneys work

well-known companies from the Republic

viously focused on serving Russian companies,

for the firm. They have significant experience

of Korea, Japan, United States of America,

it has recently been developing its international

in prosecution and litigation of intellectual

China, Germany, Sweden and a number of

client base. Tatyana Vakhnina is an “admirable

property matters. Patent attorneys of our firm

other countries. Close cooperation with patent

lawyer” with remarkable experience in the field.”

cover practically every area of science and

firms in the states of the former USSR helps the

- CHAMBERS Europe 2009

technology, our lawyers together with patent/ trademark attorneys successfully represent foreign and domestic clients in a number of cases connected with infringement of patent and trademark owners’ rights in courts and before the administrative bodies. Many of the firm’s lawyers and patent/ trademark attorneys have advanced technical and legal degrees and speak a variety of foreign languages. They regularly attend courses at IP and law firms in the USA, Germany, Great Britain, France, and other countries. At the same time they are frequently speakers at international conferences and seminars. Gorodissky & Partners has been a member of the International Trademark Association more than 12 years. The main benefit of being an INTA member is that INTA is the largest professional

company successfully settle questions related to registration of trade marks or the obtaining of

“… Senior Partner Tatiana Vakhnina has

patents in these countries.

impressed the market with her trade mark

Mr Ezhevskiy commented: “We often visit our clients and organise seminars, round-table talks,

prosecution and litigation skills.” - Managing Intellectual Property. World IP Survey

person to person discussions aiming to provide our partners with most updated information

“Russia: Litigation Specialist Dr. Tatiana Vakh-

on Russian IP Legislation, answer all specific

nina is recommended.”

questions related to our practical work. We

- Managing Intellectual Property. World IP Survey

strive to make our professional reputation to be associated with invariable quality, reasonable cost

Dr. Tatyana Vakhnina called INTA “The most

of service, responsible business style, fulfillment

important Trademark Association in the

of obligations. We believe that we have earned

World”. She added: “We participate in INTA

our partners’ trust due to our individual approach

conferences for more than 15 years. For many

and ability to establish direct and trustworthy

years we were not just colleagues - many INTA

relationship with clients”.

members have become our close friends. And it

INEUREKA takes an active part in the work of the AIPPI (Russian National Group) and LES

helps a lot in our business.” Vakhnina and Partners/Innotec Group has

International. Since 2003 the Company has been

comprehensive expertise in providing of Intellec-

a member of INTA. Victor Ezhevskiy also noted

tual Property services in Russia and all Ex-USSR/

community where it is possible to exchange

that attending INTA Annual Meeting gives the

CIS countries and Baltic States. The company has

views, meet new people and solve business

best opportunity to learn the last trends in trade

developed and uses a unique Russian trademark

problems. Being an INTA member means to be

mark legislation around the world and assists to

database (Database “VAL”), which allows to pro-

part of the respectable IP community.

establish valuable and above all direct contacts.

vide urgent searches for clients.

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YOUNG & WASSERMANN

Russia

Edouard Faizoullin - Trademark Attorney +7 (450) 646 0150 inquires@ywllc.com www.ywllc.com

KASHISH INTERNATIONAL EUROPE D.O.O

Serbia

Shishir Agarwal - Partner +230 4278661, 4260399 Serbia@kashishworld.com Europe@kashishworld.com trademark@kashishworld.com www.kashishworld.com

When you think of the intangible assets of your company, you consider your Intellectual Property. The Intellectual Property (IP) of your company may include among many things, for example patents, know-how, trade marks, designs, and domain names. The more advanced your business is, the more effective IP protection you have to provide to your company.

“Kashish International Europe D.O.O.” office represents Kashish Intellectual Property Group (KIPG) clients in Europe, Middle East and Russian jurisdictions. KIPG Serbia office specializes in Intellectual property services and staffs is well versed in different European, Middle East and different Russian countries language which help in timely translation of documents and filing of application.

Our firm was established in 2001 by a group

KIPG has set up a separate translation department at the Serbia Office which provides assistance in translating legal documents including patents. The translation services are provided by highly qualified and experienced staff, originating from different countries. The translation department has been very useful to clients, especially in filing Patent application (s) worldwide. The translation department had proved their real worth in different cases wherein KIPG has been requested to file patent application within few hours with priority claim in different countries. KIPG would have not been able to do so without the assistance of in-house translation services. The Serbia Office of KIPG is well located in terms of geographical connection, connecting Europe with Middle East and Russian countries. Serbia Office of KIPG also act as sales office for Africa, Asia, Central and South America and Oceania Regional offices of KIPG. Serbia Office assist European client in managing IP portfolio worldwide with single contact within Europe. KIPG clients has been appreciating the services due to fact that all services for worldwide jurisdiction are under one group and/or contact and mostly with direct filing most jurisdiction which economizes cost and also maintain standard and quality of work and/or result. Laws relating to Intellectual Properties in Serbia include: the law of Trademark published in official Gazette RS No. 104/2009 dated 16th December 2009; the law on Legal Protection of Industrial Design published in Official Gazette RS No.104/2009 dated 16th December 2009; the law on Copyright and Related Rights published in Official Gazette Rs No. 104/2009 dated 16th December 2009; and the Patent law published in official Gazette of Serbia and Montenegro No. 32/2004 dated 2nd July 2004, effective from 10th July 2004. The KIPG Serbia office is well familiar with above laws and regulation which allows assisting clients at its best.

of Russian and German experienced lawyers in purpose to provide juridical help for several international companies. At the same time we found out that businessmen in Russia were also interested in protection of their brand names and trademarks. This cooperation expanded our range of clients and juridical practice. The main office of «Young and Wassermann» is situated in Moscow. Two more offices we have in Ufa and Kazan, this helps us a lot to keep in touch with all the time zones. The company`s main area is the protection of Intellectual Property (IP) rights. We provide legal advisory and support for registrations and protections of inventions, trademarks, designs, copyright, computer programs, domain names, as well as for litigations, licensing and others. Our lawyers have a significant experience in protecting trademarks, inventions and copyrights in Russian Federation, the Commonwealth of Independent States (Ukraine, Belarus, Kazakhstan, Armenia, Georgia, Moldova) and worldwide in such countries as the United States of America, Great Britain, Germany, France, Poland, Czech Republic, China, Venezuela, India. The growing markets of Russia and the Commonwealth of Independent States (CIS) not only offer attractive opportunities to business, but also give rise to business related issues, where the protection of IP comes to the first place before entering this market. Russia has already implemented full compliance of the national legislation with TRIPS, and is now standing one step before joining the WTO. It means that IP protection practice in Russia will soon become equal to the one in the WTO countries.

The Netherlands

LAWTON BRANDS

Olaf van Haperen - Attorney at Law +31 (0) 76 5490 590 info@lawtonbrands.com www.lawtonbrands.com

Developing a business and inventing new products requires significant efforts of your company like investments in a name, a logo, and a product design. You’re thus investing in intellectual property. It is our job to make it your intellectual capital. LAWTON BRANDS is an IP consultancy firm specialised in trade mark research, trade mark registration, design registration, IP management and IP protection. Moreover, we can assist in conflicts such as administrative opposition procedures and legal proceedings. One of our unique selling points is our close collaboration with LAWTON ATTORNEYS AT LAW, a business oriented Law firm established in 2001. This collaboration, which is quite a rare combination in the Netherlands, provides possibilities to help you protect your brands far beyond a mere registration and beyond the scope of an average trademark office. We combine the best of both worlds as the input from the Attorneys at Law is being used for obtaining solid IP registrations and at the same time the ins and outs from your trademark portfolio are easily accessible for the Attorneys at Law who need to defend your Intellectual Property in court. Obtaining a registered trademark in the Benelux or European Union is not always an easy task. With the increasing popularity of the Community Trademark (CTM) and the development of a European Market, more and more potential cross-border conflicts occur. Moreover, the examination by the authorities of particular trademarks is strict and estimating the risks of infringement on older trademark registrations is complicated, especially when a Community Trademark needs to be obtained. An additional complexity is that the interpretation of European Design Law and European Trademark Law is still evolving which increases the need to make use of up-todate expert knowledge. LAWTON BRANDS is the ideal partner for organizations that are active on the European market or want to enter it. With pleasure we provide you with detailed advice on how to protect your intellectual capital in the best possible way in the Benelux, the Dutch overseas territories, Europe, and even the rest of the world. Corporate INTL 23

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BISON RIVERS

UK

Jeanette Wood, Director Partner Bison Rivers +44 1223 208 600 jeanette.wood@bison-rivers.com www.bison-rivers.com

Bison Rivers, founded in 1986, provides dedicated professional trademark and design registration and management services to all industry sectors, serving businesses of all sizes. According to Jeanette Wood, director with the firm, Bison Rivers’ comprehensive services cover all aspects of protection and use of trademarks and designs globally including searches, filing, third party objections, oppositions, registration, trademark assignments, licensing and renewals. In addition, she said that maintaining the investment and integrity in brands is highly important, and the firm provides monitoring services alerting its clients’ to conflicting thirdparty interests, enabling action to be taken before dilution or damage to a brand occurs. Ms. Wood noted: Bison Rivers’ undertakes contentious work pertaining to adoption and use of conflicting trademarks as well as domain and company names. Bison Rivers is noted by industry insiders for its partners’ professionalism as well as the way they manage clients’ rights and portfolios, working to allocated budgets. “Understanding our clients’ needs and aspirations means that we deliver realistic, practical advice and solutions,” said Ms. Wood. She added that trademark law and practice alters regularly and, consequently, keeping abreast of changes ensures that clients are provided with the best means of securing their rights. Ms. Wood concluded: “Bison Rivers’ strengths include meticulous attention to detail and, consequently, our clients benefit from the specialist knowledge we have gained in dealing with and protecting trademarks and designs worldwide for over 25 years. Establishing key rights in a number of countries is often a challenge for businesses, and our extensive experience enables us to give case specific advice on how best to achieve this. “The number of international trademarks we deal with made membership of INTA, the International Trademark Association, compelling for Bison Rivers. INTA meetings allow us the opportunity to meet with clients and associates in one forum – and from this we have been able successfully to develop new mutually beneficial relationships. INTA continues to provide invaluable resources and we are regular users of the Association’s Country Portals and Members Directory.” 24 INTA

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AFRICA & THE MIDDLE EAST 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.

CONTENTS

26 Afghanistan - KASHISH INTERNATIONAL LTD 26 Israel - Shiri Kasher-Hitin, Adv.

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 centralization of procedures such that a single title issued comprised as many independent national rights as member countries.

26 Mauritius - KASHISH INTERNATIONAL LTD 27 Nigeria - Adedeji & Owotomo 27 Nigeria - David Garrick Kayode & Co 27 Nigeria - Johnson Bryant 28 Qatar - ALPHA & CO.IP 28 Saudi Arabia - Ahmed AL-Rajhi Lawyers & Trademark Office 28 Saudi Arabia - Khalid Bin Saeed AL-Shahrani 29 South Africa - Adams & Adams 29 South Africa - Bouwers INC 29 South Africa - Edward Nathan Sonnenbergs 30 South Africa - Ron Wheeldon Attorneys 30 South Africa - Spoor & Fisher 30 Syria - Oussi Law Firm

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. 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) 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.

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KASHISH INTERNATIONAL

Afghanistan

Shishir Agarwal - Partner +230 4278661, 4260399 Afghanistan@kashishworld.com asia@kashishworld.com trademark@kashishworld.com www.kashishworld.com

KASHER

Israel

Shiri Kasher-Hitin - Advocate +972 77 6935457 shiri@kasherlaw.com www.kasherlaw.com

“Kashish International (Afghanistan) Asia” office represents Kashish Intellectual Property Group (KIPG) clients in Afghanistan. Though Afghanistan is considered to be one of the most disturbed jurisdictions after Somalia, still KIPG has been able establish office with successful operation and since its establishment KIPG have been assisting clients without any issues. KIPG clients are satisfied with the establishment and services provided by Afghanistan Office.

Kasher law firm specializes in the field of intellectual property law and provides legal advice and presentation in litigation procedures in this field. The services are provided after close and careful examination of the factual and legal circumstances and only after taking into consideration the chances of the legal step in question – all in order to provide the client the right recommendation whether to file a law suit or not.

“LAW OF COMMERCIAL TRADEMARK 1339” provides protection to Trademark owners without any interruption since its proclamation. KIPG Afghanistan office and staff specializes in Intellectual property services. The official language in Afghanistan is Persian, accordingly all documents need to be prepared and filed in Persian; KIPG team assists clients instantly in translating documents and filing documents within due deadline. The team has been trained to complete assignment within the deadline or timeline provided by clients and report back no matter how unstable the conditions are in the country. A major issue in Afghanistan is postal department and courier services; to overcome this issue KIPG has formulated secured upload/download services for client on KASHISH IP SOLUTION, on which documents can be uploaded/downloaded within second thus avoiding any delay in translating and filing documents. The presence of KIPG in Afghanistan allows clients to protect Intellectual Property in a jurisdiction which is considered to be root and/ or home of terrorism without any concern and that too at much competitive quote. KIPG team in Afghanistan is experienced and has a good relationship with the local authority which allows managing all tasks efficiently. According to 2008 figures, the population of Afghanistan was 30 Million. In coming years Afghanistan may come up as an emerging market, once it’s politically stable and current issues of terrorism are resolved. Thus KIPG advise to protect/ register the brands in the said jurisdiction before local parties take over the brand in their name, which is quite common in Afghanistan. KIPG team is dedicated to assist clients for conducting market survey and building IP portfolio in Afghanistan in addition to locating market and Franchisees. KIPG team will provide assistance in drafting of legal agreements required for Franchising and Licensing in Afghanistan.

The firm has significant experience in drafting license agreements regarding all kinds of intellectual property assets: representing the client in the negotiations phase until the closing phase. The firm also has vast experience in trademarks registration and opposition procedures against registration of problematic or infringing trademarks. As mentioned by Adv. Kasher-Hitin, the firm represents many copyright owners in the media field, including leading television broadcasting company in Israel, television production companies, writers, illustrators, architects and industrial designers. The firm accumulated vast experience in trademarks registration procedures and litigation procedures regarding opposition to registration of infringing trademarks and trademarks infringements.” Adv. Kasher-Hitin went on to explain a complexity involved in establishing trademark rights on an international scale: “For example, in Israel it is possible to obtain ownership of a trademark through extensive use. Therefore, the decision whether to apply for trademark registration should include not only a search of the local trademarks register but also names of corporations.” Regarding the IP legislation in Israel, Adv. Kasher-Hitin mentioned that the most updated and comprehensive statute is the Copyright Act 2007, in which the Israeli legislature made an effort to refer to infringements on the internet. Furthermore, Mrs. Kasher-Hitin went on to point out that Israel became an official member of the OECD and joined the Madrid Protocol concerning the international registration of trademarks last September. “This should promote investments in Israel in the foreseeable future, including also expansion of the investments in intellectual property by nonIsraeli companies,” she added.

KASHISH INTERNATIONAL LTD.

Mauritius

Shishir Agarwal - Partner +230 4278661, 4260399 mauritius@kashishworld.com africa@kashishworld.com trademark@kashishworld.com www.kashishworld.com

Kashish International Limited Mauritius, is the head office of Kashish Intellectual Property Group (also known as “KIPG”) with Regional offices in New Delhi (India), Kabul (Afghanistan), Fiji (Oceania), Male (Maldives), Belgrade (Serbia), Managua (Nicaragua). Besides Regional Office, KIPG has 30 Country Offices with a 360 strong staff which includes Barrister, Attorney, Notary, Paralegal and administrative staff. KIPG team assists clients worldwide in maintaining and protecting IP portfolio, running enforcement campaign, worldwide watch and opposition filing among other services. KIPG IP service bouquet can be accessed at KIPG website (www.kashishworld. com). Clients have the privilege to monitor and maintain IP portfolio worldwide with dedicated team and one point contact, which may be either Head Office or any Regional Office. KIPG offers online portal “KASHISH IP SOLUTION” wherein clients have direct access to files, data and relevant documents. Updates and important dates are mailed from online portal, client have the privilege to access file (s) at their convenience and also upload/download documents easily. In short, KASHISH IP SOLUTION economizes cost and time in addition to easy access to files at once convenience. “KASHISH IP SOLUTION” also assists clients to secure quote for individual country or worldwide for Trademark Services within seconds based on once requirement. In addition to quotes, clients can download the required information on individual country and Power of Attorney. KIPG strength lies within its client, staff and experience, which all together builds both today’s and future KIPG. KIPG assets are their client, staff and above all clients trust in KIPG team. KIPG attends to all email and instruction immediately through their central office located in Mauritius which provides services round the clock and 365 days a year. Generally, instructions are carried out on same day or on following working day. Since its establishment KIPG has expanded manifold and will continue to do so and will keep on improvising services and assistance, where it needs to be in order to achieve its goal of client satisfaction.

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ADEDEJI & OWOTOMO

Nigeria

Mr Ade A. Adedeji – Managing Partner +234 1 280 6569, +234 805 655 5999 ade@iplawcentral.com www.iplawcentral.com

Adedeji & Owotomo (AO) is a general law firm established since 1989 based in Nigeria, with overseas offices in New York, USA. We deal with commercial and civil issues including all aspects of intellectual property rights within Africa including Trademarks, Patents & Designs etc. AO has a highly regarded reputation in IP practice, providing advisory and consultancy services in all relevant areas of IP law. The firm is structured into departments and groups of strong team of specialist lawyers in its various areas of practice to deal with contentious and noncontentious issues as well as providing excellent, quality, timely and cost efficient legal services to our local and international clients.

Practice Areas: • Trademark Registrations and litigation • Patents • Designs • Anti-counterfeiting litigation • Oppositions • Product Registrations (NAFDAC) • Licensing • Banking • Telecommunications • Real estate • Arbitration & alternative Dispute Resolution. • Maritime law Members of: INTA, ITMA, IBA Nigerian Bar Association (NBA). The Relevant laws on IP in Nigeria are: Trademarks Law of 1965, Patent & Design Law of 1970, Copyright Law of 1988, National Technology Acquisition and Promotion Act 1994, Counterfeit and Fake Drug Act 1990. The Trademarks Law is currently been reviewed by the National Assembly to be amended. However, a provision has been made for the registration of service marks in international classes 3545. The Trademark Registry is undergoing a developmental reform of computerizing applications filed though some other matters are dealt with manually. The Patent and Design Law provides that the examiner can grant and publish patent if the documents required are complete, but does not require the examiner to make substantive examination on patent applications. The Copyright Law does not cover computer program, database or the internet however, there is a review of a proposed bill for cyber security and information protection.

DAVID GARRICK, KAYODE & CO.

Nigeria

Olugboyega Kayode, Managing Partner +234 1 7361902 +234 1 7361989 olugboyega.kayode@garkaylaw.com www.garkaylaw.com

David Garrick, Kayode & Co. is a top rank and leading Intellectual Property firm in Nigeria. The firm’s IP practice covers the whole spectrum of Intellectual and Industrial Property law. The firm advises on all aspects of IP law, including patent, trademark, trade secret, design and copyright. With a robust network of associates across Africa, David Garrick, Kayode & Co. provides a one-stop IP bouquet covering registration and enforcement of IP rights all over the African continent.

Nigeria

JOHNSON BRYANT Sym Otike-Odibi – Partner +234 1 7742298 sym@johnsonbryant.com info@johnsonbryant.com www.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 has a specialized IP department that is structured to provide a full spectrum of services and solutions to both our local and international 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 manner. Johnson Bryant encourages close working relationships with its clients in order to maintain a tight focus on the clients’ goals.

The firm’s understanding of the relevant law

In addition, the firm provides a wide range

in most jurisdictions within the continent

of services necessitated by its clientele base in

distinguished it in the provision of sound legal

traditional and emerging disciplines of law. Core

advice in Nigeria and Africa.

areas of practice include: Intellectual property,

The firm’s strength lies in its competent attorneys complimented by expert support staff in all aspects of IP. The firm also deploys ICT into all aspects of its practice, which improved its turnaround period. David Garrick, Kayode & Co.’s scope of clients is very broad. The firm offers IP legal advice to multinational and domestic corporations. It also works with foreign law firms to co-ordinate their client’s IP portfolio in Nigeria. Both international and domestic companies

Banking and Financial services, Employment and Labour, Estates and Personal, Business Advisory and Foreign Investments, Energy, Company & Commercial, Company Secretarial, Tax & Revenue, Property & Real Estate, Litigation & Dispute Resolution. Significant developments pertaining to the Trademark and IP industry in Nigeria include the approval of the registration of service marks by the Federal Government which took effect from the 19th of March, 2007. This directive is however, yet to be published in the

are conscious of the importance of their IP

official gazette, but service marks are being

assets to the survival and growth of their

filed all the same and in recent publications

organisation. However, approach to IP varies

of the trademarks journal, service marks were

across the industry sectors. For instance, in the

advertised. In addition, the current Trademarks

manufacturing industry approach is very high

Act of 1958 is outdated; however, a new bill is

and enforcement is also very high. Protective action would be taken wherever infringement is found. On the other hand, in the retail industry no specific importance is attached other than to let buyers know, where it is possible, that one product is genuine while the other does the same thing as the genuine one but the prices are different. The same retailer could sell both. Most infringing/counterfeit products are smuggled into Nigeria. In light of this,

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 the Trademarks Law and Practice worldwide. In order to remain savvy in matters of International trademark and IP, Johnson Bryant became a member of INTA 8 years ago. The firm has benefitted in areas of: access to high quality educational sessions and programs; participation in roundtable discussions held all over the world

establishing/enforcing IP rights in this instance

throughout the year; and excellent networking

presents extra complexities to IP right owners,

opportunities which help us to gain contacts

particularly, in detecting the source of the

with potential associates and clients at INTA

offending products.

meetings; events and conferences. Corporate INTL 27

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ALPHA & CO.IP

Qatar

Hussain Al Obaidly – Director Tel: 00974 - 44415275 Fax: 00974 - 44358232 alphatmp@qatar.net.qa www.alphatmp.com

AHMED AL-RAJHI LAWYERS & TRADEMARK OFFICE

Saudi Arabia

Mr. Abdul Aziz Al-Rajhi,Sr. +966 1 477 1888 vip@alrajhi-lawyers.com

AHMED AL-RAJHI LAWYERS & TRADEMARK OFFICE

Headquartered in the State of Qatar, a nation which has been one of the top-tier economies of the world in the last few years and jewel of Arab world, Alpha & Co.IP has its vast networks all across the world to facilitate its valued clients in the arena of Intellectual Property Protection and Enforcement. Alpha & Co. IP, the pioneer IP service provider in GCC world, was established by Mr Hussain Al Obaidly in the year 1994. These were the times when Intellectual Property field was still in its infancy days in the region. Over the years we have established ourselves as one of the leading and most reliable IP agents of the region. We have become fully-equipped with vast resources manned with attorneys and consultants who are experts in all aspects of intellectual property protection and enforcement. With our own offices in all the GCC (Qatar, Bahrain, UAE, Oman, Kuwait & Saudi Arabia) countries along with Egypt and our associate offices spread across the globe, we have become one of the prime IP service providers across the length and breadth of the Arab world. We take pride in our responsiveness to the needs of our clients. Our gamut of practice has grown over the years owing to our ability to adapt to the ever-changing needs of our clients. Special attention to urgent cases without having any prejudice to normal ones is our part of functioning and our stringent adherence to the ethics of work has helped us grow by leaps and bounds among all our contemporaries. We take credit for providing cost-effective services by accomplishing a high quality job within a short span of time at reasonable rates. Our strategy revolves around the concept of providing valued clients with professional and high quality services, suiting their best needs and requirements. It is our mission to help our to clients efficiently gain complete benefit of their intellectual property rights through the practicality and commitment of our professional staff.

“We take credit for providing cost-effective services by accomplishing a high quality job within a short span of time at reasonable rates.”

Having this opportunity we would like to introduce ourselves as “Intellectual Property Consultants” situated in Riyadh, Kingdom of Saudi Arabia. In this fast growing world Intellectual Property is an asset, and as such it can be bought, sold, licensed, exchanged, or gratuitously given away like any other form of Property. Further, the Intellectual Property owner has the right to prevent the unauthorized use or sale of the Property. It is quite imperative for developed and developing countries, which are flourishing with innovative Industries, almost continuously striving to have laws to foster innovation and at the time implementing the stringent laws to protect the Intellectual Property – namely, Trademarks, Patent, Copyright, Design. All four types of Intellectual Property are protected on a national basis. Thus, the scope of protection and the requirements for obtaining protection will vary from country to country. There are, however similarities between national arrangements. As you know countries in the Arabian Peninsula are growing at the rapid rate in general, and Kingdom of Saudi Arabia in particular. And there is a huge requirement of Intellectual Property Protection. Being a reputed Organization it this field (Trademarks, Patent, Copyright, Designs). We’re rendering services to various companies through out the World successfully through our professional network in the Middle East.

VIP GROUP-AHMAD AL-RAJHI LAW AND TRADEMARK OFFICE PO Box 29458 Riyadh 11457 Saudi Arabia

“It is quite imperative for developed and developing countries, which are flourishing with innovative Industries, almost continuously striving to have laws to foster innovation and at the time implementing the stringent laws to protect the Intellectual Property – namely, Trademarks, Patent, Copyright, Design.”

KHALID BIN SAEED AL-SHAHRANY

Saudi Arabia

Khalid ELshahrany +96612933777 info@saudi-lawyer.net www.saudi-lawyer.net

Elfatih Elrashid +96612933777 info@saudi-lawyer.net www.saudi-lawyer.net

In modern society IP rights protection is of concern of numerous individuals and businesses. Many of them are promoting IP market accordingly in Saudi Arabia. Several regulations have been enacted to cover such a progress in the region, yet too many are down the road so long as Saudi Arabia witnesses a great flow of international business organisations in both commercial and industry sector as consequences of the country’s involvement in the WTO and other international conventions and agreements. Khalid Bin Saeed Al-Shahrany’s team of consultants comprises of experienced trademark attorneys and patent attorneys who handle trademark searching domestically and internationally, facilitate enforcement and protection of clients’ rights through powers legally vested in the firm. Recently the firm has dealt with conflict of interest: three parties of different jurisdictions claiming the ownership of a trademark widely used in Sauid Arabia for years. Khalid Bin Saeed Al-Shahrany employed the international agreement of Paris and the TRIPS, and the national Sauid regulations as the case is under its jurisdiction. It is still before the court, however the legal decision over the case should be received soon, and new approach in this concern might be witnessed. Saudi Arabia pays a great deal of concern to provide a persuasive legal environment, equipped with enforcement and executive mechanism so that local and foreign business could share it equally to develop profitable, secure business environment. The national regulations which are deeply and honorably committed to Saudi’s international obligations, give all reasons to persuade and preserve IP rights for local and international entities who are existing in the market and those to come. Saudi’s legislation approach anticipates the future needs of business progress and prosperity, thus many drafts are waiting before the assembly of consultancy, the national supreme legislative authority, and council of ministers, to be enacted. These drafts cover amid others: organising and financing an IP based start-up companies, tax and account issues raised by IP, stock sales in connection with IP interest, transfer of IP upon changes in employment, enforceability of restrictions on subsequent employment for parties holding trade secret.

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ADAMS & ADAMS

South Africa

Mariëtte du Plessis – Partner +27 12 432 6000 mariette@adamsadams.co.za mail@adamsadams.co.za www.adamsadams.co.za

BOUWERS INC

South Africa

Mr. Deon Bouwer - Director +27 11 325 5530 deon@bouwers.co.za www.bouwers.co.za

Simon Brown - Partner +27 12 432 6000 SBB@adamsadams.co.za mail@adamsadams.co.za www.adamsadams.co.za

Adams & Adams is a law firm of international repute, established in 1908 and specialising in intellectual property law. It has a professional complement of more than 140 lawyers. It is the largest IP firm in Sub-Saharan Africa and our mission is to build on our outstanding reputation of more than 100 years and to retain our position as a top legal practice in Africa. Adams & Adams practises in all the Southern African countries and has offices in Mozambique and Angola. We offer specialised and in-depth knowledge and expertise throughout Africa. The partners of Adams & Adams regularly undertake trips to visit registries and meet with registry officials in the majority of African countries. We are up to date on all IP legislative developments in Africa, to the extent that we are regularly approached by the World Intellectual Property Organisation (WIPO) to offer training seminars in African countries. Adams & Adams organised the first anti-counterfeiting seminar in Mozambique for Customs, Border Police and other officials under INTA’s banner.

“We are up to date on all IP legislative developments in Africa, to the extent that we are regularly approached by the World Intellectual Property Organisation (WIPO) to offer training seminars in African countries. Adams & Adams organis ed the first anti-counterfeiting seminar in Mozambique for Customs, Border Police and other officials under INTA’s banner.“ The firm is also engaged in various external initiatives, including setting up, as a joint initiative with the University of Pretoria, the Chair in Intellectual Property Law and the Centre for Intellectual Property at the university. These initiatives also include the authoring and publication of a text book on intellectual property law, the compilation of a manual comprised of the intellectual property laws of all the countries on the African continent - a first in the world of IP! Our competitive edge is based on client confidence, which in turn is based on the firm’s competence and commitment to clients, its experience and expertise, as well as the quality and excellence of its service.

EDWARD NATHAN SONNENBERGS INC.

South Africa

Gaelyn Scott - Director +27 11 269 7669 gscott@ens.co.za

Ilse du Plessis – Director +27 82 411 7547 iduplessis@ens.co.za www.ens.co.za

BOUWERS INC. specialises in a wide range of intellectual property rights and the management thereof, including trade marks, patents and designs. The firm’s aim is to provide professional, yet highly personalised, services to its clients, by, amongst others, insuring that it is familiar with and appreciates the underlying business interests of each client. The firm also limits its acceptance of instructions from prospective clients to ensure that it does not accept instructions which may compromise its ability to represent existing clients. According to Deon Bouwer, the main strengths

Our experienced and highly skilled Intellectual Property team offers a wide spectrum of services, both locally and into Africa, including prosecution, maintenance and enforcement of trade marks, registered designs and domain names, all aspects of commercial intellectual property, such as due diligence investigations, valuations, licensing, portfolio maximisation and optimisation, IP litigation, copyright, plant breeders’ rights and e-commerce.

of the firm’s IP team are its extensive experience in the management and protection of large trade mark portfolios as well as its ability to advice on the commercialisation of intellectual property. “Bouwers has positioned itself as a small law firm and has implemented management structures to ensure that it renders professional services at highly competitive rates, without sacrificing on competency and skills levels,” he said. Mr. Bouwer went on to point out that South African Intellectual Property legislation is highly effective and provides extensive protection to the owner’s of IPR’s. The aforementioned, includes comprehensive statutory protection to patent, design, trade mark and copyright owners. He further explained that “Companies in all industry sectors are very conscious about their ability to safeguard their IPR’s in South Africa and an attempt protect such IPR’s to the extend possible. However, due to commercial considerations largely resulting from the world economic crises, clients tend to be more selective in the manner in which IPR’s are protected”. BOUWERS INC. has since inception been a member of the International Trademark Association, an organization which Mr. Bouwer believes, provides its members with valuable guidelines and information regarding trade mark procedures and laws worldwide. “Membership of INTA, also suggests a certain level of competency and legitimacy and utilising fellow members of INTA is foreign jurisdictions have proven to be highly rewarding and successful,” he concluded.

We understand our clients’ businesses and commercial needs and make every effort to ensure that they enjoy a competitive advantage through pro-active and effective strategic management of their IP portfolios. We also have a specialised Africa practice, offering the full spectrum of trade mark related services throughout Africa. The firm has offices in all the major business centers of South Africa. Edward Nathan Sonnenbergs Inc (ENS) offers a gratuitous monthly watch service in terms of which we inform clients of any potentially conflicting third party newly filed and advertised trade mark applications and company / close corporation name and domain name registrations which is crucial for purposes of enforcing IP rights. This service covers South Africa and certain African countries. The firm has been a member of INTA for nearly 2 years, however, individual members of the firm have been involved with, and members of, INTA for more than 20 years. INTA membership provides us with excellent networking opportunities. The Annual Meeting in particular allows us to meet with our associates from across the world in one, convenient location. We make use of the INTA website and membership directory on a regular basis for purposes of obtaining contact details of other trade mark practitioners. We also find the country guides and online publications most informative. Furthermore, members of our IP team serve on the INTA Bulletin committee and frequently submit articles for publication. At ENS, we regard our INTA membership as an important marketing tool which reinforces our reputation as trade mark practitioners with an international standing. Corporate INTL 29

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RON WHEELDON ATTORNEYS/BRANDSMAN

South Africa

Ron Wheeldon – Founding Partner +11 646 66 66 ron@brands-man.com www.brands-man.com

Ron Wheeldon Attorneys/Brandsman is a boutique firm with a strong emphasis on intellectual property and related issues. The firm was founded in late 2005 by Ron Wheeldon who, after 25 years with large firms and having been a partner and head of department at South Africa’s largest firm, decided that a small, focused group in the Bohemian surroundings of Greenside would be a decidedly more pleasant existence than the pressured environment of large law firms and permit him to spend more time doing the work and a lot less managing people. The firm is really two concerns in one. The South African attorney’s firm which deals with matters of legal practice in South Africa, and ‘Brandsman’ which is the division of the firm engaged in the international management of trade mark portfolios for global clients. Mr Wheeldon obtained a Bachelor of Law (Hons) degree from the University of Rhodesia in 1976, and completed the same University’s one year practical training course in advocacy the following year. Commencing trademark practice in South Africa in 1982, he became familiar with the IP Laws of the African continent. Mr Wheeldon has a passion for IP and has been involved in committee work for the International Trade Mark Association (INTA) since 1993; at one time chairing the Public Education Committee of the Brand Names Education Foundation (BNEF) which is related to INTA. He is still active in INTA committee work. Furthermore, he writes frequently for numerous publications and won, in South Africa, the Butterworth’s prize for the best legal article in 2001. He is the current chair of the trade mark subcommittee of the Standing Advisory Committee for IP established under the Copyright Act to advise the minister of trade and industry. Mr Wheeldon is assisted by Ryan Tucker, an attorney with substantial trade mark law experience who has also worked in the USA in a large Philadelphia firm. They are backed by a team of highly experienced nonattorney professionals who attend to the high administrative workload of an IP practice.

SPOOR & FISHER

South Africa

Kay Rickelman - Foreign Counsel +27 12 676 1111 info@spoor.com www.spoor.com

Spoor & Fisher is a 90 year old specialist, full service international IP firm which has expertise in providing IP services throughout Africa. Spoor & Fisher and its associated office Spoor & Fisher Jersey (Channel Islands), focuses on all aspects of international intellectual property law including trade marks, patents, copyrights, designs; related litigation, including anti-counterfeiting; commercial transactions, due diligence and portfolio management. Having offices in or being able to file directly in 20 countries and to obtain trademark protection in a total of 38 countries throughout Africa, through the use of our offices located in countries that are members of the OAPI and ARIPO regional systems, coupled with maintaining personal relations with the representatives in many African patent and trade mark offices sets Spoor & Fisher apart from others offering intellectual property services in Africa. The main strengths of Spoor & Fisher’s IP team is the fact that the firm specialises only in intellectual property and thus develops expertise in each specific area involving intellectual property. Intellectual property is highly valued in South Africa and companies are very committed to safeguarding their intellectual property. While we believe all of our clients are committed to protecting IP in South Africa, clients in industries which are subject to the risk of counterfeits take special action to register their trade marks with the South African Customs to ensure that counterfeit goods can be detained and seized as they come through the border into South Africa. Such products include the clothing industry as well as the electronic industry, and CDs and DVDs. Spoor & Fisher has been a member of INTA for over 50 years. One of the main benefits of being an INTA member is the opportunity to be acquainted with other leaders in the trade mark field internationally. Referrals through INTA give one confidence that its clients’ IP rights will be adequately protected on a global scale. Getting to know others through INTA who are similarly committed to the protection of trade marks and staying on top of recent changes in trade mark laws and practices globally is of great benefit. If I know a person is a member of INTA, I immediately feel more comfortable that they have some expertise with regard to the protection of trade marks.

OUSSI LAW FIRM

Syria

Gabriel Oussi +963 -11- 33500090/1 go-law@oussico.net go-law@oussico.net

The world is moving in steady firm steps towards protecting the trademarks’ rights, and practitioners in the field are all aware of the globally taken measures to achieve this goal. Syria is not an exception, and must join the rest of the world in protecting the industrial and commercial trademarks rights. Present in Syria until 2007, legislative law No. 47/1946 was not complying with the requirements of the current era, and the needs required for the developments. Due to numerous resulting confusions, it was essential to reconsider this law, and after reviewing the new recent global developments, a new law has emerged, The Law No. 8 dated March 12, 2007. Oussi Law Firm is ready to supply all its clients with legal advice emerging from implementation of the new law. The firm was established in 1968 by Gabriel Oussi who is a member of: the Syrian Bar of lawyers, International Association of Lawyers UIA, International Trademark Association INTA, Association of European Lawyers AEA, The International Criminal Defence Council ICDC, The Arabic Society for the Protection of Industrial Property ASPIP, And Arbitration Chamber for Eng. & Const. Contracts. Mr Oussi said: “Because of my membership in INTA & AEA some of my main activities are connected with trademark protection, franchising and unfair competition law which form the main strengths of my firm in addition to other activities, and in this field I am representing several foreign companies in front of the Syrian court in different lawsuits about counterfeiting and infringements.” Oussi Law Firm offers a full range of legal services and it is associated with a comprehensive network of distinguished experts and consultants in the field of business management, economic feasibility studies. The firm’s activities are conducted by several professional reputed lawyers dedicated to serve their clients the very best of legal services. Moreover, reliable contacts are maintained with other firms in Syria, Middle East, Europe and USA. Recently Mr Oussi was elected vice president for the Syrian national committee in the international association of lawyers.

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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.

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.

CONTENTS 32 Australia - Cullens Patent and Trade Mark Attorneys 32 China - King & Wood 32 Hong Kong - P C WOO & Co. 33 India - Corporate Law Group 33 India - INTTL Advocare 33 India - LexOrbis Intellectual Property Practice 34 India - Mulla & Mulla & Craigie Blunt & Caroe 34 India - Y.J. TRIVEDI & CO., 34 Indonesia - AFFA Intellectual Property Rights 35 Indonesia - Cita Citrawinda Noerhadi & Associates 35 Indonesia - DNC Advocates at Work 35 Indonesia - Kusnandar & Co 36 Korea - DK Choi & Partners 36 Malaysia - Shook Lin & Bok 36 Pakistan - United Trademark & Patent Services 37 Philippines - Ortega, Del Castillo, Bacorro, Odulio, Calma & Carbonell 37 Singapore - PYPRUS PTE LTD 37 Taiwan – Deep & Far 38 Turkey - Ofo Ventura

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.” 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.

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CULLENS PATENT AND TRADE MARK ATTORNEYS

Australia

Gary Nock - Partner +61 7 3011 5555 g.nock@cullens.com.au www.cullens.com.au

Cullens Patent and Trade Mark Attorneys, founded in 1936, is one of Australia’s leading firms of patent and trade mark attorneys with offices in Brisbane, Gold Coast and Townsville. Cullens acts for a wide range of clients, from sole traders and small businesses, to some of Australia’s leading companies. We are also a preferred Australian agent for foreign associates. For more than 70 years, our clients have trusted us to provide advice and guidance in all aspects of trade mark protection and risk management, including providing registrability and freedom to operate advice, filing and prosecuting trade mark applications, managing oppositions and other contested IP disputes, enforcement of IP rights, and trade mark portfolio management. Our specialist trade mark personnel represent clients directly in Australia and New Zealand,

KING & WOOD

China

Yang Xiaoli - Head of Trademark Department +86-10-58785588 trademark@kingandwood.com www.kingandwood.com

King & Wood’s Intellectual Property group is among the largest and most highly regarded practices in China. The group is organised into four departments: Patent, Trademark, IP Litigation and IP Legal. King & Wood offers a full range of IP legal services in relation to prosecution, licensing, litigation, trade secrets, unfair competition and technology transfers that are unrivaled in depth, technical expertise and international scale. The firm’s IP group in China is composed of over 100 experienced patent and trademark attorneys, engineers, litigators and former senior IP officials, who are committed to delivering quality legal services to achieve their clients’ goals. The clients include well-known multinational and domestic companies as well as governmental bodies. Enforcing IP rights on a cross-border scale

and manage and advise on trade mark

may get more complex if the IP rights are not

portfolios around the world.

registered in one of the countries concerned,

Australia is a member of the Madrid Protocol

or if an action does not rely on a registered

and our practitioners are adept at resolving

trademark right but on a claim of well-known

provisional refusals raised by the Australian Trade

mark status. King & Wood is able to assist

Marks Office swiftly and beneficially for our clients.

international clients facing the problem.

We appreciate that, in the current global economy, service providers are under increasing pressure to offer competitive rates for their work. At Cullens, we take pride in the fact that our clients appreciate the value for money that we offer them as an experienced and service orientated business. In addition to our extensive trade mark expertise, the specialist patent attorneys in the Cullens team handle patent applications in a wide range of technologies. Many of our attorneys gained significant practical experience in their technical specialties prior to joining Cullens, providing us with a unique understanding of our clients’ businesses. Cullens has long been a supporter of INTA, and members of our team regularly attend INTA functions and meetings. Such INTA meetings

The firm has been a member of the International Trademark Association for around 10 years. “Being an INTA member provides us plenty opportunities to exchange with colleagues and clients from around the

P.C. WOO & CO.

Hong Kong

+852 2533 7715 lht@pcwoo.com.hk www.pcwoo.com

“We help our clients to make effective intellectual property strategic plans, which include timely protection by registration and enforcement as well as the ability to help clients to commercialize their inventions through marketing, licencing, franchising or other commercial contracts.” Established in 1945, P. C. Woo & Co. has served Hong Kong with quality, efficient services for 65 years. P. C. Woo & Co. combines the skills and expertise of our intellectual property lawyers with those of our commercial and litigation lawyers, allowing us to offer a comprehensive intellectual property service. We assist our clients in identifying the extent of their intellectual property rights and to manage their ownership and interests. We help our clients to make effective intellectual property strategic plans, which include timely protection by registration and enforcement as well as the ability to help clients to commercialize their inventions through marketing, licencing, franchising or other commercial contracts. We advise clients on all aspects of intellectual property and offer services both in Hong Kong and on an international basis with the following:

• Local and overseas protection, registration of trademarks, designs and patents

world and also carries a certain reputation,”

• Advising on the opposition and rectification of

commented Yang Xiaoli, Head of Trademark

patents, trademarks and industrial designs matters

Department at King & Wood. King & Wood is proud to have served as the sole domestic legal counsel for the Beijing Organizing Committee for the Games of the 29th Olympiad and has managed the Olympic IP portfolio since 2002. Since the establishment of the group, King & Wood has received numerous awards from internationally renowned IP professional publications recognising the quality of the firm’s legal services. This includes awards for Asian or China IP Law Firm of the Year by Chambers

provide an opportunity for us to keep in personal

Global, Asia Law and Asian Legal Business.

contact with our international clients and

“With our continuous efforts, the firm is now

associates, and to keep abreast of current issues in

widely regarded as being on the forefront of the

the trade mark community.

IP field in China,” said Mr Xiaoli.

• Advising on the protection and disputes on various intellectual property rights

• Advising on licensing and franchising matters We are also one of the law firms on the panel list of “Fast Action Scheme” for trade fairs enforcement in co-operation with the Customs & Excise Department of Hong Kong Our team consists of one partner Mr. Simon Tang, two senior solicitors Dr. Lewis Luk and Ms. Sandra Wong and one US Patent Attorney Mr. James Collison. Both Dr. Luk and Mr. Tang are respectively the chairman and executive committee member of the Hong Kong Institute of Patent Attorneys.

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CORPORATE LAW GROUP (CLG)

India

Ms. L.B. Rawat - Associate +91 11 4362 1000 lata@clgindia.com www.clgindia.com

Different businesses require different thinking and so we create tailored solutions. We believe our growing strength lies in understanding the business practices involved in a wide variety of regulated industries like pharmaceuticals, life sciences, energy; infrastructure; high technology, wines and spirits, tobacco, food; and mining. Through our association with the best in the industry, we have developed a sophisticated insight in to international best practices in these areas. CLG, established in 1998, represents primarily multinational companies and some Government and Government owned companies in corporate and commercial laws, intellectual property rights, licensing and technology transfer, regulatory and compliance issues, international trade, transactional and project finance related documentation, indirect tax, litigation and arbitration, government affairs and other matters. We also represent the State of Assam in the Supreme Court of India and our lawyers have been involved in important and sensitive constitutional matters. We have drafted the sub- legislation for the Protection of Plant Variety and Farmers’ Rights Act for the Union Agriculture Ministry and the rules and regulations for the proposed International Financial Services Centres for the Ministry of Commerce, Government of India. As a Firm, we strongly believe in giving back to society. We encourage our lawyers to take up pro bono work for people with limited means especially from backward and remote areas who do not have access to the Supreme Court of India. In 2006, we acted for the Assam Science, Technology and Environment Council in obtaining Geographical Indication Protection for Muga silk. We believe that this protection will not only help standardize the quality of the indigenous silk and preserve the uniqueness of traditional weaving and textiles of Assam, but also aid further brand building, commercialization and market access for this product, which in turn will create livelihood for people in rural Assam, particularly for the women. In addition, keeping in mind the incipient innovation environment in the country, and given our unique skill sets in the field of intellectual property, we provide legal services at significantly reduced costs to scientists and research organizations seeking to draft, file and prosecute patents.

INTTL ADVOCARE

India

Prietika Siingh - Partner +91 9811845149 prietika@inttladvocare.com www.inttladvocare.com

INTTL ADVOCARE has been an INTA member since 2002. INTTL ADVOCARE was established in 1991 by Mr Hemant Singh, a leading IPR litigation Lawyer at New Delhi, India, being in IPR practice for more than two and a half decades, who has handled over 1200 IP litigation cases till date on subjects varying from Trade Marks, Copyright, Industrial Designs, Patents and has been involved in quite a few landmark judgments delivered by Indian courts in the field of IP. Ever since it became operational, the firm has grown from strength to strength in the area of Intellectual Property Rights in the Indian sub-continent, as also having a large network of Associates in Asia and other continents. The team of the law firm comprises of 22 lawyers, technical members, para-legal and secretarial staff in the field of IPR prosecution and enforcement. INTTL ADVOCARE has multi-jurisdictional practice and is involved in rendering a broad spectrum of professional services pertaining to advisory, prosecution, litigation and enforcement matters in the fields of trade marks, copyrights, industrial designs, patents, cyber squatting, geographical indications, traditional knowledge, unfair trade practices, unfair competition, consumer protection laws, corporate laws, commercial documentation, foreign collaborations, transfer of technology agreements and franchising, strategizing IP protection and enforcement and IP audit since 1991. The INTTL ADVOCARE team has expertise in matters relating to Customs under Border Measure Regulations to prevent infringing and unlawful imports, conducting investigations against infringers, instituting Uniform Domain Name Dispute Resolution proceedings against cyber squatters and Domain name disputes; computer software, cyber laws, information technology, securing data management and enforcement against electronic data theft, trade secrets, know-how and breach of confidence, technical collaboration and franchising in all jurisdictions. INTTL ADVOCARE has had the privilege of representing some of the biggest and leading brands in the industry including but not limited to Foods and Beverages, Liquor, Garments, Cosmetics, FMCG, Fashion Accessories, Computer Software, Telecommunication, Aviation, Information Technology, Media, Electronics, Telemarketing Industry, Pharmaceuticals, Automobiles, Biotechnology and Process Engineering.

India

LEX ORBIS IP PRACTICE

+91-11- 2371 6565 mail@lexorbis.com www.lexorbis.com

We are a niche IP boutique firm that provide full IP services to our clients in India ranging from filing and prosecuting IP applications, maintenance and enforcement of all forms of IP rights. The firm has dedicated departments comprising of leading IP lawyers, scientists and engineers working together to render quality services to international and domestic clients. The firm’s patent filing and prosecution department is ranked amongst the Top5 patent filers at Delhi Patent Office which receives about 65% of the total patent applications filed in India. In addition to local filing and prosecution, our Trademark and Design departments handle global Trademark and Design portfolios for our client in over 150 countries. The firm’s Litigation and Enforcement department has over 60 years of collective IP litigation experience. The Department is involved in advising, strategizing and conducting high stake patent, trademark and copyright litigation before various High Courts, District Courts and at the Intellectual Property Appellate Board in India. The firm provides is a unique blend of India’s leading lawyers, patent & trademark attorneys and accredited scientists and engineering working together. Lex Orbis has been a Member of INTA since 2004. The main benefit of being a member of INTA is that it leads to a form of authentication of the firms listed therein. There is an inherent credibility, which can be associated with the firms, which also enables a reciprocal relationship between the firms. Kudos and high reputation are a natural consequence of such an association.

The firm provides is a unique blend of Indian’s leading lawyers, patent & trademark attorneys and accredited scientists and engineering working together. Corporate INTL 33

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MULLA & MULLA & CRAIGIE BLUNT & CAROE

India

Shardul Thacker - Partner +91 22 6634 5496 shardul.thacker@mullaandmulla.com

Y. J. TRIVEDI & CO.

India

Jatin Y. Trivedi - Partner +91 98250 14777 jatin@yjtrivedi.com www.yjtrivedi.com

www.mullaandmulla.com

The firm’s expertise includes franchising, licensing, media and entertainment laws, and related laws such as software and cyber laws. The firm advises on registration/protection of trademarks, copyrights and designs. Being a general practice firm enhances the firm’s capabilities to advise on related areas viz foreign exchange and tax in relation to royalty; broadcasting regulations tying-in with copyrights; advertising, packaging and labeling over-lapping with copyright and brand rights. Mr Thacker explained “Our long standing relationship with several overseas IP experts and excellent working relationship with Indian registries and technical consultants across India enables us to provide practical and timely advice.” “A few of the extra complexities are involved in establishing/enforcing IP rights on a cross border/international scale. On the brand front, from our experience, it often becomes difficult to establish a trans-boarder reputation due to lack of documentation. Reasons most commonly noted have been where companies have been re-structured or changed ownership, often even going through international buy-outs or investments; the discontinuity of archival records makes it difficult for the present owner to establish the long standing reputation or continuous use in India. The lack of computerized archival of older data which could have a great bearing on a matter is a common issue in identifying dates of first use, publication or author details of works, extent and manner of publicity etc.” He highlighted a couple of the firm’s achievements: “In the 1980’s we advised Colombia Productions for their film “Gandhi”. In 2010, we represented Reed Elsevier Properties Inc. in an infringement/ passing off action in relation to their well known publication, “Variety”. The successful outcome has been reported. We were awarded IP Litigation Law Firm of the Year in India 2010 by Corporate INTL.”

Indonesia

Dr. Achmad Fatchy - Partner Telephone: (6221) 83793812, 83793816 Facsimile: (6221) 83791937, 83702732 affa@cbn.net.id / affa-ipr@cbn.net.id

AFFA

Bindiya Raichura - Senior Associate +91 22 2262 3191 bindiya.raichura@mullaandmulla.com Purnima Singh - Senior Associate +91 22 2262 3191 purnima.singh@mullaandmulla.com

AFFA INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS

Tracing our origin to 1970, Y J Trivedi & Co. has today grown into a premier full service IP law firm with other offices at Mumbai, Bangalore, Pune, Surat and Rajasthan and a liasoning office in Canada. The firm has a strong base of well-credentialed legal and technical professionals offering quality services in all areas of IPR. The firm understands that pragmatic and effective legal advice requires an appreciation and understanding of the ever-changing business environment in which the client finds itself everyday. It has garnered excellent relationships with its clients by offering them personalized and prompt professional assistance. Whether working on a precedent-setting case or preparing opinions, the firm endeavors to be innovative in its approach and adopt pragmatic strategies to meet its client’s interest. Through interdisciplinary collaboration and specialized experience in its clients’ industries, it provides effective solutions that align with clients’ short-term and long-term business objectives. The firm is in continuous pursuit to build a reputation for its legal work staying true to its core values. International Trademark Association (INTA), one of the largest and most prestigious meetings of the International Trademark Community, has been a very effective stage for IP professionals having like minded interests, to renew their old relationships and also for networking of common business activities. The firm having been associated with INTA for more than a decade, can say for sure that INTA has been helpful in giving maximum exposure to the laws of various countries, apart from exchange of information, experience and best practices on IP law. It has established itself as a platform for friendly meetings with professionals having common business interests and goals with a chance to exchange business & ideas and also in getting updates on various countries.

Spectrum of Services: • Patent drafting, filing & prosecution • Patent litigation • Trademark practice • Copyright • IP management & strategic counseling • IP licensing & Due Diligence • IP audit & valuation

AFFA Intellectual Property Rights, established in July 1999, was brought into existence by a number of experienced IP professionals. The team, headed by Dr. Achmad Fatchy, SH. MBA, believes that a total concentration in one field ensures the quality of services to the clients. This commitment together with technical expertise is matched by the team’s vast experience in serving its clients requirements within the boundaries of national and international markets. One factor that makes the firm a success among many IP firms in Indonesia is the insistence on providing quick and correct information to clients; within 24 hours from the time of receipt of the inquiry or instruction. This simple approach proves to be cost-effective, non timeconsuming and reliable. At AFFA, the team honestly believes that clients should spend their valuable time not in waiting, but in making important decision for their businesses. AFFA has adopted strict operational guidelines to safeguard the clients’ confidence regarding care and efficiency of practice. The team believes that with a specialist approach combined with the team’s vast experiences, ensures that we bring expertise to every step of the protection of intellectual property. This enables us to provide optimal solutions to our clients and ensures that all team members are fully accountable for their contributions in the provision of Intellectual Property advice. AFFA has strong international relations in most countries across the world that provide assistance in the protection of our client’s Intellectual Property overseas and foreign clients requesting protection in Indonesia. We represent our clients in protecting and enforcing the rights of Patent, Industrial Design, Trade Mark and Copyright both domestic and international. Most of our overseas clients are prominent and reputable companies in the industry of information technology, bioengineering, chemical, manufacturing, entertainment, consumer goods, foods and beverage, media entertainment and many others. AFFA practice includes franchising and licensing, litigation aspects, providing watch services and other legal services. Members of AFFA are associated professionally with International Trademark Association (INTA), European Communities Trademark Association (ECTA), ASEAN Intellectual Property Association (AIPA), Licensing Executive Society (LES) and Indonesian Intellectual Property Society (IIPS).

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LAW OFFICE CITA CITRAWINDA NOERHADI & ASSOCIATES

Indonesia

Cita Citrawinda Noerhadi, Senior IP Consultant +(021) 835 4055 cita_p@ccpassociates.com www.ccp-associates.com

Law Office CITA CITRAWINDA NOERHADI & ASSOCIATES offers a broad range of services pertaining to the protection of IP rights, including trade and/or service marks, patents, copyrights, trade secrets and industrial designs both national and international. When asked to summarise the strengths of the firm’s IP team, Cita Citrawinda Noerhadi, IP consultant, noted that CITA CITRAWINDA NOERHADI’s partners handle and advance investigations such as oppositions as well as defense against oppositions and rebuttals. “In addition,” said Dr. Noerhadi , “the firm is equipped to handle civil and criminal litigation arising from infringements of its clients’ proprietary interests, cancellation and deletion actions, legal damages action, injunctions and actions seeking compensation for damages, providing guidance to avoid infringement of existing third-party IP rights as well as other civil and criminal cases.” Indonesia continues to expand efforts towards the development of IP protection in the fields of genetic resources, traditional knowledge and expressions of folklore. The Directorate General of Law and Regulation, Ministry of Law and Human Rights, as well as other related government institutions, are currently preparing new drafts of several regulations concerning Patent License and Compulsory License and Patent Cooperation Treaty, as well as amendment drafts to Patent Law, Trademark Law and Industrial Design Law. Dr. Noerhadi added: “The laws and regulations concerning patents in Indonesia have attempted to accommodate national interests. This can be seen from the existence of compulsory licensing regulation (as stipulated in Article 74 to Article 87, Law No. 14 of 2001 concerning Patents) as well as the implementation of new patent laws by the government (Article 99 to Article 103 Law No. 14 of 2001).” In addition, Law Office CITA CITRAWINDA NOERHADI & ASSOCIATES is affiliated with INTA, the International Trademark Association, as a means of maximising the firm’s global scope and expertise. Dr. Noerhadi commented: “Being an INTA member provides us with updates concerning IP developments from around the world, and provides detailed analysis of current trademark topics.”

DNC LAW FIRM

Indonesia

Ibrahim Senen - Partner Ibrahim-advocate@work-dnc.com Sigit Ardianto - Senior Associate Sigit-advocate@work-dnc.com +62 21 5202800 www.dnc-advocates-at-work.com

DNC Law Firm was established in 1994 as ‘Dermawan & Co’, becoming ‘DNC’ in 2005. The firm specialises its intellectual property practice in the area of anti-piracy/anticounterfeiting actions. DNC is highly experienced in planning and conducted successful raids against major counterfeiters of famous brand goods (Louis Vuitton, Montblanc, Dunhill, Cartier, Chanel, Levi’s), cigarettes (products of BAT and Brown & Williamson), computer programs (under Business Software Alliance), and books. DNC also assists clients looking to register their intellectual property, though this is not its primary expertise. In this practice, DNC provides additional leverage by supervising the registration of its client’s intellectual property in order to make sure that the description of the intellectual property and the coverage of the registration are correct, as intended and understood by the clients. Ibrahim Senen, partner, explained that Indonesia’s intellectual property legislation is relatively comprehensive and updated. He commented: “The reason behind this is the substantial reform it underwent in 2000-2002 to make it in line with the TradeRelated aspects of Intellectual Property Rights (Trips) Agreement as a result of Indonesia’s membership in the WTO. It covers all of the generally known areas of intellectual property rights, i.e.: patent; trademark (including geographical indications), copyright, industrial design, trade secrets, and layout designs of integrated circuits.” Sigit Ardianto, senior associate, noted that dealing with Indonesian law enforcement can be frustrating at times for foreign IP holders. This is because of two major issues. First,” Mr Ardianto explained, “Indonesian consumers at large have not yet reached the

Founded in 1980, Kusnandar & Co. is one of Indonesia’s most respected law firms with a largely foreign clientele consisting of mostly Fortune 500 companies. The ability of Kusnandar & Co to provide sophisticated and practical solutions whilst consistently maintaining high standards of service has resulted in our inclusion as a Legal 500 Law Firm and throughout the years, have gained the confidence and trust of major foreign companies worldwide. Kusnandar & Co. maintains its cross-border and world-class capabilities by retaining inhouse local and foreign consultants with local and international expertise whilst actively seeking out and nurturing affiliations, with law firms and legal organizations worldwide. With its vast experience, Kusnandar & Co. has become a reliable source of reference in business, mass-media and governmental circles and even the World Bank. The World Bank regularly consults Kusnandar & Co. for various reports from as early as 2005 until present. Kusnandar & Co. is also referenced in the Contacts section of the World Bank’s Directory. Currently, we are heavily involved with several Indonesian regional governments to train and assist in drafting comprehensive legislation. Hence, Kusnandar & Co. can be relied upon for the accuracy of its specific legal opinions as well as for its ability to outline the perspectives of the evolution of Indonesia’s business and economic environment. In addition to the current Legal 500 as above, Kusnandar & Co. was also nominated as one of Indonesia’s top-ten law firms by Global Law & Business, England and a member of the elite International WHO’s WHO of Professionals, Great Minds of the 21st Century 2009, ABI Fellow 2009.

Kusnandar & Co. Plaza ASIA, 16th Floor Jl. Jend. Sudirman Kav. 59 Jakarta 12190 Indonesia Contact :

same level with the west in assessing the level

Winita E. Kusnandar, Arno F. Kwok

of transgression and criminality in consuming

Other offices :

counterfeited products due to cultural reasons. “Second, the law enforcement authorities are not putting IPR protection and enforcement on top of their priority list and thus, the business community needs to step up and encourage them and provide incentives, particularly in doing raids.”

Indonesia

KUSNANDAR & CO Winita Kusnandar Arno F. Kwok Phone: (62 21) 5140 2020 (Hunting) Fax: (62 21) 5140 2021 kusnalaw@kusnandar.com www.kusnandar.com

Bali, Surabaya, Semarang, Singapore, Shanghai, Hong Kong Total number of partners : 3 Total number of associates : 15

Year Asia Office opened : Jakarta (1980), Bali (1990)

Languages :

English, German, Mandarin, French Corporate INTL 35

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DK CHOI & PARTNERS

Korea

Dukkyu Choi - Patent Attorney +82-2-555-9474 dkc@dkchoi.com www.dkchoi.com

SHOOK LIN & BOK

Malaysia

Michael Soo – Partner 00603 2031 1788 michaelsoo@shooklin.com.my www.shooklin.com

UNITED TRADEMARK & PATENT SERVICES

Pakistan

M. Yawar Irfan Khan +92 42 3628 5581-4 Yawar.Khan@UnitedTm.com Hasan Irfan Khan +92 42 3628 5581-4 Hasan.Khan@UnitedTm.com www.utmps.com

DK Choi and Partners is a rapidly expanding boutique intellectual property law firm founded on June 1, 1989 in Seoul, South Korea.

“We provide innovative and effective legal solutions and manage complex and cross-border Asia transactions.”

The founder and senior partner, Dukkyu Choi

Shook Lin & Bok was founded in 1918 in what is today Malaysia with Shook Lin & Bok Singapore established in 1964. Shook Lin & Bok Singapore, reflecting Singapore’s economy, is still a full service corporate, banking and finance firm advising our Singapore and multinational clients on their transactions and resolution of disputes in Asia.

is a prominent patent attorney in South Korea. Mr. Choi is a lecturer and professor at well known higher education institutions and is the author of numerous publications and books including “Patent Law” (2000), “Trademark Law” (1999) and “Fundamental Problems in Intellectual Property Right” (2004). Mr. Choi has extensive experience and knowledge on many disciplines in science and practically all aspects of intellectual property law. He graduated from Seoul National University in 1980 with a Bachelor of Science in Textile and Polymer Engineering and further obtained his Masters in Intellectual Property (MIP) from the Franklin

Our partners and lawyers have diverse legal education and language capabilities, having qualified in Singapore, the UK, the US, and Australia. We provide innovative and effective legal solutions and manage complex and cross-border Asia transactions.

Pierce Law Center in the United States of

Our clients

America. Mr. Choi is currently a member of the

Our major clients are banks and financial institutions, exchanges, listed and unlisted Singapore and Asian corporations, multinationals. Our clients commend us for our value added, effective and solutions-driven services and our understanding of regulatory environments in Singapore and Asia.

Asian Patent Attorney Association, International Association for the Protection of Intellectual Property, Licensing Executives Society, and the International Trademark Association. DK Choi and Partners protects and secures protection in intellectual property assets such as patents, trademarks, utility models and design rights. Members of the firm consist of patent

Asia Practice

attorneys from Korea as well as the United States

We provide a one-stop Asia Practice service for investment and transactions in China, India and ASEAN. Our China Practice comprises Singapore and PRC legal counsel with advice and documentation in both English and Mandarin. Our India Practice comprises foreign direct investment, funds, IT and Singapore Exchange initial public offerings of Indian corporations. We advise on cross-border transactions in ASEAN, principally, Indonesia, Malaysia, Philippines, Thailand, Vietnam and Cambodia.

of America that hold technical and law degrees from top universities within Korea and abroad. DK Choi and Partners includes patent attorneys and staff that are proficient in many languages including Korean, English, Japanese, and French. Costs and fees offered by the firm are significantly lower in comparison with other Intellectual property firms in Korea due to, among other reasons, the expertise of the patent attorneys and supporting staff. DK Choi and Partners provides services to a wide scale of clients embracing, but are not limited to, large corporations, international universities, startup companies within Korea as well as abroad. “Excellent service to our clients is always considered of the greatest importance to all practitioners at DK Choi and Partners,” commented Mr Choi.

“We provide a one-stop Asia Practice service for investment and transactions in China, India and ASEAN.”

For decades, UTPS has been by far the best IP practice in Pakistan, headed by M. Yawar Irfan Khan and Hasan Irfan Khan, who are globally recognised as leading IP practitioners from Pakistan. M. Farrukh Irfan Khan, after leading the firm for around 30 years was recently elevated as a judge of the Lahore High Court. UTPS offers the most diverse range of IP services, with a strong team of lawyers specialising in IP litigation, including trademark, patent and copyright infringements as well as emerging IP issues arising from Internet, Media and Telecom. The firm’s hallmark is to provide efficient services of the highest professional standards to its clients at competitive tariffs. UTPS is pride in being a one stop firm where its practitioners are capable of providing services to the clients in all areas of Intellectual Property as well as litigation and enforcement services without the need to outsource. One of the distinguishing characteristics of UTPS is that its lawyers and attorneys have a “proactive” as opposed to “reactive” approach in advising clients. Client satisfaction is at the core of the firm and it is because of hundreds of satisfied clients that UTPS has maintained its position as the No. 1 IP law firm in Pakistan. The firm’s vision for the future is to maintain its top position by retaining all valuable clients and to become the leading IP law firm in the entire Middle East and South Asia region. In the recent past, the firm has advised on complex asset purchase transaction involving trademarks of Bristol Myers Squibb in Pakistan; advised GAP, Inc on sourcing of clothing from Pakistan, carried out enforcement actions for clients including Nike, Adidas, Timberland, WD-40, Total S.A., Abbott, GSK, Pfizer, Novartis, Harley Davidson, United Biscuits (UK) (McVities), Dnata (a division of Emirates Airlines).

“The firm’s hallmark is to provide efficient services of the highest professional standards to its clients at competitive tariffs.”

36 INTA

Asia & Oceania section.indd 6

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ORTEGA, DEL CASTILLO, BACORRO, ODULIO, CALMA & CARBONELL

Philippines

Renato G. Calma – Partner +818-2321 to 25 & 810-43-90 law@ocbocc.com renato.calma@ocbocc.com

The firm has rendered work in these main aspects of law, Intellectual Property, Admiralty and Corporate and Tax. The beginnings of the Firm begun in 1901 and continued without interruption except during the period of 1941 to 1945. The firm resumed its law practice after 1945 and it continues to this day. The Firm has handled Intellectual Property assignments for its clients such as E.I. du Pont de Nemours; National Basketball Association (NBA), Bayer Healthcare AG, Glaxo Smith Kline, Kraft Foods, Inc., Harvard University, Takeda Pharmaceuticals, Del Monte, etc. The Firm has made patent and trademark filings and prosecutions since 1947. It has actively participated in Inter-Partes Cases and filed Oppositions and Cancellation Proceedings to protect the trademark portfolios of its clients. The Firm has extensive experience in enforcement actions doing that in collaboration with court-approved Government Agents to confiscate and destroy counterfeit items. In handling its Intellectual Property Assignments, the Firm employs Licensed Chemical and Mechanical Engineers who are employed as Technical Consultants. They help prepare responses to office actions Artists and Draftsman are likewise used to re-create Trademark Drawings. All responses to office actions are extensively discussed prior to the release to the Intellectual Property Office (IPO) of the Philippines. The Firm has five (5) Senior Partners and four (4) Junior Partners and assisted by twentyfive (25) Associate and Assistant Attorneys. A legal assignment is usually handled by a team composed of an Assistant Attorney who is guided by an Associate Attorney, a lawyer of at least five (5) years experience. Their combined effort is supervised and approved by a partner. The Firm is a member of the International Trademark Association (INTA), AIPPI, Asean Patent Attorney Association (APAA), and Licensing Executive Society (LES) International. The Firm has had a few distinctions. One of the lawyers who worked in the Firm was elected as the Ninth Philippine President, Diosdado Macapagal. Two others became Chief Justice, namely, Ricardo Paras and Jose Yulo. The Firm acts as the Honorary Legal Advisor to the British Embassy, German Embassy, Swedish Embassy and the Greek Embassy.

PYPRUS PTE LTD

Singapore

Constance Mah Head | Trademarks +65 6734 8523 constance.mah@pyprus.com www.pyprus.com

Pyprus is a boutique IP firm with offices in Singapore and Malaysia, established in 1992. The firm provides services in original drafting of patent specifications and prosecution and maintenance of patent, trademark and design applications locally and overseas. In the area of original patent drafting, practitioners at the firm have drafted and filed patent applications in various fields, including electronics, information technology, engineering and chemical and biological sciences. They also offer valuation services and issue freedom to operate opinions and infringement opinions. Pyprus provides a comprehensive range of trademark services including, but not limited to, maintenance of existing portfolio of marks, searches, applications and prosecution of trademark applications (including monitoring progress of applications, attending to objections and oppositions and infringement issues), recordal of changes such as ownership, name and address changes as well as renewal of marks prior to expiry. “To-date, we have filed in over 100 countries for direct applications and Madrid Protocol international application,” said Constance Mah, Head of the Trademarks Department. Pyprus has been an INTA member since 2004. From 2005 to 2010, the firm was listed as one of the top Singapore firms in the area of patent prosecution in Managing Intellectual Property’s annual surveys. Ms Mah pointed out: “The diversity and depth of experience and knowledge of our professionals allow us to provide our clients with a wide array of IP solutions and IP services, enabling us to support our clients in all their IP establishment and protection requirements locally, regionally and globally. Our commitment to our clients is to provide consistent high quality IP services and advice in a timely manner and at competitive prices.”

Taiwan

DEEP & FAR C. F. Tsai, Managing Partner Deep & Far Attorneys-at-law +886 2 25856688 cft@deepnfar.com.tw www.deepnfar.com.tw

Deep & Far Attorneys-at-Law was founded in 1992 to offer comprehensive advisory services with an emphasis on all aspects of Intellectual Property (IP) rights including patents, trademarks, copyrights, trade secrets, unfair competiton and/or licensing, counselling, litigation and/or related transactions. According to C. F. Tsai, managing partner with the firm, the patent attorneys and patent engineers in Deep & Far normally hold outstanding and advances degrees and are generally graduated from the top five universities in the country. Mr. Tsai explained: “Our prominent staff are dedicated to providing high quality services pertaining to IP rights in the region. As proof, more than one-fifth of the top 100 corporations in Taiwan have utilised our IP services in their dealings.” Further, Mr. Tsai said that regular clients include the hi-tech companies based in the science-based industrial park located in Hsin Chu. “These are firms that have played a crucial role in the country’s recent economic boom, and have enlisted Deep & Far to advise upon patenting their techniques and products. Similarly, we have represented international giants such InterDigital, Samsung SDI, Infineon, LCD Advanced, Carl Zeiss, Samsung, MPS, NovaLED, Schott Glas, Genelabs, Toyo Ink, Siemens and Motorola.” Mr. Tsai concluded: “It is our philosophy to provide competent legal services that other firms cannot comparably provide. The necessitated ensuing problem is: how we can so provide? Deep & Far so achieves by selecting,

“Pyprus has been an INTA member since 2004.”

edifying and nurturing individuals with a high level of expertise, who are also morally earnest and strictly disciplined. “This high level of experience and perseverance that allows our firm to operate ‘deep and far’ beyond the scope of our peer firms – Deep and Far can then equate the reality with its name.” Corporate INTL 37

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OFO VENTURA

Turkey

Ozlem Futman – Partner +90 (0) 212 219 67 33 ofutman@ofoventura.com.tr www.ofoventura.com.tr

OFO VENTURA is an intellectual property agency committed to providing its clients with the highest quality trademark, industrial design, patent, and copyright services available in Turkey. We specialize in registrations, oppositions, renewals, assignments, licenses, and all other administrative details. We zealously safeguard our clients’ rights and are fully experienced in all procedures relating to the Turkish Patent Institute. Our services also include consultancy in all areas of intellectual property, including licensing and copyrights. All of OFO VENTURA’s senior members of staff are highly educated, English-speaking professionals who are dedicated to serving the best interests of our clients. Our fees are consistent with our abilities and services. OFO VENTURA has a distinguished list of clients. Although respected Turkish companies are well represented in our portfolio, foreign clients constitute the bulk of our clientele. We service customers from all business sectors and all parts of the globe.

TRADEMARKS AND SERVICE MARKS - Search - Registration - Oppositions - Renewal - All kind of transactions before the Turkish Patent Institute after registration of a mark. - Cancellation actions. - Non-use cases

INDUSTRIAL DESIGNS - Registrations - Renewals - All kind of transactions before the Turkish Patent Institute after the registration of an industrial design - Cancellation

PATENT - Turkish patent applications - European Patent applications - PCT National phase applications - European Regional Phases of PCT applications - Validation in Turkey of European Patents - Opposition - Cancellations

ANTI-COUNTERFEITING LICENSING COPYRIGHT IP AUDIT CONSULTANCY ON TURKISH IP LAW 38 INTA


A 29 27 34 28 13 28

Adams & Adams Adedeji & Owotomo AFFA Intellectual Property Rights Ahmed AL-Rajhi Lawyers & Trademark Office Albagli Zaliasnik ALPHA & CO.IP

B 11 24 29 10 15 15 16 13

Birch, Stewart, Kolasch & Birch, LLP Bison River Limited Bouwers INC Brown Rudnick Bufete Casco Bufete Mejia & Asociados Bufete Soni Bustamante & Bustamante

C 35 Cita Citrawinda Noerhadi & Associates 33 Corporate Law Group 32 Cullens Patent and Trade Mark Attorneys

D 27 37 36 35 20 8 7

23 28 32 35

L 19 23 20 33

Law Firm Dupuy Manaud Lawton Brands LexDellmeier LexOrbis Intellectual Property Practice

M 20 14 10 8 16 17 34

Maiwald Patentanwalts GmbH Mayora & Mayora McAfee & Taft McConnell Valdes LLC Medina, Rosenthal & Fernandez Molina & Asociados Mulla & Mulla & Craigie Blunt & Caroe

N 17 Novopatent International Service

David Garrick Kayode & Co Deep & Far DK Choi & Partners DNC Advocates at Work Dr. Helen Papaconstantinou, John Filias & Associates Duane Morris LLP DunnCox

O 38 8 37 30

Ofo Ventura Ohlandt, Greeley, Ruggiero & Perle, L.L.P. Ortega, Del Castillo, Bacorro, Odulio, Calma & Carbonell Oussi Law Firm

P

E 29 Edward Nathan Sonnenbergs

F 14 Fernandez & Fernandez 7 Foga Daley

G

32 14 19 21 37

17

R

9 Hamilton Brook Smith Reynolds

S

H

I

P C WOO & Co. Palomo & Porras Papula-Nevinpat POLSERVICE Kancelaria Rzeczników Patentowych Sp. z o.o. PYPRUS PTE LTD

Q

Goodrich Riquelme Asociados Gorodissky & Partners Grant, Stewart, Phillips & Co GVTH Advocates

16 22 7 21

Kashish International Ltd (Serbia) Khalid Bin Saeed AL-Shahrani King & Wood Kusnandar & Co

10 13 30 9

Quiroz, Muñiz y Bolio, S.C.

R. Kundstadt PC – 10 Romero Raad Abogados – 13 Ron Wheeldon Attorneys – 30 Rothwell, Figg, Ernst & Manbeck, P.C. – 9

22 IN Eureka 22 (INNOTEC) Vakhnina and Partners 33 INTTL Advocare

19 36 30 9 21

J

U

27 Johnson Bryant

15 Umaña & Asociados 36 United Trademark & Patent Services

K 26 Kasher Law 26 Kashish International Ltd (Afghanistan) 26 Kashish International Ltd (Mauritius)

schmid-ip Shook Lin & Bok Spoor & Fisher Sterne Kessler Goldstein Fox Studio Legale SIB

Y 34 Y.J. Trivedi & Co. – 34 23 Young & Wassermann – 23

Corporate INTL 39

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CORPORATE INTL, CHARLES HOUSE, 148/149 GREAT CHARLES HOUSE, BIRMINGHAM, B3 3HT, UK WWW.CORP-INTL.COM | WWW.EMAG.CORP-INTL.COM

INTERNATIONAL TRADEMARK ASSOCIATION REPRESENTING TRADEMARK OWNERS SINCE 1878

COPYRIGHT © 2009 INTERNATIONAL TRADEMARK ASSOCIATION, 655 THIRD AVENUE, 10TH FLOOR, NEW YORK, NY 10017-5617 USA PHONE +1-212-642-1700 | FAX +1-212-768-7796 | WWW.INTA.ORG | INFO@INTA.ORG

INTA Cover_contents_intro.indd 1

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