Representing the international trademark community
In association with
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NORTH AMERICA & THE CARIBBEAN
CENTRAL & SOUTH AMERICA
AFRICA & THE MIDDLE EAST
ASIA & OCEANIA
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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.
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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Joanne E. Wood Rattray - Partner +14 876 922 1500 firstname.lastname@example.org 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.”
Dianne Daley Attorney-at-Law, Intellectual Property Partner +(876) 927 4371 email@example.com / firstname.lastname@example.org 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
Arturo Stewart - Partner +18 76-9261880 email@example.com 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
Antonio Escudero-Viera - Member +787 250 5625 firstname.lastname@example.org 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 email@example.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 firstname.lastname@example.org 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 email@example.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 firstname.lastname@example.org 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 email@example.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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USA - Massachusetts
Mark S. Leonardo - Partner +1 6 17-856-8145 firstname.lastname@example.org 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 email@example.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 firstname.lastname@example.org 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 email@example.com James M. Slattery Partner +1 703 205 8000 +1 703 205 8050 firstname.lastname@example.org 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
North America & Caribbean section.indd 6
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.
Central & South America section.indd 1
Rodrigo Albagli - Managing Partner Email: email@example.com 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
Danilo Romero Raad – Partner and Founder +571 3490155 firstname.lastname@example.org 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
Sebastián Donoso Bustamante Attorney at Law +593 2 2 562 680, extention 433 email@example.com 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
Central & South America section.indd 2
FERNANDEZ & FERNANDEZ
Carina Fernandez - Partner +502 2365 6933 firstname.lastname@example.org 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.
A.C. PALOMO & PORRAS
Eduardo Mayora Dawe Founder and Senior Partner PBX 2223-6868 email@example.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 firstname.lastname@example.org 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.
Central & South America section.indd 3
UMAÑA & ASOCIADOS
Cristina Umaña - Attorney and Notary, Junior Partner +502 23616657 502 23616697 email@example.com firstname.lastname@example.org 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.
Leonardo Casco-Fortin – Partner +504 237 6577 email@example.com www.cascomark.com
BUFETE MEJIA & ASOCIADOS
Ricardo Anibal Mejia M. – General Director IP Telephone (504) 25507744; (504) 25528615; (504) 25502624 Fax (504) 25500795; (504) 25528570 firstname.lastname@example.org 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: email@example.com / firstname.lastname@example.org 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
Central & South America section.indd 4
Medina, Rosenthal & Fernández CENTRAL LAW
Jesús Humberto Medina Alva, Presiding Partner T. +504 2550 2800, +504 2550 8873 F. +504-2550-2159 email@example.com www.abogados.hn
Mariano Soni - Managing Partner +52 55 21673252 firstname.lastname@example.org www.soni.mx
GOODRICH RIQUELME Y ASOCIADOS
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.
Central & South America section.indd 5
NOVOPATENT INTERNATIONAL SERVICE, S. C.
Hugo Rodriguez - Partner +52 7773106590 email@example.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.
Ulises Muñiz - Partner +5255 56165020 firstname.lastname@example.org 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
Alvaro Molina - Partner +505 2278 6045 email@example.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
Central & South America section.indd 6
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).
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.
Europe section.indd 1
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”
Riikka Palmos European Trademark Attorney +358 9 348 00 626 firstname.lastname@example.org 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
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
Europe section.indd 2
LEXDELLMEIER IP LAW FIRM
Alexandra Dellmeier-Beschorner Attorney at Law, Managing Partner +49 89 55 87 9 87 0 email@example.com www.lexdellmeier.com
MAIWALD PATENTANWALTS GMBH
Stephan N. Schneller Attorney-at-Law, Partner +49 89 747266-0 firstname.lastname@example.org 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
Dr Helen Papaconstantinou Senior Partner +30 210 3626624 email@example.com 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.
Europe section.indd 3
STUDIO LEGALE SIB
Pier Luigi Roncaglia – Managing Partner T +39.055263381 F +39.0552633800 firstname.lastname@example.org www.siblegal.com
Dr. Michael Grech – Head IP Department +356 2122 8888 email@example.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.
Anna Stopiska – Slefarska Member of the Board Head of Trademark Department Phone: + 48 22 44 74 600 Fax: + 48 22 44 74 646 firstname.lastname@example.org
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
Europe section.indd 4
GORODISSKY & PARTNERS
Valery Medvedev - Managing Partner + 7 495 937 6112 email@example.com 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
Victor A. Ezhevskiy Managing Partner and General Director + 7 495 650 68 66/ 495 629 79 32 firstname.lastname@example.org 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
Tatyana Vakhnina Managing Partner, Advocate Tel: +7-495-225-7545 Fax: +7-495-7376366 email@example.com 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.
Europe section.indd 5
YOUNG & WASSERMANN
Edouard Faizoullin - Trademark Attorney +7 (450) 646 0150 firstname.lastname@example.org www.ywllc.com
KASHISH INTERNATIONAL EUROPE D.O.O
Shishir Agarwal - Partner +230 4278661, 4260399 Serbia@kashishworld.com Europe@kashishworld.com email@example.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.
Olaf van Haperen - Attorney at Law +31 (0) 76 5490 590 firstname.lastname@example.org 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
Europe section.indd 6
Jeanette Wood, Director Partner Bison Rivers +44 1223 208 600 email@example.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
Europe section.indd 7
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.
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.
Corporate INTL 25
Africa & Middle East section.indd 1
Shishir Agarwal - Partner +230 4278661, 4260399 Afghanistan@kashishworld.com firstname.lastname@example.org email@example.com www.kashishworld.com
Shiri Kasher-Hitin - Advocate +972 77 6935457 firstname.lastname@example.org 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.
Shishir Agarwal - Partner +230 4278661, 4260399 email@example.com firstname.lastname@example.org email@example.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.
Africa & Middle East section.indd 2
ADEDEJI & OWOTOMO
Mr Ade A. Adedeji – Managing Partner +234 1 280 6569, +234 805 655 5999 firstname.lastname@example.org 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.
Olugboyega Kayode, Managing Partner +234 1 7361902 +234 1 7361989 email@example.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.
JOHNSON BRYANT Sym Otike-Odibi – Partner +234 1 7742298 firstname.lastname@example.org email@example.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
meetings; events and conferences. Corporate INTL 27
Africa & Middle East section.indd 3
ALPHA & CO.IP
Hussain Al Obaidly – Director Tel: 00974 - 44415275 Fax: 00974 - 44358232 firstname.lastname@example.org www.alphatmp.com
AHMED AL-RAJHI LAWYERS & TRADEMARK OFFICE
Mr. Abdul Aziz Al-Rajhi,Sr. +966 1 477 1888 email@example.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
Khalid ELshahrany +96612933777 firstname.lastname@example.org www.saudi-lawyer.net
Elfatih Elrashid +96612933777 email@example.com 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.
Africa & Middle East section.indd 4
ADAMS & ADAMS
Mariëtte du Plessis – Partner +27 12 432 6000 firstname.lastname@example.org email@example.com www.adamsadams.co.za
Mr. Deon Bouwer - Director +27 11 325 5530 firstname.lastname@example.org www.bouwers.co.za
Simon Brown - Partner +27 12 432 6000 SBB@adamsadams.co.za email@example.com 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.
Gaelyn Scott - Director +27 11 269 7669 firstname.lastname@example.org
Ilse du Plessis – Director +27 82 411 7547 email@example.com 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
Africa & Middle East section.indd 5
RON WHEELDON ATTORNEYS/BRANDSMAN
Ron Wheeldon – Founding Partner +11 646 66 66 firstname.lastname@example.org 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
Kay Rickelman - Foreign Counsel +27 12 676 1111 email@example.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
Gabriel Oussi +963 -11- 33500090/1 firstname.lastname@example.org email@example.com
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.
Africa & Middle East section.indd 6
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.
Corporate INTL 31
Asia & Oceania section.indd 1
CULLENS PATENT AND TRADE MARK ATTORNEYS
Gary Nock - Partner +61 7 3011 5555 firstname.lastname@example.org 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
Yang Xiaoli - Head of Trademark Department +86-10-58785588 email@example.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.
+852 2533 7715 firstname.lastname@example.org 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.
Asia & Oceania section.indd 2
CORPORATE LAW GROUP (CLG)
Ms. L.B. Rawat - Associate +91 11 4362 1000 email@example.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.
Prietika Siingh - Partner +91 9811845149 firstname.lastname@example.org 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.
LEX ORBIS IP PRACTICE
+91-11- 2371 6565 email@example.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
Asia & Oceania section.indd 3
MULLA & MULLA & CRAIGIE BLUNT & CAROE
Shardul Thacker - Partner +91 22 6634 5496 firstname.lastname@example.org
Y. J. TRIVEDI & CO.
Jatin Y. Trivedi - Partner +91 98250 14777 email@example.com www.yjtrivedi.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.”
Dr. Achmad Fatchy - Partner Telephone: (6221) 83793812, 83793816 Facsimile: (6221) 83791937, 83702732 firstname.lastname@example.org / email@example.com
Bindiya Raichura - Senior Associate +91 22 2262 3191 firstname.lastname@example.org Purnima Singh - Senior Associate +91 22 2262 3191 email@example.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).
Asia & Oceania section.indd 4
LAW OFFICE CITA CITRAWINDA NOERHADI & ASSOCIATES
Cita Citrawinda Noerhadi, Senior IP Consultant +(021) 835 4055 firstname.lastname@example.org 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
Ibrahim Senen - Partner Ibrahimemail@example.com Sigit Ardianto - Senior Associate Sigitfirstname.lastname@example.org +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.”
KUSNANDAR & CO Winita Kusnandar Arno F. Kwok Phone: (62 21) 5140 2020 (Hunting) Fax: (62 21) 5140 2021 email@example.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)
English, German, Mandarin, French Corporate INTL 35
Asia & Oceania section.indd 5
DK CHOI & PARTNERS
Dukkyu Choi - Patent Attorney +82-2-555-9474 firstname.lastname@example.org www.dkchoi.com
SHOOK LIN & BOK
Michael Soo – Partner 00603 2031 1788 email@example.com www.shooklin.com
UNITED TRADEMARK & PATENT SERVICES
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
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
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.”
Asia & Oceania section.indd 6
ORTEGA, DEL CASTILLO, BACORRO, ODULIO, CALMA & CARBONELL
Renato G. Calma – Partner +818-2321 to 25 & 810-43-90 firstname.lastname@example.org email@example.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
Constance Mah Head | Trademarks +65 6734 8523 firstname.lastname@example.org 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.”
DEEP & FAR C. F. Tsai, Managing Partner Deep & Far Attorneys-at-law +886 2 25856688 email@example.com 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
Asia & Oceania section.indd 7
Ozlem Futman – Partner +90 (0) 212 219 67 33 firstname.lastname@example.org 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
E 29 Edward Nathan Sonnenbergs
F 14 Fernandez & Fernandez 7 Foga Daley
32 14 19 21 37
9 Hamilton Brook Smith Reynolds
P C WOO & Co. Palomo & Porras Papula-Nevinpat POLSERVICE Kancelaria Rzeczników Patentowych Sp. z o.o. PYPRUS PTE LTD
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
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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INTERNATIONAL TRADEMARK ASSOCIATION REPRESENTING TRADEMARK OWNERS SINCE 1878
COPYRIGHT Â© 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
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