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The matter of ‘Prior Use by Gorodissky & Partners Trademark Infringement - The Nigerian Perspective by Stillwaters Law firm New Development against Bad Faith Applications in China by Unitalen Attorneys at law

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Border measures to ensure safeguarding of IP right by OMC Abogados & Consultores

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Is Zimbabwe a part of the global conversation on intellectual property rights? by B Matanga IP Anttorneys


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TRADEMARKS 2. Wide and long-term use has made consumers associate the brand with a particular company or features of the respective product/service; 3. The infringing brand is confusingly similar to the claimant’s brand;

The matter of

‘Prior Use’ The prior use of a designation does not provide any advantage in Russia, in terms of registration of this designation as a trademark.

This means that the prior use of a designation by one company (hereinafter – the brand user) does not preclude another company either from registering the said designation as a trademark nor from using the designation without having it registered as a trademark. However, if the prior use of a particular designation meets particular criteria, it can be relied on in order to challenge further registrations as well as to prohibit the use of same/similar designations by other companies. Furthermore, the said remedies lay in the area of the Competition law rather than the trademark law. If the brand user does not hold any trademark or IP right to its brand, the only option left is to appeal to the Competition Law.

In this paper, we consider two commonly encountered situations where it is possible to oust others from exploiting the brand by resorting to the Competition Law. The first one is where the prior use is claimed to prevent another company from using the brand. In such a situation the adverse company does not assert any IP right to the brand and defends its right to use the brand by alleging that it is not protected as a trademark or as a copyrighted item and, therefore, it is free for use by anyone.

Anton Melnikov, LL.M, Senior Lawyer, Gorodissky & Partners Russia

act of unfair completion and provides special remedies a company may rely on in both situations where it is necessary to enforce its rights to a brand not protected as a trademark or as a copyrighted item.

Prior use versus same/ similar designations not registered as a trademark. We will consider one of the recent cases decided by the Russian Federal Antimonopoly Service (hereinafter – FAS) and later affirmed by courts. The circumstances of the case are as follows. Kikkoman Corporation (hereinafter – Kikkoman), a Japanese company, initiated an unfair competition case against TD SANBONSAI LLC (hereinafter SANBONSAI), a Russian company, claiming that SANBONSAI’s copying Kikkoman’s original bottle of 150 ml. amounted to an act of unfair competition. The design of the said bottle was originally created by the famous Japanese designer Kenji Ekuan in 1961. Further, the IP rights to the design were assigned to Kikkoman which widely used this bottle around the world as well as on the Russian market for a long time.

The adverse party’s bad faith in using the brand consists of exploiting well-known and recognisable among consumers brand to get extra profit without investing significant funds and time into the promotion of its own brand. The second situation differs from the first one in the fact that the adverse company asserts the rights to the brand in bad faith. Such a situation may happen when the adverse party registers the designation as a trademark, which was already present on the market and used by one or many companies.

It is a crucial fact that Kikkoman Corporation did not have any effective IP rights to the said bottle design in Russia which could be relied on in lawsuits against the infringer: the design was not registered as a trademark nor as an industrial design; it was not protected by copyright either. TD SANBONSAI LLC used the Kikkoman bottle for the same product on the Russian market. The Russian distributor of Kikkoman Corporation – Mistral Trading LLC got aware of the use of the Kikkoman bottle by SANBONSAI in Russia in several cities, brought charges claiming unfair competition and won the case before FAS (2015 -2016) by proving unfair competition on the side of SANBONSAI. The principal issue of such cases is of what criteria should the prior use meet to support unfair competition charges and get such companies like SANBONSAI prohibited from further using other’s brands in bad faith. FAS applied the provisions of the Competition Law, in particular, Paragraph 2 of Article 14.6 states that: “unfair competition by an economic entity actions (inactions) that could create confusion with activities of an economic entity-competitor or the goods or services put on the market by the economic entitycompetitor is prohibited, including copying or imitating appearance of the goods put on the market by a competitor, goods packaging, label, name, color range, the brand style in general (in the totality of branded clothing, salesroom, shopwindow dressing) or other elements individualizing the competitor and (or) its goods”. By the Decision on the Kikkoman case (№ 08/90596/16 dated December 27, 2016) FAS found the Defendant liable of violation

In Russia…

In Russia, the Competition Law extends to any


4. The adverse company does not have any legal grounds for using a similar brand/design (such as trademarks, copyright);

of the Competition Law since its bottle design was confusingly similar to Kikkoman’s bottle, originally created by the famous Japanese designer. In particular, in its Decision FAS stated that: “Having assessed the entire evidence available on the case file, the FAS Commission comes to the conclusion that the actions of Trading House “SanBonsai” related to marketing the soy sauce in 150 ml packages (containers), which are similar to the design of bottles of “KIKKOMAN” soy sauce in their appearance (design), may lead to confusion in the soy sauces market in the Russian Federation, are aimed at obtaining advantages in carrying out the business and may cause losses to the Claimant”. FAS also held that the Defendant’s actions constitute an act of unfair competition because: 1.Marketing the infringing bottle which is confusingly similar to the Kikkoman bottle may mislead consumers regarding the features of the goods; 2.The said circumstances evidence that the actions of SANBONSAI may indeed cause losses to Kikkoman because confusion in the market may result in shrinking consumers’ demand for the original sauce. It is worth noting that the fact that the Kikkoman product and its unique shape were well-known among Russian consumers and professionals significantly helped to plead the case before FAS. In addition to the Competition Law, FAS also quoted Article 10bis of the Paris Convention for the Protection of Industrial Property, prohibiting “any competition act violating fair customs in industrial and trade matters”. As a result, FAS ordered SANBONSAI to stop marketing the infringing bottle and imposed fines on SANBONSAI and its CEO. The FAS decision (№ 08/90596/16 dated December 27, 2016) on Kikkoman case was affirmed by the Moscow Commercial Court (case № А40-21129/2017) as well as by the 9th Court of Appeals. Therefore, prior use can be relied on against the bad faith use of one’s brand if the following circumstances are proven: 1. The claimant has widely used the brand in question for a long time on the Russian market;

5. The adverse company uses a similar brand/design in bad faith as such use may mislead consumers regarding the manufacturer/features of goods.

Prior use versus a registered trademark

The second situation may take place when an infringer registers the brand as a trademark which has been previously used on the market by one or many companies for a long time. In such a case, the prior use may also play a significant role in challenging the registered trademark.

The case was considered by the Office of FAS (hereinafter – OFAS) in the Lipetsk region. OFAS agreed with HOLMER Maschinenbau GmbH and held Holmer Rus LLC responsible for unfair competition. OFAS’ decision was also affirmed by the Commercial Court of the Lipetsk region (court case number А3610122/2017), Court of Appeals and Court of Cassations. The court practice on similar cases has elaborated criteria on when the prior use can be relied on in cases against a trademark registered in violation of the Competition Law: 1. The claimant has used the brand/ designation in question for a long time on the Russian market before the priority date of the litigious trademark; 2. The trademark in question is confusingly similar to the claimant’s brand/designation; 3. The litigious trademark was registered/ used to oust competitors from the market; OFAS’ decision holding Holmer Rus liable in committing an act of unfair competition constituted the legal ground for Rospatent to annul the registration of the litigious trademark.

This situation differs from the first one in that the prior use is claimed against the registered trademark rather than against the bad faith use of another’s brand. Therefore, the adverse party acting in bad faith can rely on the registered trademark in a dispute with the brand user. Similarly to the first case, here the brand user needs to rely on the Competition Law and claim unfair competition associated with the registration/use of the trademark. Article 14.4 of the Competition Law prohibits unfair competition associated with acquiring the rights, among others, to trademarks. Article 1512 of the Russian Civil Code establishes that a trademark can be canceled in case the antimonopoly authorities hold that registration of the trademark was made in violation of the Competition Law. FAS occasionally delivers its decisions on similar cases, one of which we consider here. The circumstances of the second case are to some extent similar to the first one and differ in that the adverse company registered the brand as a trademark in its name and relied on it in the dispute with the brand user. HOLMER Maschinenbau GmbH (hereinafter – HOLMER GmbH) has imported into Russia HOLMER designated agricultural machinery since 2002. Holmer Rus LLC (hereinafter – Holmer Rus), a Russian company, has registered various HOLMER trademarks in its name. HOLMER GmbH initiated an administrative case against Holmer Rus claiming that the registration of HOLMER trademarks was made in violation of the Competition Law. Likewise, the brand user, HOLMER GmbH, did not have any effective IP right to the said brand in Russia which could be relied on against the HOLMER trademarks registered by Holmer Rus.

To conclude…

In conclusion, it is worth noting that the prior use does really matter when a brand user needs to protect its brands not enjoying protection as a trademark or copyrighted item. At the same time as the remedies in question lie in the area of the Competition Law, the claimant should prove unfair competition to protect its brand by means of the Competition Law that requires extra proofs/efforts in comparison with the enforcement of trademark rights.

Either way, it is recommendable that the business should register its trademarks in advance rather than fight against the unfair competition which results in wastage of time and money. 7


London 2 0 19

TRADEMARKS INFRINGEMENT: The Nigerian Perspective 2019 AIPPI World Congress – London

Mr. Afamefuna Nwokedi Principal Counsel of Stillwaters Law Firm

September 15 - 18, 2019


has progressed to be a global leader in arts, commerce, entertainment, tourism and development. In recent years London has pushed to become one of the most innovative and business driven nations in the world, which is why we find it a suitable location to debate the latest topics of IP. Whether you are visiting for the first time or returning once more, you will discover a city full of unforgettable landmarks, exciting things to do and extraordinary cuisine around every corner. Take advantage of the Early Bird discount, register by June 12 to secure a reduced registration rate. We look forward to seeing you in London, September 2019. The programme boasts a vast range of topics covering the entire field of intellectual property: PHARMA DAY


• Wait! Pay for delay

Lunch Sessions 1

• Patent Linkage: an international perspective • Hot and hostile: recent developments in SPCs and patent term extensions • Antibodies and epitope/competitive claims PANEL SESSIONS • The art of IP – museums & architecture • In-house perspectives on IP enforcement

• An update from USPTO Director Andrei Iancu Lunch Sessions 2 • It’s natural … or is it? Greenwashing fashion Lunch Sessions 3 • Africa and innovation

• Describe your best defense: trade mark infringement or not? • Protecting trade secrets in the EU – new and improved?


• A platform for discussion: liability & safe harbour

• Copyright in artificially generated works

• Forming portfolios for FRAND licensing: who decides? • Keep your hands off my brands • Patents and Artificial Intelligence: what’s next? • BREXIT & IP: an update

• Consumer survey evidence • IP damages for acts other than sales • Plausibiltiy

• Seize the day – customs & border control • Right on the money – IP & finance • Post-grant amendments: flexibility or certainty? • Designs on trial • Hot Topics

More information on

Intellectual property and commerce are topics which are needless to say, inextricably linked and in the course of initiating and operating a commercial enterprise, there arises the need for safeguarding the intellectual and industrial values of the business as well as ensuring non-violation of the corresponding right of others. The importance of intellectual property practice and its consequent rights/interests have gained rapid recognition in Nigeria within the last two decades. Like any importing country for almost everything, especially pharmaceuticals, electronics and most retail consumables, the potential to make quick gains in copying is on the high side and this, unfortunately, translates to infringement, dilution, counterfeiting or piracy. That Nigeria has had a fair share of these can be put into perspective when one considers its population, market share and paradoxically, the ingenuity of its people. In Nigeria, trademark infringement can generate two causes of action, civil and/or criminal. Various laws have been enacted to protect intellectual property (IP) rights in Nigeria and the courts have adopted internationally acclaimed standards in interpreting these laws. In Bells Sons & Co. V. Godwin Aka & Anor (1917-1976) 1 I.P.L.R., the Supreme Court of Nigeria court posited that: “….the law of trademarks is aimed at the subtle as well as the obvious infraction of it and both the ears and eyes must be together involved in the exercise”. Studies show that within the realm of trademarks, outright boldface infringement

is the most common infraction and as per the Supreme Court in A. B. Chami v. W. J. Bush & Co. Ltd (1990 -1997) 3 I. P. L. R., “…right shall be deemed to be infringed by any person who not being the proprietor of the Trademark or a registered user, thereof, using it by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of Trade, in relation to any goods in respect of which it is registered.” See also Section 5(2) of the Trade Marks Act (TMA). While the Act is explicit on infringement, however, for a trademark to be protected under the Act, it must be registered and recorded in the trademark register. In Ferodo Ltd & Anor v. Ibeto Ind. Ltd (2003 – 2007) 5 I.P.L.R., the apex Court asserted that: “… A trademark if registered gives the proprietor the exclusive right to use the Trademark in the marketing or selling his goods. And without his consent, if anyone else uses an identical Mark ora Mark so nearly resembling it as to be likely to deceive or cause confusion, will entitle the proprietor to sue for infringement of the trademark…”

that the “certificate is not to be used in legal proceedings”. However, the decision of the court in Crysterlight Overseas v. Yugolex Drugs & Anor (1997-2003) 4 I.P.L.R., where judgement was given against a Plaintiff, who failed to tender the registration certificate of its trademark in evidence to prove its claim for infringement no doubt throws in a secondary requirement of the actual sighting of the certificate by the court. In deciding when a mark is said to be identical, confusingly similar or so nearly resembles, the courts have held in British American Tobacco & Anor V. Int’l Tobacco & 2 Ors (2003 – 2007) 5 I.P.L.R., that: “…in the exercise of comparison, it is wrong to take the two Trademarks side by side to determine whether they are identical or some close resemblance exists. The issue is whether the person who sees or has seen the proposed Trademark will confuse it with the existing Trademark, as to create confusion and be deceived that the proposed Trademark is the same as the existing one.”

More importantly, is the need to tender evidence of registration by way of an Extract of Records issued by the Registrar of Trademarks. According to the Act, this is what is required to prove registration and not the certificate of registration per se. This requirement is evidentially fortified by the written expression on the face of the certificate, which specifically states


The marks alone must be considered, divorced from associated features or get up and the like. Evidence is, however, admissible to show which of the features shown in the Register of Trademarks are essential and which are inessential so as to be unimportant in deciding questions of infringement. Re. Ferodo Case.

Two peculiar reasons attest to the high propensity of infringements in Nigeria. The first is the widespread and prevailing misconception that the “Letter of Acceptance” issued by the Registrar constitutes registration, and the second is the inexplicably unwilling desires by some proprietors to pursue potential infringement matters outside Nigeria’s most populous and major commercial city, Lagos. Perhaps I should add a third factor often explained off as “clients’ strategic interest”. Under this nomenclature, some proprietors, especially with the not-so established brands, are mindful of exposing their products to the fireworks of litigation, whether infringement and more especially counterfeiting. The perception here is that a major crackdown will leave the public with a perception of uncertainty. There is another layer of secondary reasons such as non-use and the vulnerabilities arising from the physical expanse of the country. Available reliefs and remedies in an infringement action include injunction, damages, delivery up for destruction and accounts of profit. Predetermination reliefs such as interim (Anton Piller Order) and interlocutory injunctions are also available.

However, with the coming into operation of the not so recent Federal High Court Civil Procedure Rules, the situation has been greatly moderated. Quite apart from the fact that the courts rightly view the order as an intense discovery process, the Rules provide that it lapses after 14days, whether executed or not. Looking at Nigeria, one very interesting discovery is that most actions from which infringement arise embody passing-off and in some major ways counterfeiting. From our perspective in the office, this throws up quite a few potentially damaging (for the infringer) options outside the scope of the accessible criminal action that the Merchandise Marks Act (MMA) offers. For while sections 4 of the MMA provides that: Any person shall be deemed to forge a trademark who either(a) Without the assent of the proprietor of the trademark makes that trademark or a mark so nearly resembling that trademark as to be calculated to deceive; or (b) Falsifies any genuine trade mark, whether by alteration, addition, effacement, or otherwise, and any trademark or mark so made or falsified is in this Act to be as a forged trademark. Beyond the scope of the above-stated section, is the wider reach and benefit that the counterfeiting angle brings to bear when regulatory bodies such as Standards Organisation of Nigeria (SON), and National Agency for Food and Drug Administration and Control (NAFDAC) are involved in the counterfeiting side of the argument.

In the past, there was a proliferation of the issuance of Anton Piller orders by the trial courts. Anton Piller is a search, cease and warehouse order that can be given by the court to avoid the disposal and destruction of material evidence. Under the old dispensation, the order was given on an interim basis, lasting until a subsequent hearing on the interlocutory application is taken. The hearing could then take months with the partially satisfied aggrieved claimant puffing and trotting for securing a major debilitating blow on the operations of the infringer.


The involvement of these agencies of government assuages the tedious and arduous challenge of getting the Police through the office of the Director of Public Prosecution to undertake criminal prosecution of an infringer or indeed a counterfeiter. This difficulty is accentuated by the prevailing perception that infringement and any cause of action arising therefrom is a private right and public funds should not be utilised for the protection of private commercial gains. The backup by these agencies comes in handy, especially where multiple entities are committing the infraction. Needless to say, obtaining a fiat from the Attorney General to prosecute is a tall order.

To conclude

I am of the opinion that a claimant should be allowed to pursue criminal prosecution of a counterfeiting act in the same action as an infringement action; albeit in the light of the criminal nature of counterfeiting, the evidence required to prove the same must be beyond reasonable doubt as provided under Section 135-137 of the Evidence Act, 2011. That this will involve private prosecution of criminal matters is not in doubt, to avoid abuse of the process, where the Attorney General is of the considered opinion that grounds of prosecution does warrant such he may join the proceedings at any stage and exercise his powers through the use of “Nolle Prosequi” to extinguish the criminal aspect of the action. Interestingly, the trial courts are vested with both civil and criminal jurisdictions as per the court’s decision in Amiwero v. A.G of the Federation (2015) 15 NWLR (Pt.1482) pg.390. The possible end result of this will be a win-win situation for both the state and the aggrieved proprietor. For the state, public funds will be saved in having the private prosecution of criminal matters arising from civil action. Commencement of infringement action requires a thorough due diligence on the infringer and the collation of information such as, address of operation, branches, factory, importers, storage sites- such as warehouses, distributors, bankers, etc., this would assist the court in evaluating evidence during trial, see Holdent International Limited v. Petersville Nigeria Limited (2013) LPELR-21474. More often than not, these are all done in very discreet manner through the use of Private Investigators (PIs) bearing in mind that the Client is faced with a Catch 22 situation of trying to maintain a balance between low profile publicity on the infringement or counterfeiting and at the same time sending out a message to other potential infringers or counterfeiters that the client is resolute in protecting its rights.

Regardless of the challenges that extant laws and bureaucracy may pose, it is important to note that time, due diligence, planning, and a good strategy are of major essence in undertaking any contentious action.

New Development against Bad Faith

Applications in China Background

In recent years, with the in-depth implementation of the trademark and brand strategy plus the continuous promotion of the reform of trademark registration facilitation, the number of trademark applications in China has been growing continuously. As a result, the title of the top ranking on new trademark applications in the world has been maintained by China for many years in a row. In 2018, 7.3895 million trademark applications were unbelievably filed nationwide with an increase of 1.416 million over 2017 and a growth rate of 23.72 percent. However, among the big filing numbers, some trademark applications filed by small numbers of applicants obviously exceed the real needs of normal operation. In addition, these small numbers of applicants do not hoard a large number of trademarks for the purpose of use, which hinders other brand owners with normal operation needs in China from applying for their trademark applications. Also what is more serious is that they are willing to transfer the hoarded trademarks to real brand owners at a very high price to obtain illegitimate interests.


Mr. Lei Zhao - Senoir Partner at Unitalen Malicious hoarding of trademarks disturbs the market order of fair competition and the order of trademark registration management and also wastes administrative and judicial resources. These kind of “abnormal” trademark applications are the target which the trademark administrative authorities attack emphatically. Facing the hoarding trademarks in bad faith and other “abnormal” trademark application acts, the Chinese Trademark Office and the Trademark Review and Adjudication Board of the China National Intellectual Property Administration of the trademark, and the people’s courts have taken many different measures, such as a review in advance even from the filing stage and an incorporate review to apply the law strictly. These measures effectively curb the behavior of hoarding trademarks in bad faith, such as possession of public resources without legal reason and new trademark applications repeatedly filed by trademark squatters. It also plays a positive role to maintain the market order of fair competition and promote the market main body to use the brand strategy and achieve innovation and development.


Recently, a judgment on trademark hoarding has attracted wide attention in China among the intellectual property owners. Wuhan Zhongjun Campus Service co., LTD. (hereinafter referred to as Wuhan Zhongjun) applied for a retrial before the China Supreme People’s Court because it was dissatisfied with the invalidation decision of

its trademark registration for “shining silver” in Chinese character No. 13675000. In the end, the Supreme People’s Court made an administrative and final ruling which is not in favor of Wuhan Zhongjun. The supreme people’s court pointed out in the retrial ruling: if the trademark applicant violates the provisions of article 4 of the trademark law, has no real purpose of use, and hoarded a large number of trademarks without justifiable reasons for seeking improper interests, it may be deemed to belong to the ‘other improper means’ stipulated in the first paragraph of article 44 of the trademark law.

What did this enterprise do in the past? Why was it finally considered by the Supreme People’s Court that it registered and hoarded a large number of trademarks for seeking improper interests, not based on its normal production and business activities? According to the search on the official website of the Chinese Trademark Office, Wuhan Zhongjun has applied for a total of 934 trademarks including the the dispute mark “shining silver”, word mark for “Five eight”, “Zhifubao shining silver” and “Huixin shining silver” in Chinese characters, which obviously belong to other Chinese brand owners, on a variety of goods and services. Actually, “Five Eight” is one of the most famous internet service providers in China, “Zhifubao” in Chinese character means Alipay which belong to Alibaba Group and “Huixin” in Chinese Character looks quite similar to Wechat in Chinese character. Furthermore, it was even worse that Wuhan Zhongjun was publicly selling the trademark on the Internet. It is impossible to put into use nearly a thousand trademarks. After inquiring the major trademark sales websites in China, it can be found that some trademarks of Wuhan Zhongjun are listed on the trademark websites for sale. In addition, according to the communication between a newspapers reporter and the agent of those websites, some trademarks can be sold for as much as 60,000 RMB each at least.


According to the investigation of the Court, the telephone communication between Wuhan Zhongjun and the agent of Shining Silver also made it clear that the trademark application for disputed trademark was made for profit only through trademark transfer, rather than its own use. Wuhan Zhongjun has the sole purpose of a large number of registered trademarks, which is to seek improper interests through high transfer fees of trademarks. Small series of search also further indicated that nearly 40 trademarks of Wuhan Zhongjun are currently pending in the transfer procedure, not even including the previously approved transfer. Of course, we do not know how much they have got for this illegal business, but overall trademark transfer profit is very rich to Wuhan Zhongjun. After the retrial, the Supreme People’s Court held that the trademark registration of Wuhan Zhongjun was not based on the needs of its normal production and business activities, but for the purpose of hoarding a large number of trademarks and seeking for improper interests, which constituted the situation of “obtaining registration by other improper means” stipulated in the first paragraph of article 44 of the current Trademark Law of China.


Apart from applying for a large number of trademarks for the purpose of making a profit, “other improper means” of hoarding trademarks also includes that: 1. A large number of trademark applications imitate others famous or well-known trademarks; 2. A large number of trademark applications imitate other famous personal names, copyright, and other prior rights; 3. A large number of trademark applications improperly occupy public resources; 4. Beyond the use requirements, a large number of trademark registrations imitate place names, jargon, and other public resources. For example, Shanghai Junchang Information Technology co., Ltd. and its affiliated companies have applied for nearly 5,000 registrations for place names below the county level. The Chinese Trademark Office rejected the application for trademark registration on the basis that it had the intention of unjustly occupying public resources, disturbing the normal order of trademark registration and easily causing adverse social effects. In another case, Guangzhou 43999 Information Technology co., Ltd. applied for

more than 9,000 trademarks, among which 210 were opposed by different right holders. The Trademark Office combined 39 trademark oppositions together to consolidate with different cases and speed up the procedure. Also, Shanghai Wuyue Information Technology co., Ltd. applied for more than 500 trademark registrations, among which 77 were opposed by different right holders, and the Chinese Trademark Office dealt with 13 of them together...In these cases, the Chinese Trademark Office held that related enterprises apply for a large number of trademark registrations and it is contrary to the principle of good faith, disrupting the normal order of trademark registration management, trademarks filed by these enterprises shall not be registered.

Next steps

According to current trademark regulations, guidelines in China, there is a limit to identify and take actions against bad faith applications during the substantial examination stage. To eventually solve the problem of bad faith applications, China is considering amending Trademark Law again and adopting the common law system to emphasise the idea of intent to use. It has already been suggested that when the applicants file new trademark applications, they shall also submit a declaration in which to indicate where the relevant trademarks have been used or will be used and also include related pieces of evidence furthermore the Chinese Trademark Office shall examine the relatedness between the business scope of the business license of applicants and goods or services covered by trademark applications.




INTELLECTUAL RIGHTS Intellectual Property enforcement and border measures are vital to detect those foreign trade operations in which the rights of intellectual property are violated. Generally, well-known trademarks are those which have such a great reputation that, upon registration pursuant to local law (and regardless of the country or class), they are officially recognised for protection and distinction worldwide.

Improvements in Border Measures for IP Rights

Public authorities and members of the private sector have assumed the great challenge of ensuring the recognition of Intellectual Property Rights by improving the IP legal framework in Andean countries. There is an obligation of members of the Andean Community to introduce border measures for the protection of intellectual property rights. Specifically, for Peru, and as part of the enforcement of the Trade Promotion Agreement entered between Peru and The United States in 2008, the Legislative Decree number 1092, and its regulation (Supreme Decree No. 003-2009) entered into force on the 1st of February 2009, approving border measures for the protection of copyrights or


Dr. Oscar Mago - founding partner and CEO of OMC Abogados & Consultores related rights and trademark rights, including well-known trademarks. The precautionary measures available to enforce well-known trademarks in Peru are immobilization, seizure or withholding of the merchandise. Such border control measures can be initiated by a citizen, a legal entity or the customs administration. Peruvian customs are able to perform spontaneous inspections of goods if they have reasonable grounds that are counterfeited or pirated and cannot be held liable for any damage to inspected goods. When requesting protection at the borders, the petitioner will be required by the customs administration to deposit a bond to cover possible losses or damages caused to the importer, exporter, and/ or consignee of the goods resulting from any suspension of the release of non-infringement goods. This bond must be a sum equivalent to 20% of Free on Board (FOB) value of the goods. In the case of perishable goods, the guarantee shall be constituted by 100% of the FOB value of it. Merchandise under US$ 200 FOB value will not be affected. In order to verify the ownership of the relevant goods and for them to clear customs, trademark owners (directly or through their legal representatives or agents) must be registered in an official database kept by the customs administration, who will liaise with the Peruvian Trademark Office (INDECOPI) for the purpose of registering rights holders.

There is a recent case of the mark ANGRY BIRD, which is a well-known trademark owned by the firm ROVIO ENTERTAINMENT LTD. Due to the success of this mark and its products and services involved, many persons are trying to introduce and sell counterfeited products bearing this mark in Peru. The number of goods entering the Peruvian market is so big, that the owner is constantly summoned to appear before the Judiciary. Also, police and judicial notifications are received to confirm the trial initiated ex-officio by the Public attorney. As most products are made abroad and imported into our country, it is not possible to find the factory or source of these knock-offs that infringe the owners IP rights; consequently, the only way to stop these infringements is through Peruvian customs, which, subsequently, is doing an excellent job! The process seeks to be brief. If the accused has been caught in the infringement act, or has confessed the commission of the infringement, or the elements of conviction are sufficient and evident, the Public Ministry starts the criminal process and promotes the application of the principle of opportunity (Principio de oportunidad) which has the intention to reach an agreement between both parties to compensate for damages and losses that have been incurred. Another requirement to apply for this principle is when the damage caused does not have a significant impact on consumers and the penalty to be imposed is minimal.

These border measures are very important to avoid that third parties exploit the prestige of the well-known trademark, with low-quality products and also for consumer protection.



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Focus: Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition Licensing, Counseling, Litigation, Transaction Territories: Taiwan, Mainland China, Hong Kong, and Macau Fields: Mechanics, Chemistry, Pharmacy, Biology, Electronics, Optics, Telecommunications, and Computer Sciences  Address: 13th Floor, 27, Sec. 3, Chung San N. Road, Taipei, Taiwan  Telephone: 886-2-25856688  Fax: 886-2-25989900/25978989  E-mail:  Web site:

Ms. Brenda Matanga Managing partner at B Matanga IP Attorneys for Africa As the rest of the world commemorated World Intellectual Property Day on the 26th of April, as an ordinary Zimbabwean citizen I pondered on the relevance of this day to the country. It was in this quandary that it occurred to me that there was every reason to celebrate some of the country’s achievements with the rest of the world. There are some significant strides which are worthy of celebration. Firstly, the mere reason that Zimbabwe has recognised intellectual property rights as a constitutional right, in the new constitution is reason enough for celebration. Section 71 of the bill of rights under property rights provides thus;

“Subject to Section 72, every person has the right, in any part of Zimbabwe, to acquire, hold, occupy, use, transfer, hypothecate, lease or dispose of all forms of property, either individually or in association with others.”





Literally interpreting this provision, intellectual property fits into this category as it says “all forms” of property. In addition to that, the constitution further accommodates this type of property in its definition of property being “property of any description and any right or interest in property”.






Our celebration, however, would have been more elaborate if this right had been clearly provided for without having to deeply engage our legal minds. A more apparent clause which leaves no doubt to an ordinary person that this right is included in the bill of rights would have been more preferable. Some countries such as the United States of America have clearly embedded an independent Clause in Article 1, Section 8, and Clause 8 of their Constitution recognising this right. The Congress under that provision is granted the powers to promote the progress of science and useful arts by providing inventors the limited but exclusive right to their discoveries. Be that as it may, Zimbabwe is part of the global conversation as it has publicly embraced intellectual property by becoming a party to the international legal instruments that govern intellectual property. Like many other countries, it is a member of the World Intellectual Property Organisation (WIPO) through the WIPO Convention of 1967. This is the constituent instrument of the specialised agency of the United Nations. WIPO’s objective is to promote the protection of intellectual property worldwide and to ensure cooperation among the intellectual property unions established by the treaties that WIPO administers. Zimbabwe has been a party to the following; Paris Convention (Industrial Property), since April 1980, Berne Convention (Literary and Artistic Works), since April 1980, Patent Corporation Treaty (PCT) (Patents), since June 1997. Zimbabwe is, therefore, a part of these globally recognised legal rights. As a major milestone, Zimbabwe is a member and signatory to the World Trade Organisation’s (WTO) celebrated Trade-Related Aspects of Intellectual Property Rights known as (TRIPS Agreement) which sets out the basic minimum standards regarding the protection of intellectual property. Unlike many other countries, Zimbabwe has gone a step further and has incorporated these minimum standards in its legislation. As a country, it has the necessary intellectual laws in place which are TRIPS compliant. To this alone, we celebrate.

A notable development is its recent inclusion in the international trademark filing system community, as a member of the Madrid Protocol. Through The General Laws Amendment Act, the protocol was domesticated by amending the Trade Marks Act (Chapter 26:04 and incorporating the protocol in the Trade-marks Act. A mark registered under this protocol is accorded the same protection as a trademark registered directly in Zimbabwe. Regionally, Zimbabwe is a member and signatory to the African Regional Intellectual Property Organisation (ARIPO)’s protocols: - The Lusaka Agreement which establishes the organisation, the Harare Protocol on the protection of patents, and industrial designs together with the Banjul Protocol which governs the protection of trademarks amongst the member countries. Zimbabwe is privileged that this regional office is housed in Harare and can be directly accessed by Zimbabwean citizens. It’s also worth noting that Zimbabwe has a fully-fledged office (Zimbabwe Intellectual Property Office-(ZIPO) that is responsible for the grant and administration of intellectual property rights in the country. One can indeed protect their intellectual property interests in Zimbabwe. The country has institutionalised IP and has come up with an IP policy and implementation strategy to intentionally develop its IP. Though in its infancy, this blueprint is certainly an essential guide in a country that exudes seriousness in promoting innovation and IP creation. To note the importance of IP enforcement to the country, there is a special court (IP Tribunal) that has been created through an Act of Parliament to specifically handle IP matters. A pool of judges well versed in the area is starting to develop and lawyers who practice in this area of the law exist. All that Zimbabwe needs to do is build its jurisprudence in this area of the law and expose more of the local IP holders to this global conversation so that they become more proactive in protecting these legal rights. Otherwise, this Southern African country is not doing too badly at all!



Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has established itself on rich tradition and the highest professional principles. Julius and Creasy’s wealth of expertise and experience in a wide range of specialized fields of Law enables it to offer innovative legal and business solutions to a diverse, sophisticated and high profile clientele.

Scope of the law on trade secrets/ undisclosed

information in Sri Lanka

Our firm from its inception has been involved in intellectual property work. We are presently handling over 50,000 files of which about 15,000 are current and intellectual property involves both contentious and non-contentious matters. We file a large number of trademark applications for overseas clients being instructed by our associates in several countries Today, UK, tradeEuropean secrets are among the , India, Ms.Singapore, Anomi Wanigasekera, & Head of Intellectual including Union, USA Hongkong,Partner Australia , New Zealand, Property & Ms. most important properties businesses Navindi Naotunna, Associate at julius & Creasy Japan and Korea. own. World Intellectual Property Organization (WIPO) has defined In trade contentious we confidential represent clients both at the National Intellectual Property Office in secretsmatters as “any opposition proceedingswhich andprovides in infringement proceedings before Courts, Infringement business information proceedings are ainstituted in edge”. the Commercial High Court and where necessary criminal an enterprise competitive proceedings are also instituted in the Secret formulas, processes, andMagistrate’s Court. methods used in production are among our thepractice information Although is to a protected great extent trademarks we have substantial portfolio of patents as as trade secrets. A trade secretisisrelated to PCT applications filed in Sri Lanka, We also file well. A large part of this portfolio proprietary knowledge and it up to number of design applicationsisfor overseas clients in Sri Lanka and for Sri Lankan clients the holder to protect that knowledge. overseas through our associates in various countries. We also advise Sri Lankan and overseas For example, the Coca-Cola recipe companies on copy issues are including reviewing of copyright agreements and advise and Google’s searchright algorithm publishers both in Sri Lanka and overseas. the world’s most famous trade secrets Trade secrets are difficult to maintain over a period of time. Secrecy does not stop anyone Ms.elseAnomi Wanigasekera, from inventing the sameholder productoforLL.M (Wales) and Diplomas in Intellectual Property Law, process independently and exploiting International Trade Law, Banking anditInsurance Law of Institute of Advanced Legal Studies of the commercially. It does not give the holder Incorporated Council Employers of Legal Education heads the Intellectual Property Division of our firm. Ms exclusive rights. become Sandamali Kottachchi, holder of LL.B (Colombo), Master of Arts – International Relations , vulnerable when employees with trade secret knowledge leave employment. They Diploma in Forensic Medicine & Science and Diploma in Computer System Design is a senior should ask employees to provide a written 160(9) professional stipulates that the protection granted practices. The Act specifically recognises professional associate in the Firm’s Intellectual Property Division and there are 8 other undertaking that they will not compete with disclosure, acquisition or use by others of under unfair competition is in addition to the associates attached to the Intellectual Property Division. the employer’s business when they leave, in secret information without the consent of the common law rights. addition to signing a confidentiality agreement. person lawfully control of that information to However, these undertakings must be drafted constitute an act of unfair competition (s160 carefully as to not to restrictTel.94 the employee’s 11 4335159 Fax: 24466with 663, the +94TRIPS 11 2435requirements 451 (6)). 94 In 11 keeping right to earn a living. Email:; s160 (6) (c) of the Act requires “undisclosed A typical case for breach of contract involves the Internet:information” to be accessible to persons disclosure of secret information by an employee within the circles, the information must have who rightly obtains secret information during commercial value because of its secret nature the course of his employment but afterward The TRIPS Agreement was the first and must be the subject of reasonable effort uses it to use for his own advantage. international agreement to protect trade on the part of the right holder to maintain its secrets expressly (Article 39). In Sri Lanka, secrecy. The unlawful disclosure, acquisition or In Diesel and Motor Engineering PLC v, no formal definition of a trade secret exists use of the undisclosed information may result Chathura Milinda Wickremasinghe and and there is no restriction as to the type of from through breach of contract or breach Buddika Malinda Kuruklasooriya (HC/ Civil/ information that can constitute a trade secret. of confidence. The provisions relating to an 31/ 2017/ IP) Ruwan Fernando J summarized The protection of trade secrets forms part of unfair competition are applicable in Sri Lanka the trade secret law in Sri Lanka. In this case, the general concept of protection against unfair independently and in addition to the other both the Defendants were involved with competition. The law relating to protection provisions of the Act protecting inventions, the Executive Management and were privy against unfair competition was first introduced industrial designs, marks, trade names, to all the confidential information and/or to Sri Lanka in 1979 under the provisions of literary, scientific and artistic works and other undisclosed information and commercially section 142 of the Code. Currently, Section intellectual property (s160(b)). Any person sensitive business information belonging to 160 of the Intellectual Property Act 2003 or enterprise or association of producers, the Plaintiff in reliance of the Non-Disclosure (the Act) governs unfair competition in Sri manufacturers or traders aggrieved by any act Agreements entered with the Defendants. Lanka. It is based on WIPO Model Provisions or practice referred to in section 160 of the Act Both of them resigned from the employment on Protection against Unfair Competition. is entitled to institute proceedings to prohibit of the Plaintiff on the same day and formed a S160(1) of the Act defines unfair competition the continuance of such act or practice and company named “M & M Solutions (Pvt) Ltd”. as to any act of competition contrary to obtain damages for losses suffered as a result The Plaintiffs inter alia sought injunctions honest practices in industrial or commercial of such act or practice (s160(7)). Section against the Defendants restraining the


The law in Sri Lanka





n a period of change within the

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are needed. As the UK seeks to define its future relationship with the EU we might see the shape of the ‘New Horizons’ through the ‘haze of uncertainty’ that currently clouds our view.

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directly and/or indirectly use Plaintiff ’s recipes with respect to Bubble Tea and Plaintiff ’s undisclosed/ confidential/ commercially sensitive business information in respect of drink costs and sea freights.

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To conclude

Defendants from directly or indirectly making use of and/ or disclosing confidential and/or undisclosed information and/or commercially sensitive business information belonging to the Plaintiff. A key issue was whether the list of customers and suppliers and methods of doing business are freely available in the public domain and amounts to Defendant’s skill and knowledge applied and experience gained during the employment. The Defendants further pleaded that the Plaintiff ’s action constitutes a restraint of trade. In Finality Rentokil (Ceylon) Ltd v Vivekanantha (1952) 2 Sri Lanka Law Reports 346, the Court held that the employer cannot prevent the ex-employee from using the knowledge, skill, and experience gained during the employment because the public policy requires that every man shall be at liberty to work for himself. In the UK Court of Appeal decision in the case of Faccenda Chicken Ltd v Fowler and others, the Court held that not all the information such as sales information in general or information about price could be regarded as trade secrets. They amount to a trade secret only if there is an express restrictive covenant. In Printers & Finishes Ltd v Holloway (1965) 1 WLR 1, the Court noted that information the future use of which will not be restrained is information not readily separable in the mind of the employee from other information which he is free to use, and the actual or threatened misuse of information which has been deliberately memorized for the purpose of its being carried away and used elsewhere will be restrained. After considering the above cases Ruwan Fernando J held that if any information acquired by an employee during employment as part of the skill, knowledge, and experience can be separated from other confidential information of commercial value that becomes the property of the old employer, the employee is at liberty to use such information. If such information cannot be so separated from the employer’s confidential information, the employee is prevented from using such information after his employment has ended. The court granted an interim injunction as the Plaintiff prima facie established that the Defendants had acted in a manner contrary to honest commercial practices which constitute an act of unfair competition in section 160(6) of the Intellectual Property Act No 36 of 2003.


The following general observation may be made in respect of trade secrets. An employee is under a duty not to divulge any of the trade secrets of the employer imparted to the employee in confidence. It is common for employers to enter into a contract restraining trade to protect trade secrets. However, to enforce such a contract it has to be reasonable and should not restrict employee’s freedom to trade. By contrast, contract law cannot be applied in all cases of misappropriation of undisclosed information. When a third party who is not a party to the contract misappropriates the undisclosed information, the terms of the contract do not apply to that person. However, even in the absence of a contractual relationship between the parties trade secret holder can rely on the doctrine of breach of confidence. Trade Secrets Law does not address the mistaken acquisition of a trade secret. The law should prohibit the use or disclosure of a trade secret obtained by mistake if the person has knowledge of the mistake at the time of his use or disclosure. If trade secret information can be developed independently or through reverse engineering, it cannot qualify as misuse of a trade secret.

Misuse of trade secrets may also occur after acquiring the information by violation of a duty of confidence, or after acquiring the information by theft. In Mabroc Teas (Pvt) Ltd. v Dilan Shammi Wijeyesekera H.C.Civil 60/2016/IP, the Plaintiff contended that the Defendant being a Director of the Plaintiff company was directly involved with the production and distribution of “Bubble Tea” and also in respect of the Plaintiff ’s tea export industry. He had been made privy to all the confidential information belonging to the Plaintiff. After resigning from the Plaintiff ’s company the Defendant had pursued to obtain confidential information and to unlawfully acquire the Plaintiff ’s client list through emails with the Plaintiff ’s employers. R. Marikar J refused to grant interim relief preventing the Defendants from using the undisclosed/ ONAMBELE-ANCHANG & ASSOCIATES LAW FIRM confidential/ Onambele, Anchang & Associates Law firm (OAALAW) was founded in commercially 1990 by Joseph Antoine Onambele who was later joined by Mary Concilia sensitive business Anchang. Both managing partners. Proud to be the pioneer bilingual and information of bijural firm practicing civil and common law in all jurisdictions of the Plaintiff which Cameroon, the CEMAC region and abroad, the firm owes its maturity in legal services through innovative and resilient research coupled with hard has been obtained work for clients across the globe. through emails as OAALAW equally boasts of 3 decades of practice as a full-service the Plaintiff has not corporate law firm. OAALAW represents and assists clients in matters disclosed a prima that include Intellectual l Property Protection, filings, mergers, prosecution, facie case against litigation, telecommunication, mining, real estate, finance corporate, ADR, joint venture, IPP, BOT in infrastructure, etc the Defendant. His Mary Concilia accredited with the OAPI is the pioneer IP lawyer of the Honor held that the African Union community IP system in Africa. Thus making OAALAW the Plaintiff has failed pioneer IP agents and lawyers in the entire OAPI region. to prove on balance Mary Concilia is equally the 1st female African country member of the of convenience on ICC international court of arbitration in Paris, a position she held from 2006-2010. what capacity the She is the founding chair of the African Chamber of Trade & Defendant acted Commerce (ACC) created in 2015. as a Director, what activities he had Join us at OAALAW, the most dynamic one-stop-shop address for, and on what type quality efficiency, diligence, and competitiveness for total satisfaction. of confidential information he Contact: obtained and what Mary Concilia Anchang are his entitlements. Partner Onambele, Anchang & Associates However, the Opposite the United States Embassy Rosa Park Avenue- Golf Ntougou Plaintiff and the BP. 6262 Yaounde Cameroon Defendant entered Tel (237)2 22 20 97 76 M (237) 677 5815 51 Fax (237) 22 21 53 41 into an overall settlement where the Defendant agreed not to


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The 33rd MARQUES Annual Conference

GDPR vs WHOIS: Time for a paradigm change?

Mr. Jacques Blanc, Managing Director, ProDomaines The latest event in history about to unfold manifests as a strong letter from NTIA (US National Telecommunications and Information Administration) to ICANN CEO, pushing, in no uncertain terms, ICANN to act upon dealing with WHOIS anonymity issues.


BRANDS CONFRONTING CHANGE Tuesday 17th - Friday 20th September 2019

Assistant Secretary for Communications and Information and Administrator at NTIA, David J Redl, states that “Given the impact that…European General Data Protection Regulation …has had on the WHOIS…now …is time to … swiftly create a system that allows for third parties with legitimate interests… access to non-public data critical to fulfilling their missions”. A strong conclusion follows that unless

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As the issue is turning into a State matter, it might be time to review how WHOIS ended in this situation as collateral damage, what exactly is at stake and if finding a solution to Private data access might lead to a paradigm change.

So when GDPR came into view, after years of general non-consideration, Registrars realised their very nature made them at minimum data collectors and possibly data controllers. As ICANN Contracted Parties, they suddenly realised as well that they were caught between two irreconcilable compliances: their ICANN contract (RAA) making it mandatory to deliver access to a “fully-data-disclosing” WHOIS and GDPR, threatening unbearable financial sanctions should private data be disclosed through the same channel.

WHOIS so much?


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Now if this Policy has been launched primarily to give back Consumers some control over the extensive collection (and use) of personal data by such online actors as GAFA and Online marketers, Domain Names were nowhere on this radar. They were mostly collateral damage. The WHOIS is a collection of contacts pertaining to the Domain Name, collecting and disclosing a good amount of private data (Registrant Name, Surname, address and email for example).

Back to the beginning, what is GDPR and why did it impact

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The full spectrum is delivered with Extraterritorial effect (legislation extends to companies outside the EU as soon as an EU individual or data subject is concerned) and increased sanctions. Non-compliance penalties can amount to whichever is the greatest of 4% of total worldwide Company income or 20 million euros.

“…clear and meaningful progress…” is made, “...alternative solutions such as calls for domestic legislation will …be considered.” (1)

Looking at collateral damage…

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Requirements and most of all, Privacy Rights including non-disclosure of private data.

Applicable since May 25, 2018, the General Data Protection Regulation applies in all Member States of the EU. It has been launched to ensure “everyone’s…right to the protection of personal data…under the Charter of Fundamental Rights”. It thus enforces 4 main principles: Right of Access, Right to Portability, specified Data Protection

There was no other possible choice for impacted Registrars but to make it clear to ICANN they would comply with GDPR regulations, close the access to general WHOIS data and push on discussions to reach a last-minute agreement. ICANN and its community had to react and it was indeed a reaction more than a planned move. When it became clear that Registrars would abide by their local laws over the

RAA, ICANN made the new status official by creating the Temporary Specification for gTLD Registration Data (“Temporary Specification”) (2). It came into effect on 25 May 2018 for operators of gTLD registries and ICANN-accredited Registrars. To be reviewed once a final solution was reached through the Expedited Policy Development Process (EPDP) Group, tasked with creating the future WHOIS policy in accordance with the new situation. Meanwhile and as a visible consequence, most WHOIS had been anonymised and contacts masked but for Registrar, Registration and Expiry date, plus DNS Technical data. Remember WHOIS database was conceived as a basic list of contacts for Domain Name Management, but then became Domain Name primary public record, figuring the ID card of a Domain name and nexus of research and investigations on Fraud, Counterfeiting, and Cybercrime, including Trademark infringement. Hence consequences of its anonymity struck hard on the IP Community: suddenly, Law and IP Enforcement have become harder to achieve, aftermarket entities such as Domain Marketplaces and Escrows struggle to check the reality of ownership, and even UDRP had to modify its workflow. The only entities (other than infringers, that is…) that might have beneficiated of the WHOIS getting dark are the individuals, now being spared Spam coming from the contact address collection by harvesting bots.


What is the way ahead? So where are we now? The Community has been discussing a bunch of possible solutions which all have their pros and cons. ICANN’s Temporary Specification states that “users with a legitimate and proportionate purpose for accessing the nonpublic personal data will be able to request such access through registrars and registry operators”.

After discussing for a few weeks (months.. ? ) to reach an agreement upon such terms as “users” “legitimate”, “proportionate”, one can realise the heart of the matter is Liability: who is to bear the burden of GDPR financial sanctions in case of private data disclosure? The actual data collection being made through Registrars, the said parties are adamant they do not have neither resources nor expertise to balance “legitimacy” and “proportionality” of disclosure requests on their own, much less so when requests might number in thousands. So a series of alternatives have been discussed:

-Build a sufficiently thorough accreditation process and give any

accredited entities full data access. The issue is on the accreditation process itself (who, to what extent, for how long…), and liability in case of a faulty disclosure mistake.

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-ICANN becoming the central data repository to which collected data and

disclosure requests would be redirected. The issue is ICANN prevalence and liability on behalf of the Registrars over local legislation. Accreditation process issue remaining.

-Separate Public and Private data

so Public data are disclosed while Private data is handled through one of the previous processes. There are issues with Registrars resources to flag an existing 150 million Domain Names and the fact that Private and Public data can be mixed. Accreditation process issue still stands. Finally, the EPDP phase 1 report came through with a majority adoption of measures such as administrative contact no longer being part of collected data, technical contact becoming optional and study of a process to determine if the Registrant field contains any information that could lead to private person identification. Should that be the case, data publication becomes opt-in/opt-out The road is still long until this becomes an actual applicable Policy, so maybe it’s time to change the paradigm and ask ourselves: what do we really want and are we ready to go all the way?

Paradigm change

Quote David Redl again: WHOIS is “an incredibly valuable tool for governments, businesses, intellectual property rights holders, and Internet users around the world.” Should we endorse this line of thought, then we have to presume this (priceless) WHOIS data (Community is fighting to disclose again) is truthful, reliable and reflects the reality of real contacts behind the Domain Name. Well…

This is as good a time as any to try and find out and, maybe a better time than before.

Let’s face it: in its actual state, the WHOIS is declarative. It was initially conceived as a basic list of contacts, nothing more. So apart from some restricted ccTLDS extensions, the published data is not systematically verified, despite ICANN WHOIS Data and Accuracy policy (3). Hence, it’s often inexact if not outright bogus. As we recognise this fact, let’s change the paradigm. Domain Names actually support most of Online Business exchanges: websites, emails, extranets, DNS naming… Add Enforcing activities mentioned above, this makes Domain ID (WHOIS) one of the most web structuring information pieces, the exactitude of which should be paramount.

Sources: (1) NTIA-Ltr-to-ICANN-re-WHOIS-April4-2019.pdf (2) (3)

BIO Jacques Blanc, Managing D irector, ProDomaines

And if WHOIS truthfulness is paramount, maybe we should make it so. And look at moving from a declarative model to an IDvalidated model. From a “list of contacts” to a real ID document, supporting the growing role of the considered asset.

Jacques has been working in the internet world since 1994, so he tends to favor the long strategic view whenever looking at the first truly all-encompassing worldwide media. Starting 1994 as a Financial Communications Director at Mediagérance, he became Head of Biz Dev. at Email Vision (Emailing French N°1) in 2000. Jacques entered the IP and Domain Name business in 2002 as VeriSign France Sales Manager. Following two divestitures, Jacques was successively Southern EMAE Manager for Melbourne IT DBS (2008), taking a passionate part in the. BRAND episode in a major Brand Protection Company, then Digital Brand Consultant for CSC DBS (2013) Corporate Domain Name Management N°1. Jacques is now Managing Director of ProDomaines, an ICANN accredited Corporate Registrar based in Bordeaux. He is also part of ICANN Accountability and Transparency ATRT3 Team.

Such a model exists: Trademark Clearinghouse, for instance, has demonstrated the relevancy of initially validating your identity (ID and Trademark rights on subscription) then use this ID further along through a digital ID marker (SMD file) which enables further “entity validated” actions (NewGTLDs Sunrise registrations). Such a system could be made RGDP compliant and preserve privacy while hosting validated and accredited-available data in a central repository. Could something similar apply to Domain Name registrations, thus changing the nature of the WHOIS? No doubt this would give a serious boost to Law and IP Rights enforcement, by ending a ramping and often damaging lack of clean data.

Jacques holds a License in Public Law and a Master in International Law (University Paris1 Panthéon-Sorbonne), as well as an Engineering Degree in International Sales (C.E.S.I.).

Protect your IP online

Now some could resent this end of anonymity as a shrinking of freedom and a booming of regulation. Is the community ready for such a move? Are we ready to trade more regulation for more security, a heavier way to do business for better recognition of the actors behind the scene? And maybe a decrease of domain name numbers due to tougher barriers put on registrations?

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: AI

AI has proven to be valuable to patent committees during the invention submission process. Patent committees typically receive an invention submission and want to do a high-level prior art analysis before even evaluating the submission to determine if it is worthy of patent protection. Committees want an easy method to understand if the invention is novel. With AI, they can take the text of the invention disclosure and put it into the system. They do not even need to know how to structure a Boolean search because, within moments, they will see highly predictive results.

Is it changing patent prosecution?

Some feel that artificial intelligence (AI) is revolutionizing the way patents are prosecuted, while others disagree. When we hear this term used in relation to patent prosecution, we immediately think of prior art searching. However, AI is being employed in several other ways. As Susan Krelitz, adjunct professor of Intellectual Asset Management at the Mitchell Hamlin School of Law said, “IP Law firms and departments will use AI if it makes their life easier, faster or less expensive. It is that simple.” Let us discuss each of the following areas, with specific examples, where AI has proven to be easier, faster or less expensive: • Prior art searching • Invention submission evaluation •Watching the competition and identifying new competitors •Directing R&D with white space landscaping •Opposition Invalidity Searching

Prior art searching

The most obvious use of AI within the IP industry is prior art searching. AI and machine learning are technologies that allow us to easily and quickly gain insight into massive amounts of patent data. The traditional method of conducting a prior art search is to have a researcher construct a query into a patent database. The query will identify published patents that meet the specific criteria in the query. The criteria may include class codes, keywords, exclusionary words, etc. AI-based searching is different. It processes human language with flexible semantics. There is no need to learn Boolean search structures. AI allows the user to input any description of an invention directly into the system, which then automatically extracts the meaning of the text and identifies patents with a similar purpose or technical content. The system intelligently analyses the data and is not dependent on the specific quires selected by the searcher. Take Octimine, for example. An innovative start-up in the field of IP management and recognized as one of the leading AI platforms, Octimine takes semantic patent search, analytics, and machine learning to the next level. Founded in 2015 by former Max-Planck-Institute and LMU Munich researchers, the company was acquired by the Dennemeyer Group in October 2018 and can assist its users, through AI, in various aspects of patent prosecution. Octimine has a simple user interface but also uses a hybrid approach for more flexibility. The software solution allows a searcher to input natural language text in any format and refine the scope of the search by using specific filters. One example of a filter is a date range. Octimine users can restrict the search to prior art that existed on or before a particular date.

Although the ease of entering a query is a definite advantage of AI, many see the way AI returns results as even more valuable. Traditional search engines return a long list of patents with little or no ranking and no visualization. Octimine ranks results by relevance and allows the searcher to quickly see the most relevant prior art. Modern IP search tools also use visualization to illustrate search results and help users to get an overview of the results in a split second. Although AI has substantial advantages over traditional search tools, it is not universally accepted. There are several reasons given by detractors for not using AI, the most common being that Boolean searching is proven and safe. Others complain that using AI involves a “Black Box.” The searcher does not know how the search was performed. Others complain that they already know how to do Boolean searching and they do not see the need for a simplified method. To help overcome these concerns, the experts suggest using AI searching alongside traditional methods. Many skeptical Octimine users have been surprised that AI has identified relevant prior art overlooked by conventional methods. Because AI is so easy to use, running an additional AI-based search to augment a traditional search is not time-consuming nor is it expensive.

Several large IP departments use Octimine to do this type of first screening of the invention. If prior art is identified that is directly on point, they can decide to terminate the patent process before investing a lot of time. If the search identifies prior art, but the art is not definitive, the committee can ask the inventor to clarify any ambiguity. This can all be done without a professional searcher and can, depending on the results, save the committee from investing unnecessary time in the process.

Watching, identifying and comparing competition AI is ideally suited both for comparing a company’s portfolio to its competitors’ and for identifying unknown competitors. There are traditional systems to monitor and compare competitive portfolios, but those systems require the company to identify the competitors first.

AI allows a company to input a patent portfolio into the system and then ask the system to identify similar portfolios. If the company is using Octimine, it will identify the most similar portfolios, regardless of whether the competitor is even known to the company. Several analytics and visuals can be run to compare similar portfolios.

Directing R&D with white space landscaping

Several progressive companies are using AI to identify white space where they should direct their patent and R&D activities. AI reveals the patent activity of a technology, provides an overview of the state of the art and offers valuable insights to commercial and technology managers. As such, enough data is available to inform the R&D department as to where they should focus their activity and where the IP department should focus its filling strategy.

The success of the prior art search is dependent on the skill of the searchers. Did they consider the right classes? Did they select the right keywords? Did they exclude keywords, without which the results will be overly inclusive? Did they use the correct Boolean operators? In other words, the search inquiry will return exactly what the researcher requested, nothing more and nothing less. The result of a traditional search is usually a long list of patents that the searcher must then sift through and prioritize.


Invention submission

Octimine, by way of example, has several graphical analytics to make it easier for the company to see the white space.

Opposition / invalidity search

When objecting to a competitor’s patent, the first option is to file an opposition (at the EPO), or a post-grant review (at the USPTO) and try to prove that there was non-cited prior art that invalidates the patent. AI is ideally suited for finding similar patent art. If using Octimine, all a user must do is insert the patent number and set a filter for the appropriate date. Octimine will identify prior art that is on point.

Integration with IP management systems

The most sophisticated AI systems offer APIs that allow integration of the AI system to their customers’ other systems. For example, Octimine has an API that allows search results to flow into other systems where they can be associated with the relevant matter. The Dennemeyer Group plans to integrate Octimine into DIAMS IQ, Dennemeyer’s IP management software system. One example of where this integration is valuable is in the invention submission and review process. Once Octimine is integrated, inventors and patent review committee members can review the search results in the same system they use to manage the invention submission. They will be able to make an AI-based novelty search a standard part of the review process.

Other uses

This article is not an exhaustive list of the ways AI is used by IP departments and firms today. Other uses include identifying licensees, patent valuation, patent proofreading, general landscaping, and clustering.

The future of AIbased IP systems

No one will question that AI is here to stay. The most progressive firms and departments are already using AI to make certain processes easier, faster and less expensive. As systems like Octimine become more pervasive, use will increase and detractors will melt away.

About the Dennemeyer Group

The Dennemeyer Group has more than 55 years of experience in delivering quality Intellectual Property services including patent annuities, trademark renewals, recordals, strategic IP consulting and intelligent software solutions for efficient IP management. These services are further expanded when coupled with Dennemeyer & Associates, the group’s law firm, to include EP validations, PCT nationalizations, trademark, and patent filing and prosecution.


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There have been numerous efforts for prevention and mitigation of sports-related concussion, including the use of protective equipment, improved sports regulations and legislation, concussion education and improved monitoring of concussion.

Patent Landscape of Sports-Related Concussion Bio: Liang Wang (MSc in Environmental and Energy Engineering from Sheffield University) is a Senior IP Manager at Patent Seekers Limited and has developed an expertise in patent search and analysis across multiple disciplines. He is a key member of the company’s patent search teams, involved in over 16000 searches for international patent attorneys both in private practice, in-house and for major blue-chip companies.


Concussion: Temporary unconsciousness or confusion and other symptoms caused by a blow on the head. – Oxford Dictionary. Effects are usually temporary but can include headaches and problems with concentration, memory, balance, and coordination.

Mr Liang Wang - Senior IP Manager at Patent Seekers Limited How rapidly is new innovation taking place in this space?

From the chart above, we can see that there were steady numbers of publications each year since 2000. The number of patent filings appears to start to rise in 2010, with a big surge occurring from 2013 onwards; this may be attributed to the beginning of awareness of concussions in sports. The apparent dip in filings in 2017/2018 is most likely explained by applications that have yet to be published and would be claiming those years as a priority. It could be anticipated that the number of concussionrelated patent filings will continue to increase in the coming years as to how to prevent sports relatedconcussion has become a huge topic globally. There have been numerous efforts for prevention and mitigation of sports-related concussion, including the use of protective equipment, improved sports regulations and legislation, concussion education and improved monitoring of concussion.

As discussed above, the prevention of sports-related concussion has become a global awareness, which can be clearly seen from this map, showing the distribution of the top 20 priority countries in this field. The United States appears to be the most active country in this technical area, almost triple the number of publications compared to China and Canada, who are also fairly energetic. Other leading countries include Japan, Australia and some European countries, including Germany, the United Kingdom, France, Spain, and Italy. The above chart shows that companies and individuals all over the world have a great interest in developing new technology and filing related patents in this area.

Who are the current market leaders?

What are the trends in technology focus?

Concussions are a surprisingly common occurrence in sports. Although it is a temporary injury to the brain, it can lead to serious and longer-lasting problems. We hear the word “concussion” quite often these days across different sports, including but not limited to rugby, football and basketball: “Cillian Willis was forced to end his rugby career”, “Czech goalkeeper Petr Čech suffered from a severe concussion in a football match”, “Liam Picken was forced to retire from AFL due to concussion” etc. Over the last decade, the sports-related concussion has become a significant concern among the public, sports, and clinical professionals. There have been numerous attempts at preventing concussion in sports, such as change of certain rules, use of protective equipment, improved training methodology, monitoring/detecting of concussion, etc.


Technology Landscape

What is the global origin of this technology?

“Every April 26, we celebrate World Intellectual Property Day to learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity. This year’s World Intellectual Property Day campaign – Reach for Gold – takes a closer look inside the world of sports. It explores how innovation, creativity and the IP rights that encourage and protect them support the development of sport and its enjoyment around the world.” – World Intellectual Property Organisation

This article presents an overall review of the patent landscape of sportsrelated concussion.

The heat map at the bottom of the previous page shows the number of patent publications placed in the top 20 IPC classifications over the last 20 years. It appears that most of the patent filings fall in the classifications of A42B3 (Helmets; Helmet covers; Other protective head coverings) and A61B5 (Detecting, measuring or recording for diagnostic purposes; Identification of persons), which demonstrates the technology areas where companies/organisations focus on. From a further drill-down analysis, A42B3/06 (Impact-absorbing shells, e.g. of crash helmets), A42B3/12 (Cushioning devices) and A63B71/10 (Games or sports accessories for the head) appear to have the most publications in the area of protective equipment, there also appears to be plenty of activity happening in the concussion monitoring area as shown in A61B5/11 (Measuring movement of the entire body or parts thereof, e.g. head or hand tremor, mobility of a limb). By use of the latest technologies across different areas, it would be expected that there will be more efficient ways to prevent concussion in sports to better protect athletes from serious brain injuries.

appears to be the top company leading patent filings in concussion measuring/detecting technology. IBM and Blast Motion also seem to be interested in the area of sensing technology for concussion. This chart also appears to be well in line with the above “technology focus” chart.

In addition to the above, companies and individual inventors have also put numerous efforts into the field of advanced detecting and measuring of concussion, including biometric assessment, electrical simulation, and rehabilitation. All these new and improved technologies will be of great help for early and better diagnosis of concussion, which can eventually lead to successful treatment and prevention of any related sequela.


This chart shows the companies which have the most patent filings in this field and indicates the current market leaders, actively involved in the field of sports-related concussion. Riddell, an American company specialising in sports equipment for American football, appears to have the most publications (mostly relating to helmets). Other leading companies in the area of protective equipment include Bauer, Easton Sports, Kranos, Bell Sports and Salomon, etc. BrainScope, a medical neuro-technology firm using artificial intelligence to assess a variety of neurological conditions including concussion,

This patent landscape map shows the distribution of patents in the data set based on relatedness of text, providing a visualisation of the technology clusters prevalent within the sports-related concussion portfolio and revealing a diverse set of interests. There appear to be plenty of patent filing activities in the area of development of protective equipment, which can be seen from those red, green and brown clusters. Although concussions are not always preventable and there may not be a magic product on the market currently for preventing concussions, helmets can protect against more severe head injuries. It appears that the helmet is the main technology focus, which can be explained as the most obvious and potentially the most effective way to prevent concussion if they can be properly designed with the help of latest technology, such as new material with high energy absorbency and improved design of the helmet layers.

This overview of the patent landscape surrounding sports-related concussion has revealed that the use of protective equipment and motoring/detecting of concussion are the two main areas where the majority of companies are trying to dive into and invest. There has already been a great number of patent filings relating to the development of products and technologies, and it could be anticipated that this will continue in the coming years as sports-related concussion has emerged as a major public health and clinical concern due to the increased number of diagnosis worldwide. It would be wonderful if technology could solve the sports-related concussion crisis, and there should be more and better research into how to prevent concussion and therefore protect athletes’ health.



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to Evergreening of plant variety in the ‘Plant Varieties Law!’ Ms Vijaya Chaudhary - Associate at LexOrbis “Every April 26, we celebrate World ‘Under the current Intellectual Property Right (IPR) regime, the Indian Patents Act excludes plant per se or any part thereof including seeds, varieties, species and essentially a biological process from patentability.’ The Protection of Plant Varieties and Farmers’ Right (PPV&FR) Act, 2001 (hereinafter mentioned as the Act), a unique sui-generis system for the protection of plant varieties in compliance with Article 27(3) (b) of Trade-Related Aspects of Intellectual Property (TRIPs) Agreement, is the only legal instrument for protecting a new plant variety that has been developed. In order to be registerable under the PPV&FR Act, the variety must satisfy the four essential criteria of registration i.e. novelty, distinctiveness (D), uniformity (U) and stability (S). The novelty of a variety is decided on the basis of date of sale of a candidate variety. As per section 15(3) (a) of the Act, if the application for registration of a variety is filed within one year from the date of its sale in India or within six years (in the case of trees and vines) and within four years (in other cases), of its sale outside India, the candidate variety is considered to be a new variety. Provided, the use of said variety for trial purpose does not affect the novelty of the candidate variety. Furthermore, a variety in seed chain for more than one year can also be registered as an extant variety or a variety of common knowledge (VCK) under the PPV&FR Act.

of registration is calculated from the date of issuance of the registration certificate under the Act (section 24(6) of the PPV&FR Act).

For registering a variety under the PPV&FR Act

The applicant is required to make a request in the prescribed manner along with the seeds/

It is interesting to note that the total period of registration of both the new and extant (VCK) variety is the same i.e. 18 years (trees and vines) or 15 years (other varieties) as the duration


propagating material of the candidate variety with the PPV&FR Authority (hereinafter mentioned as the Authority). Provided the Authority shall accept the application of only those crop species that are notified by the Central Government under section 29(2) of the Act. Till date, registration is open for only 151 crop species of various agricultural, horticultural, forestry and commercial crops. Hence, the crop species which are not notified under the Act, the newly bred variety of the same crop cannot be registered with the Authority. Furthermore, the grant of a registration certificate to a plant variety under the PPV&FR Act is subjected to actual field testing of the DUS characteristics claimed for a candidate variety, said test may be a field test or on-site testing, depending upon the method of propagation of the variety applied for registration. The DUS test is conducted strictly in compliance with the crop specific DUS Test Guideline published by the Authority. As per section 19 of the Act, the DUS testing of a new variety is conducted for two years and two locations and for extant variety; the DUS Test is conducted for one year and two locations. However, in case of an essentially

import of seeds in India before applying for registration with the Authority. Furthermore, both the applicant as well as the Authority shall maintain the seeds of the registered variety, with substantial viability and purity, during the entire period of registration.

derived variety, the manner of testing shall be decided by the authority on a case-to-case basis. Hence, the DUS Test is necessary for all new varieties other than the essentially derived variety. Additionally, there is a provision of conducting a ‘special test’, if the field test fails to establish the requirement of distinctiveness for the candidate variety. Hence, the registration of plant variety under an extant category is less time-consuming in comparison to a new variety. As per revised procedure of registration published in September 2018 (http://www.; The applicant must submit the specified quantity of seeds/ propagating material of the candidate variety, in the prescribed manner, at the time of filing the application for registration with the Authority. Provided, in the case of hybrids, seeds of parental lines, are also required to be submitted at the time of filing the application for registration. However, in the case of foreign applicants, such mandatory requirement of seed submission at the time of filing may cause unnecessary delay in the registration process, as they have to comply with the regulatory requirements for the

The varieties notified under section 5 of the Seeds Act, 1966 are also eligible for registration under the Act. Provided no DUS testing is conducted for such a notified variety and approval from the Extant Variety Release Committee (EVRC) is the only requirement for its registration. The total period of registration is also calculated from the date of notification of the said variety under section 5 of Seeds Act, 1966. However, the conflict arises when an application for registration of a parental line of notified hybrid is made with the Authority. As per the Indian Plant Variety Registry decision dated October 28, 2013 (on representation of Nuziveedu Seeds Pvt. Ltd., Applicant dated 13.06.2013 and 12.07.13), the parental line of a notified hybrid cannot be considered to be a notified variety as only a hybrid variety and not its parental lines were expressly notified under section 5 of the Seeds Act. The applicant challenged the order of Registry dated October 28, 2013, and contended that the characters of parental lines of the extant notified hybrid are documented in the application for notification of hybrid under section 5 of the Seeds Act and both the hybrid and parental lines must be considered as a single unit for propagation and stability. Upon reconsideration of Nuziveedu Seeds Pvt. Ltd. (applicant) representation against Plant Variety Registry decision dated October

28, 2013, the learned Registrar in its order dated December 05, 2018 decided in favour of the applicant stating that parental lines of a notified hybrid variety shall be deemed to be notified under section 5 of the Seeds Act, 1966 and shall be eligible for the same period of protection as that of its notified hybrid variety. The Registry decision is based on Delhi High Court judgement in Maharashtra Hybrid Seeds Co. vs UOI for category of registration of a parent lines of a extant hybrid variety where the court in order to prevent evergreening of Intellectual Property Rights in Plant Varieties decided that parental lines of a hybrid shall be registered in the same category as that of its hybrid.

To conclude This decision of Registry not only restricts the indirect protection of hybrid after the expiry of the period of protection but also expedites the process of registration of parental lines of a notified hybrid variety.

1 IN THE MATTER OF: Nuziveedu Seeds Pvt. Ltd., with respect to registration of NC-71, NC-99, NC-102 and NC-108 cotton parental line varieties-Category to be applied.


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Global IP Matrix - Issue 4  

We are delighted to present the fourth issue of The Global IP Matrix magazine to you, our loyal readers. We have had an amazing year and gro...

Global IP Matrix - Issue 4  

We are delighted to present the fourth issue of The Global IP Matrix magazine to you, our loyal readers. We have had an amazing year and gro...