The Women's IP World Annual 2021 by Northon's Media PR & Marketing Ltd

Contents

page 04

Women’s IP World annual 2021. Opening letter by the 2020 INTA President Ayala Deutsch.

page 06 Co-sponsor opening letter written by Manisha Singh, Managing Partner at LexOrbis, India.

Law firm profiles, bio’s and article

YOUR MOST

TRUSTED IP PARTNER

North, Central America & The Caribbean page 09 Dumont, Partner profile & Article COVID 19, my personal journey. Written by Laura Collada, Managing Partner at Dumont. Mexico.

Welcome to the second annual edition of the Women’s IP World, 2021.

A few years ago, we had an idea and a vision of what we wanted this publication to be and achieve. The minute this idea was presented to me, I jumped at the chance to be involved. I love nothing more than being inspired daily by the women I speak to, and here at Women’s IP World, we are passionate about providing a platform for women to shine. Day to day, we speak with many successful men and women who work in the field of IP; however, working on the Women’s IP World annual always brings something different and something very special. While editing this publication, I always do so with a warm glow, often having to stop and message the author to tell them how much their article has moved me. As women, we are never just the job we do, our roles are varied, and we can wear many hats in one day. Once again, in this second issue, we have an impressive display of remarkable women who have worked hard, faced challenges, strived for success, and achieved great things. Our publication is proud to feature women who are pioneers in their countries, women who have taken courageous steps in their working and personal lives, and women who empower women by sharing and coming together from all over the globe. This is our vision. Thank you to all the amazing women who have contributed to this issue, each and every one of you!

Ms. Elvin Hassan - Editor & Head of International liaisons

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Advitam, Partner profile & article A Cause Born during the Chaos. Written by Michele Katz, Founder Partner at Advitam, LLC, Chicago, USA.

Sigeon IP, Partner & Of Counsel profiles Anna Grzelak, Phd, Managing partner and Of Counsel Małgorzata Cichosz, LLM from Sigeon IP Grzelak & Partners, Patent Attorneys and Attorneys-at-Law, Poland.

page 15 Caribbean Trademark Services, LLC, Partner profile & article Trademark Practice in the Caribbean Jurisdiction. Written by Keesha Fleming lake, Managing Attorney at Caribbean Trademarks, LLC, Anguilla.

page 19 Eproint, Partner profile & article Women and law. Experiences and lessons. Written by Vanessa Abdel-Razak, Partner at Eproint, Haiti.

page 23 Foga Daley - Partner profiles Dianne Daley, Founding Partner & Nicole Foga, Managing Partner at Foga Daley - Attorneys-at-Law, Jamaica.

South America page 26

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Destek Patent, Profile Claudia Kaya Manager & Managing IP Consultant at Destek Patent, Turkey.

page 39 INTERPATENT, Profiles & Article When IP Consultants become IT Consultants: the struggling and never-ending search for online evidence. Written by Nicole Gorlier, Manuela Bruscolini, Maria Cristina Goicoechea Margalef and Simona Mantovani at INTERPATENT, Italy.

page 44 Troller Hitz Troller, Partner profile Ursula In-Albon, Partner at Troller Hitz Troller, Switzerland.

Europe page 29

Anchor IP, Founder profile & article The World of IP & Why I Love My Job. Written by Diana Versteeg, Founder of Anchor IP, the Netherlands.

Gómez-Acebo & Pombo (GA_P), Lawyer/Associate profile & article – IP Consideration of augmented and virtual reality. Written by Isabel Bandín Barreiro, Digital & Innovation Lawyer/Associate at Gómez-Acebo & Pombo (GA_P), Spain.

IP Industry business services profiles & articles.

Cerian Jones IP, Profile – Dr Cerian Jones, Founder & Director at Cerian Jones IP, United Kingdom.

page 34 Patpol, Partner profile Izabella Dudek-Urbanowicz, Managing director at Patpol - European and Polish Patent and Trademark Attorneys, Poland.

BMatanga, Article & Head of Practice & Lead IP Counsel profile Guardians of the Knowledge Economy. Written by Brenda Matanga, Principal at BMatanga Intellectual Property Services, Zimbabwe.

Orbis IP & Law, Partner profiles & article – Two women, one vision! A Woman’s touch made the difference. Written by, Dilek Zeybel, Managing Partner & Aylin Şener, Managing Partner, Orbis IP & Law, Turkey.

Estrategia Juridica, Director & Attorney at Law profile & article – Trademark Falsification, a growing problem faced by Trademark holders. Written by Claudette Vernot, Director at Estrategia Juridica, Colombia.

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Africa page 55

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page 49 Brand Enforcement UK, CEO Profile – Lisa Lovell, CEO of Brand Enforcement UK, LTD, United Kingdom.

page 50 Patent Seekers, Article Championing Gender Diversity for Innovation Written by Clare Gibson, Patent Analysis at Patent Seekers, United Kingdom.

www.womensipworld.com

Jackson, Etti & Edu, Partner profile Uwa Ohiku, Partner & Head of IP Practice at Jackson, Etti & Edu, Nigeria.

Stillwaters Law Firm, Associate profile & article – Commercialisation of IP in West Africa, Challenges, and the recommendations geared towards encouraging innovation. Written by Nneoma Emeruem Azuike, Associate at Stillwaters, Nigeria.

Asia page 64 Julius & Creasy, Article – Protection of well-known trademarks in Sri Lanka. Written by Anomi Wanigasekera, Partner at Julius & Creasy, Sri Lanka.

page 65 LexOrbis, Partner profiles & article Soap Wars: Dabur Gets Interim Relief. Written by Manisha Singh, Managing Partner & Amaya Singh, Partner at LexOrbis, India.

page 68 LS Davar & Co, Managing Partner profile Dr Joshita Davar Khemani, Managing Partner at LS Davar & Co, India.

Carlos Northon

Founder & CEO Northon’s Media PR & Marketing Ltd Publisher of The Global IP Matrix & Women’s IP World carlos@northonsprmarketing.com

Elvin Hassan

Editor for The Global IP Matrix & Women’s IP World Head of International liaisons for Women’s IP World elvin@womensipworld.com

Craig Barber

Head of Design for The Global IP Matrix & Women’s IP World info@northonsprmarketing.com

biggest challenge in getting equal numbers of women into management is that there are too few qualified women in the ranks. On the other hand, 40 percent of women said the biggest challenge in this regard is that they are judged by different standards. This is reflective of a gap in how men and women perceive gender diversity in the workplace. The challenges women face throughout the workforce are wide-ranging and complex. As women, we are not only judged by different standards; we also work under greater scrutiny—even down to the clothes we wear!

Letter from AYALA DEUTSCH -

2020 INTA PRESIDENT

safeguard this progress. Recovery from the COVID-19 crisis must include addressing the remaining systemic inequalities that have been highlighted by the pandemic. We must continue to move forward.

One of my priorities as the 2020 INTA President has been supporting the advancement of women in the intellectual property (IP) field. Although everyone’s focus this year has appropriately been on the COVID-19 pandemic, we must not lose sight of how critical it is to promote gender diversity and facilitate the advancement of women in all areas of the workforce, including IP. In fact, this is more important now than ever. COVID-19 has disproportionately affected women. For example, women make up 70 percent of the health workforce globally. Not only are women more likely to be frontline healthcare workers, they are also often on the frontlines at home, caring for their own families. The 2020 Women in the Workplace report, published by McKinsey & Company and leanin.org in September, found that, while no one is experiencing business as usual during the pandemic, women—especially mothers, senior-level women, and African American women— have faced distinct challenges. According to the report, one in four women is considering downshifting their careers or leaving the workforce due to COVID-19. The gains made for women’s advancement in the workplace in recent years are fragile and at risk of being reversed if society does not

INTA

Equality for women in the workplace and in the IP field (given that this is the area where I have been practicing law for decades) has been an issue close to my heart for my entire career. Almost 30 years ago, I helped establish the women’s network at the law firm where I began my legal career. I served several terms on the New York City Bar Association’s Committee for Women in the Profession. And, currently, I am an executive champion of the NBA Women’s Network. More recently, in my role as INTA President, I joined the Association in announcing The Women’s LeadershIP Initiative on International Women’s Day this past March. We created this INTA initiative to foster the development of strong leadership skills for women in the IP field and to empower them to advance their careers to the next level. This initiative is aligned with the Association’s long-term commitment to diversity and inclusion and other aspects of corporate social responsibility. We need to support women entering the IP industry, as well as women who already have dedicated themselves to the field, to help them advance into much-deserved leadership roles and enjoy fulfilling career paths. In doing so, we can unlock their talent so that they can contribute to and enrich our industry to their fullest potential. This means awarding opportunities on merit throughout the IP sector—from corporations to law firms, from government agencies to the court system. Although we have made progress, there is always room to increase opportunities for women generally and for women in IP, particularly.

To address gender inequality in the IP field, we must approach this matter with the right perspective. We need to think about what diversity and inclusion mean in a broader sense and what we have to gain by embracing diversity and inclusion in our field. Diversity in its truest meaning is not only about diversity of gender or diversity of race or diversity of ethnicity; it’s about diversity of thought and diversity of experience and diversity of approach. The more diversity you bring to the table—people who think about things differently, tackle things differently, have a different perspective on resolving an issue—the better the work will be because you are gathering the best of a lot of different ideas instead of focusing on only one. By embracing gender diversity, we foster diversity generally and create an inclusive environment where different perspectives, approaches, and experiences are welcome. I have been fortunate in having a fulfilling career in IP. Over the years, I have had the opportunity to engage in interesting and meaningful work, lead projects and teams, expand my portfolio, and continue growing in my profession. While all of this has resulted in success, the path has not been without challenges, and I remain mindful of the challenges that women still confront in the workplace. Although we may never truly understand the challenges of others, empathy can be a powerful tool in creating a truly inclusive workplace—and society. The 2019 Women in the Workplace report, published by McKinsey & Company and leanin.org, features survey data from more than 68,000 workers across Canada and the United States. In stark contrast, one finding presents how men and women view the challenges facing women in the workplace. Twenty-one percent of men surveyed (the largest portion) said the

In 2014, after noticing how his female onscreen colleagues on an Australian morning TV show regularly received comments on their appearance, a male television anchor decided to wear the same suit on air every day for a year to see if anyone would notice. No one did. In revealing his experiment, he said, “I’m judged on my interviews, my appalling sense of humor, on how I do my job, basically. Women are judged much more harshly and keenly for what they do, what they say, and what they wear.” Ironically, his co-anchor was later the subject of a newspaper story that pointed out how she wore the same maroon blouse for a second time on-air, having worn it four months previously. That same year, online magazine Slate ran an article titled, “Female Lawyers Who Dress Too ‘Sexy’ Are Apparently a ‘Huge Problem’ in the Courtroom.” The article cites various examples of legal institutions (such as law schools and bar associations) and individual judges grappling with the “issue” of what constitutes an appropriate female dress code. The article also describes how, despite the pantsuit now being considered acceptable courtroom attire—that was not the case when I began my career—female lawyers still face the challenge of having to find an outfit that strikes the right balance of being sufficiently feminine but still conveying authority and professionalism, in order to meet the expectations of male judges, clients, and colleagues. While I was still working at a law firm, I remember working with a senior partner the night before an important court hearing to prepare our case. After hours of working on exhibits and outlines of oral argument, just as we were preparing to go home and try and get some sleep, the partner said, “Ayala, do you have anything beige? I think it would be best if you wear something beige to court tomorrow.” I panicked. I didn’t own anything beige! After a sleepless night, I showed up in court in a conservative olive-colored suit; we won the motion, and all was well. Still, it struck me how, following all my substantive work on the case, the partner’s concern turned to the colour of my suit. For women litigators, courtroom “presence” is incredibly important and challenging. I recall an instance early in my career: I was

in court with a cold and sore throat, and my voice was raspy and hoarse as a result. When my case was called, I stood up and responded, raspy voice and all, but before I got very far, the judge interjected to say in front of the full courtroom, “If you’re nervous dear, my clerk can get you a glass of water.” I was mortified, but I should not have been surprised. This was more than 25 years ago, and at the time, such a comment was not considered patronising or even unusual. These challenges are not new, and they still exist. Recently, I was chairing an important meeting with more than a dozen people, and I was the only woman in the room. Just as I called the meeting to order, one of the senior clients went on and on about how “pretty” my outfit was, how “nice” I looked, and how “colourful” my scarf was. Of course, those all are lovely compliments, but in that setting, they served to undercut my authority, regardless of whether that was what the client intended. Those are comments that he would never have made about a man. As women, we continue to navigate numerous challenges as we seek to advance in our careers. Helping others change their perceptions and become more empathic may be our biggest challenge and, ultimately, one of our most important objectives. At the same time, I strongly believe that we must remain true to ourselves—our authentic selves—rather than try to fit into a false construct created by others. INTA is well-positioned to lead these efforts within the IP field. Since 2000, ten INTA presidents, including me, have been women. This year, five of the six Officers of the Board of Directors, 15 of the 30 members of the Board, and 31 of the 70 committee chairs and vice chairs are women. The Women’s LeadershIP Initiative will continue beyond this year as a permanent program to provide women in the IP community with the skills to develop as leaders and champion their professional growth. As part of this initiative, we held a series of virtual workshops with more than 130 female INTA members from Asia, Europe, North American, and Latin America Discussions focused on some of the core challenges to be addressed: (1) representation in the workplace, (2) career advancement, and (3) work-life integration. We held three additional workshops during INTA’s Annual Meeting & Leadership Meeting in November. These workshops were open to women and men and were held at different times to accommodate all time zones. More than 450 meeting registrants participated in these workshops. Their popularity underscores the need for and the importance of the initiative. Also, as part of the initiative, INTA is developing content on an evolving basis, highlighting the talent of women in IP and

www.womensipworld.com

promoting the tools and skills needed for their professional growth. Notably, in a series of INTA’s podcast Brand & New, called Women’s Empowerment in Intellectual Property, women share their experiences and discuss diversity and inclusion in the IP world. INTA will soon publish a report covering the work of The Women’s LeadershIP Initiative in its inaugural year. The report contains key findings on the current state of play, recommendations to advance women’s leadership in IP, and best practices on diversity and inclusion, based on the feedback from female INTA members around the world. The report furthers the agenda of The Women’s LeadershIP Initiative in building a long-term sustained program beyond this year that will actively champion women as leaders in the IP field. Why now? For INTA and its global community of IP professionals, the timing is perfect. We have begun working on our next strategic plan for 2022–2025, and diversity and inclusion are very much part of the discussion we’re having about the Association’s next four-year plan. The work undertaken this year and beyond through The Women’s LeadershIP Initiative will go far in informing this strategy. Our approach is working: we are gathering data, collecting feedback, gaining an understanding of the various challenges women face around the world, and compiling recommendations to inform how the Association should approach diversity and inclusion for women and other groups. As we move this initiative forward, we must focus on real opportunities that lead to success and advancement. It can be easy to focus only on the numbers—such as the number of women represented in a particular workforce or industry. And that representation is important. But to fully realise the value that women can deliver and the success they can achieve, it isn’t enough for women to be counted as part of a demographic. Women must be offered opportunities for work—opportunities for success that are tangible and substantive. That is my call to action to the global IP community: Make sure women are not just in the room, make sure they have a seat at the table, including equal opportunities for important assignments, visibility to senior leadership, and responsibility for managing people and budgets. My call to action for women IP practitioners: Be your authentic self and find comfort and strength in your authenticity. Our authenticity translates into confidence, into relatability, and, ultimately, into success. Ayala Deutsch is the 2020 INTA President and Executive Vice President & Deputy General Counsel at NBA Properties, Inc.

Co-sponsor Letter WRITTEN BY MANISHA SINGH, MANAGING PARTNER AT LEXORBIS, INDIA

It would be unjust to ignore the fact that these figures show progress, but we have a long way to go before these numbers reach a satisfactory level.

Intellectual property law acts as an encouragement for innovators to reach their potential and birth ideas that may change the world. The possibilities are endless. Yet, for centuries, invention and creation in the sphere of art, culture, literature, science & technology have been male-dominated. We find fewer accounts of female visionaries on record, as compared to their male counterparts, who have made remarkable contributions to the world we live in. Some ideas went unnoticed, some were stolen, and some were outrightly denied for those ideas belonged to a woman. Without a shadow of a doubt, women have been under-represented in the world of IP, and their potential has been underutilised.

The world today realises the potential of women; their courage and genius cannot stay hidden in the dark. We must bring women creators to the forefront and set an example for those seeking inspiration. Now more than ever, we need more female role models, and we need to know their stories. We need platforms that discuss the triumphs of women. We need to appreciate them a little louder, for we must rewrite history. It is time to challenge the outdated practices and create a legacy of women in IP and innovation to aspire.

Creativity is not gender-specific. The fact that gender disparity exists in innovation is worrisome, and the numbers are alarming. According to a report by the United States Patent and Trademark Office (USPTO), “in the last decade, all-female invented patents constituted only about 4% of issued patents.” As per the UK’s Intellectual Property Office, women inventors account for 13% of patent applications made globally. In India, women account for only 14% of the total individuals engaged in entrepreneurship.

The passive patriarchal tone has been deeply entrenched in our society. Workplaces must make equal efforts in promoting gender equality. LexOrbis boasts of having employed 70% of women in its workforce. The firm’s office in Mumbai has an all-female staff. It is safe to say that the firm is a fine example of the wonders women can do when provided with the right opportunity.

Women’s IP World is one such step in the right direction, and LexOrbis is proud to cosponsor the second issue of the magazine. With more editions in the future, the publication will act as a handy reference and evidence to show how women are impacting innovation, creation, and entrepreneurship. The goal is not to deny men of their due credit but to bring women at par and create an inclusive environment where there is a shared contribution in enhancing global creative assets.

When I started the law firm in the late 90s, India was still new to the world of intellectual

property. It took determination to build an inclusive culture. There was a dearth of progressive opportunities for women in IP, which enabled me to create such policies where everyone gets to explore their full potential, irrespective of their gender. The women at the firm can avail themselves of many benefits like work from home facility, six months of maternity leave, flexible working hours, and a safe environment. This aims to provide them with a healthy worklife balance- most of which are somewhat amiss from the Indian legal industry, except under the current pandemic and consequent lockdowns. We need to discourage gender-based preconceived notions. Organisations should hold regular gender sensitisation and awareness activities and communicate progressive policies to employees. Gender must not overshadow the caliber of a person; instead, the capabilities must be determined through skills and talent. Participation of women engineers, scientists, music composers, brand owners, writers, et al. should be encouraged in the creation of IP assets. Through a collective effort, we must understand the deep-rooted issues that cause gender disparity and work towards eradicating those to bridge the gap and undo the prejudices. Education and awareness play an important role. Women’s IP World has done a remarkable job in promoting the often under-credited community of inventors, whose contributions have been game-changing. LexOrbis supports the vision to bring together women in IP and innovation from all over the world and dedicate a platform for them to showcase their expertise, experience, struggles, and achievements.

www.womensipworld.com

IP Law firm and Business

PROFILES & ARTICLES Sponsored by

MCEHXIINA CO Name: Laura Collada Law Firm Name: Dumont Country: Mexico

North, Central America & Caribbean

Position: Managing Partner Website: www.dumont.mx

With more than 30 years of experience in the IP field and as the Managing Partner of the firm since 2008, Laura is a dedicated strategist and has acted on several milestone cases. Laura leads most of the firm’s large and complex cases. Furthermore, Laura has a high profile, both locally and internationally. She is regularly invited to speak for MARQUES, UIA, ASIPI, FICPI, ABPI, and INTA and is a renowned teacher at several Law Schools. She is very active in promoting the Madrid Protocol and has lectured on the topic domestically and abroad. Laura’s practice covers the complete lifecycle of IP rights. However, since the recent dramatic changes to the Mexican legal framework, she has been increasingly dedicated to promoting the MADRID system among clients and the new opposition system that entered into force. She also continues to design strategies for clients as well as litigating. Laura is one of the only two women in Mexico who is the Managing Partner of an IP law firm and a three-time recipient of the Best IP Lawyers in Latin America Award of Euromoney’s Americas Women in Business Law. She has written about IP for national newspapers and international IP magazines: Women’s IP World Magazine 2019-2020 -Why is everybody talking about Cultural misappropriation? Expert Guides Women in Business Law 2019 - Cultural misappropriation, where Mexico stands. She was invited to be part of the expert team to work on the wording of the amendments to the Mexican Industry Property Law. She was asked to write, among all the experts, the initiative of law and the exposition of reasons. This project of amendments has been introduced and presented to the Mexican House of Representatives and turned into law.

Sponsored by

Laura is a Council Member of MARQUES and project leader in the International Trademark Team. She is the Spanish Deputy Editor of UIA’s Juriste magazine. Laura also leads the Madrid Protocol Committee at ASIPI. She is Co-Chair of the Standing Committee on Geographical Indications in AIPPI, a

member of the Famous and Well-Known Marks Committee of INTA, and a member of national and international professional associations, including AIPF (a member of the Board), ASIPI (Special Commissions Coordinator of the Madrid Protocol), AMPPI Mexican Chapter of AIPPI (Past Chair of the Women’s Committee), AIPLA, ECTA, and PTMG. Laura advocates for women’s equality by seeking out female candidates and offering top positions to female lawyers. She is involved in several associations (AIPLA, UIA), creating awareness by speaking out about “glass-ceiling” issues at events, including the AIPLA Women in IP event that took place at Dumont’s office in Mexico City three years in a row (2016, 2017 and 2018). Dumont, led by Ms. Collada, proposed to AMPPI (AIPPI Mexican Chapter) to create a women’s committee to empower IP women lawyers, to research the sociological ground why there are so few positions for women in executive positions as well as to create awareness among the firms on our field (IP). The creation of the committee is a reality today. It was established, March 2017, and Ms. Collada was the Chair of the Women’s Committee for two years (2017-2019). She is ranked in CHAMBERS LATIN AMERICA and CHAMBERS GLOBAL as a leading lawyer; THE LEGAL 500 LATIN AMERICA; as a recommended lawyer; IP STARS as Patent Star, Trademarks Star, and Top 250 Women in IP; WORLD TRADEMARK REVIEW 1000, as a leading lawyer; EXPERTS GUIDE, as Patents and Trademarks leading lawyer. Laura is also recognised as one of WIPR’s Influential Women in IP. As one of the two only female Managing Partners of an IP firm in Mexico, Ms. Collada acts as an icon to women who wish to advance their careers in this field. The women working at Dumont often choose to stay long-term to improve their knowledge and expertise here since they are met with far less bias than is often found at other firms in Mexico. This has made Dumont known as a firm in which women are empowered, acknowledged, and groomed as lawyers.

MCEHXIINA CO

COVID 19 my personal journey Written by Laura Collada, Managing Partner at Dumont. Mexico www.dumont.mx

A year that never started has come to an end

No, I was not a believer. I thought it was only another big, fat, ugly flu-like H1N1 and that existing treatments would be effective against it. It started in mid-February. Airplane ticket bought. Hotel reservations, checked. Plans with friends… organising them. London calling! I was going to attend a couple of conferences. I have my little international community, friends that have become family. We attend the same conferences and always make room for our time together. We come from all corners of the world. We all were hearing, almost daily, about this new illness. News from Italy was unbelievable, and the doubts began. This little international community comprises empowered women, IP lawyers, all well recognised, and we have become family. It is not a conference-by-conference friendship. Regardless of distance and time zones, we are always there for each other; we laugh together, cry together, support each other, and we care for each other. While discussing our London plans, changing hotels to stick together, making

restaurant and theatre reservations, one called to cancel. Another one who had recently been in Milan told us what she had experienced there. I teased them, I bullied them, told them not to be afraid, that it was unlikely that we would catch it, we were healthy women who are used to travel. I remember hearing them and not believing that they were so afraid. I did not understand my sisters, my partners in crime. On the other hand, I was invited as a speaker at one of these conferences and could not cancel; if I did, I was afraid of being considered unprofessional. No way. I carried on with all my plans even though all my close friends had already cancelled. I truly believed they were overreacting. It is a big, fat flu… nothing more. A couple of weeks later, along with different friends and co-speakers, we started discussing the possibility of cancelling our trip. Conferences were cancelled, travelling was not on the table anymore. At that moment, I was still full of doubts, I sometimes thought that I should be concerned, but other times I felt that it was an exaggeration. They knew better than me.

Before mid-March, things started to get a bit crazy in Mexico. We learned that people got sick abroad and returned to the country, and they were contagious. Official information was not clear and was scarce. One of my colleagues asked me while having a coffee break together, “don’t you think that we should start working on a plan for the pandemic?” I did not know what to answer; it caught me off guard. That “exaggeration” had become our reality; not wholly convinced, I asked him to put a plan together, just in case. The news was frightening. I started learning about cases in my social circle. People were fighting for their lives at the hospital. We decided that even without precise and efficient official information, we would send all our staff home and have them work remotely. In my many years as Managing Partner of my firm, I had only been through a similar situation once, H1N1 in 2009, we were at INTA in Seattle, and the only thing that I clearly remember is that not many wanted to meet with Mexicans back then. We went through a soft lockdown for a couple of weeks, and that was it. Yes, we wore masks,

used up bottles of antibacterial gel, and sprayed Lysol everywhere, but it was gone almost as quickly as it had appeared; at least that is the way I remember it. So that was the moment it hit me: COVID-19 was in our lives. At the firm, we were already using all technological and digital tools available and required for our practice; however, the only ones using those that allowed for remote working were those who frequently travelled. We needed to get more licenses. OK, we did. But it was not that easy; everyone was going home, and you had to look at the different realities within our whole staff. Don’t get me wrong; we live in Mexico, a country of contrasts. Did every person working for the firm own an efficient computer supporting the software? Does everybody have a highspeed internet connection that will allow adequate connectivity? So, we had to get new computers for some of our personnel. And what about confidentiality? How are we going to measure productivity? How will we supervise, teach, mentor, and very long etcetera? We were fully operational in less than a week: everybody was working from home. ALL of us. No time for introspection. No time for reflection. We had to take care of our staff, especially those who live far away and travel on public transportation. Once again, official information was not clear enough; It was like an official denial. Nothing will happen. In a month, we will return to normality. That was our government’s motto. The daily experience was hectic. In a week, the country went from “nothing is happening” to full lockdown. By the end of March, everything was closed, E V E R Y T H I N G. This means, for you to understand me, that the Patent and Trademark Office (PTO) was closed, including almost all judicial and administrative authorities. Fully closed. That meant no filings. I panicked! I am the Managing Partner of an Intellectual Property firm. Our PTO went into lockdown, shutting down all technological and digital tools. How do you keep an office up and running if you cannot file any legal documents? For three weeks, it was a nightmare. We received almost the same workload daily. But our filing possibilities were entirely stopped. The PTO slowly started reopening some of the options to file electronically until it softly reopened physically by midJuly. We had to be creative, we had to be resourceful, we had to be resilient, and ‘challenge’ was the name of the game. I kept going on for months without reflecting on anything else but the firm. IP is an area where personal touch, physical presence, and networking are a must. We rely on many conferences to meet with our clients, network, try to get new clients, and

so on. Webinars and zooms became our daily activity, spending many more hours in front of our computers since apart from the workload, we had all these “new tools” to get the job done and socialise. Until today, it wears me out. I have not been able to enjoy this new technology. I miss physical presence. Several months later, I let myself reflect on everything we are living. Once I thought that the new normal was completely efficient at the office, I thought about how my feelings and thoughts and emotions had changed regarding COVID-19. I went from complete disbelief to being afraid of catching it (almost cabin fever) to adapt to the new normality. This emotional journey came through grief and pain. I’ve lost close relatives to COVID-19. I have friends that have had lengthy stays at hospitals and miraculously survived. I have friends who are dealing with the aftermath of being sick and suffering effects for a lifetime due to the illness; companies that went broke, divorces and separations, and even suicide. Depression, anger, frustration, fear. Watching TV series’ is something that we have all been doing. Many months ago, I decided to watch The Tudors for a second time, and within a couple of chapters, it portrays what the ‘English Sweat’ was at the time. People got sick for apparently no reason, and some days later, they died. Food was delivered to the door, and people went into lockdown. Instead of enjoying the series (which I love), I felt desolation. As a species, we are as vulnerable and fragile as we were five hundred years ago against this new virus. I think all of us want our lives back. We want to travel, meet friends, go shopping, go to the office, etc. We are social beings, which has been very hard for all of us. It is a year in which we have been taught to appreciate everything we have and not take anything for granted. It has been a year of challenge and resilience. It has been a year of concern and caring for the people you love. I stop and think about the effects besides the economic ones. What will happen to the children? Toddlers who haven’t socialised out of their families, kids who play without their friends, people who have felt lonely or depressed, teenagers and young people who can’t go out partying, elders who feel lonely. I understand that the COVID-19 experience depends pretty much on in which part of the world you are, how your government has dealt with the pandemic, health systems, etc., but 2020 is a year that we will hardly forget.

However, not everything is terrible. My journey through COVID-19 has been a roller coaster and has made me stronger, as I think many of us have also become stronger and resilient. 2020 was a challenge in every single aspect of us being humans. This illness brought all of us back to the basics. It showed us how many things we take for granted and how many things are superfluous, and we do not need them. It made us more empathic. It forced us to be more disciplined. It made us more open to change and to adapt, but, above all, I think that, in a way, it returned to us a part of our humanity. I believe that we now care more for our neighbours and our community. We are worried and concerned about our loved ones. We want them healthy. We want them happy and safe. This illness will change the world forever, much more than any other event, more than 9/11. However, I’m willing to embrace the “new normal”, whatever that means, because I truly believe that we are working, all of us, to fight this and we will succeed and prevail. Beating it not only depends on innovation and technology. The vaccine, its transportation, distribution, and vaccination will help obviously.

However, ultimately, it depends on all of us, as a species, to keep our loved ones safe and healthy and take all measures to avoid spreading it to help heal the world. It is our community, our world. The only one that we have. The bright thing is that we returned to the basics: we care for each other.

Learn more at www.AdvitamIP.com

U. S . A .

Name: Michele S. Katz Law Firm Name: Advitam IP, LLC Country: U.S.A.

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agement, many companies and entrepreneurs turn to Michele S. Katz.

registrations and issued patents, as it

ENT RESULTS have earned Michele recognitiondoes by Super Lawyers in obtaining favourable outcomes in state and federal gazine, Marquis Who’s Who in America, and Illinois Super Lawyers. She iscourt and before the Trademark and Appeal Board nternational Advisory Experts Award Winner, was nominated to IAM Trial Strategy (TTAB), US Customs, – The World’s Leading IP Strategists, selected as a Leading Lawyer, and and the US Court of Appeals for the Federal Circuit. As uded in the Top 100 Alumni We Love by The Hebrew University.

a certified mediator, Michele has also brought parties to creative solutions k in the calming influence of effective IP portfolio for theirmanagement. disputes. Her firm was recently recognised in Acquisition International Magazine for Most hele is a founding partner of Advitam IP in Chicago and is passionate aboutInnovative IP Law Firm in for 2020. ng back in a meaningful and measurable way. Learn more at Illinois AdvitamIP.com

She is most passionate about giving back in a meaningful and measurable way. In collaboration with her family, her firm started a scholarship fund in the name of her beloved father, an icon in the IP field, and annually funds a master’s scholarship in the innovative sciences at The Hebrew University (Israel). In the same vein, Michele A D E M A R K S | C O PY R I G H T S | TR A D E S E C R E T S | D O M A I N N A M E S | LITI G ATI O N created an on-line program that mentors law C U S TO M S / A N TI - C O U NTE R F E ITI N G | LI C E N S I N G A LTE R N ATI V E D I S P UTE students and new lawyers all over the world R E S O LUTI O N | P O R TF O LI O M A N AG E M E NT A DV I P.C O Mof professional development inITA all Maspects and goal attainment. An advocate of education, Michele is also on the speaking circuit. She has spoken on high level IP topics at global conferences. Michele is a big believer that business owners make better business decisions when they understand the fundamentals of IP law. Hence, she has spoken to the

during the Chaos A Cause Born

Position: Founding AC K ER S . COUN TERF E IT E RS .Partner S Q UAT TER S . en too much of daily professional life is filled with the stress of IP portfolio Website: www.advitamip.com

L M. FOCUSED. THOROUG H. Michele provides a calming approach to aging IP assets. With nearly two decades of experience, Michele conducts emark searches, prepares opinions, and monitors trademarks to confirm Michele Katz, the founder of the intellectual property law firm Advitam her clients’ intellectual property rights are used properly and effectively. has provided manages copyright registration portfolios in additionIP,toLLC, familiarizing U.S. powerful expertise in client counselling, toms with client designs in an effort to stop counterfeit goods at U.S. strategic analysis, licensing, prosecution, and litigation in ders. In the area of patents, Michele litigates complex patent litigation all areas of intellectual property (IP) law ters including such varied products as textiles, hard airbag fordisk 20+drives, years. Her diverse skill set and ers and interface transfer technology. She also manages patent portfolios drive to deliver results applies equally nsure U.S. and foreign patent protection for clients. to obtaining trademark and copyright

T R A D E M A R K S | PAT E N T S | CO P Y R D O M A I N N A M E S | L I T I G AT I O N | C U S

start-up community at 2112 and the Illinois Hispanic Chamber of Commerce, as well as to the well-established business owners of the National Association of Women Business Owners. Getting to them while they’re young though is also critical, so since 2015, Michele has served as the expert on IP law for the Young Entrepreneurs Academy (YEA!), a transformative after school programme geared to 12-17-year-old girls and teaches them how to select, research, vet, develop and market a business. As far as recent accolades go, Michele was included in IAM Strategy 300 – The World’s Leading IP Strategists in 2019 and 2020, selected as the only US attorney to be featured in the inaugural issue of the Women’s IP World annual magazine, recognised as an International Advisory Experts Award Winner, selected as a Leading Lawyer, recognised by Marquis Who’s Who in America, the standard for reliable and comprehensive data for today’s leaders, included in the Top 100 Alumni We Love from her alma mater, The Hebrew University and voted into Illinois Super Lawyers. Michele has passions outside of the IP world as well. She enjoys spending time with family, including her four children, travelling internationally (pre-COVID19), refining her foreign language skills, getting her heart rate up with outdoor activities, and relaxing with wine and whiskey tastings. Every summer (except summer 2020), she spends a week volunteering at La Semana, a week-long culture day-camp for children in elementary through high school who were adopted from Latin America and their family members. Fostering cultural understanding has always been an integral part of Michele’s personal life and Advitam IP’s business practice.

Written by Michele Katz, Founder Partner at Advitam, LLC, Chicago, USA www.advitamip.com

“Why are we here if it ’s not to help others?”

While this quote does not originate with my father, I attribute it to him anyway because it is his voice I hear when I repeat it. And as lawyers, that’s what we do. We help people. In 2020, I decided to reach beyond my profession, way beyond and started a foundation called Plus One. But let’s back up. We’re an adoptive family. That means I have adopted children— two of the four of them, both born in Bogota, Colombia. My eldest was adopted as an infant, and my youngest was adopted in December 2019, right after her 8th birthday. As a side note, I am still grateful that her adoption was completed before the pandemic. I walked into my daughter’s orphanage with a bag of lollipops, not the first time. At this point, I’ve become a known entity. The beautiful children stop what they are doing and come running when they see me. And as they approach with their smiling faces, I wonder how can so many children not have a forever home. It just did not make sense. There are plenty of people building families. There was clearly a gap here. This was probably when the idea for Plus One originated, but I did not know it yet.

After settling in back home (Chicago), several people told me they were moved by our story and said they had contemplated adoption but had no idea where to start and therefore never did. Ah ha, the reason for the gap. Perhaps there was an easy fix. What if, through education, I could increase the awareness of the how and connect wanting parents with resources so they could get past the mere thought of adoption to starting the process. That got me thinking about why I find adoption so important. The world can be a tough place. Just think about the challenges we have faced during the pandemic. Have we ever clung to our loved ones tighter? And I do not mean physically necessarily. We have found new ways of communicating, working, and connecting. We understand more now than ever how human connection is so important for our well-being. Scroll your LinkedIn, Instagram, and Facebook feeds, and you’re bound to see the signature screenshots of zoom gatherings posted for holidays and business meetings.

So, imagine a child, for whatever the circumstance, has no loved ones. Children are set up for success when raised in a loving home. It provides trust and security. Without that, they may never learn healthy attachment. Why is that important? Without it, we do not relate to loved ones. It is how we relate to the world around us. We would not know how to display affection appropriately. We might feel abandoned when our partner goes out with friends or wants to spend some time alone. We learn attachment without even knowing it in childhood. And healthy attachment is learned, so without this education, the negative effects can be quite profound when these children become adults. For those who want kids, adopting a child is a priority, not the last report. It should be considered as a viable avenue like any other in their family planning. And why not make the world a better place as a result. The world has been hit hard recently. So, besides my day to day in the IP world, this is how I hope to help others, for why else am I here? How about you?

A CA L MI NG I NFLUENC E IN A C HAOT I C I P WORL D.

A NCGHUI NA ILLA Name: Keesha Fleming Lake Law Firm Name: Caribbean Trademark Services LLC Law office of George C.J Moore, PA Country: Anguilla Position: Managing Partner Website: www.caribbeantrademarks.com

H AC KER S . COUNTERFEI TERS . S QUATTERS.

When too much of daily professional life is filled with the stress of IP portfolio management, many companies and entrepreneurs turn to Michele S. Katz. CA L M . F OC US E D. T HO R O U G H. Michele provides a calming approach to managing IP assets. With nearly two decades of experience, Michele conducts trademark searches, prepares opinions, and monitors trademarks to confirm that her clients’ intellectual property rights are used properly and effectively. She manages copyright registration portfolios in addition to familiarizing U.S. Customs with client designs in an effort to stop counterfeit goods at U.S. borders. In the area of patents, Michele litigates complex patent litigation matters including such varied products as textiles, hard disk drives, airbag covers and interface transfer technology. She also manages patent portfolios to ensure U.S. and foreign patent protection for clients. C L I ENT R ES U LTS have earned Michele recognition by Super Lawyers Magazine, Marquis Who’s Who in America, and Illinois Super Lawyers. She is an International Advisory Experts Award Winner, was nominated to IAM Strategy 300 – The World’s Leading IP Strategists, selected as a Leading Lawyer, and included in the Top 100 Alumni We Love by The Hebrew University.

Bask in the calming influence of effective IP portfolio management. Michele is a founding partner of Advitam IP in Chicago and is passionate about giving back in a meaningful and measurable way. Learn more at AdvitamIP.com

Keesha Fleming Lake is an experienced attorney who has provided legal services to her clients for over 19 years. Keesha is a wife and mother of 3 children. She considers this role as one of her most important roles in life and one she enjoys fulfilling. Keesha was born and raised in the Caribbean. From her early adult years, she resided both in the United States and the Caribbean. Keesha maintains a professional and social residence between Anguilla and Florida. Keesha acquired her pre-college, college, and professional education in the United Kingdom, the Caribbean, and the United States. This provided her with the necessary foundation to build upon and establish a successful legal career in the Caribbean Region and the United States. Keesha started her legal career in the United States as an Associate for a major law firm. She provided legal advice to fortune 500 companies. Keesha returned to law school and completed her Caribbean Legal studies at the Eugene Dupuch Law School in the Bahamas, where she obtained a Legal Education Certificate. Following this, she practiced law in Anguilla, thereby developing her skills and understanding of the Caribbean region’s legal system. Keesha has tailored her practice to provide individualised attention to her client’s Intellectual Property portfolios. Her specialty is the management of large and complex Intellectual Property portfolios in the Caribbean; over the years, she has successfully resolved issues before registries resulting in registrations of trademarks and processing of other applications. With her legal education and extensive background in practicing law in the Caribbean and the United States, Keesha is skilled to navigate all aspects of Intellectual Property Law. Her understanding of the legal system in the Caribbean has allowed her to develop the expertise necessary to build her practice in the region. She is known

among her peers for her diverse knowledge and skill. She is a registered attorney in the United States: Michigan, Florida, and Missouri and also in the Caribbean: Anguilla, Antigua & Barbuda, and St. Kitts & Nevis. Keesha has focused her practice on both Intellectual Property Law and Corporate Law matters. Keesha has vast experience dealing with Caribbean Jurisdictions. She provides her clients with the advice they need to succeed in their applications. The services she provides are especially important and necessary for the manual Caribbean jurisdiction. Keesha’s preparations and experience allow her to provide high-quality legal advice to address applications before the Trademark Registries / Intellectual Property Offices in the Caribbean. In addition to being a member of the various Bar Associations, Keesha is an active member of the International Trademark Associations (INTA). She is up to date on any new Intellectual Property laws, regulations, and practices in the United States and the Caribbean. She actively serves on committees helping with the shaping of laws and procedures, including INTA’s AntiCounterfeit Committee. She has authored and co-authored several articles on the Trademark law practice in the Caribbean jurisdictions. BUSINESS AND PROFESSIONAL AFFILIATIONS Florida Bar Association, Anguilla Bar Association, Antigua & Barbuda Bar Association, St. Kitts & Nevis Bar Association, Michigan Bar Association, Missouri Bar Association, American Bar Association, Intellectual Property Law Division, Organisation of Eastern Caribbean States Bar Association, Association of Caribbean Corporate Counsel, Intellectual Property Caribbean Association and the International Trademark Association – INTA.

R E S O LU T I O N | P O R T F O LI O M A N AG E M E N T A DV ITA M I P.C O M

A NCGHUI NA ILLA

Trademark Practice in the

Caribbean Jurisdiction As discussed by Keesha Fleming lake, Managing Attorney at Caribbean Trademarks Services, LLC - Anguilla and Florida offices www.caribbeantrademarks.com

As a trademark practitioner providing services in the Caribbean region,

including managing trademark portfolios for brand owners, I act at times as local counsel in Anguilla or as an overseas counsel for multiple Caribbean islands. Understanding the Caribbean region and the islands individually is important to provide adequate legal advice. To effectively advise and manage large portfolios for brand owners, counsel must understand the culture, geographic location, laws, and trademark systems, as well as understand the trademark office’s practices and procedures.

The Caribbean is made up of a group of islands surrounded by the Caribbean Sea. Like Anguilla, some of the islands to the north are also bordered by the North Atlantic Ocean. The Caribbean lies to the east of the North America region. The Bahamas and the Turks and Caicos Islands are also considered part of the Caribbean, but they do not border the Caribbean Sea. The Caribbean region also includes Costa Rica, Belize, Nicaragua, Guyana, Suriname, Venezuela, and Brazil, although they are

located along the border of South America. The natives of the islands speak different languages depending on the colonial history. There are Spanish, French, Dutch, and English speaking islands, all of which have their own unique culture reflective of the colonial background. The diverse nature of the Caribbean islands is also reflected in the trademark legislation, practice, and procedures. In the early 1900s, the trademark practice was more standardised and in line with the legislation of the colonial owners. This has changed, and the last two decades witnessed major trademark reform as significant legislative changes went into effect. Throughout the region, islands adopted and passed new trademark acts and/or legislation. Some of the legislative changes are as follows: in 2001, Belize and Jamaica passed new legislation; in 2002, Anguilla’s Trademark Act went into effect; in 2003, St. Vincent and St. Lucia’s Trademark Act went into effect; in 2007, Antigua and Barbuda’s Trademark Act (2003) went into effect; in 2009 Dominica’s trademark Act went into effect; in 2012 Grenada and Montserrat’s Trademark Acts went into effect; in 2015 The British Virgin Island’s Trademark Act went into effect; in 2017 Cayman Islands’ Trademark Act went into effect; in 2011 Turks and Caicos’ Trademark Act went into effect, and in 2020 Trinidad and Tobago’s Trademark Act went into effect.

Each Island Implements its Own Trademark Regime Trademark protection in the Caribbean is dependent on the legislature passed on each island. There is no universal approach or universal law that governs the trademark practice in the Caribbean. Each island has implemented its own trademark regime. They each have tailored their laws, policies, and examination standards to effectively protect the rights of trademark owners according to their trademark regime. With each island having its own trademark laws, the trademark practice in the Caribbean region can be confusing and intimidating. History, culture, and economic development play a role in the advancement of the legislature. None the less, there is consistency between some islands in the way the trademark practice is enforced, which helps practitioners advise and support brand owners to ensure the brand is effectively managed and protected. The protection and practice also depend on the level of independence the island has from its colonial owners for those islands that are not independent. For example, the United Kingdom was the colonial owner of many jurisdictions, and for some of those islands, independence from the UK ended their reliance on UK registrations. To date, the islands that still accept filings via a United Kingdom registration are the British Virgin Islands, Anguilla, Guyana, Montserrat, and the Turks and Caicos Islands. Islands such as Jamaica, Antigua and Barbuda, St. Kitts and Nevis, the British Virgin Islands, and Dominica no longer accept registration via a UK registration. Each island’s trademark enforcement is dependent on the advancement of the local trademark office. In some jurisdictions where the legislature is not updated, trademark enforcement is not as significant. However, trademark enforcement is stronger in jurisdictions with larger markets and more modern legislature. Trademark enforcement is dependent on the operations of the trademark office and supporting government organisations. The size of the economy is also important. Most islands are relatively small, and economic development is on a smaller scale and therefore has not yet developed strong trademark regimes. In these smaller island jurisdictions, trademark regimes are not given priority over the development of other industries such as tourism. There is a trend towards economic development in the region, and we remain vigilant on the lookout for more updates in the coming years.

Manual vs. Electronic Trademark Registries

Understanding which islands are manual versus those that are electronic is essential for a trademark practitioner who manages portfolios on multiple islands. While the law governs the legal requirements, filing and

examination standards vary depending on whether the trademark office’s operations are electronic or manual. Obtaining trademark protection in the manual jurisdictions may be more challenging as the scrutiny of paper applications are at a much higher standard. Manual jurisdictions still require originals or certified copies of supporting documents, and requirements such as legalisation or notarisation of documents can be burdensome or impossible in some instances and serve as stumbling blocks for brand owners. Also, processing times vary significantly between islands that remain fully manual versus those with an electronic system. Delays are evident in producing status checks, search reports, and in the processing of trademark applications, recordal applications, and renewal applications. The Coronavirus (COVID-19) pandemic has shed some light on the challenges brand owners can face seeking protection of their trademark in a jurisdiction that operates with manual filing. During this period, one positive outcome in this region has been the transition of some local trademark offices from manual to electronic filing systems or even partial electronic systems. This has increased efficiency as the trademark offices try to improve processing times.

National Registration vs. UK Re-registration

Registration of a trademark in the Caribbean region can be done via a national trademark application or via re-registration of an application filed in the United Kingdom in some jurisdictions. Practitioners must understand and be readily able to identify the countries that allow re-registration from those jurisdictions that are only allowing national registration. This is important due to possible cost implications and processing time differences. A more significant factor for understanding the registration system is to differentiate the filing requirements. Islands such as Anguilla, Guyana, Montserrat, and the Turks and Caicos Islands allow national registration and the United Kingdom re-registration. While islands like Belize, Jamaica, Antigua, Dominica, Trinidad and Tobago, and St. Lucia only allow national registration under the local trademark legislation and will not accept filing via United Kingdom re-registration.

Madrid Protocol in the Caribbean

The signatories to the Madrid Protocol in the Caribbean are Antigua & Barbuda, Trinidad & Tobago, Cuba, BES Islands (Bonaire, Saint Eustatius, and Saba), Curacao, and St Maarten (Dutch). This filing system allows for filing in a foreign country (including one of the Caribbean islands) and designating multiple jurisdictions for re-registration. While this system of filing can be more convenient and more efficient for some brand owners, a number of provisional refusals are being issued by Examiners due to the unique requirements of the specific

jurisdiction. Practitioners managing portfolios in multiple islands must be consciously aware of this fact. They must guide brand owners on marks that should go the national route for cost and timesaving benefits or suitable for the benefit of the filing through the Madrid system.

Understanding the Jurisdiction for Protections Purposes

A failure to understand the jurisdiction can present challenges for many brand owners. The assumption that trademark protection in one of the islands in the Caribbean will extend to many others or that a United Kingdom registration can automatically extend to English speaking islands is incorrect. Each island is a different jurisdiction within the Caribbean region independent from the other, and the trademark practice is governed by local legislation. Islands with similar names or islands with double names can be confusing when trying to determine the geographical extent of the protection provided by a registration. Jurisdictions such as Antigua & Barbuda, St. Kitts & Nevis, Trinidad & Tobago, St. Vincent & The Grenadines consist of more than one landmass; protection on one island covers both. Another example of a situation that can be confusing is St. Maarten (Dutch side), which must be distinguished from St. Martin (French side); although one physical landmass, the trademark regime and laws for each side of the island is different from the other. The British Virgin Islands remain a United Kingdom territory, and the United States Virgin Islands is a United States territory. Islands that are confused due to similarity in names include Antigua vs. Anguilla or Dominica vs. the Dominican Republic. There are many other examples of jurisdictional differences among the islands. The differences can be misunderstood, and brand owners miss an opportunity to have the proper geographical protection of trademarks.

Protection for Service marks

In the Caribbean, although service marks can be protected in most of the jurisdictions, protection for service marks is not available on all islands. This was not always the case; however, with the recent passage of local trademark legislation, in countries like Antigua, Montserrat, and the British Virgin Islands, protection for service marks is now available. However, the trademark Act in the Bahamas dates back to the early 1900s, and therefore protection for service marks remain unavailable there. In Guyana, protection for service marks is not allowed under national applications. Registration of a service mark in Guyana is allowed for reregistration of marks already registered in the United Kingdom. Suriname also does not allow protection of service marks.

CHA H IINA TI Name: Vanessa Abdel-Razak Law Firm Name: Eproint Country: Haiti Position: Partner Website: www.eproint.com

Anguilla Antigua & Barbuda Aruba Bahamas Barbados Belize Bermuda British Virgin Islands Caribbean Netherlands Cayman Islands Costa Rica Cuba Curacao Dominica Dominican Republic

Grenada Guyana Jamaica Haiti Montserrat Puerto Rico St Kitts & Nevis St Lucia St. Maarten St. Vincent Suriname Trinidad & Tobago Turks and Caicos Islands U.S. Virgin Islands

WWW.CARIBBEANTRADEMARKS.COM

OFFICES IN ANGUILLA AND PALM BEACH GARDENS, FLORIDA

FACSIMILE: USA 1(561) 833-9990

QUALIFICATIONS:

EMAIL: IP@caribbeantrademarks.com

George C.J. Moore, P.A. 2855 PGA Boulevard Palm Beach Gardens, Florida 33410

Since 2011, Vanessa is a lecturer at the National School of Financial Administration of Haïti (Ecole Nationale d’Administration Financière, ENAF), where she teaches the introduction to law and contracts course. She also lectures at Quisqueya University since 2016, where she teaches a course on environmental law. Her main areas of interest are intellectual property, business law, corporate law, family law, and public law. Vanessa is always giving back to her community and values being involved in social programs that provide opportunities for the less fortunate. As such, Vanessa serves as a board member for two nonprofit organisations engaged in health and education in Haïti.

TELEPHONE: USA 1(561) 833-9000

Palm Beach Ofﬁce

Vanessa Abdel-Razak has more than 15 years of experience in the areas of business and corporate law, intellectual property law, investment law, and public law. She provides advice to companies and individuals to help them conceive the optimal legal strategy for their business ventures. She represents her clients in a wide variety of legal disputes and transactions. Her practice and experience allow her to grasp a comprehensive understanding of her client’s needs and enables her to deliver sound and relevant legal opinions. Vanessa has also provided legal services to public entities and participated as an independent consultant in various projects for state entities and Public-Private Partnerships.

Anguilla Ofﬁce

- Law degree from Quisqueya University of Haïti (Cum Laude); - Master’s degree in international and comparative environmental law from the University of Limoges, France;

- Master’s degree in public law from the University of Aix-Marseille, France; - University Diploma in comparative legal studies from the University of AixMarseille, France; - Certificate in drafting and legislative methods from the University of Geneva, Switzerland; - LLM in international business law at the University of London ( to be completed in 2021). - WIPO Certificate on Trademarks, Industrial designs & Geographical Indications; - International Centre for settlement of investments disputes (ICSID) arbitration rules certificate; - Aircraft Acquisition and financing, International Aviation Law certificate, IATA, Miami;

ASSOCIATIONS AND AFFILIATIONS: - Member of Barreau de Port-au-Prince (Port-au-Prince Bar Association); - Member of Association Internationale pour la Protection de la Propriété Intellectuelle, AIPP; - Arbitrator at Chambre de Conciliation et d’Arbitrage d’Haïti ; - 2nd Vice president at Rotary- Club PVSUD; LANGUAGES: French, Spanish, English (full proficiency).

Calvin Lake Building, Suite 10 The Valley, Anguilla AI-2640 Telephone (Intl) 264-476-9900

CHA H IINA TI

Women and law.

Experiences and lessons.

As discussed by Vanessa Abdel-Razak, Partner at Eproint Haiti www.eproint.com

I am a lawyer, a proud mother of two beautiful children, and a wife. I spent several years of my childhood in Madrid, where I completed part of my elementary schooling. Arriving in Haiti, I quickly got used to the “Caribbean” lifestyle, although very different from what I had known until then. My academic course in Haiti began in a congregational school for girls and ended with a French baccalaureate in literature. At Quisqueya University in Port-auPrince, I obtained my law degree before embarking on studies of legal specialisation in Universities in France. I had decided from a very young age that I would study law. I loved reading and writing and had a tendency to protest whenever the opportunity arose! (My career was all mapped out!). Over the years, the decision to become a lawyer was solidified until it came to fruition when I obtained my law degree, not without challenges. Indeed, I realised that historically our society had been

marked by an archaic legal system, and that like those who preceded me, I would have to work hard to find a place for myself in this male profession. In addition, my plan to become self-employed would be fraught with challenges that I was ready to take on.

A legal system hostile to women. In the aftermath of Haiti’s independence in 1804, a new state was established, proclaiming the principles of freedom and equality that had long been denied to its inhabitants by the colonialist system, yet this new free state adopted the set of Napoleonic codes. The Haitian civil code, modeled on the Napoleonic code, was published in 1825 with some changes but carried many unfair provisions. In this

code, a married woman was deprived of rights and was placed under her husband’s authority, who administered her property and authorised her to work. In 1944, the law allowed married women to dispose of part of their salary. In 1950, the Haitian Constitution authorised Haitian women to vote, and finally, in October 1982), part of the discriminatory provisions concerning women were repealed from the Civil Code. We, therefore, come from a legal past that has not favoured the development of women. Women are evolving in a society that still retains traces of sexism and discrimination against them. We have come a long way; however, today, we follow the example of exceptional women lawyers who have led the way. In France in 1900, Sophie Balashowky-Petit, and Jeanne Chauvin, were the first women to be able to take the oath of office in Paris. In Haiti, Madeleine Sylvain-Bouchereau was the first female law graduate in Haiti

(1933) and the first female candidate for the senatorial elections in 1957. Ertha Pascal was a lawyer registered with the Port-au-Prince Bar Association in 1971, who then became the first female judge at the Haitian Supreme Court (Cour de Cassation) in 1986and later the first female president of the Republic of Haiti in 1991. In 2020, Marie Suzy Legros, became the first female head (batonniere) of the Port-au-Prince bar association. She took the reins of the corporation with courage and firmness in the ruthful assassination of her predecessor a few months ago. This is an outstanding achievement because the history of the Port-au-Prince bar has been male since 1859. Even when today, many women have entered the profession, the idea is still widespread that a feminised profession is one that is devaluated.

A female lawyer must prove herself. Aware of the challenges that awaited me as a young lawyer, I began my career with determination and the desire to create a place for myself in the profession. So, I decided to specialise by doing not one but two master’s degrees. I quickly realised that despite my degrees and professional accomplishments, I still had to prove myself more than my male colleagues, who often fell short of my skills. Unfortunately, this is a reality for women in different areas of the professional world, and this unfair rule is no exception for women lawyers. In my profession, I am often forced to adopt an aggressive attitude in order to be able to counter any sexist remarks or attitudes of my colleagues. Indeed, female lawyers are more likely to be verbally harassed in the work environment, office, or court. Comments about our physique, sometimes veiled in the form of compliments, have no place in a courtroom or a business meeting. Since the 18th century, unfortunate comments have been made with regard to female lawyers, such as that of this French deputy during parliamentary debates relating to the voting of the law which would authorise women to take an oath at the Paris bar association “If women receive the skilful in pleading, do we not risk accusing the magistrate of having allowed himself to be convinced by means other than good legal arguments?” My professional career is marked by collaborations in two very different prestigious law firms in Port-auPrince. I experienced different working atmospheres, but each firm has, in its own way, influenced and contributed to my professional development. Fifteen years ago, my first experience in a law firm propelled me to manage complex cases and manage a demanding and diverse clientele. Without any previous

real experience and being a mum of a year-old baby at the time, I faced many challenges that I did not expect, but which gave me the opportunity to demonstrate my abilities. In the workplace, I tried to put aside my maternal instincts because I did not want to be stigmatised or to appear that motherhood made me weak or reduced my skills. The law firm’s managing partner, who had recently celebrated 100 years of existence, treated me from my first day as an experienced lawyer. Without hesitation, he entrusted me with cases that marked my professional life; I keep fond memories despite the many challenges faced. My second experience working in a law firm in Haiti was different as I arrived with significant knowledge and new skills. I no longer needed to prove myself to others. However, it was a traditional law firm whose founding partners were from a generation not open to the feminisation of the profession. It was this collaboration that pushed me to set up my own firm. A project that was not new but that I had been reluctant to implement for fear of the unknown.

A woman-owned law firm. Opening my practice was one of the best decisions of my career. I knew that I needed to take a leap of faith and open my own firm. Aware of the investment that this represented and the issues and challenges that awaited me, I replaced fear with courage and created Cabinet Abdel-Razak &Associés, composed of a single lawyer, “me”. To my surprise, the small clientele that I had built up over the years followed me, and this clientele grew with time. Very quickly, I had to find associates to help me with the processing of the cases. It is a known fact that we can start to walk the road alone and arrive far. Still, if we want to reach even further and achieve the objectives that we have set for ourselves, we must surround ourselves with people who have complementary skills and share similar aspirations to ours. After a few years, I opened my practice to partnerships that allowed me to experiment with new working methodologies and open to new perspectives. My partnership with Eproint results from my collaboration with my colleague Leyla Harper-Dominique who, from her integration into the firm, brought innovative ideas and efficient systems. Leyla and I partnered with Eproint, a firm founded in 2000 offering intellectual property services in Latin America and the Caribbean. As the Haitian branch of this dynamic and renowned IP firm, we are happy to assist our local and international

clients in protecting their branding assets. Our diverse cultural influences allow us to have a legal offering and customer service that meets international standards and the needs of a cosmopolitan clientele. Intellectual property services in Haiti require a mobilisation of skills and resources to face the logistical and administrative constraints that exist in the country. The timeframe for procedures can be slow since the laws are outdated and are not necessarily adapted to the current reality. The inadequacy of certain practices with regards to the legal framework and the weakness of legal sanctions are some of the challenges that one must consider when implementing strategies for clients. Eproint Haiti’s policy is to respond to client requests without delay and to maintain fluid and open communication with all parties involved. We anticipate obstacles and deliver results across the full range of legal services we offer, particularly trademark registration, trade name registration, and copyright protection. Despite the daily challenges encountered in the profession and the management of a law firm, there is no doubt that the benefits and satisfaction one feels when guaranteeing a standard of service make it well worth it. Working in Intellectual property in Haiti has taught me to implement an entrepreneurial point of view, invest in the appropriate technology, surround myself with people who have complementary skills, and use marketing and promotional tools to develop a network of contacts. Persistence and a clear vision of my goals were important in achieving success in this field.

Success is a personal matter. Remember that the very notion of success varies from person to person; we can easily be influenced by representations of success that do not suit everyone. Each may have a different view of what constitutes professional success. It may be about financial success, social success, self-fulfillment, happiness at work, worklife balance, climbing the ladder, achieving great things, inspiring others, having the power to influence, and making a difference in the world to serve others. The bottom line is that success is defined in terms of each individual. Success is the ability to achieve what is most important or valuable in our life. I have walked a long way on the road to success and hope I’m able to inspire women and show them that anything is possible despite the many challenges we face. I will continue to work hard to pave the way for the women of the generations to come.

JACM HA I NA ICA Name: Dianne Daley McClure Law Firm Name: Foga Daley Attorneys-At-Law Country: Jamaica Position: Founding Partner Website: www.fogadaley.com

Dianne Daley McClure is one of the founding partners of FOGA DALEY and the head of the firm’s Intellectual Property (IP) Department. Her practice areas include trademark and patent prosecution, commercial IP transactions and disputes, IP portfolio management, and contracts in media, entertainment, and sports. She has a Bachelor of Laws Degree with Honors from the University of the West Indies (UWI) and a Master’s Degree in Comparative Law specialising in IP and International Copyright from McGill University, where she attended as a Canadian International Development Agency (CIDA) scholar. Dianne was called to the Jamaican Bar in 1990 and has over twenty years of IP law and practice experience. Her first job in the field was as legal director and head of Jamaica’s Copyright Office in 1995. She advised the government on IP legislative and policy issues and represented Jamaica as an IP Expert at international forums, including the World Intellectual Property Organisation (WIPO) and UNESCO. Dianne was active in the negotiations of the WIPO Internet Treaties. She also coordinated the establishment of the Jamaica Intellectual Property Office (JIPO) in 2001 and served the JIPO Advisory Board’s acting Chairman. She is an Adjunct Lecturer for the Master of Laws Degree Programme on IP in the Creative and Cultural Industries. She lectures the Entertainment Law LL.B. Course at the Faculty of Law, UWI Mona, and Patent Law for the LLM Programme at UWI Cavehill as a WIPO Tutor. She has been Chairman of the Intellectual Property Committee of the Jamaican Bar Association for several years. Her other professional memberships include: • The International Trademark Association (INTA)

• The Global Advertising Lawyers’ Alliance (GALA) • The AEA International Lawyers Network • Justinian Lawyers • The Intellectual Property Caribbean Association (IPCA).

Since 2002 Dianne has been an active member of INTA and has served the INTA Public Resources Committee, INTA Related Rights Committee, the Geographical Indications Committee, and currently the Copyright Committee. Dianne has also been a contributor to the INTA International Oppositions Guide since 2003. She is the Chairman of the Jamaican Copyright Licensing Agency (JAMCOPY) and Company Secretary for the Jamaica Music Society (JAMMS), both National Copyright Management Organisations. Dianne has authored several publications on IP, including: • Jamaica: Intellectual Property, International Encyclopaedia of Laws, Kluwer Law International (2008), Intellectual Property Suppl. 47 (September 2008) (a Monograph) • Jamaica Chapter published in Copyright throughout the World, edited by Prof. Silke Von Lewinski, West (2009, updated 2018) 147 pages) • Shades of grey: uncovering the century-old imperial imprint on Jamaica’s modern Copyright Act – published in A Shifting Empire: 100 Years of the Copyright Act 1911 edited by Ysolde Gendreau and Uma Suthersanen, Edward Elgar (2013) (pp. 168 – 203)

• Canada’s Treatment of Geographical Indications: Compliant or Defiant, published in An Emerging Intellectual Property Paradigm: Perspectives from Canada, edited by Ysolde Gendreau, Edward Elgar (2008) (pp. 35- 66) Her previous appointments include Consultant for the Commonwealth Secretariat and the UK Commission on IP Rights, Deputy Chairman, Copyright Tribunal and Special Ministerial Advisor on IP.

• The International Association of the Advancement of Teaching and Research in Intellectual Property (ATRIP)

JA M A I C A Name: Nicole Foga Law Firm Name: Foga Daley Attorneys-At-Law

South America

Country: Jamaica Position: Managing Partner Website: www.fogadaley.com

Nicole Foga is the Managing Partner of Foga Daley and heads the firm’s Telecommunications, Media & Technology Department. Her practice areas include Information Technology Law, Data Protection and Privacy Law, Intellectual Property and Mergers and Acquisitions. Ms. Foga holds an LLM in Commercial Law (Aberdeen University), LLB (UWI), and a BA (1st Class Hons.) (UWI). Ms. Foga chairs the Telecommunications, Broadcasting, and Technology Committee (TBTC) of the Jamaican Bar Association (JAMBAR), is Chairman of the University of Technology Pension Fund, a Vice Chairman of Jamaica’s Copyright Tribunal and member of the Legal and Enforcement Sub-Committee of Jamaica’s National Environment and Planning Agency. She is also a member of the International Trademark Association (INTA), the INTA Data Protection Best Practices Subcommittee, ITechLaw Association, Society for Computers and the Law, and an Associate Member of the American Bar Association and the Institute of Electrical and Electronics Engineers. She is a Director and the Company Secretary for the Usain Bolt Foundation, as well as Kingston Properties Limited. This publicly traded company is Jamaica’s pioneer Real Estate Investment Trust. She served as Director and Secretary of the Environmental Foundation of Jamaica for six years and was a member of the International Committee of the Council on Foundations in the USA for four years. Previous appointments include General Counsel in the Office of Utilities Regulation, Legal Advisor to the Broadcasting Commission, Crown Counsel in the Attorney General’s Department. She has represented Jamaica at various international and regional conferences on telecommunications and intellectual property and was the Chairman of the World Intellectual Property Organisation (WIPO) Caribbean Regional Committee on Electronic Commerce and Intellectual Property.

Ms. Foga has been a featured speaker on various Information and Communication Technology Law issues, including cybersecurity, professional standards in the use of technology, and data privacy and protection. In 2020 she moderated two JAMBAR Continuing Legal Education Webinars: November - “Screened Out! Lawyers Need Time to Think!” and July - “Data Processing Standards for Lawyers”. In 2019 she presented on Ethical Considerations in the Use of Technology in the Practice of Law for the JAMBAR in September. In June, she was a panellist who spoke on Data Protection: What next for NIDS?: Understanding the Supreme Court Ruling and Looking Ahead at the Interim Cyber Security Conference organised by the Mona ICT Policy Centre. In April 2018 and December 2017, she presented on the topic 21st Century Digital Law Challenges for the General Legal Council as part of its Continuing Legal Professional Development program. As Chair of the TBTC, she led the team representing JAMBAR which addressed the Joint Select Committee of the Houses of Parliament on the Review of the Cybercrimes Act in March 2013, as well as the team which addressed the Joint Select Committee of the Houses of Parliament on the Data Protection Bill in March 2018. Ms. Foga authored Cyber Law in Jamaica, 2012, and co-authored with Dianne Daley IP Rights and Caribbean ICT Industries: The Case for Reform - published in Ringtones of Opportunity, 2012.

Sponsored by

Name: Claudette Vernot

Trademark falsification

Law Firm Name: Estrategia Juridica Country: Colombia Position: Director & Attorney at Law

A GROWING PROBLEM FACED BY TRADEMARK HOLDERS

Website: www.estrategiajuridica.co

Claudette Vernot has focused her career on studying and improving brand protection programs and IP litigation strategies in Colombia. After receiving her Law Degree from the Universidad Externado de Colombia, she completed a postgraduate diploma in the University Pantheon Assas in Paris on Civil Law. She is the Vice-Chair of the Anticounterfeiting Committee in INTA and is also a member of ACPI, IPCA, and APRAM associations. Ms. Vernot is an expert in the protection of trademarks throughout Latin America and Central America, advising several companies at the regional level in the definition of strategies to protect trademarks and enlarge markets while providing solutions to fight contraband and counterfeit. Ms. Vernot was Regional Outside Counsel for five years, assisting the General Legal Counsel in the fight against the Illegal Trade for the Company PMI, specifically covering the Latin American Region. Ms. Vernot started her practice in trademarks in a French Company, SODIAL, in Paris. She then worked for three years in Bogota for the law firm Cavelier Abogados. Ms.Vernot founded her own practice, Estrategia Juridica, in 1998. Her Practice areas include Brand Protection, Criminal and Civil Law, Unfair Competition, Trademarks, Patents, Copyrights, Consumer Law, and Data Protection. Claudette Vernot was the pioneer woman lawyer in Colombia for IP criminal cases for

C O L O M B IA

brands such as Louis Vuitton, Oakley, Nike, Adidas, and Microsoft. New actions such as Customs Border Measures and Consumer law were part of the new strategies for brand holders. She began programmes for training Customs officers, police force members, and different agencies in 1999. Her experience in the Intellectual Property field makes her one of the most recognised attorneys in Colombia. She has trained her team to understand that the client is a business partner and they must collaborate to find strategies to protect their IP Portfolio. She works for several brand holders, advising the Latin American Region in order to find legal strategies against transnational counterfeiters. She focuses her programmes on the main Ports of the country. She has actively collaborated with The National Tax and Customs Direction in the modifications to Customs Law related to border measures in the country. Nowadays, she represents IP matters for prestigious companies like Crocs, Luxottica, Specialized, Epson, Nokia, Polo Ralph Lauren, Harman, Grupo Bimbo, Schaeffler, Fox Head, Monster Energy, among others. She has worked as a professor in the area of Commercial Contracts related to Industrial Property Rights, Copyrights, and New Technology at Universidad Externado de Colombia. Ms. Vernot speaks Spanish, English, French, and Italian.

Fotografía por: Avigator Fortuner/shutterstock

C O L O M B IA

Written by Claudette Vernot, Director at Estrategia Juridica, Colombia www.estrategiajuridica.co

In Colombia, according to the report dated November

12, 2020 issued by the DANE (National Administrative Department of Statistics)1, as of September 2020, the number of containers from different countries amounts to 29,201,641. These containers mostly come from the United States, China, Mexico and Brazil. Of these imports, a low percentage can be identified as trademark falsification by the Customs authorities (in Colombia, it is the National Tax and Customs Directorate, DIAN) which, in their hard work, stop, check, and report imports whose products are potentially suspected of incurring in this crime. As falsification is a crime against the economic rights of a company that owns a trademark, Customs, as an administrative control authority, will depend on the disposition of the trademark holder being infringed in order to act and stop the nationalisation process or transit of the suspicious merchandise. Once the coordination between the customs authorities and the representatives of the owner of the trademark is achieved, the merchandise is detained and brought before the judicial entity in charge of the protection of the Intellectual Property of the companies, in this case the Superintendence of Industry and Commerce, the Attorney General’s Office and/or the Judicial Police.

To conclude:

Fotografía por: Estrategia Juridica Procedimiento en Puerto de Cartagena – diciembre de 2020

As a result of this type of procedure in Colombia, a large number of products were seized; in this case, from a wellknown glasses brand. The products were imported from China and were detained by the customs authorities of the port of Cartagena. Inside the container, 128 boxes were found, each containing 600 glasses, for a total of 76,800 pairs of glasses that were detained by customs with the support of the trademark owner. These goods will remain in custody of Customs in Cartagena until the product is seized by the Judicial Police in Cartagena, on the orders of a Prosecutor of that jurisdiction. Once the product is in the custody of the prosecution, an official police expert will prove that the product is counterfeit and the prosecutor will order the destruction of the merchandise.

The previous case is just one of those that were successfully executed in 2020; and despite the hard work of the Colombian authorities, the amount of imports received on a monthly basis are so high that much of the illegal merchandise imports achieve their nationalisation process, and therefore their final destination in stores, wineries and online market places. Despite the current contingency of COVID-19, it has been possible in Colombia to identify imports with counterfeit products entering the territory, as well as the progressive increase in online businesses trying to market such products. This being the result of months of closings of commercial premises due to the quarantine and the current world economic situation, which has forced online businesses to be the best option for selling illegal products. The challenge that trademark owners face today, as well as their representatives in each country and the authorities themselves, is to achieve strategies and join forces to fight against the scourge of illegality. https://www.dane.gov.co/index.php/ estadisticas-por-tema/cominternacional/ importaciones

CS H PAI NA IN Name: Isabel Bandín Barreiro Law Firm Name: GÓMEZ-ACEBO & POMBO Country: Spain

Europe

Position: Digital & Innovation Lawyer/Associate Website: www.ga-p.com

Isabel Bandín Barreiro is a Spanish legal practitioner, intellectual property, technology, digital & innovation expert, lecturer, and public speaker. She is currently an associate at one of the leading intellectual property and digital law firms in Spain, Gómez-Acebo & Pombo (“GA_P”), working with some leading brands and digital/technology companies in the world. Isabel holds a Law, Development and Diplomacy degree from Georgetown University (Washington D.C., USA) as well as a double degree in Law and Political Science and Public Administration from Universidad Pontificia de Comillas (Madrid, Spain), where she also obtained a double LLM in Intellectual Property and Admission to the Bar. Additionally, Isabel obtained an executive program in Privacy, Data Protection, and Cybersecurity from the wellknown I.E. Law School and has been certified by the Blockchain Intelligence Institute as an expert in blockchain, smart contracts, tokenisation, and crypto actives. She has a strong understanding of all aspects of I.P. and technology matters (with a particular focus on disruptive technologies

& innovation), as well as advertising and digital marketing regulations. She is part of GA_P´s litigation team and provides strategic legal advice to high-profile industry names operating in multiple end-markets such as entertainment, digital, retail, luxury, and technology. Indeed, in 2020, Isabel’s advice on a first-of-a-kind project involving blockchain & artificial intelligence was ranked by Expansión Jurídico within the Top 10 most-disruptive projects on a national level. Even though Isabel worked briefly for the United States Federal Government in 2013, her career has mainly been developed in Spain, where she has worked for two of the most important national law firms (Cuatrecasas and Gómez- Acebo & Pombo). Moreover, Isabel actively collaborates with several top-leading organisations such as the Interactive Advertising Bureau (IAB) -the world’s largest association for digital communication, advertising and marketing-, the International Bar Association (IBA) -the world’s leading international organisation of legal practitioners, bar associations and law firms- and Interlaw -a leading global network of pre-eminent law firms worldwide-.

Sponsored by

S PA I N

IP CONSIDERATIONS OF

Augmented and Virtual Reality

Written by Isabel Bandín Barreiro Gómez-Acebo & Pombo (GA_P), Spain www.ga-p.com

Virtual Reality (VR) and Augmented Reality (AR)

are two disruptive technologies that have bridged the digital and physical worlds. Although they first became popular in the fields of gaming, live events, and entertainment, they have widely diversified towards industries such as healthcare, retail, education, hospitality, real estate, architecture, or the military, among many others. Spain is a promising player on the global AR and VR scene, especially active in the creative VR production and experiences, industrial applications, and postproduction software. Driven by these breakthrough technologies, and in just a few minutes, we can be visiting the Prado Museum without leaving our house or virtually transporting ourselves to those holidays that we had to cancel due to the pandemic by using new filters on Instagram or Snapchat. We can be virtually trying out our new bespoke car long before it is manufactured or learning how to operate a (virtual) heart - crossing limits that would otherwise be unthinkable.

As AR and VR technologies emerge, so do legal questions arising from their use. These technologies have substantially impacted society, with major advances that, in addition to generating improvements, also represent a challenge from the regulatory point of view. However, both AR and VR lack an ad hoc legal framework in both Spanish and EU regulations. Therefore, businesses need to be proactive in tackling these issues, as it will take courts more time to duly interpret how to apply traditional laws to these never seen before scenarios. As a result, third parties that engage with AR/VR providers and platforms will need to carefully formalise the understanding of rights and expectations before sharing any ideas. Corporations on both sides of any contract -for the use of these technologiesmust update their initial checklist and take into account, at least, the following topics:

(a) Engaging in a previous due-diligence exercise in order to avoid and/or prevent any third-party rights infringement. (b) Protecting pre-existing rights and appropriate allocating future rights in creations and/or designs that might be created. (c) Considering future exploitation rights, exclusivity, and territorial scope. (d) Liability allocation (i.e., through a service agreement with the technology service provider and via terms and conditions for the corresponding users of the VR/AR experience). As AR/VR technology becomes more popular, there will be unintended legal consequences and liability issues that companies, brands, and AR/VR content creators must be aware of.

The settled dispute between Facebook’s virtual reality subsidiary Oculus and game maker ZeniMax Media (Zenimax Media Inc. v. Oculus VR LLC) requiring Facebook to pay 500 million US Dollars in damages for copyright infringement is just a mere example of the abovementioned potential legal consequences. Listed below are several intellectual property key issues that should be considered, at least, by the parties engaging with these technologies: 1. Inserting intellectual property of the real world into the virtual world: to create a realistic virtual experience for the consumer, virtual or augmented reality developers (or brands who want to use these technologies) often base or inspire such “virtuality” in the real world. The virtualisation process usually involves using and reproducing assets that are protected by image and intellectual property rights in the real world (e.g., brands, trade names, designs, drawings, etc.). Therefore, corporations that use these technologies on a commercial level must adopt a proactive approach to monitoring content included in the VR/AR environment and its compliance with traditional intellectual property and image regulations. According to Spanish Intellectual Property Law (Real Decreto Legislativo 1/1996, de 12 de abril, por el que se aprueba el texto refundido de la Ley de Propiedad Intelectual, regularizando, aclarando y armonizando las disposiciones legales vigentes sobre la material), owners of intellectual property rights have control not only over identical, substantially similar or transformed reproductions in the same medium (in the real world) but also over those derived in other formats (such as the virtual or augmented reality environment) even if they did not exist when the original work was created. Furthermore, in Spain, IP owners -as part of their moral rights- are legally entitled to insist on the respect of the integrity of their work and to prevent

any distortion, modification, alteration, or derogatory action (such as its transformation into a 3D or 360º environment for VR experiences) which would be prejudicial to his/her legitimate interests or reputation. 2. Virtual intellectual property rights in the real world: VR systems allow the creation of parallel virtual universes and products within them that are likely to have intellectual property rights protectable in the real world. Therefore, it is highly recommended that the creators and users of an AR/VR environment expressly regulate who owns the intellectual property rights generated in the virtual world (either individually or through the corresponding terms and conditions of use). 3. VR and AR rights under existing contracts: another significant aspect on the contractual front is to appropriately determine who owns VR and AR rights under existing contracts that were drafted before these technologies existed (i.e., similar to the legal controversies over who owned video-on-demand rights under contracts that were drawn before those rights existed). Moving forward, it will be critical to draft an agreement with scalpellike precision to allocate who owns VR/AR rights and to what extent. 4. User generated content: it is very common for users of an augmented or virtual reality environment not to be passive guests, but to actively contribute to the experience, for example, by adding photographs, videos, music, and other content that is often protected by intellectual or industrial property rights. Therefore, the risk of infringement of third party rights is significant, especially as platforms often operate in real-time, and there is no possibility to review the content previously. The legal limits that allow the use of certain types of content based on freedom of expression or parody are hardly going to be as flexible when these contents are used for an economic purpose. Consequently, it is highly recommended to sign a user generated content terms and conditions of the virtual or augmented reality experience or a specific user generated content policy beforehand. 5. Trademark issues: trademark infringement will become more complex, particularly when an AR application overlays the trademarked content in the real world. So far, due to the relatively young age of VR technology, there is no case law in Spain regarding VR/AR uses and its implications for trademark regulation. However, analogous cases held in other jurisdictions -such as the United States- may offer an interesting perspective on the problems that can emerge in this regard. In the Marvel v. NCSoft case Marvel Enterprises sued

NCSoft (who had developed an online virtual world called City of Heroes where players could create avatars and design superhero costumes) for providing tools to its users to design superhero costumes for their avatars that allegedly infringed trademarks and copyrights of its well-known superheroes. The court dismissed Marvel’s trademark claim, stating that the players did not use the trademarks “in commerce” but was mere gameplay. The use of Marvel’s superheroes names by players within the game was not of an infringing nature. However, prospects for a successful claim improve if the designer and/or developer generates merchandise including a real-world sign in the virtual world and sells it for real or virtual currency, as was the case in Taser Int’l Inc. v. Linden Research, Inc. , in which the game, ‘Second Life’, stores were selling replicas of Taser’s stun guns to players. In this case, a decision was not rendered, as the parties reached an out-of-court settlement agreement, but Linden ended up removing the stun guns from the online store. 6. Patents: with these technologies rapidly expanding and evolving with their unique utilities; companies should seek patent protection for their applications. To satisfy patentability requirements, a patent claim for a VR/AR technology must be drafted cautiously so that the software part is incorporated into or working in combination with the physical device(s) (for instance, computer-readable medium or hardware). It remains to be seen whether the technology industry will distance itself from patenting and pursue alternative or hybrid protection (e.g., copyright, anticircumvention regulation, and/or licensing agreements).

Conclusion Intellectual property regulations have not been traditionally designed to be applied in an environment where reality and virtual simulation are intertwined. Therefore, it is necessary to pay particular attention to the first of a kind legal issues that may arise in the context of VR/AR environments, especially in countries such as Spain, where there is no case law so far in this regard. As these new technologies continue to develop, corporations, brands, and creators of VR/AR environments should consider developing a virtual and augmented reality strategy in order to prevent (or, at least, mitigate) any potential legal issues arising from the use of these technologies. ZeniMax Media, Inc. v. Oculus VR, LLC United States District Court for the Northern District of Texas Case No.: 3:14-cv-01849-K,

2 Marvel Enterprises, Inc. v. Ncsoft Corporation. Case No. CV 04-9253-RGK (PLAx).

Taser Int’l, Inc. v. Linden Research, Inc., 2:09-cf-00811-ROS (D. Az 2009)

UNITED C HKINGDOM I NA Name: Dr. Cerian Jones Law Firm Name: Cerian Jones IP Country: United Kingdom Position: Founder and Director Website: www.cerianjonesIP.com

Cerian developed an early love of language and science thanks to a mother who studied classics and a bi-lingual, bookworm father who, as an architect, also infused scientific, mathematical, and engineering influences. When it came time to go to University, though, Cerian chose the language route and gained an Honours degree in English. Still not wanting to leave University, she completed an M.Sc. in Computing which then led naturally into a perfect fusion of language and Computing Science by way of a Ph.D. in Artificial Intelligence (Natural Language Processing) at Durham University, the U.K. in the days long before “A.I.” became a buzzword. Eleven years then followed as a university lecturer in computing science in Canada. During this time, Cerian decided to go to law school part time to satisfy a long-standing curiosity about the legal profession. Although moving back to the U.K. in 2006 seemed a perfect time to make a career change and finally leave University, a background in language, computing science, and law seemed an incongruous combination of academic disciplines. Until that is, she discovered what patent attorneys do for a living. Drafting, prosecution, and commercial leverage of software-related patents are a natural mix of all three of those disciplines. When drafting a set of patent claims, you need to understand the inventor’s creation at a fundamental, technical level. This is especially important when it comes

to software due to the additional legal complications that the subject matter attracts in various jurisdictions. You also need to abstract away from all unnecessary elements to arrive at the essential features of the invention to ascertain the core, inventive concept – abstraction is a common and necessary skill in various forms within computing. You then need the natural language skills to express that inventive concept broadly yet succinctly. Finally, (of course) you need to understand the legal framework within which the patent will be prosecuted, commercialised, and possibly enforced. It is perhaps unsurprising, then, that as a European patent attorney, Cerian represents world-leading clients who produce disruptive, game changing technologies in a variety of software-related sectors. She has extensive experience and a niche specialism in drafting, prosecuting, and commercialising patents in various technical fields such as blockchain and cryptocurrency, Fintech and the payments industry, cybersecurity, A.I., and telecoms. Cerian is a co-founder of the U.K.’s largest cybersecurity cluster and chairperson of the Blockchain Connected initiative in Wales, U.K. She is a regular speaker at conferences on I.P., software patents, blockchain, and related topics. In her spare time, she is out walking with family and the dogs, or wielding a spade at her allotment, or enjoying a fun night out with friends, and generally enjoying the good life.

Specialist in patent work relating to softwareimplemented technologies, including blockchain, cryptocurrency, Artificial Intelligence, cybersecurity, and FinTech.

Patent drafting

IP strategy

Prosecution and FTO

Infringement opinions

Tel: +44 (0)7309 030020, email: cerian@cerianjonesIP.com https://www.linkedin.com/in/cerianjones/

Address Bristol & Bath Science Park, Dirac Crescent, Emersons Green, Bristol BS16 7FR, U.K. 32

POL AND

Name: Anna Grzelak, PhD Law Firm Name: Sigeon IP Grzelak & Partners, Patent Attorneys and Attorneys-at-Law Country: Poland Position: Managing Partner Website: www.sigeon.pl

Name: Izabella Dudek-Urbanowicz Law Firm Name: Patpol European and Polish Patent and Trademark Attorneys Country: Poland Position: Managing Director Website: www.patpol.pl

Izabella Dudek-Urbanowicz is a Polish and European Patent and Trademark Attorney. She is a respected practitioner in the field of trademark law with a proven track record of trademark prosecution and contentious cases. She is a member of INTA, Marques, PTMG, and ECTA. Mrs. Izabella Dudek-Urbanowicz was elected Managing Director of Patpol in 2016. She leads a team of over 90 people. Her key responsibilities include the development of business strategies focusing on people and innovation. Mrs. Dudek-Urbanowicz is also the head of the Trademark and Design Department, where she proves herself to be an experienced trademark attorney and a capable team leader with excellent managerial skills. Mrs. Dudek-Urbanowicz has a legal background as a Master of Laws from the Faculty of Law and Administration at Warsaw University. Amongst the clients of Mrs. DudekUrbanowicz, there are mainly pharmaceutical and FMCG companies; however, she also has vast experience working with other industry sectors, as far as trademark and design protection is concerned. For Izabella, the best recognition for her work is wellmanaged won clients’ cases and satisfied clients. At work, what she appreciates most is daily contact with people, both clients, and colleagues. During her tenure, Patpol has grown through a constant development process, through new milestones in the company lifecycle, such as founding Patpol Legal – a full-service law firm – in late 2018. In addition, the introduction of new employee benefits, i.e., packages, additional days off, or healthcare and sports packages.

During the Covid-19 pandemic, Mrs. Dudek-Urbanowicz ensured the business processes ran smoothly and continuously for the clients. Izabella provided consistent communication, always being there for her team and clients. She managed to keep high morale within the team despite a remote way of working for most of the employees. In her own words: “Patpol is one of the unique firms with very high retention. This company has its own unique energy, which consequently attracts people who are not only great specialists, passionate about their work but also personalities with good spirit and broad intellectual horizons and curiosity for the world.” Recently in 2020, Mrs. Dudek-Urbanowicz was recognised as the recommended professional in Poland according to the WIPR rankings of the most influential women in the IP world. She is one of two women from Poland recommended in this selection. Outside work Mrs. Izabella likes spending time with her daughters, reading fantasy or detective books. Also, she is a big fan of hiking excursions and collecting Japanese dolls. About the IP market in Poland: “I am pleased to note the positive trend among Polish small, medium, and large entrepreneurs regarding the demand for protection of their industrial property rights - not only trademarks but also their inventions. There is a growing awareness amongst businesses, research centres, or NGOs about various possibilities of financing innovations. Entrepreneurs use these funds to make their inventions – quite often revolutionary - recognised worldwide.”

Anna is a Polish and European Patent and Trademark Attorney and a Professional Representative before EUIPO. She has a PhD in biology and specialises in life science solutions, biotechnology, medicine, and pharma. Anna is a highly qualified patent attorney and an expert in the protection of innovative solutions in numerous areas of life-science, mainly in biology, biotechnology, chemistry, pharmacy, human and veterinary medicine, mechanics and nanotechnology. She represents clients in proceedings before the Polish Patent Office, European Patent Office (EPO), and the World Intellectual Property Organisation (WIPO) for patents and utility models. She also represents clients in matters related to trademarks and industrial designs before the Polish Patent Office and EUIPO.

Anna also participates in court proceedings before the Polish Patent Office and civil courts in patent invalidation or infringement cases. She is a frequent speaker at conferences and seminars. She represents domestic and international clients, including universities, research and scientific institutes, global corporations, and SMEs, in matters relating to the protection of their intellectual property rights. Anna aids in the development of IP, technology transfer, and commercialisation of intellectual property rights allowing expansion of technology on domestic and foreign markets. Anna is a member of PIRP- Polish Chamber of Patent Attorneys, EPI - European Patent Institute, and an active member of INTA and AIPPI.

Grzelak & Partners

Sigeon IP Grzelak & Partners, Patent Attorneys and Attorneys-at-Law provides a comprehensive range of services related to obtaining and maintaining industrial and intellectual property rights, legal and business advisory as well as in litigation. We combine our patent attorneys’ experience with exceptional legal, IP management and commercialisation expertise to provide our Clients with the “one-stop-shop” professional services in all matters related to IP.

Name: Małgorzata Cichosz, LLM Law Firm Name: Sigeon IP Grzelak & Partners, Patent Attorneys and Attorneys-at-Law Country: Poland Position: Of counsel Website: www.sigeon.pl With many years of legal consulting experience, Małgorzata is an attorney-atlaw, highly qualified legal practitioner, and intellectual property expert. She advises on all legal aspects related to intellectual property, particularly copyrights and derivative rights, industrial property rights, data protection, protection of business secrets and know-how, and protection of image and personal rights. She has experience in combating practices that have the hallmarks of unfair competition, including unfair advertisement and protection of marks and appearance of products. Małgorzata also provides legal support for investors, companies, scientific institutions, and individual inventors

relating to the management, transfer, and commercialisation of intellectual and industrial property rights and innovative IP solutions. She specialises in the protection of intellectual and industrial property, in particular in building IP protection strategies. Małgorzata also represents Clients before common and administrative courts, administrative authorities, and other entities and proceedings before enforcement authorities in proceedings regarding infringements of IP and unfair competition. Małgorzata is a professional representative before EUIPO, a member of the Warsaw Bar Association, and an active member of AIPPI International Association for the Protection of Intellectual Property

Grzelak & Partners

TURKEY Name: Dilek Zeybel Law Firm Name: Orbis IP & Law Country: Turkey Position: Managing Partner Website: www.orbisiplaw.com Dilek is one of the Managing Partners of Orbis IP & Law and is a chartered trademark & patent attorney. She is mainly responsible for clients in foreign countries in all areas of obtaining and enforcing IP rights. Born in Germany, she visited a Catholic and famous Jewish high school. She graduated with a firstclass degree from the University of Siegen with a B.A. in Literacy Cultural and Media Studies in Germany. During her university life, Dilek worked for one of Germany’s most popular public service television broadcasters WDR and several other media organisations. Her focus is mainly the foreign clientele consultancy and IP portfolio management of more extensive portfolios. She is also a registered sworn translator and interpreter of notaries in the Turkish Republic. Her main practice area is to manage large IP portfolios, and she leads the overseas department. Experienced in anti-counterfeit

and in-use searches projects, she represents legal disputes before the Turkish Patent and Trademark Office. Dilek is bundling her national and international experiences in IP Law, which she has gained from prestigious international clients and their projects. She specialises in trademark and patent matters by applying her experiences in enforcing registered and unregistered trademark rights across the world. Dilek is a member of associations like The International Trademark Association (INTA), European Communities Trademark Association (ECTA), German Association for the Protection of Intellectual Property (GRUR), Association of Intellectual Property Experts (VPP), and The Association of European Trademark Owners (MARQUES). Dilek speaks Turkish, German, French, and English very well.

Name: Aylin Şener Law Firm Name: Orbis IP & Law Country: Turkey Position: Managing Partner Website: www.orbisiplaw.com Aylin Şener is one of Orbis IP & Law’s managing partners, responsible for international clients in all areas of obtaining and enforcing IP rights. She leads the patent and design department and has a strong background of technical knowledge in patent, trademark, industrial design, and plant breeder’s rights and develops internal tracking systems and internal registration processes. Aylin is a chartered trademark and patent attorney in Turkey and a registered mediator before the Turkish IP courts. She has held numerous positions and managed internal IP development projects in her career and has gained a strong technical and business background. She started sailing into her IP career as an industrial design expert responsible for protecting industrial designs, enforcing industrial design rights, and leading several maintenance projects. Her career continued

as a Business Development Project Manager in Purchasing and Sales with the responsibility of organising relations with foreign suppliers, clients, and international patent offices. Aylin was the leading creator of a benchmarking & invoice management project for her previous office to minimise the purchasing expenses, which was a key project within the company. Afterward, she worked rotationally in all IP departments as a system and process developer in order to minimise technical, procedural, and human-based mistakes during file tracking processes. She is a member of associations like The International Trademark Association (INTA), European Communities Trademark Association (ECTA), and The Association of European Trademark Owners (MARQUES). She speaks English and Turkish very well.

TURKEY

Two women, one vision! A Woman’s touch made the difference. Written by, Dilek Zeybel, Managing Partner & Aylin Şener, Managing Partner, Orbis IP & Law, Turkey - www.orbisiplaw.com

Aylin Şener and Dilek Zeybel,

two fighters who made the top 5 companies in the nation. It only took them ten years to do this. Dilek has lived in Turkey for 15 years and moved to Turkey after her life and study in Germany, and found herself directly in the IP business. Aylin is actually from Bulgaria, and the office is multilingual and multinational in Turkey and led by these women.

How do women manage to become so successful in such a short time and in a time when it is not easy for women?

What is it like as a woman to establish an IP law firm in a male-dominated world of business?

“It’s no secret; we just did our best without thinking about how much effort it would cost and how much sales it would bring. We never gave up and processed each case as if it were the most important files in the world.“

“We have never had a major disadvantage,” reports Dilek, “but women have to work harder and prove themselves more. It’s not a magic formula, however women have it a little more difficult than men, and we have had to achieve a lot to have success, also in our private life. I have to admit that we were also very much supported by women who were assistants, paralegals, and legal staff at the beginning of our careers in IP. They are now heads of IP departments in large international companies. The cohesion of women within IP was also very supportive. Indeed, the strength of women in IP should not be underestimated. We know incredibly successful women who are really “wanted”. IP is an industry, in contrast to other industries, in which it is easier and clearer for women”.

“It was a hurdle that we overcame quickly and with solidarity,” says Aylin. “We have never had a moment in which we were desperate although there were enough ‘moments’”. “We are actually two very different characters, as different but also as well-attuned like yin and yang,” adds Dilek. “We had a vision of the perfect team, and now we have an excellent team of 30 people in the office, and we are reflecting the interaction that Aylin and I have in this team. The whole team is simply a reflection of the way we work and the vision we have for IP,” says Dilek. “It is imperative to us that each member has excellent knowledge and that each member’s strengths are well analysed, so as to use this person well within the team. Person-oriented management is our key because if you value your staff, know each members’ abilities, you automatically value your clients, and do a good job,” reports Aylin.

What is the key formula? “There is no specific formula,” says Aylin. “But we always feel very close to the client and always do our best. If you report more to the client than necessary, it will result in a useless flow of information. If you tell less to the client, the client is simply not “involved” and will see unsatisfactory work. Therefore, it is always essential for us to provide precise and clear information without leaning on the classical copypaste work,” reports Dilek.

You recently moved. Congratulations on your new law firm location. We see a “Googlelike” structure. Why did you choose this open office design? “It has always been our goal to be transparent and clear about everything, about our staff, our clients, and our partners. We have almost no walls in the office. The ones we have are made of glass. This architecture symbolises transparency. There is an incredible flow of information in the law firm. Your staff just always feels ready to get back to you and always display good teamwork. We have a bar table, so we have the opportunity to eat together and have a cup of coffee in a café-like atmosphere. A table-football corner with a PlayStation is also available and does a really good job”, laughs Dilek, “you can’t believe how relaxing it is for people; after the lunch break, you see smiling faces that are full of vigour for the second part of the day”. “If you are close to the staff and show that you are always available and interested in their motivation and mental health, things simply run very smoothly. Only our legal department and management are separated by glass walls so that we can still be reached visually. Noiseprotected workplaces guarantee a quiet space when someone is working on an important case and needs absolute silence.”

Do you have any recommendations for IP law firms and their management “Stay close to the client, never lose the thread to your staff as management, and make sure that you always work together without retiring to single rooms. If you do it right, your staff will reflect you and your vision by acting like you”, emphasises Dilek.

TURKEY Name: Claudia Kaya Law Firm Name: Destek Patent Country: Turkey Position: Manager & Managing IP Consultant

YOUR IDEAS... IN GOOD HANDS.

Website: www.destekpatent.com

Ms. Claudia Kaya acts as manager and managing IP consultant for the Swiss liaison office of the Turkish IP company Destek Patent. She holds an MSc. in Chemical Engineering from the Technical University of Dortmund, as well as a degree in interior architecture and interior design from the Hamburger Academy. Claudia started her career at the University of Dortmund, working in the department of process technology as a research associate. Thereupon she entered an international chemical group dealing with know-how, trade secrets, and licences in 36 countries all over the globe as one of the production managers. Before her assignment in Switzerland, Claudia was a managing consultant at Destek Patent in Turkey, leveraging her experience and expertise with global IP matters, foreign business, and legal and social communities to help to provide efficient IP service to a worldwide clientele. Her practice areas are patents, industrial designs, and trademarks, focusing on industries of chemical and mechanical engineering and medical engineering, polymer processing, life sciences, and interior equipment. She is an intuitive business developer who uses creative yet critical thinking. Claudia regards empathy and emotional intel to be essential in the hyper-communicative world of business. She believes strong and friendly

conversations help to build better business relationships. She pays great respect to client perception, speedy feedback, and follow-ups. Peers say that she is a fast adapter, flexible, versatile, and resourceful. In her private world, she’s interested in professional dancing competitions. She has a professional dancing education and developed several stage choreographies for children and youngsters. She acts in a lot of charity associations through which she gained an award for international understanding. She is the mother of two sons and a daughter and is a loving grandmother to her two grandchildren. With her family, she likes outdoor walking, travelling, and exploring different cultures by finding new interesting places all over the world.

PATENTS

TRAINING

™

BRAND

SEARCHES

Claudia lives in the countryside near a big lake and the Alps where she loves to photograph nature. She loves to stroll through different art and archeological exhibitions. Her favorite artworks are by Jack Vettriano, Kadinsky, Klett, and Irene Sheri. Her language skills underline her international personality. Claudia is a native speaker of German, has close to native speaker fluency in English and Turkish, as well as basic to intermediate knowledge of Italian and French.

TRADE MARKS

PATENTS

DESIGNS & MODELS

SEARCHES

DOMAIN NAMES

WEB WATCH

CUSTOM WATCH INTERPATENT S.R.L.

TRADE MARK

TORINO (Italy) - Via Caboto, 35 - 10129 - Mob.: +39 011 5684450 - Fax: +39 011 5681821 - email@interpatent.com MILANO (Italy) - Viale S. Michele del Carso, 4 - 20144 - Mob.: +39 02 67481868 - Fax: +39 02 40700339 - milano@interpatent.com ALICANTE (Spain) - Avd. Maisonnave, 28 Bis, 4º - 03003 - Mob.: +34 965020166 - Fax: +34 965020388 - alicante@interpatent.com

www.interpatent.com

I TA LY

I TA LY Name: Manuela Bruscolini Law Firm Name: INTERPATENT Country: Italy Position: Italian & European Trademark Attorney & Human Resource Manager Website: www.interpatent.it

Name: Nicole Gorlier Law Firm Name: INTERPATENT Country: Italy Position: Attorney-At-Law in the Trademark Department Website: www.interpatent.it In Interpatent since 2017, Attorney-atLaw, Nicole, carries out her activity in the trademark department. Graduated in Law from the University of Turin, she is enrolled in the Turin Bar. She has experience in the field of intellectual property acquired from a leading Turin law firm specialising in the sector. She deals with legal advice on trademarks, patents, copyrights, counterfeiting, unfair competition, and domain names and has experience in the registration procedures of Italian, EU, and international trademarks. In addition, Nicole has acquired experience in drafting and reviewing out-of-court and commercial agreements and in licensing and assignment agreements for trademarks and patents.

Nicole’s specialism is in the protection of the trademark from the initial phase: carrying out searches for anteriority, filing and prosecution both in Italy and abroad; surveillance activities; trademark defence at national, EU, international and foreign national level; consultancy in the context of opposition procedures to the registration of trademarks, at Italian, EU and foreign national level; drafting warnings, opinions and replies on counterfeiting, unfair competition and trademark validity. Nicole speaks Italian, English and French. She is a member of the Young Practitioners’ Committee of INTA.

Name: Simona Mantovani Law Firm Name: INTERPATENT Country: Italy Position: Italian & European Trademark Attorney Website: www.interpatent.it Simona graduated from the Law School of the University of Turin and is an Italian and European Trademark Attorney. She joined INTERPATENT in 2018 after having gained experience in other IP firms in Turin. Simona is a competent professional representative in the field of trademarks, designs and models before the European Union Intellectual Property Office (EUIPO). She now also works in the International Trademark Department and advises Italian and foreign companies on filing strategies, trademark prosecution, and opposition procedures before the Italian Trademark Office, and WIPO. Simona registered in the trademark section of the Italian Register of Industrial Property

Consultants. She graduated in Law at the University of Turin with a thesis on industrial law entitled “I brand di forma”, she collaborated for some years with a leading consulting firm where she deepened her knowledge of the intellectual property sector. She assists Italian and foreign clients in procedures for filing and obtaining trademarks in Italy and Europe, in the International Register and abroad, in carrying out prior art searches, in opposition procedures to the registration of trademarks and procedures for the transcription of intellectual property rights. Simona speaks Italian, English and French. Simona is a member of INTA.

Manuela has been working in the International Trademark Department since 2001 and has recently acquired the role of Human Resource manager. She is an Italian and European trademark and design attorney. Before moving to Torino, Manuela worked as a conference interpreter and translator for a primary law firm in Milan specialising in Industrial Property. She is a competent professional in the field of trademarks before the Italian Patent and Trademark Office (UIBM). Manuela advises Italian and foreign companies on filing strategies, trademark prosecution, and opposition procedures before the Italian

She has been a speaker at conferences on trademarks and domain names and collaborated with the Order of Industrial Property Consultants for the codification of the Decisions of the Appeal Commissions regarding trademarks. Manuela speaks languages: Italian, English, German and French. Manuela is a member of INTA, MARQUES, and PTMG.

Name: Maria Cristina Goicoechea Margalef Law Firm Name: INTERPATENT Country: Italy Position: Italian & European Trademark Attorney Website: www.interpatent.it Maria Cristina has a degree in Law from the Universidad Pontificia Comillas (ICADE) in Madrid. She is an Italian and European trademark and design attorney. Before Maria Cristina joined Interpatent in 2014, she had worked in various Industrial Property Law Firms in Spain and Italy, where she gained experience in trademarks, patents, and design prosecution and enforcement. Now she is in the Trademark Department and advises on IP matters to local and foreign clients, most of them from Spanish-speaking countries. Maria Cristina is a professional representative with competence in the field of trademarks, designs and models before the European Union Intellectual Property Office (EUIPO). She has dealt with legal advice relating to trademarks, patents, copyrights,

Trademark Office, EUIPO, and WIPO and manages recordal procedures in connection with IP ownership transfer and licenses.

counterfeiting, unfair competition, domain names and has experience of Spanish, Italian, EU and international trademark registration procedures of Administrative Litigation before the Tribunal Superior de Justicia of Madrid and also in the intervention procedures of the customs authorities in relation to counterfeit goods. Maria Cristina was a lecturer in the Masters “Human Resources Management” and “Marketing and Communication” at the C Management Business School in Rome and recently collaborated in the drafting of the Civil Law Treaty by Paolo Cendon, Giuffrè Editore. She is a member of the ADR Committee of INTA. Maria Cristina speaks Spanish, Italian and English.

I TA LY

When IP Consultants become IT Consultants: the struggling and never-ending search for online evidence.

Authored by Nicole Gorlier, Simona Mantovani, Maria Cristina Goicoechea Margalef and Manuela Bruscolini at INTERPATENT, Italy - www.interpatent.it

- An Italian perspective

in the light of current EU harmonisation developments in assessing the relevance and use of reliable certification tools in the trademark field. As we all know, submitting evidence of the use of a trademark may not be that easy: at times, clients are not able to provide any evidence material in support of the use or are not aware of what specific documents can be essential to demonstrate genuine use; in other cases, they simply need to be pointed in the right course in order to collect the required documentation. Furthermore, it is not uncommon that clients believe in good faith that their trademark is well known and extensively used in the relevant territory, assuming they are in possession of a considerable amount of evidence when instead, this cannot be held true. This is to say that sometimes clients have a misguided perception of what having enough evidence to show use means.

Navigating the web Given the current and predictable future growth of online trading and marketing, the web has become an unlimited source of evidence. As a matter of fact, more than ever

in recent years, and during this particular year, 2020, owners, suppliers, distributors, intermediaries, and customers have found their “virtual meeting point” on the web. That’s why, in order to assist their clients, IP consultants often find themselves also playing the role of the IT expert. Indeed, it is not infrequent for them to need to enlighten their clients on the best way to find online proof of use, or even, in some cases, to be the ones to directly explore the web or social media in search of evidence material. When searching for online evidence, both IP attorneys and clients may nonetheless encounter adversities. The web may seem one of the most immediate and efficient places to collect and research data and information. The question is: provided that online evidence is considered a valid means of proof, which precautions must be taken to render the evidence extracted from the Internet strong and indisputable for the client’s purpose?

Online Evidence – is it reliable? The EUIPO will address this issue in a new Common Practice concerning evidence in trademark appeal proceedings (CP12). Only a preliminary draft is available at the moment, as the document is still open to discussion. In supplying general principles on types, means sources, and identification of relevant data, the Common Practice will provide recommendations and criteria for assessing the veracity, reliability, and the genuineness of online evidence, in order for it to be acceptable.

This is due to the fact that “the nature of the internet can make it difficult to establish the actual content available on the internet and the date or period of time this content was made available to the public. Websites are indeed easily updated, and most of them do not provide any archive of previously displayed material, nor do they display records that enable members of the public to establish precisely what was published and when. Therefore, the problem of the ‘reliability’ of online evidence arises” [page 15 of the CP12 Common Practice]. Consequently, these are the questions that come into mind: WHAT is or was published, WHEN the content was uploaded and made available to the public, WHO uploaded it and WHERE, meaning the specific website, platform, app, or network.

What is reliable online evidence? First, let’s clarify that online evidence should be understood as evidence extracted from the Internet. Examples could be website archives, editable or non-editable websites, social media platforms, e-commerce platforms, apps, hyperlinks, URL addresses, and video and photo sharing websites. All these contents may be considered reliable online evidence if corroborated by other data that prove the intensity, nature, relevance, and genuineness of the use of the trademark. In order to retrieve said additional information, the main suggestion offered by the above-mentioned Common Practice is to carry out a “website analytics report” on the interested page/platform containing at least the date range, the total number and territorial location of users, the average session duration and bounce rate and eventual subpages. We can all agree that recovering said report may be challenging – since it consists of a technical process carried out by specialised professionals - however, our aim is to at least shed light on which kind of data may be directly obtainable from the client – or its IP consultants - in order to serve the purpose of proving genuine use of its trademark. Bearing in mind that clients usually provide samples of their website, their social media, and their online sales, here are a few tips to strengthen said content. The screenshot of the client’s company website – not sufficient per se - should be corroborated by additional information, such as the number of visits to the site, the emails received via the site, and the business volume generated.

In addition, some websites also have an app version – for example, if the client sells goods online or provides services through the app -; if so, screenshots of the app (from the computer if possible) are admitted but should be backed by other data such as information on the app and the date of publication of the captured content.

was created or uploaded. Nonetheless, IP consultants can rely on specific tools that come to the rescue, such as search engines and website archiving services (that assess the date of publication of a content), computer-generated timestamps, forensic software tools rather than notary certificates.

As of today, social media, more than ever, reflects and shows how popular and well known a client or its trademark is. However, for extracts from social media (such as screenshots or printouts) to be considered as a source of evidence, the following data should be shown: date of creation (or modification) of the account, number of followers, a clear image of the trademark, the date of publication of the specific content, the URL address. Moreover, the socalled “popularity indicators” play their part in strengthening the value of the evidence: these can be intended as the number of people reached (and their geographical origin, gender, age, if pertinent), of views, of clicks for the post/s, of reactions/comments/ shares, of followers, of likes and tags and hashtags.

With regards to forensic software tools, that’s when IP attorneys come into play as IT consultants.

E-commerce platforms are another modern tool to market one’s products and, at the same time, make oneself known by the consumer and by potential virtual customers. They too could be considered as a source of evidence, provided that they are endorsed by other data such as the date/ relevant period of time, the name and code of the product, the first date of sale, possible reviews posted by users after the purchase of the product.

In Italy Regarding Italy, a recent decision issued by the Italian PTO seems to have fully embraced this approach, and the criteria set out by the above cited Common Practice, particularly with regards to e-commerce platforms. Indeed, the Office did not accept the mere printout of an Amazon page and of a Debenhams page bearing the trademark of the Opponent (to whom the request of proof of use of its trademark was addressed) given that the same was not validated by evidence showing that the website had been visited and also that orders had effectively been placed through the websites for the products bearing the trademark during the relevant period [Decision of August 8th, 2019 on oppositions No. 370/2016 (652016000088223) and 399/2016 (652016000088709) – Pineapple Holdings Limited & Apple Inc vs. Pineapple Snc di Matteo Lavaggi & C.]. One of the most potent messages of this decision – and in general of the EU Common Practice - is the key role played by the relevant date, which is of crucial importance in the matter of online evidence and proof of use of a trademark. Once again, though, the assessment of said information may be complex. This is due to the fact that not all websites show the date or indicate the time in which the content

As to our own experience at INTERPATENT, indeed, we personally have found this means of evidence very useful and have had the chance to experiment it with matters involving our clients. In fact, we availed ourselves of a specific forensic acquisition of website software designed to certificate web pages. In the Italian practice, said software applications are counted among the various and valid tools - recognised by forensic communities around the world – used by law enforcement agencies, investigators, notaries, lawyers, and technical consultants, who are in need of acquiring web pages to be presented in judicial or non-judicial proceedings. Unlike other solutions, this type of program can also acquire certified pages protected by credentials, such as Facebook, photo galleries, chats, and restricted areas. The goal of said software is to prove that the researched page was present online on a specific date and at a specific time by capturing the content and images contained on the certified website. The program provides the user with screenshots of the website – photographing its content at that precise moment in time - while also creating a so called “acquisition document” which contains the indication of the detected URL and the date and time of acquisition of the relevant page. In our experience, said tool has proven to be a possible solution to the above identified issues encountered in searching for and providing online evidence: it both crystalises the content of the page but also equips the user with that necessary corroborating data Offices require for proving genuine use of a trademark. Moreover, additional new online tools are being developed, such as the recently introduced WIPO PROOF, a new digital business service made available by WIPO that provides a date- and time-stamped digital fingerprint of any file, proving its existence at a specific point in time.

The search for online evidence is still a slippery slope, but we may expect the creation of additional tools that will come to our aid in order to face this challenge made even more difficult by the ever-changing nature of the web itself.

SWITZERLAND C H I NA Name: Ursula In-Albon Law Firm Name: Troller Hitz Troller Country: Switzerland Position: Partner Website: www.trollerlaw.ch

Ursula In-Albon has been on the team of Troller Hitz Troller since 1999 and became a partner in 2003. She has been an active practitioner in the IP field for over twenty years. In addition, Ursula served as a judge on the Federal Board of Appeals for Intellectual Property. Over the years, and as the only lady partner, she has embraced challenges and hard work to guarantee success. She is currently heading the Bern office, and together with a team of qualified professionals, they provide a highquality service. Her primary professional field of activity practice areas is intellectual property law and unfair competition law, advertising law, and domain-name law. She represents parties before courts and state authorities. One focus of her work is on advising brand owners on the development of trademark and domain name strategies. Furthermore, she deals routinely with licensing matters and contract law. Ursula is a member of the International Trademark Association (INTA), the European Communities Trademark Association (ECTA),

the European Association of Brand Owners (MARQUES), the International Association for the Protection of Intellectual Property (AIPPI), the Institut für gewerblichen Rechtsschutz (INGRES), the Swiss Association of Judges in Commercial Matters (SVHR), the German Association for Industrial Property and Copyright (GRUR), the Bernese and Swiss Bar Associations. Further, she belongs to IR Global, the largest international professional service network, where she represents Switzerland in the field of intellectual property as an exclusive member. Troller Hitz Troller has continuously been ranked by Chambers Europe, World Trademark Review (WTR), and Legal 500, where Ursula has been ranked as one of the leading individuals. She has also continuously been named in Best Lawyers for Antitrust/Competition Law and Intellectual Property Law. Outside work Ursula likes spending time with her family and her friends. Also, she is an enthusiastic skier, and during the winter season, she enjoys whizzing down the slopes. Playing her cello is one of her further leisure activities and once started reading a thriller, she can hardly put the book away.

NETHERLANDS

The World of IP

Name: Diana Versteeg Law Firm Name: Anchor IP

& Why I Love My Job.

Country: the Netherlands Position: Owner/Founder Website: www.anchor-ip.com

“You are the unlikeliest lawyer I have ever met, and you should be proud of that.” Diana takes pride in this feedback from a client, indeed. She is also proud of her clients. Entrepreneurs, working tirelessly to impact their industry positively. Her passion for IP started in law school in the Netherlands (including a year in Paris). Diana graduated in IP law and European competition law. Her thesis was about “The European design law in relation to spare parts in the automotive industry”. Since she graduated 24 years ago, Diana worked as a trademark agent, in-house counsel, private practitioner, teacher, and public speaker. She is one of the few IP lawyers in the Netherlands who is also a trademark agent. In 2020, Diana started IP boutique firm Anchor IP. Services include IP prosecution, exploitation, enforcement, management of IP portfolios, negotiating and drafting IP contracts, IP litigation, administrative proceedings, and IP advice in international M&A projects. Diana provided training to many RD&I, sales, and marketing teams in the field of soft IP rights, IP contracts, and trade secrets. She was also in the lead of complex “technical IP” agreements (e.g., consortium agreements, joint development agreements), working closely with patent attorneys, research institutes, and universities. Diana lectured many years about International Trademarks at the postdoctorate training for Benelux trademark attorneys. Currently, she is one of the Examiners. In 2019, she also taught at Mr. S.K. Martens Academie, a specialised IP training for IP lawyers, and in 2021, Diana will teach at the University of Utrecht.

Written by Diana Versteeg, Founder of Anchor IP, the Netherlands www.anchor-ip.com Diana actively contributes to the wider IP community. A highlight was to be elected Chair of MARQUES, the European association representing brand owners, in 2013. She represented MARQUES as a permanent Observer at the Management Board and Budget Committee meetings of the European Intellectual Property Office (EUIPO). She also took part in meetings at the European Commission to discuss the reform of the European Trademark legislation and Brexit. Other highlights were to speak at the European Parliament (at the EU Agencies Forum), and at conferences organised by the World Intellectual Property Organisation (WIPO) in Cameroon on the Singapore Treaty on the Law of Trademarks, and in Azerbaijan about Non-traditional Trademarks. She has also spoken about anti-counterfeit, the EU trademark reform, IP and innovation in Europe, Brexit, and Alternative Dispute Resolution. In 2018 and 2019, Diana was listed in WTR’s World’s Leading Corporate Trademark Professionals. This year, Diana joined EUIPO’s initiative to offer pro bono IP services to SMEs in Europe. She deems it important to support SMEs, now perhaps more than ever, as, in these times of crisis and technological developments, many businesses have to re-invent their business model. Diana helps businesses navigate the area of IP law and establish a solid legal foundation for their intellectual assets so that they can build value for themselves and their customers. The Anchor IP logo combines her passion for IP law and sailing. Diana lives in the Hague, close to the sea, together with her husband and daughter.

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Do we need to expand trademark protection now that our products are manufactured in another country?

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They need a loan; however, the investor wants due diligence to see what kind of IP they own.

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This new name is already owned by someone else, what to do?

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We found this nice picture online and decided to use it in all our brochures.

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My business partner received this letter from a lawyer about the products we sell in our webshop.

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We have this idea about tiny houses, and different universities are interested. How do we proceed?

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Their domain name includes our trademark, and it confuses ome of our clients.

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Why should I register a trademark? We are already registered with the Chamber of Commerce.

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We paid for the development of our brand identity, so we own it, right?

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How can we protect our company’s trade secrets?

These are just a few examples of the many different questions I receive from clients. I love my job; however, the variety in the questions and the difference in clients never ceases to amaze me. Businesses, big or small, striving to make their products and services nicer, faster, prettier, tastier, affordable, more effective, more impactful, easier to use. Simply better. The backbone of our economy. The creators of art, music, theatre, entertainment, and so much more. All supported by Intellectual Property (IP). Creation and innovation have been around since people started to think. It is in our nature to want to improve everything around us. This will never stop. It is such a special area of the law. For decades now, IP law has been challenged continuously by its playing field. With the current 4th Industrial Revolution and the somewhat disruptive Artificial Intelligence, the developments are hard to keep up with. Critics say that some IP rights will not survive. On the contrary, I would say. Only a fair system of IP rights will help societies maintain a balance between the innovators and the public interest. Between the intrinsic human desire to create and the equally intrinsic human need for incentives. IP continues to be relevant for everyone who is affected by or uses products or services. Regardless of whether one is at the offering or demanding side. The CEO of a toy manufacturing company could very well be the mother of children who like to play with toys. She is both offering and consuming products. The successful business coach could be someone with back pain, in need of medication made by another company. The inventor of a new machine could buy perfume for her mother’s birthday. We all take art classes, and we visit museums, we exercise, we cook, we shop, we travel, we volunteer, we work in our gardens, we teach, we learn. IP is there when we wake up, throughout our day and when we go to sleep. A world without IP would be grey and dull. No choices, no creativity, no colour, no nothing. For businesses, it is what makes them unique and interesting and perhaps a potential investment or joint development partner. Studies show that companies who embrace IP rights show more profit and growth. This is particularly true for SMEs. These are challenging times, though. A crisis like Covid-19 affects many businesses.

Companies must adapt or re-invent their business model altogether. Businesses fighting to survive may have less budget for the effective enforcement of their IP rights, which clashes with the evergrowing market of counterfeit goods. Managing more extensive IP portfolios is nowadays a lot about pruning or rebranding. Having multiple brands for similar products in different countries becomes less and less attractive. The challenges are not just posed by 4IR or Covid19. The demand side is also rapidly changing. Consumers today have a totally different approach to the way they search, test, compare, review, and purchase their products and services. They want to know the origin of products and whether the production process was fair regarding human rights, environmentalfriendly, and inclusive. More and more, companies are expected to align with the UN’s Sustainable Development Goals. It can take many years to build a reputation for a brand, but it could be jeopardised in a split second if the criticism is not responded to or if complaints are not handled well. Social media is unforgiving, as everyone is a reporter with a camera nowadays. In the near future, everyone will probably also be a producer with the help of 3D printing. These are crazy but also exciting times. A crisis may also lead to more opportunities to collaborate with others, either to join forces or to supplement and strengthen each other’s expertise. Nobody knows what the future will bring. But I am convinced that IP rights continue to be instrumental for companies, to protect them and help them build a valuable business. Again, I love my job. It is an absolute joy and privilege to be part of the IP community, together with all the other fantastic women (and men) working in IP.

UNITED C HKINGDOM I NA Name: Lisa Lovell Company Name: Brand Enforcement UK LTD Country: United Kingdom Position: CEO Website: www.brandenforcement.co.uk

Since entering the world of Intellectual Property in 1998, Lisa qualified as a Solicitor in 2002, Lisa Lovell has over 20 years’ experience in this niche legal field.

IP industry services

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She has written extensively on the subject of intellectual property theft for various publications including; World Trademark Review, Trademark World, Copyright World, Entertainment Law Review, Home Entertainment Week, Licensing Today Worldwide, Total Licensing, Toy News, World Tobacco, and Global IP Matrix. Lisa was the Editor of the bi-annual special supplements on Intellectual Property published in The Times and a contributing author to the Handbook of European IP Management, published by Kogan Page in 2007. Lisa has spoken at various events including The EUIPO’s Growing Business with IP (Milan), the Intellectual Property Crime Congress (IPCC) (Brussels) and World Tobacco (Bali, Mexico, and Macau). Incorporated in March 2003 to exploit a clear gap in the market, Brand Enforcement UK Ltd (BEUK) was set up as an independent specialist legal consultancy and anticounterfeiting service provider with experience in all aspects of both the criminal and civil enforcement of intellectual property rights (IPR). CEO of BEUK, Lisa runs various international test purchase programmes for many of the world’s leading brands, spanning across many industries including fashion, electronics, printer consumables, e-cigarettes, medical devices, eyewear, and fragrances. Lisa provides her clients with law enforcement liaison support in the UK, gathers evidence by conducting test purchases of physical goods and acts as a product expert for many of her brand owner clients.

Once the evidence has been examined and determined as counterfeit, Lisa then produces the relevant expert and continuity witness statements where required. She then engages with the relevant Trading Standards (TS) authorities and offers further support in gathering further physical evidence and/or intelligence as to the supply of the counterfeit goods. With 20 years’ experience in the British Army, Lisa was a member of the Royal Military Police and did an operational tour of Iraq in 2004 (Op Telic). A trained Military Diver, Lisa participated in Operation Cockney triangle, a diving expedition in the Bermuda Triangle. Lisa has also participated in the British Army Skiing Championships and has conducted many different exercises in many different countries, including two Exchange Programmes in both Indiana and Michigan in the USA. Due to the experience gained in her military career, Lisa also conducts investigations on counterfeit targets, including not only the individuals behind it, any Company information, and details of any addresses the business is operating from. If Trading Standards decide to bring a prosecution on behalf of the client, Lisa supports them with whatever they need in order to achieve this. If Trading Standards decide not to bring a criminal prosecution, we then work with the brand to establish a different course of action which may include a private criminal prosecution or civil enforcement. Lisa also attends raids on behalf of her brand owner clients and also training events where Customs, police and Trading Standards Officers are provided with examples of product, both counterfeit and genuine and are hopefully then enabled to conduct their own product identification on the ground.

UNITED C HKINGDOM I NA

Championing Gender Diversity

for Innovation

Written by Clare Gibson, Patent Analysis at Patent Seekers, UK www.patentseekers.com

Author Bio - Clare Gibson

has been a Patent Analyst at Patent Seekers since 2017. She has a degree in Physics from Cardiff University, which she achieved after looking for a change of direction in her career. Clare works on the Physics and Mechanical team, carrying out a wide variety of searches for companies worldwide. In this article, she discusses what gender diversity means to her. Innovation is a word fundamentally associated with intellectual property. It’s a word associated with our daily work at Patent Seekers, from Prior Art searches to Clearance requests and everything in-between. It should be a word inherently linked to gender diversity. It is apparent we are witnessing a new innovative workforce alongside a changing employment landscape, with new ideas, novel concepts, diversity, and equal opportunities being introduced into a previously established conservative working environment. From the plight of the suffragettes and improved employment and antidiscrimination laws to the rising awareness of the importance and celebration of gender diversity, equality in the workplace has never been more accessible, at least so on paper. So, we ask, is this a transition we are beginning to see?

Looking to this year’s Fortune 500 companies, a record 37 females currently hold CEO positions [1], which is an increase of 4 from 2019 [2]. Even more encouraging, some of these females held CEO positions are within innovative scientific and technological companies. However, this diversity achievement within the Fortune 500, in actuality, equates to only 7.4% of females held CEO positions. When we look only slightly behind this record year for female CEOs, it highlights a substantially large gender gap. We must ask, is this the case within one specific list of companies, or is this reality true across all areas?

With this in mind, how does gender diversity look in IP? The World Intellectual Property Organisation (WIPO) released statistics in 2019, which revealed that less than one fifth, 18.7% to be exact, of inventors named in PCT applications, were women. Again, an increase from years prior, indicating a closing of the gender gap, yet as suggested by WIPO, these statistics infer parity will only be reached in 2044 [3].

To assist with the acceleration of parity, WIPO actively promotes gender equality with programs and activities dedicated to female participation [4]. One such noted project aptly named “Increasing the Role of Women in Innovation and Entrepreneurship” identifies and aims to highlight the impediments women face within entrepreneurship and innovation. Such impediments identified by WIPO pinpoint a lack of support and a lack of access to investors for female inventors. It is also noted that women only networks typically have fewer members, hence a correlation to fewer members with patenting experience, which inevitably leads to such lack of support. The IP Inclusive organisation have also identified similar issues to WIPO. They have created a solution to provide support and networking opportunities for women in the IP community, specifically focussing on issues affecting women in the IP professions. They host a series of events yearly, ranging from formal panel discussions to informal social events. Even though the goal is to provide further support, information, and opportunities for women, it is open to all genders.

Such identification of genderrelated systematic issues is also addressed globally. The Institute of Physics (IOP) states that only approximately 20% of females study physics at A-Level. The IOP addresses the gender imbalance in physics with a series of programmes and research trials, aiming to increase the proportion of females opting for A-Level Physics [5]. Gender diversity STEM subject promotion within education settings seeks to bridge the gender gap, yet arguably more needs to be done to encourage women at an earlier stage, for example, primary and secondary school age. There has long been a debate about nature versus nurture regarding the paths people take in life, and maybe this could be addressed at a younger age. Interest within STEM subjects could be nurtured from an earlier age to stimulate interest and nurture passion within a primary and secondary educational setting. After all, it is at such ages where minds are shaped and possibilities of what is achievable as an adult are addressed. We could assist such minds in becoming the next generation of scientists, engineers, and innovators, and IP Inclusive is tackling this very issue. Recently IP Inclusive advertised their resources as part of the Careers in IP week with the aim to increase diversity in the profession [6]. With diversity trying to be addressed at a core education level, female participation is increasingly being encouraged within STEM subjects. As part of this address, insights into possible career options are laid out, such as green technology, research, industry, technology, engineering, and coding. Ideally, the proposed results of this promotion of gender diversity will naturally translate into these currently male

dominated fields. Such promotion actually played a role in my opting for a STEM degree, which in turn led to a career change into IP. We are all aware of the importance of IP protection in business. It encourages and rewards innovation. IP can become a large asset portfolio to businesses, with often greater values than other assets held, such as property. For example, IP can be sold, licensed, and can often be used to direct future research or innovation within such businesses. IP areas are vast, diverse, and change in line with the world, as seen by the need for green technology and a rise in research within such areas. So, it seems reasonable as businesses and IP have changed over the centuries, so should the diversity within such areas.

Reflecting on my personal experience within IP - it has been

very positive, with gender-related issues or barriers not being an issue. In fact, I feel so incredibly accepted within the environment; from my first day within IP, I can honestly state my gender has never resulted in any form of exclusion. In relation to the work we do at Patent Seekers, it is interesting; it is dynamic, engaging, and rewarding. Proudly Patent Seekers comprises a diverse team of colleagues and being part of such diversity. We may all engage in opportunities to enhance personal knowledge and to learn additional focussed areas, which is encouraged. And notably, career advancement is open to all, regardless of gender, background, ethnicity, or sexuality. Equal Opportunities within Patent Seekers are inherent, and this can be seen across the company. My role is as a patent analyst within the physics and mechanical team. As with all analysts at Patent Seekers, we conduct searches, analyse results, and outline relevant documents within a report to our clients, where each search can be tailored to a client’s requirements. We understand a topic, we apply our skills, we ensure a high standard of quality throughout. There is no division within my team, or the office as a whole, between male and female skillsets. Women are treated equally; work is assigned based on degree knowledge and streamlined to be tailored to an individual’s area of expertise. There is no discrimination between genders—all of which I find incredibly encouraging, especially when we consider diversity. Whilst my experience has been positive, we must recognise that diversity issues remain globally, especially gender diversity, where a stubborn glass ceiling persists. We read ever-emerging stories of gender discrimination, the gender pay gap, the inability for women to progress or even to feel equal to their male counterparts. Despite the encouraging points made in previous paragraphs, the figures show there is still a long way to go for equality between genders on a global scale.

We can only hope that if we share our stories and advocate our innovation, those other women may feel they too can be accepted into IP, along with any other sectors or profession they choose, and not have to face the gender inequalities of the past and/or present. Whilst I appreciate my experience may not be the norm for some women, just look at the notorious example of lead female film actors who reportedly earn less than their male counterparts while playing equally leading roles within the same movie. We must hope to accelerate change, stop stereotyping, and contribute wherever possible, even if that is as small as sharing a positive experience or by showcasing our achievements so that every woman who enters any workforce feels as equally treated as some of us already are. Gone should be the archaic days where roles were typically assigned based on gender; astronauts used to be male only, bank tellers were thought of as females’ roles. Whilst we must acknowledge that there are differences between genders, the antiquated ideologies, and pigeonholing associated therewith must become a thing of the past. It is routinely argued that different genders bring differing aspects and points of view to the workplace, which is undoubtedly beneficial for all. Women can introduce diversity into management styles, with the argument of bringing more empathy than a male counterpart to certain scenarios [7], women can introduce different perspectives and alternative problem-solving skills. All can be debated. Of course, we must not be guilty of stereotyping or dismiss our male counterparts; for example, there are male managers who display outstanding empathy. The key factor we are hoping to acknowledge is that the more gender diversity within the workplace, the more balanced discussions, ideas, and concepts are brought to the table by a diverse representation. And this must surely result in achieving a fuller, more rounded overview within the workplace and subsequently our daily lives. Women bring innovation and creativity to the table. We are showcasing our capabilities, and we are positively shaping the landscape of the workplace. We celebrate globally International Women’s Day. Change takes time, and we hope for rapid progression in relation to increasing gender diverse job growth. Until gender equality is sufficiently apparent, I and Patent Seekers shall continue to be a champion of gender diversity becoming the norm.

[1] https://fortune.com/2020/05/18/women-ceos-fortune-500-2020/ [2] https://fortune.com/2019/05/16/fortune-500-female-ceos/ [3] https://www.wipo.int/women-and-ip/en/news/2020/ news_0001.html [4] https://www.wipo.int/women-and-ip/en/news/2020/ news_0001.html [5] https://www.iop.org/what-were-doing-address-genderimbalance-physics#gref [6] https://ipinclusive.org.uk/newsandfeatures/new-careers-inideas-schools-outreach-resources/ [7] https://good.co/blog/female-managers-traits/

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ZIM CH BA I NA BW E Name: Brenda Matanga Law Firm Name: BMatanga IP Attorneys

Africa

Country: Zimbabwe Position: Head of Practice & Lead IP Counsel Website: www.bmatanga.com

Brenda Matanga is the head of the practice and Lead IP Counsel. She holds a Bachelor of Law Honours Degree (LLB) from the University of Zimbabwe and a Masters in Intellectual Property Law (LLM) from the University of Turin (Italy) in collaboration with the World Intellectual Property Organisation (WIPO). She has extensive experience in commercial practice and has, over the years, distinguished herself as an intellectual property law specialist Attorney. Brenda has advised and assisted global companies in IP prosecution, strategy, and dispute resolution. As a leading IP champion in Zimbabwe and Africa at large, she has helped shape the industry’s growth and actively empowers start-ups with dedicated IP services. Through her distinguished status as a former President of the Zimbabwe Institute of Patents and Trademarks Agents (ZIPTA) and current role as Chairperson of the Africa Regional Intellectual Property Organisation (ARIPO) Working Group (which is amending the organisation’s legal instruments), Brenda is in the front line of advocating and spearheading necessary legislative reforms in IP laws in Zimbabwe and the continent at large.

She is currently Councillor of the Law Society of Zimbabwe, which is the governing body for the legal profession in Zimbabwe. Miss Matanga is a member of the International Trademarks Association (INTA), where she has served as a committee member for the “Unreal Campaign” and currently serves in the Brands for a Better Society committee. Brenda is an alumnus of the University of Turin, the IP Global Exchange (Europe), and is also part of the steering committee of the World IP Forum. Having established herself as a leading and reliable IP voice in the region, international recognition for her contributions in the sector has followed.

Among other eminent accolades Miss Matanga has attained, the following are to be found: • Intellectual Property Law Firm of the Year in Zimbabwe: 2016-Corporate • International Global Awards 2016 • Most Influential Woman in IP 2018-Zimbabwe • Top 50 Emerging IP Players Award 2019-The IPR Gorilla • Listed by Courtroom Mail as one of the 30 most influential female Law Firm founders (2020)

Sponsored by

ZIM CH BA I NA BW E

Guardians of the

Knowledge Economy

Written by Brenda Matanga, Principal, BMatanga Intellectual Property Services, Zimbabwe - www.bmatanga.com

Ideas. Priceless gemstones of our era unleashed from the depths of curious minds by industrious beings.

BMatanga IP Attorneys came to life in 2010 as a fortress that protects ideas in every form and function. Ideas are the bedrock for wealth creation and advancement of societies when developed, protected, and sustained. Just as title deeds are the keys unlocking ownership of brick and mortar buildings, so are patents, trademarks, industrial designs, and copyright for intangible assets to creators. The rise of the internet as an information exchange means that ideas transcend barriers like time, distance, and physical borders. Whilst this has led to the unprecedented distribution of information, traditions, and creative works, it has also created a battlefield that Intellectual Property lawyers and lawmakers are needed to navigate. Information has become profoundly sharable and prone to copying and duplication, leading to a gulf between creators and consumers. How can ideas be safeguarded in the quest to extract value from them? BMatanga IP Attorneys was created to answer this question. Happy Birthday to You, Us & an Incredible Story Happy birthday to you Happy birthday to you Happy birthday dear [NAME] Happy birthday to you.

A transformed world demands evolved thinking and implementation. For example, did you know that the common “happy birthday to you” song likely recited on your special day as we are now reciting it on ours was copyrighted until recently? Oh yes, a song as common and free flowing as oxygen was the exclusive property of Warner/ Chapell music, generating a cool US$ 5000 a day in 2008. That is US$ 2 million for the year for a song made up of 4 repetitive lines! No public performance of the song

or commercial usage such as movies could contain its lyrics without payment of US$ 700 to the copyright holder.

As the story above illustrates, ideas are powerful engines of opportunity that are able to create jobs and economic prosperity for individuals, enterprises, and nations. Such stories justify our existence in Africa. Our role is to address this inequality by defending, protecting, and ensuring that anyone who seeks to innovate a product or a solution to life derives full value and remuneration of their sweat of the brow. Raise Your Champagne Glass! Let’s celebrate! Milestones such as our 10th anniversary should not be celebrated without fine Champagne, right? Well, it actually depends. The Intellectual Property zeal in us will have you know that Champagne is a territorial mark for bubbly that is only produced in the French region of Champagne. This is according to the Comité Champagne, the trade association that represents all the grape growers and houses of Champagne, France. Champagne is a unique product born of the shared heritage of Wine Growers and Champagne Houses, for whom the defence of the Champagne name is vital. That is because only wines made from the grapes grown and harvested in Champagne and then produced under the strict regulations of the Champagne appellation can bear the Champagne name. The story of Champagne illustrates how highly competitive the markets of today are. Often when a product is successful, competitors will attempt to make similar or identical products. There are vultures out there, waiting to pounce on these unsuspecting creators and reap profits where they did not expend a dime in creativity or labor. Without incurring research and development costs, they sell

the product or service at a lower price and sometimes even at equally competitive prices with the original creations. This not only eats into the innovators’ profits; it reduces their market share and threatens livelihoods. Hakuna Matata: IP FOR AFRICA First released in 1994, the Lion King is a hit cinematographic production from the American Disney company. Set in Africa, it tells the tale of a young Lion’s journey to royalty. The movie’s most famous line is, without a doubt, Hakuna Matata – Swahili for “no worries”. Since 2003, the term exists as a trademark owned by the Mega Corporation. This fact had Kenyans and other speakers of Africa’s biggest language protesting. What some viewed as an affront and hyper commercialisation is to us an illustration of how nascent the intellectual property field is in Africa. Often, little to no knowledge about intellectual property and the rights afforded to creators or the benefits for enterprises exists, thereby robbing the continent of billions of dollars in lost intellectual and monetary value. Ours is a consumptive continent endowed with substantial natural resources which are shipped out of Africa for value addition then sold back in glitzy packaging. It goes without saying that an enormous continent of a billion rising inhabitants needs to safeguard its wealth. Conversely, global brand custodians need to protect their intellectual property on this rapidly growing continent. We have observed that trying to juggle across 54 countries can be a nightmare for one who is not rooted in that territory. Africa is our home, and we understand its people, business culture, and territory better; hence we have intentionally positioned ourselves to serve the world from Africa.

15 Downie Avenue Belgravia Harare, Zimbabwe

Patent & Trademark Agents

+263 (242) 791 296 info@bmatanga.com www.bmatanga.com

IP Attorneys

NCI G HE I NA R IA Name: Uwa Ohiku

Name: Nneoma Emeruem Azuike

Law Firm Name: Jackson, Etti & Edu

Law Firm Name: Stillwaters Law Firm

Country: Nigeria

Position: Partner & Head of IP Practice

Position: Associate

Website: www.jacksonettiandedu.com

Website: www.stillwaterslaw.com

Uwa is a Partner and Head of the Firm’s multiple award-winning Intellectual Property (IP) Practice. She has specialist experience in all aspects of IP Law & Practice and oversees all services rendered by the Team. Uwa is the first Nigerian WIPO Domain Names Panelist. She sat on possibly the largest Domain Name dispute involving a well-known cable news provider, under the US National Arbitration Forum. Consistently nominated as a leading practitioner by Who’s Who Legal, the 2015 and 2020 editions described her as ‘a brilliant tactician’ and ‘well versed at handling complex IP matters’.

• Domain Name Advisory, Registration & Adjudication

The only Nigerian recognised in the maiden edition of Managing Intellectual Property’s Top 250 Women in IP (2018), she again made the list in 2019 and 2020, respectively. Uwa was also recognised as one of the Influential Women in IP by the World IP Review, 2020; recognised as a Band 1 IP lawyer in the Chambers Global Guide, 2020; recognised as one of Nigeria’s top female legal professionals by Experts Guide to Women in Business Law 2020 and recognised as one of Nigeria’s 50 Most Influential Women in Law by Business Day, the most respected business periodical.

• IP Committee Section on Business Law (SBL)

She has led the IP Team of Jackson, Etti & Edu to win practically every IP-related Award, internationally and locally, the latest being the winner of the MIP Nigeria Firm of The Year 2020 and Finalist for Africa Firm of the Year 2020.

Uwa is a creative writer with several published and unpublished works, some of which are Help! I think I Have OCD!; My Lockdown Memoirs; After Lockdown, What Next?; Jealousy & Envy – Twin Destructive Emotions. She loves mentoring & coaching the younger generation, using her personal and professional journeys as storyboards. She is a great cook, a keen gardener who grows her vegetables and also makes her own dresses. Uwa is a painter, artist, winner of 1st Prize in a National Essay competition and 1st Prize in a State Essay competition whilst in school. Speaker at many professional and non-professional events, she was an Editor of the Sickle Cell Magazine and involved in Junior Achievement of Nigeria, facilitating many of their primary schools’ programs. She has recently set up an NGO to address and help indigent youths suffering from Sickle Cell blood disorder.

She is the go-to person for complex matters. She enjoys working with clients as well as mentoring a team of competent, tech-savvy, and reliable IP experts. PRACTICE AREAS • IP Consulting, Training & Strategy Formulation • Portfolio Advisory, Registration, and Management • Mergers & Acquisitions

NCI G HE I NA R IA

• IP Audit & Valuation • IP Risk Management; Contentious IP • Commercial IP Advisory • Legal & Regulatory Advisory Services PROFESSIONAL MEMBERSHIPS • International Bar Association (IBA) (IP & Entertainment Law) • Nigerian Bar Association (NBA) • IP Law Association of Nigeria (IPLAN)

• International Trademark Association (INTA) • INTA Anti-Counterfeiting Committee (2002-2004) and INTA Bulletin Committee (2005-2007) • Chairperson, Panel on Review of Nigerian Draft Trademarks Act (2002) • Institute of Trademark Agents (ITMA) (Overseas Member) • Asia- Pacific Lawyers Association (APLA)

Nneoma is a quick-witted professional with a good understanding of Intellectual Property law, Dispute Resolution, and Litigation. She started her practise in 2018 with Stillwaters Law Firm, one of Nigeria’s leading intellectual property firms. She is one of the significantly few female legal practitioners in Nigeria that has shown great interest in the field of Intellectual Property and has, over time, developed herself by acquiring expertise through practice and learning. As a young IP lawyer, Nneoma is passionate and committed to developing and spreading massive sensitisation on intellectual property rights in Nigeria. She concentrates primarily on Small, Medium-scale Enterprises (SME’s) by helping them understand what Intellectual Property rights are, how it can be protected, and how they can effectively harness them for economic benefits. This she is achieving by working with the team in Stillwaters Law Firm to partner with organisations interested in promoting and protecting intellectual property rights in Nigeria. Stillwaters is a law firm based in Nigeria. The firm was established in 2001 and specialises in corporate and commercial law, intellectual property (IP) law, tax advisory

services, Media-Entertainment-Technology and Sports (METS), and Litigation/Dispute Resolution. As a firm, we believe that many aspects of today’s legal landscape require a keen understanding as well as knowledge of the law. Accordingly, we offer solutions to the often complex arrays of regulations and requirements that confront the business client in Nigeria, thereby creating conducive legal environments for our clients to achieve their goals. Professionalism, flexibility, and innovation are the hallmark of our practice. We value professional excellence, outstanding result, and realise they both require creativity and hard work. With over 125 years of combined partnership practice experience, we strive to gain every legal advantage for our clients while upholding the principles behind our guiding goal of PEOPLE, INTEGRITY, and SERVICE as a driving force steering our entire practice. Our IP department operates from the commercial cities of Lagos and Abuja in Nigeria, with associate offices in Cameroon (for OAPI matters) and Angola, and our dispute resolution department has extensive practice before the trial and appellate courts in Nigeria.

NCI G HE I NA R IA

COMMERCIALISATION OF IP IN WEST AFRICA, CHALLENGES, AND RECOMMENDATIONS GEARED TOWARDS

Encouraging innovation Written by Nneoma Emeruem Azuike, Associate at Stillwaters, Nigeria - www.stillwaterslaw.com

One of the major reasons for the protection of Intellectual Property (IP) is the need for an innovator/creator to be able to adequately harness the economic benefits embedded in their innovations or creativity through commercialisation. This article seeks to highlight some of the challenges to effective IP commercialisation in West Africa and how best to overcome them.

What is IP commercialisation? According to Wikipedia, commercialisation is the process of introducing a new product or production method into commerce, making it available on the market. IP Commercialisation simply means the conversion of inventions/creations (in this case called intangible assets) into a viable market product, service, or process. Economic values can be created from IP rights through Practicing or exclusivity, Licensing, Franchise, Assignment, etc. When effectively utilised, these values will generate maximum economic benefits to a creator, thereby acting as a sufficient incentive for innovations, which will help boost the economy in the applicable environment.

Need for IP commercialisation in West Africa. In countries and regions such as Germany, South Korea, Israel, India, China, the United States of America, Japan, etc., substantial revenues are generated through the effective utilisation of IP rights. These

countries understand the importance of creative minds and have, over the years, taken clear steps in encouraging R&D arising from such. Adequate legislation is put in place, and the enforcement mechanism is enhanced on a time-sensitive basis to encourage investments. The provisions of these enabling environments by relevant authorities attract private sector business, thereby creating a competitive edge within the IP polity. The fallout cannot be overemphasised. For example, in India, there are accelerators, incubators, and other entities available to guide a creator or inventor on the commercialisation of his/her creations or inventions. On the other hand, West African countries have not been able to fully tap into the potential of IP commercialisation and the positive effect it will have on their economy. This is caused by a lack of sufficient sensitisation of the populace on the need for IP creation, protection, and the inherent commercial benefit embedded in IP. Resources for R&D are near lacking, albeit there is a greater advancement in the copyright realm related to music, literary works, artistic creation, and cinematography. At their very best, most of these endeavors lack a major commercial perspective, which

accelerating the enforcement of rights of the creators when infringed or creating incentives for innovation. The private sector in these countries has not made any clear move to help creators or inventors (Copyright excluded) in the commercialisation of their creations or inventions. This makes it difficult for the government of these countries to adequately harness IP commercialisation for technological advancement, human capital development, job creation, and revenue generation, which are all good reasons for the supervising bodies of the countries in the West African region and the private sector to look into the commercialisation of IP.

Challenges of IP commercialisation in West Africa i. Lack of Awareness: This is the major challenge of IP commercialisation in West Africa as not many people are sensitised on what IP rights are, their moral or

economic value, how it can be protected, nor how it can be harnessed. In Nigeria, for example, although gradual efforts are being made especially by some law firms in the country to create awareness of what IP is, they have not been able to adequately cover enough grounds as most people are yet to understand the importance of IP to their business and life in general. Here, most local businesses are Small and Medium Scale Enterprises (SME’s). A large percentage of them do not know what a Trademark is nor how it can negatively or positively affect their business. ii. Non-Availability of IP management: IP management is the ability to manage an IP portfolio effectively; this can be achieved by having managers who are experts in the field of IP help the creator screen his creations and weigh their economic value. In West Africa, where most of its local businesses are SMEs, most creators cannot

afford IP managers, and the supervising authorities in most of its countries have not made any effort to provide means of mitigating this challenge. iii. The commercial potential of creation or invention: some of the creations or inventions made by creators or inventors if commercialised might not yield enough revenue to cover up the cost of commercialisation or profits made from it. There are no modalities set in motion in the region geared towards assisting in further developing these creations or inventions to make them commercially viable. iv. Lack of entrepreneurial skills to take a new creation/invention to market through start-ups or SME’s: this challenge is caused by the lack of interest of the supervising authorities of West African countries to ensure the development of the entrepreneurial skills for its citizens. Most of what some of these entrepreneurs know, they learned on their own or through the help of a few firms from the private sector and international organisations. Considering the technological handicap in Africa, many entrepreneurs have not been reached by these organisations, nor can they learn effectively on their own due to lack of facilities.

in turn dilutes their value and degrades their potentials. The supervising authorities also play a significant part in these adversities. They are unable to effectively diversify their revenue generation streams by shifting their attention from tangible assets (for example, crude oil) to intangible assets, which are innovations. Most of the creators/ inventors in these countries are unaware of their IP rights or how it can be protected and effectively utilised, thus causing a lack of interest in innovation and reducing the speed of technological advancements. Apart from legislation, the supervising authorities in these countries have made no tangible effort to encourage innovation and guarantee adequate protection through, for example,

v. Lack of help from supervising authorities to help harness and develop the creativity of the people: In Africa as a whole, it is majorly in countries like South Africa, Kenya, etc., that you see their governments seriously make efforts geared towards harnessing and encouraging the commercialisation of IP. For example, South Africa had set up an innovation fund to assist in the development and commercialisation of IP by both individuals and universities.

Recommendations a. Adequate sensitisation on IP, it’s rights, protections, and benefits should be created through the teaching of IP in schools and community halls, creating incentives that promote innovations, and holding seminars for entrepreneurs teaching them the importance of IP and how it can be commercialised effectively. b. A startup or SME might not be able to afford the services of an IP manager. To mitigate this challenge, supervising authorities of West African countries should set up an organisation where these creators or inventors can access IP experts at subsidised and affordable rates. This will help grow the economy and encourage innovation.

c. Governments of countries in the region and the private sector can make available grants, create Research and Development centers where creators or inventors can, with the help of other creators or experts, improve on their innovations and make it commercially viable if such invention or creation is seen to have potential. d. Modalities should be set up where entrepreneurs can acquire skills to grow and commercialise their IP can be created by establishing starting free periodic seminars and inviting experts to speak to them; also, avenues should be created on how to reach and teach those entrepreneurs in remote areas of the country. e. The government of West African countries can help by setting up innovation funds, which will be used to help commercialise a creation or invention. They should also encourage Research and Development(R&D) in West African universities by providing grants and facilitating IP commercialisation. f. To effectively commercialise IP, the supervising authorities should ensure that workable modalities are put in place to guarantee adequate and rapid enforcement of IP rights of the creators or inventors in the region.

Conclusion West Africa is the region in Africa that houses the most populous country in Africa, which is also Africa’s largest economy-Nigeria. It is expected that a lot has been done in the area of IP and its commercialisation. Still, the reverse is the case as most of the registrations on IP done in these countries are done by international companies. Due to lack of awareness, most SME owners do not know what a trademark is nor see the need to register it. This lack of sensitisation is the major challenge in the region that has given rise to a lack of innovation as there exists no motivation nor incentive to innovate.

Asia

I am of the firm belief that once modalities are put in place by government and private sectors to ensure that awareness of IP is made and its commercialisation, West Africa as a region will be a hub of innovation. Its countries will be able to advance technologically and otherwise and be at par with other countries of the world. Also, both the private sector and the economy of the countries will benefit from it as great innovation increases revenue generation and human capital development.

Sponsored by

SRI L ANKA

I N D IA Name: Manisha Singh

Protection of

Law Firm Name: LexOrbis Country: India Position: Managing Partner Website: www.lexorbis.com

WELL-KNOWN TRADEMARKS in Sri Lanka Written by Anomi Wanigasekera, Partner at Julius & Creasy, Sri Lanka www.juliusandcreasy.com

Overview

The primary legislation governing trademarks in Sri Lanka is the Intellectual Property Act, No. 36 of 2003 (IP Act). Sri Lanka is a signatory to the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement); two multilateral treaties wherein the special protection of famous and well-known marks are recognised. The exclusive right to a mark can be acquired through a registration obtained under the IP Act. However, under Section 104(1) (d) of the IP Act, special rights and protections are afforded to owners of well- known and famous marks. Section 104(1) (d) of the IP Act prohibits the registration of marks if they are identical or misleadingly similar to, or constitute a translation, transliteration, or transcription of third-party marks for identical or similar goods or services. In this instance, it is immaterial whether the well-known mark is registered in Sri Lanka.

PROTECTION ACCREDITED TO WELL KNOWN MARKS BY THE IP ACT Marks inadmissible by reason of third-party rights are provided for in Section 104 (1) and Section 104 (1) (d) particularly denies the registration of marks considering wellknown marks and trade names. Section 104(1) (d)

In that, where such a well-known mark or trade name is registered in Sri Lanka for goods or services which are not identical or similar to that of the propounded mark, the propounded mark is generally admissible. It will not be admissible only in the following circumstances;

“The Director-General shall not register a mark if it is identical with, or misleadingly similar to, or constitutes a translation or transliteration or transcription of a mark or trade name which is well known in Sri Lanka for identical or similar goods or services of a third party, or such mark or trade name is well known and registered in Sri Lanka for goods or services which are not identical or similar to these in respect of which registration is applied for, provided in the latter case the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well known mark and that the interests of the owner of the well known mark are likely to be damaged by such use.”

a. the use of the propounded mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark

The section refers to two circumstances: the use of the propounded mark in relation to identical or similar goods or services and different goods or services.

Section 104 (1) (d) is silent about the use of the concerned well-known mark or trade name in Sri Lanka. Hence, the interest of the proprietors of the well-known mark or trade name are protected irrespective of the use of such a well-known mark or trade name in Sri Lanka.

It is important to note that where the propounded mark is identical with, or misleadingly similar to or constitutes a translation or transliteration or transcription of a well-known mark or trade name for identical or similar goods or services, the fact that whether such a well-known mark

or trade name is registered in Sri Lanka or not is immaterial.

b. the interests of the owner of the wellknown mark is likely to be damaged by such use. It is also important to note that as per the wording of 104 (1) (d), well-known registered trade names concerning different goods or services are protected even when the required circumstances do not exist. USE OF WELL-KNOWN MARKS IN SRI LANKA

HOW TO DETERMINE WHETHER A MARK IS WELL-KNOWN OR NOT

Section 104(2) spells out certain criteria for the purpose of determining whether a mark is well-Known or not, and these are deemed not to be exclusive or exhaustive. i) particular facts and circumstances relating to each mark; (ii) any fact or circumstance from which it may be inferred that the mark is wellknown; (iii) the degree of knowledge or recognition of the mark of the relevant sector of the public; (iv) the duration, extent, and geographical area of use of the mark; (v) the duration, extent, and geographical area of promotion of the mark, including advertising or publicity and the presentation at any fair or exhibition of the goods or services to which the mark applies; (vi) the duration and geographical area of the registration or the application for registration, of the mark, to the extent that they reflect use or recognition of the mark; (vii) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as being well known, by the Competent Authority; (viii) the value associated with the mark; Well-known marks whether registered or not are protected under the provisions of the IP Act. If not registered, rights can be enforced under unfair competition.

Manisha Singh is a founder and the Managing Partner of LexOrbis. She overviews and supervises all practice groups at the firm. Starting her career at the time when Indian IP laws and practices were undergoing substantial changes pursuant to India’s obligations to comply with the TRIPS agreement, Manisha played an important and crucial role in advising and apprising Indian policy and lawmakers on global standards associated with IP administrative and enforcement systems. Manisha is known and respected for her deep expertise in prosecution and enforcement of all forms of IP rights and for strategising and managing global patents, trademarks, and designs portfolios of large global and domestic companies. Her keen interest in using and deploying the latest technology tools and processes has immensely helped the firm develop efficient IP service delivery models and provide best-in-the-class services. She is also known for her sharp litigation and negotiation skills for both IP and non-IP litigations and dispute resolution. She is involved in a large number of intellectual property litigations with a focus

on patent litigations covering all technical fields – particularly pharmaceuticals, telecommunications, and mechanics. She has been involved in and successfully resolved various trademarks, copyright, design infringement, and passing off cases in the shortest possible time and the most cost-efficient manner applying out-of-box strategies and thinking. She is an active member of many associations like INTA, APAA, AIPLA, AIPPI, LES, FICPI, and is actively involved in their committee work. She is an active writer and regularly authors articles and commentaries for some of the top IP publications. Awards: - ALB Top Dispute Lawyers, 2020: Manisha Singh recognised as one of the top dispute lawyers - India Business Law Journal, 2020: Manisha Singh recognised as one of India’s Top 100 Lawyers, The A-List -IAM Strategy 300, 2020- Manisha Singh has been recognised as the world’s leading IP strategist

-IAM 1000, 2020- Manisha Singh is recognised as a “Recommended Individual” - Managing IP, 2020- Manisha Singh recognised as “IP Star” 2020 for Patent litigation, Patent strategy & counselling -Manisha Singh recognised as Star Women in law for the year by Legal Era-Legal Media Group, 2020 -WTR 1000, 2020 - Manisha Singh ranked among the “Recommended Individuals.”

Name: Amaya Singh Law Firm Name: LexOrbis Country: India Position: Partner Website: www.lexorbis.com Amaya is a Partner at LexOrbis. With over 17 years of experience in the field of Trademarks, she has acquired expertise in all nuances of the trademark laws, ranging from national and international filings, prosecution, assignments, recordals, renewals, oppositions, and cancellation actions. She regularly advises clients on allied areas of trademark enforcement, such as brand protection and domain name acquisition. Amaya also regularly advises clients ranging from start-ups and small and medium

scale enterprises in identifying and protecting their IP assets in India as well as internationally and is responsible for large IP portfolios from various industries, including Media & Entertainment, Pharmaceuticals, Foods and Beverages, Computer Software, Fashion, Sports, Automobiles, Liquor, etc. She regularly represents LexOrbis in several national and international IP conferences and events throughout the year. In addition, Amaya is also in charge of the Group for Research, Publications, and Programs at LexOrbis and Heads the Firm’s overall operations.

I N D IA

Soap Wars:

Dabur Gets Interim Relief Written by Manisha Singh, Managing Partner & Amaya Singh, Partner at LexOrbis, India - www.lexorbis.com

The background:

Recently, the Delhi High Court decided an intellectual property infringement suit between two consumer goods manufacturers, RB Health (US) LLC and Dabur India Limited. The plaintiffs moved the court to enforce their intellectual property rights vested collectively in a design registration, a tagline, and the trade dress of their soap bars. The main plaintiff, RB Health (US) LLC, is a British multinational consumer goods company which sued the defendant along with its Indian counterpart and the second plaintiff, Reckitt Benckiser (India) Pvt Ltd. Also known by the Reckitt Benckiser Group, the company is a worldwide producer of health, hygiene, and household products including some well-known brands like ‘Dettol’, ‘Harpic’, ‘Lizol’, etc. The company owns and uses a set of design registrations for its various products, of which the ones relevant in this case are the design registrations for soap bars bearing numbers 229435 and 229436, falling in class 28-02, obtained on 21.05.2010 (with a priority date of 23.11.2009), and 24.04.2015, respectively. The impugned soap bar design bears the registration number 271671 and has a reciprocity date of 04.11.2014 in class 2802. The defendant, Dabur India Limited, is one of the biggest Indian manufacturers of Ayurvedic and natural healthcare goods. As per the plaintiffs’ case, the cause of action arose when the defendant introduced a soap bar under the brand name ‘Sanitize’ on 30.07.2020, bearing a similar trade dress to that of the plaintiffs’ product.

The issue:

The plaintiffs alleged piracy, infringement and passing off of the plaintiffs’ registered design by the defendants. They stated that upon comparison, it would show that the defendant’s product is a fake imitation of the plaintiffs’ product. To substantiate their claims against the defendant, the plaintiffs stated the following information in their written plaint: that they have been selling the antiseptic liquid soap under the brand name Dettol since 1933. They began using the ‘sword device’ in the trade dress from 1999-2000 in India and started using an ‘overlapping soap sign’ from 2010. The taglines ‘be 100% sure’, ‘everyday protection against a wide range of unseen germs’, and ‘protection from 100 illness-causing germs’, have been in use since 2003, 2010, and 2014, respectively.

The plaintiffs sought a permanent injunction against the defendant from manufacturing, importing, marketing, advertising, promoting, selling and/or using the plaintiffs’ impugned design registration bearing number 271671 in class 28-02. The injunction was also sought to bar the defendant from using any combination of the plaintiffs’ registered design with any other design. Furthermore, an injunction was sought to protect the tagline ‘be 100% sure’ used in the advertisements for the soap bar along with the packaging, and the colour of the product. The plaintiffs also sought to obtain all the material in the defendant’s possession which bore the impugned design and a rendition of accounts. The defendant denied copying the plaintiffs’ designs by stating that their registered design is not unique or distinguishable from other similar designs available in the market, hence, they could not claim exclusive ownership over it. They submitted that the plaintiffs’ taglines do not describe the product and cannot be protected under the IP law as it contains a disclaimer. It is pertinent to note here that during an initial hearing on 14.08.2020, the court questioned whether similar designs for the same product already existed in the market. To this, the defendant submitted two design registrations owned by a competitor, Hindustan Unilever Limited (HUL), bearing design registration numbers 233189 and 233190 in the year 2010 in class 28-02 which

resembled the impugned designs. At that time, the court directed the Controller of Designs to present the documents related to these design registrations, including any applications moved by any of the parties on that behalf.

The plaintiffs’ contentions:

Firstly, the plaintiffs repudiated the claims of the defendant by stating that the plaintiffs’ registered design cannot be invalidated only because it has features which are common with the 2009 design. Since both the plaintiffs belong to a common parent company i.e. the Reckitt Benckiser Group, they hold a valid common ownership title over the registered designs. Further, the defendant relied on HUL’s design registrations to prove that the impugned designs already existed in the market. The plaintiffs stated that this is futile by citing that the plaintiffs were the first registered proprietors of the designs. Moreover, HUL’s design registration only states the colour and colour combination used on their products. The plaintiffs further stated that any other registration of the impugned design made outside India before 2009 will also not help the defendant’s case because neither is it an available ground for cancellation under the Indian Designs Act nor do those design registrations constitute prior publication. The defendant failed to submit any evidence in support of their claim. They also submitted that those designs were not similar to the designs disputed in this case.

pleaded for cancellation of the registration. To maintain the registration, the court should apply the test of novelty to check whether the disputed design is novel and not a variant of earlier known designs. Also, if the plaintiffs could prove that their design is a variant of the design registered by them in 2009, they could sustain the registration. However, this would also fail given the contention that the 2009 variant was owned by a different juridical entity. The disputed design in this suit cannot be protected as it is owned by a separate entity. Therefore, the defendant put forward that it was a mere variant of an existing design. The defendant stated that their packaging bore their brand name ‘Dabur’ conspicuously which was enough to distinguish its products from the plaintiffs’. They further contended that the plaintiffs cannot seek action against passing off as they do not have proprietary rights over the features of the soap bar. The features in question were the colour of the bar, the smell, colour of the packaging, and the taglines, etc. Since the marks or the features were descriptive, they cannot be monopolized by the plaintiffs. The defendant added that a registered label does not imply rights in the descriptive marks it contains. Upon a perusal of the products available in the market, it was added that the green colour of the packaging and orange colour of the soap bars was common hence no exclusivity or distinctiveness could be claimed.

within India unless they are specifically registered in India. An exception to this rule is when an application on this behalf is made within 6 months from the date of filing the design registration application in a foreign country which is a part of the inter-governmental organisation. Further, the proprietor of the impugned design registration and the 2009 design were different entities, namely RB Health (US) LLC and Reckitt Benckiser (Overseas) Health Limited, respectively, thereby weakening the plaintiffs’ case. Next, the court adjudged on the count of passing off. The court held that a plaintiff must prove reputation and goodwill in the market; demonstrate dishonesty of the defendant to misrepresent and confuse customers; and that the defendant’s fraudulent actions caused huge losses. In this matter, the plaintiff should have proven goodwill and reputation within the territorial jurisdiction of the court. As evident from the packaging and product of the defendant, it was not proven that the customers could be misled, or the likelihood of confusion could arise. The plaintiffs’ contentions that the defendant had copied its trade dress was debunked by the court. It held that there were several products available in the market which bore the same colour, shape, and smell as that of the plaintiffs. Likewise, the taglines and device displayed on plaintiffs’ soap bars were not registered trademarks. The taglines and the devices were used commonly on soap bars and other such household products. Over time, they become synonymous with the class of products and lose distinctiveness. The plaintiffs could not prove their unique association with the impugned design and its features; hence, no IP rights could be enforced over these features at this stage.

The plaintiffs submitted that the defendant had tried to pass off their product as the plaintiffs’. It was evident from looking at the defendant’s product which had such features that were exclusively associated with the plaintiffs’ product like the combination of green and white colour, display of same taglines, sword device, overlapping plus sign on the packaging, and the similar smell, colour, shape and configuration of the product. This in turn established fraudulent behaviour on the part of the defendant with a view to confuse consumers.

The decision:

The court refused to grant an injunction in favour of the plaintiffs and dismissed the application. The case will be heard again in March 2021.

1. Whether the defendant has been successful in challenging the credibility of the plaintiffs’ registered design?

In Conclusion.

The defendant’s contentions:

2. Whether the defendant has attempted to pass off their goods as those belonging to the plaintiffs by using a similar trade dress for the same product?

While denying all claims of infringement and passing off, the defendant reiterated that the soap bar design is not novel and has been in the public realm for a long time. To substantiate, they submitted a list of registered design numbers owned by competitors. Hence, they claimed protection under the ‘Gillette Defence’ doctrine as per which a defendant using a design which is already available in the public domain cannot be held liable for infringement. On this basis, they claimed that the plaintiffs’ registration of the design was invalid and

Competitors’ products as shown in the Court’s order

The court narrowed the matter to two major issues:

After a thorough hearing of all the contentions, the court compared the prior known design registrations with the parties and the trade dress of both the parties. Upon a perusal of the designs of competitor’s products, the court held that the plaintiffs’ design registration could be challenged. It was held that the design was neither new nor novel. HUL’s design registrations supported the defendant’s argument that the plaintiffs’ design registrations were not valid. Design registrations made outside India do not nullify the designs registered

The Court relied on the facts of the case while deciding the issue. The key takeaway from this case is that if the IP owner does not ensure that the ownership is with the same company/legal entity, the rights become jeopardised. Another takeaway from this decision is that the existence of similar designs for the same product in the market can make or break a case. Even after obtaining registration, a manufacturer should be able to prove the novelty of its design to successfully restrain a defendant from using the same. In this regard, it must be noted that competition should not be overlooked while obtaining the design registration. Thus, without a unique and functional design and a clear ownership, an IP holder cannot do much to enforce its proprietary rights.

I N D IA Name: Dr Joshita Davar Khemani Law Firm Name: LS Davar & Co Country: India Position: Managing Partner Website: www.lsdavar.org.in

How Dr. Joshita Davar Khemani Revolutionised the Indian IP Industry with Her Leadership. Dr Joshita Davar Khemani is the current Managing Partner and senior Attorney at Law at L.S. DAVAR & CO., a full-service Intellectual Property Law Firm which was established and Headquartered in Kolkata in the year 1932 by Late Mr. L. S. Davar, an Attorney at Law. Skilled in Client relationships, Litigation, Management, Intellectual Property, and Trademarks, Dr. Joshita Davar Khemani has dominated the Indian legal space for more than 30 years. With zonal offices in Delhi and Bengaluru and associates in over 145 countries, Dr. Joshita Davar Khemani significantly increased its legal services wings. Under her leadership, the firm has received several accolades, awards, and recognition by prestigious and globally recognised organisations at various international platforms. Hers is a list of proud moments as the firm has received accolades in the Indian IP fraternity. •

Top 100 Powerful Women in Law by World IP Forum

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Recognised as The IP Boutiques of the Year in the year 2020 by the Asia IP

•

“IP Star - Ranked Firm” for the years 2018,2019 & 2020 by the most prestigious IP Stars

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Recognised as The Most Trusted IP Law Firm in the year 2018, 2019 & 2020 by The Economic Times (ET).

•

IPR Leadership Award 2020 by Social Talks in association with NITI Aayog

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We are also members of INTA, AIPPI, APAA, ECTA, and AIPLA.

Dr. Joshita Davar Khemani, Vice-President, Bustee Welfare Centre, has been actively involved in the mission of the BWC. “Imparting free education to the underprivileged children to make them self-supporting happens to be one of our primary goals,” she says proudly.

“BWC is operating with 500 students studying from Nursery to Class VII. All expenses like books, uniforms, and tuition fees are borne by the organisation.” Says Dr. Joshita Davar Khemani, the VicePresident. Dr. Joshita Davar Khemani’s demonstrated leadership quality and decision-making abilities have made this firm stand tall in the legal space. With nearly 90 years of glorious experience and expertise in the domain, her legal team offers professional services in handling, protecting, and enforcing a multifaceted portfolio of Patents, Trademarks, Designs, Copyrights, Domain Name, and Geographical Indication. Being a great place to work, several attorneys have been with the firm for more than 25 years, and their dedication has made client retention for more than 30 years. Services Offered by LS DAVAR & CO Includes the Following Sectors: Software | IT | IOT | AI; Biotechnology; Information Communication & Technology (ICT); Food & Beverages; Automobile; Liquor & Spirits; Mechanical, Electrical, Electronics & Hydraulics in Manufacturing; Fashion & Textile; Start-Ups ; FMCGs; Media & Entertainment; Academic & Research Institutes; Pharmaceuticals & Healthcare; Indian Government Undertakings Dr. Joshita Davar Khemani’s influence, administrative quality & guidance has given rise to dedicated departments and advisory services under the following heads. Patents, Trademarks, Designs, Copyrights, Geographical Indications, Domain Disputes, Annuities & Renewals, Infringement & Counterfeit, Agreements & Licensing | IP Audit | Due Diligence, Dispute Resolution, Advisory Services, Bio-Diversity, Data Privacy & Protection, Media and Entertainment Laws Dr. Joshita Davar Khemani & her team have been relentlessly offering top-level legal services and helping their clients build a strong IP portfolio & ensure a competitive advantage.

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