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Global IP guide Global IP guide June 2011 Corporate INTL 97 96 Corporate INTL June 2011 Based in Cameroon, Cabinet ISIS Conseils (SCP) is a professional law firm of attorneys at law, patent & trademark attorneys and Intellectual Property (IP) lawyers specialised in Business and Corporate Law as well as matters of IP. The firm is the brainchild of five reputable attorneys who were driven by a desire to create a modern and dynamic law firm that responds closely to the needs of its clients. Guided by these criteria, Cabinet ISIS Conseils (SCP) is always on hand to offer customised assistance, expedited by seasoned lawyers and paralegals who specialise in all aspects of business life. Managing director Christian Dudieu DJOMGA noted: “Cabinet ISIS Conseils (SCP) will be your technical and strategic partner during any litigation before the law-courts and arbitration bodies, and will help and accompany you at each stage of your business – at creation as well as during its day-to-day activities. “The biggest advantage of the OAPI System is that a single registration covers the sixteen (16) countries members of the Bangui Protocol, and can be enforced in each of these countries.” “It will help you to secure upstream all your contracts, trade negotiations and partnership agreements, to name but a few.” Mr. DJOMGA added that the firm’s lawyers are specialised in IP matters in OAPI-Africa Union (patent, trademark and design registrations including: searches, prosecution of applications, opinions, litigation, watch, recordals, oppositions, commercial investigations and license agreements) and in company law, particularly in commercial negotiations, business set-up, mergers and acquisitions and the drawing up of contracts. Mr. DJOMGA added: “In addition to our two Cameroon-based offices (Yaounde and Douala), we also have offices in Accra (Ghana) and Kinshasa Cameroon Christian Dudieu DJOMGA, Managing Director +(237) 22 00 27 52 / 22 08 07 32 [email protected];[email protected] www.cabinetisis.com Cabinet ISIS Conseils (SCP) (Democratic Republic of Congo). Nowadays, Cabinet ISIS Conseils (SCP) is the largest and one of the most successful Legal Professional in OAPI. “The biggest advantage of the OAPI System is that a single registration covers the sixteen (16) countries members of the Bangui Protocol, namely (Cameroon, Gabon, Republic of Congo, Central Africa Republic, Ivory Coast, Senegal, Mali, Mauritania, Chad, Togo, Benin, Burkina-Faso, Guinea, Guinea Bissau, Niger and Equatorial Guinea) and can be enforced in each of these countries.” As business is also a source of disputes, Cabinet ISIS is your technical and strategic partner during any disputes before the law courts and arbitration bodies. Mr. DJOMGA concluded: “Cabinet ISIS is your best asset. It helps you to work out and implement development strategies in West, Central Africa and in the OAPI area, for mergers and acquisitions, business restructuring, funds release and prospecting for investors, etc. “In addition, where necessary the firm partners with seasoned tax experts in order to ensure fulfilment of clients’ objectives.” “Cabinet ISIS is your best as- set. It helps you to work out and implement development strategies in West, Central Africa and in the OAPI area, for mergers and acquisi- tions, business restructur- ing, funds release and pros- pecting for investors, etc.” GLOBAL IP GUIDE Intellectual Property (IP) protection is fundamental to a company’s success. Legal protection for the expression of creative ideas and the outcomes of scientific research is essential for the development and long-term growth of business and innovation. Understanding the concepts and importance of laws protecting patents, copyrights and trademarks is becoming an increasingly essential part of day-to-day business life and a specialist adviser in these areas is now a necessity. Intellectual Property encompasses the legal property rights over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under Intellectual Property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary and artistic works; ideas, discoveries and inventions; and words, phrases, symbols and designs. Common types of Intellectual Property include copyrights, trademarks, patents, industrial design rights and trade secrets. For many companies Intellectual Property is an extremely valu- able but not fully appreciated or understood asset. All business- es have Intellectual Property, regardless of their size or sector. For many companies, Intellectual Property is an extremely valuable but not fully appreciated or understood asset. All businesses have Intellectual Property, regardless of their size or sector. This could be the name of a business, or copyright, designs, “A brand for a company is like a reputation for a person. You earn reputation by trying to do hard things well.” - Jeff Bezos – founder of Amazon.com patents and trade marks. A company’s IP is likely to be a valuable asset. Securing and protecting it could be essential to a business’ future success. The first step to protecting and exploiting a business’ Intellectual Property successfully is carrying out a systematic Intellectual Property audit. This is not always a straightforward task as IP doesn’t just reside in patents held or trade marks registered. One must also consider items such as any bespoke software, written material, domain names and customer databases. The majority of Intellectual Property rights provide creators of original works economic incentive to develop and share ideas through a form of temporary monopoly. Although many of the legal principles governing Intellectual Property have evolved over centuries, it was not until the late 20th century that the term ‘Intellectual Property’ began to be used as a unifying concept. Intellectual Property solicitors work in a broad range of areas, but most commonly ones for which design is central to their business such as manufacturing and the creative industries. Intellectual Property essentially provides a controlled monopoly for designers to exploit. An Intellectual Property solicitor works on the sale and purchase of IP, its registering and licensing and deals with third- party IP claims. Intellectual Property solicitors work in a broad range of areas, but most commonly ones for which design is central to their business such as manufacturing and the creative industries.

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Page 1: GLOBAL IP GUIDE oon - Corporate INTL · Global IP guide Global IP guide 96 Corporate INTL June 2011 June 2011 Corporate INTL 97 Based in Cameroon, Cabinet ISIS Conseils (SCP) is a

Global IP guideGlobal IP guide

June 2011 Corporate INTL 9796 Corporate INTL June 2011

Based in Cameroon, Cabinet ISIS Conseils (SCP) is a professional law firm of attorneys at law, patent & trademark attorneys and Intellectual Property (IP) lawyers specialised in Business and Corporate Law as well as matters of IP.

The firm is the brainchild of five reputable attorneys who were driven by a desire to create a modern and dynamic law firm that responds closely to the needs of its clients.

Guided by these criteria, Cabinet ISIS Conseils (SCP) is always on hand to offer customised assistance, expedited by seasoned lawyers and paralegals who specialise in all aspects of business life.

Managing director Christian Dudieu DJOMGA noted: “Cabinet ISIS Conseils (SCP) will be your technical and strategic partner during any litigation before the law-courts and arbitration bodies, and will help and accompany you at each stage of your business – at creation as well as during its day-to-day activities.

“The biggest advantage of the OAPI System is that a single registration covers the sixteen (16) countries members of the Bangui Protocol, and can be enforced in each of these countries.”

“It will help you to secure upstream all your contracts, trade negotiations and partnership agreements, to name but a few.”

Mr. DJOMGA added that the firm’s lawyers are specialised in IP matters in OAPI-Africa Union (patent, trademark and design registrations including: searches, prosecution of applications, opinions, litigation, watch, recordals, oppositions, commercial investigations and license agreements) and in company law, particularly in commercial negotiations, business set-up, mergers and acquisitions and the drawing up of contracts.

Mr. DJOMGA added: “In addition to our two Cameroon-based offices (Yaounde and Douala), we also have offices in Accra (Ghana) and Kinshasa

Cameroon

Christian Dudieu DJOMGA, Managing Director+(237) 22 00 27 52 / 22 08 07 [email protected];[email protected]

Cabinet ISIS Conseils (SCP)

(Democratic Republic of Congo). Nowadays, Cabinet ISIS Conseils (SCP) is the largest and one of the most successful Legal Professional in OAPI.

“The biggest advantage of the OAPI System is that a single registration covers the sixteen (16) countries members of the Bangui Protocol, namely (Cameroon, Gabon, Republic of Congo, Central Africa Republic, Ivory Coast, Senegal, Mali, Mauritania, Chad, Togo, Benin, Burkina-Faso, Guinea, Guinea Bissau, Niger and Equatorial Guinea) and can be enforced in each of these countries.”

As business is also a source of disputes, Cabinet ISIS is your technical and strategic partner during any disputes before the law courts and arbitration bodies.

Mr. DJOMGA concluded: “Cabinet ISIS is your best asset. It helps you to work out and implement development strategies in West, Central Africa and in the OAPI area, for mergers and acquisitions, business restructuring, funds release and prospecting for investors, etc.

“In addition, where necessary the firm partners with seasoned tax experts in order to ensure fulfilment of clients’ objectives.”

“Cabinet ISIS is your best as-set. It helps you to work out and implement development strategies in West, Central Africa and in the OAPI area, for mergers and acquisi-tions, business restructur-ing, funds release and pros-pecting for investors, etc.”

GLOBAL IP GUIDE

Intellectual Property (IP) protection is fundamental to a company’s success. Legal protection for the expression of creative ideas and the outcomes of scientific research is essential for the development and long-term growth of business and innovation.

Understanding the concepts and importance of laws protecting patents, copyrights and trademarks is becoming an increasingly essential part of day-to-day business life and a specialist adviser in these areas is now a necessity.

Intellectual Property encompasses the legal property rights over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under Intellectual Property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary and artistic works; ideas, discoveries and inventions; and words, phrases, symbols and designs. Common types of Intellectual Property include copyrights, trademarks, patents, industrial design rights and trade secrets.

For many companies Intellectual Property is an extremely valu-able but not fully appreciated or understood asset. All business-es have Intellectual Property, regardless of their size or sector.

For many companies, Intellectual Property is an extremely valuable but not fully appreciated or understood asset. All businesses have Intellectual Property, regardless of their size or sector. This could be the name of a business, or copyright, designs,

“A brand for a company is like a reputation for a person. You earn reputation by trying to do hard things well.” - Jeff Bezos – founder of Amazon.com

patents and trade marks.A company’s IP is likely to be a valuable asset. Securing and

protecting it could be essential to a business’ future success. The first step to protecting and exploiting a business’ Intellectual Property successfully is carrying out a systematic Intellectual Property audit. This is not always a straightforward task as IP doesn’t just reside in patents held or trade marks registered. One must also consider items such as any bespoke software, written material, domain names and customer databases.

The majority of Intellectual Property rights provide creators of original works economic incentive to develop and share ideas through a form of temporary monopoly. Although many of the legal principles governing Intellectual Property have evolved over centuries, it was not until the late 20th century that the term ‘Intellectual Property’ began to be used as a unifying concept.

Intellectual Property solicitors work in a broad range of areas, but most commonly ones for which design is central to their business such as manufacturing and the creative industries. Intellectual Property essentially provides a controlled monopoly for designers to exploit. An Intellectual Property solicitor works on the sale and purchase of IP, its registering and licensing and deals with third-party IP claims.

Intellectual Property solicitors work in a broad range of areas, but most commonly ones for which design is central to their business such as manufacturing and the creative industries.

Page 2: GLOBAL IP GUIDE oon - Corporate INTL · Global IP guide Global IP guide 96 Corporate INTL June 2011 June 2011 Corporate INTL 97 Based in Cameroon, Cabinet ISIS Conseils (SCP) is a

Global IP guideGlobal IP guide

June 2011 Corporate INTL 9998 Corporate INTL June 2011

KUHNEN & WACKER is an Intellectual Property (IP) law firm established more than 35 years ago in Freising/Munich. The firm not only offers services in patents, utility models, designs, trademarks, domains, copyrights and trade secrets, but also in IP evaluation as well as IP litigation and licensing.

In addition, KUHNEN & WACKER has earned a worldwide reputation in sophisticated litigation matters. Its long record of success involves a well-known case Epilady vs. Remington in patent litigation, as well as more recent cardiac stent and automotive cases. The Epilady case was especially notable as it was the first case in which the same European patent was invoked against the same infringement form in many European jurisdictions in parallel. The outcome in the different countries demonstrated the need for a unitary European jurisdiction in patent litigation.

Intellectual property is one of a company’s main assets. When asked how conscious companies are about safeguarding their IP, senior partner with the firm, Rainer A. Kuhnen, noted: “There are companies who are familiar with patents because they are innovative and need the protection, or because they were sued for patent infringement in the past. However, there are still many companies who consider a patent portfolio – just as freedom to operate searches – primarily as a waste of money – until they are sued for infringement.”

Mr. Kuhnen added that innovative niche companies (‘hidden champions’) are usually well aware that their success depends on good protection – whereas producers of mass articles often do not pay attention to patents until they are copied, or sued for the first time.

“There are still many companies who consider a patent portfolio primarily as a waste of money – until they are sued for infringement.”

With regard some of the complexities involved in establishing/enforcing IP rights on a cross border/international scale, Mr. Kuhnen commented:

“In the absence of a pan-European court, cross border litigation normally requires an infringement suit of its own in each country, and thus is very cost intensive and quite unpredictable as to outcome. Until recently, this sometimes could be avoided by a ‘cross border injunction’ in which a national court decides upon an injunction also in parallel jurisdictions. However, the European Court of Justice has cut possibilities down (see decisions GAT vs. LuK and Roche vs. Primus/Goldenberg of 2006) so that such ‘cross border injunctions’ do not play a major role in practice any more.”

He concluded: “There recently was a breakthrough with the unitary EU patent (valid in the entire EU just like a US patent is valid in all states of the USA), for all EU member states except Spain and Italy (who are free to join later). Plans for a pan-European Patent Court have, however, suffered a setback when the European Court of Justice held the current draft as incompatible with EU law. A new draft will be made avoiding the court’s points of criticism.”

Germany Ghana

KUHNEN & WACKER

Fugar & Company, established in 1977 is one of the leading law firms in Ghana providing legal services to individuals and businesses. It is essentially an international commercial law practice but has strong expertise in diverse areas of law.

From humble beginnings as a one-man firm, Fugar & Company has rapidly expanded both in size and practice areas to become one of the largest law firms in Ghana. It currently employs eight lawyers, four paralegal staff and four secretaries. It also has an Administrative Secretariat. In pursuance of its policy of maintaining a high standard of practice, Fugar & Company is well-equipped with all operational facilities and a well-stocked library.

The firm has two special projects – Production and Publication of Reviews on Ghanaian Legislation and Organisation of Seminars on all topical issues of law on a regular basis.

Intellectual PropertyWith the growing public awareness of Intellectual Property (IP) rights, Government’s policy has changed in recent years in a bid to eliminate piracy of copyrights, patents and trademarks.

In pursuance of this objective, a copyright office has been established and has been instrumental in bringing to the fore the legal implications of infringement and misappropriation of copyrights, trademarks and patents. Individuals and organisations are increasingly resorting to arbitration and litigation in settling such claims.

Accordingly, the firm’s practice in this area is rapidly expanding and is increasingly challenged by transactions and litigation involving IP.

The firm’s experience to date has primarily been in advising clients both local and foreign on how to enforce and protect their IP rights, registration of trademarks, patents and designs, litigating on behalf of clients in respect of copyright infringements, representing clients at arbitrations conducted by the Copyright Office, and generally advising on Ghanaian IP laws.

Fugar & Company’s client base includes firms from Asia, Europe and North America who often require assistance in this regard.

Registration of Trademarks:In Ghana, Trademarks are registered by the Registrar of Trademarks. The Trademarks registry is located at the Registrar General’s office which is a department of the Ministry of Justice.

National Legislation:•Trademark Act 1965 (Act 270) – Trademark Regulations 1970 (LI667).

Membership in International Conventions:• Paris Convention for the protection of Industrial Property 1883, Stockholm Act

of July 14 1967.• Convention on establishing the World Intellectual Property Organisation

(WIPO) of July 14, 1967.• World Trade Organisation – TRIPS Agreement.

Fugar & Company

Rainer A. Kuhnen Senior Partner+49 8161 [email protected] www.kuhnen-wacker.com

William Fugar, Partner+(233)302 [email protected]

In Mexico, slogans, trademarks, patents, utility models, industrial designs and industrial drawings are governed by the Industrial Property Law and copyrights by the Copyright Law. The country’s IP system differs completely to that of neighbouring jurisdictions, specifically to that of the US. Mexico is a registration-orientated country, so the only way to secure the exclusive right of use over a trademark/slogan is through registration.

Goodrich Riquelme Y Asociados is a full service law firm with 75 years of experience to account for its excellence. Its practice areas include: Corporate and M&A; Commercial Transactions; Finance, Banking and Venture Capital; Industrial and Intellectual Property; Taxation, Customs and Trade Regulation; Employment and Labour Benefits; Environment and Climate Change; Immigration; Alternative Dispute Resolution and Litigation; Entertainment; Sports; Copyright; and Licensing.

However, the firm’s IP area represents its most important field of practice with the prosecution of over 3500 trademarks and more than 1000 patents per year. Goodrich Riquelme Y Asociados is distinguished by its personalised and impeccable service with each client, providing them with the best strategy and most cost-effective solution for their IP matters in Mexico.

Due to the size and scope of the firm’s IP area, its lawyers represent several of the most renowned corporations in different industries (pharmaceutical, retail sales corporations, oil enterprises, cosmetics, fashion, entertainment, foods, etc.). The firm has not limited its service to a specific type of client, but instead continuously adjusts in order to fit each of its clients´ needs.

Enrique A. Diaz, partner, noted: “Goodrich Riquelme Y Asociados has observed that Mexican companies lack the necessary consciousness in protecting their IP assets. It is plain to see that the IP protection culture and practice is years behind in comparison to that of neighbouring jurisdictions.”

“However,” he said, “the presence of foreign corporations in the country has gradually changed the local corporations’ view and practice in regard to the protection of their IP rights.”

Mr. Diaz also highlighted that because Mexico is a registration-orientated country, no common rights are acknowledged. Therefore, if a foreign corporation wants to protect/enforce their IP rights in Mexico, it is absolutely necessary to file for the registration of such.

Aside from a couple of exceptions, there are no common law rights in Mexico; only a party who has previously patented or registered an invention or trademark can claim exclusive rights over it. Further, Mexico does not have an opposition system.

Mr. Diaz concluded: “Also of note – it is important to mention that the Mexican Patent and Trademark Office (MPTO) has experienced some drastic changes in the past few weeks. The MPTO’s director has been replaced and, because of this, Goodrich Riquelme Y Asociados is expecting modifications and hopefully improvements in the country´s IP practice [as industry standards continue to evolve].”

Mexico Pakistan

Goodrich Riquelme Y Asociados

Bharucha & Co. is a one stop solution for all Intellectual Property (IP) matters and issues. The range of services includes Searching, Filing, Prosecution and Registration as well as Litigation. Further, the firm is a mix of old experienced hands together with members having experience of a decade or two as well as ever-increasing fresh blood. Its specialists have varied backgrounds such as Electrical Engineering, Mechanical Engineering, Computer Sciences, Chemistry, Microbiology, Biochemistry, Biotechnology and Agriculture.

The members of the firm work with full commitment to the profession and possess necessary skills. They always strive to find the best and cost-effective solutions for the clients and invariably receive clients’ acclaims. Emphasis is also placed on turnaround time and so time restricted projects are handled very swiftly and smoothly and obviously very professionally.

Managing partner Mr. Mohammad Fazil Bharucha has been rated as a leading individual in IP industry in Pakistan by Asia Legal 500 for the last several years, which states that he is a recognised player in the IP field and also states that he is widely admired for his considerable knowledge of the IP landscape, as well as his understanding of the various intricacies and eccentricities of the Trade Marks Registry and Patent Office.

According to Mr. Bharucha, the firm has a varied client base encompassing individuals, professionals, businesses, traders and industry involved in textile, footwear, sports goods, pharmaceutical, agriculture, chemical, automobile, automobile parts, electronics, IT, media & entertainment industry, research institutes, electrical appliances, consumer products, tobacco, education, perfumery, cosmetics, confectionary, food products, banks, wholesale and retail chains. They are from all over the world and predominantly from the US, Europe and Asia as well as from the Middle East and the Far East.

When asked to outline the scope of IP legislation prevalent in Pakistan at present, Mr. Bharucha noted: “The IP legislation regarding patents includes Patent Ordinance, 2000 and Patents Rules, 2003.”

He added that the scope of the legislation includes most of the provisions similar to other jurisdictions, while some differ such as: Each application shall relate to one invention only and not to a group of invention so linked as to form a single general inventive concept. Further, application for a chemical product intended for use in agriculture or medicine shall relate to a single chemical product only, excluding its derivatives and salts, each of which with a material or novel improvement in its claim from the main product, shall be filed as a separate invention or where applicable as a divisional application.

Mr. Bharucha concluded: “Companies appear to be conscious about safeguarding their IP in Pakistan, though some of the legislations are yet to be reformed to the internationally acceptable principles of patentability. However, the Intellectual Property Organization of Pakistan is actively involved not only towards reforming the legislation but also towards effective enforcement which may further enhance interest towards safeguarding their IP in Pakistan. Generally, companies belonging to pharmaceutical industry and consumer products are more conscious in relation to protection of IP.”

Bharucha & Co.

Enrique A. Diaz, Partner+(52 55) 55 33 00 [email protected]

Mohammad Fazil Bharucha, Managing Partner+92 21 3537 [email protected]

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Global IP guideGlobal IP guide

June 2011 Corporate INTL 101100 Corporate INTL June 2011

Bufete Candanedo is a one-stop shop for registration and protection of trademarks, patents, utility models, designs, copyrights and domain names. The firm advises clients on litigations concerning opposition and cancellation of trademarks registrations, trademarks infringement, copyrights infringement and related matters. The attorneys at the firm are also specialised in licensing, distributorship and franchising agreements, as well as food and drug, unfair competition and antitrust issues.

According to Jessica Atencio de Jaen, associate lawyer, companies in Panama are generally not informed enough to consider registration of their Intellectual Property (IP) rights as an important asset along with tangible property assets, capital or human resources.

Ms. Atencio de Jaen noted: “There has been an awakening in the last couple of years; however, it is problematic educating local clients on the importance of registering their IP assets. Most of the cases, the clients realise the situation when the enforcement of their rights is at risk.

“Our IP Laws are from 1994 (Copyrights) and 1996 (Industrial Property). Basically, the main difference is that we have not signed PCT or TLT, and thus, we do not have ‘national phase’ in the first case or ‘multi-class’ applications in the second case. Because of this, for PCT patents the term for filing is 12 months from the first application date or PCT filing; meanwhile, for trademark applications in numerous classes, the applicant must file the same number of applications for each class.”

However, Ms. Atencio de Jaen went on to explain that Panama has on the horizon the approval by the USA Senate of the free-trade agreement that will see the improvement of IP standards – when Panama becomes a member of different treaties such as the PCT.

There is also a project for the modification of the 1996 IP Law, which includes multi-class application among other matters. However, both would have to pass over legislature at the National Assembly (Congress) to become law in the Republic.

Bufete Candanedo’s clients usually come to the firm through reference in directory publications, reference product of articles for publication in IP magazines. The firm’s website, as well as referrals from other clients, are other key sources of work.

Ms. Atencio de Jaen concluded: “For the most part, we work with associates around the world that send us their clients’ requests for IP protection. However, we also have numerous clients corresponding to companies – with in-house legal departments – that are seeking more personalised treatment and direct communication with a specialised professional.

“Our most interesting case work often comes from this last kind of client. We have been working for more than a decade with Sanrio Company, Ltd. in the defence of their IP protection of famous character HELLO KITTY, with opposition and cancellation actions against third party trademarks. This has been noteworthy as it has given us the opportunity to interpose or defend our client all kinds of actions within the civil and criminal proceedings.”

Panama Poland

Bufete Candanedo

The level of knowledge pertaining to Intellectual Property (IP) protection has changed noticeably in Poland in recent years. In particular, Polish entrepreneurs have become more aware of the role of adequately protected and managed exclusive rights as part of a business strategy and, consequently, the market has seen an increase of trademark and patent fillings as well as IP litigation.

According to Dorota Rzazewska, managing partner at JWP Patent & Trademark Attorneys, the change in the attitude of the Polish companies towards this issue results, inter alia, from the EU accession and foreign investment as well higher market pressure and increasing competition, both domestic and international. Consultancy services and educational programmes addressed to Polish entrepreneurs also contributed to the increase.

Further, JWP Patent & Trademark Attorneys is one of the leading Polish IP law firms providing comprehensive assistance in the field of IP protection and litigation in Poland and Europe. JWP has a broad expertise in patents, trademarks, industrial designs, copyrights, domain names, computer law and Internet law as well as combating unfair competition and anti-counterfeiting. The firm has a considerable input in the field of increasing business awareness, offering advice, training and providing pro bono educational workshops on IP protection and litigation.

Ms. Rzazewska noted: “The global economic slowdown has also made Polish entrepreneurs apply more diligence when planning expenses for creation their enterprises both in Poland and abroad. This results in more interest in selection of such forms of protection that, at the existing level of finance involved, would allow to obtain protection within a broader territory. This is also the reason for the greater number of community trademark and design applications.”

In the majority of cases, Polish entrepreneurs who file domestic patent applications decide to extend protection beyond the territory of Poland and, for this purpose, they resort to the procedure of the international PCT applications as well as the procedure provided by the Munich Convention. The increased number of cases of this kind is also partly due to the recent opportunities to benefit from the EU funds intended for refund of costs related to obtaining industrial property rights.

Ms. Rzazewska concluded: “Changes in the attitude towards protection of IP rights in Poland are not limited to Polish business entities. More and more frequently, foreign enterprises come to protect their trademarks, designs and inventions in Poland. It seems that this phenomenon is caused inter alia by the fact that Poland is a favourable country for investment and extension of business activities for foreign entrepreneurs.

“Further, a considerable number of foreign clients benefit also from protection under the Council Regulation (EC) No. 1383/2003, which provides for protection of intellectual property rights at the borders. We may also expect more cases of counterfeiting and trademark infringement in relation to the forthcoming EURO 2012 European Football Championship which will take place in Poland and Ukraine.”

JWP Patent & Trademark Attorneys

Jessica Atencio de Jaen, Associate Lawyer+507 213-0033 [email protected]

Dorota Rzazewska, Managing Partner+48 22 [email protected]

Gowlings International Inc. (Gowlings) is a global law firm with more than 750 professionals across nine offices in Canada, the UK and Russia. Recognised for excellence in business law, advocacy and IP, Gowlings provides dedicated industry expertise in the resource, infrastructure, life sciences, government financial services, technology and manufacturing sectors. Combining traditional legal services with innovative solutions in a number of highly specialised areas of law and business, Gowlings has developed a stellar reputation as a global go-to law firm.

International recognitionWith a Russian presence since the early 1990s, Gowlings is proud to have an internationally recognised IP practice that provides western-style solutions to uniquely Russian issues. In what has been a very dynamic market, the firm’s professionals consistently navigate the regulatory and legal landscape in Russia and the CIS, helping clients file, enforce and commercialise their tangible and intangible IP assets, and defending them when necessary.

The office is home to some of Russia’s top trademark, copyright and patent professionals and has been ranked in a number of international legal publications such as Chambers Global Guide, the PLC Which Lawyer? Yearbook, Managing Intellectual Property and Guide to the World’s Leading Trademark Law Practitioners.

The domestic and international recognition Gowlings Russia has received speaks not only to its high-level legal expertise, but also to its superior client service. Through its reputation as a client-focused and service-driven law firm, Gowlings Russia has been enlisted by industry leaders across all sectors including pharmaceutical and biotech, technology, consumer products and luxury goods, retail and oil and gas, to provide a full range of IP services.

According to David Aylen, managing partner, the majority of Gowlings’ clients are foreign companies, primarily from Europe, North and South America. They are looking for assistance in establishing and enforcing strong IP portfolios of patents and trademarks to support their market entry in Russia. These rights establish the client’s entitlement to do business in Russia and form a basis for licensing to local Russian companies or joint venture partners.

Recent transactionsExamples of recent case work include representation of an owner of a major Internet search engine before Russian commercial courts in three instances of domain name lawsuits against a famous Russian cyber squatter. Gowlings also represented a major pharmaceutical company in the commercial courts and general courts in proceedings related to trademark infringement against a Russian pharmaceutical company.

Mr. Aylen noted: “In addition, we successfully represented a leading US multinational Internet equipment company in a patent cancellation action.

“We also represented a French company in a lawsuit against a Russian state-owned enterprise related to the French company’s rights to the combination trademark in the form of a label of sparkling wine in Russia. A

Russia

David Aylen, Managing Partner+7 495 [email protected]

Gowlings International Inc.

recent Ruling of the Supreme Commercial Court on this case was a significant step in the resolution of the issue concerning calculation of the term for filing an opposition.”

Russian IP legislation covers copyright, related rights, patents, designs, utility models, layout-topographies, trade secrets, trade and service marks, appellations of origin of goods and trade names.

The legislation is essentially harmonised with TRIPS standards, although there are some peculiarities including: obligatory recordal of both assignment and licence contracts for patents, designs, utility models and trade and service marks; a substantive examination system for designs; and utility models as an alternative form of protection for devices. In each of these areas, Gowlings can provide the necessary advice on how best to proceed.

“Russian customs procedures and somewhat contradictory laws as to grey marketing add a level of com-plexity to cross-border issues. As re-gards patents, there is a requirement to submit all Russian inventions for review as regards national security, and this adds another layer of com-plexity to the process.” – David Aylen, Gowlings International Inc.

A level of complexityCommenting on the state of Russia’s IP industry at present, Mr. Aylen concluded: “Actual average consciousness of Russian companies about safeguarding IP is still far below world average, but is progressing fast. In many cases, pharmaceutical companies are the most astute organisations to the commercial significance of IP.

“Russian customs procedures and somewhat contradictory laws as to grey marketing add a level of complexity to cross-border issues. As regards patents, there is a requirement to submit all Russian inventions for review as regards national security, and this adds another layer of complexity to the process.

“Current IP legislation is relatively new since it is based on the Civil Code Part 4, which is effective since 2008. In addition, some updates are under discussion, e.g. a more liberal procedure for granting design patents and trademark registrations, a less liberal procedure for granting utility model patents, and the abolition of obligatory registration of licences.”

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Argentina Panama

Jamaica USA - New York

Mexico St. Vincent & The Grenadines

MexicoSt. Vincent & The Grenadines

Jamaica

USA New York

Panama

Etcheverry & Etcheverry

Martin [email protected]+5411 4777-0780www.Etcheverry.com

Goodrich Riquelme Y Asociados Enrique A. Diaz, Partner+(52 55) 55 33 00 [email protected]

Regal Chambers

Rosann N. Knights, Partner [email protected]+784-457-2398 or 784-532-8085

Bufete Candanedo

Jessica Atencio de Jaen, Associate Lawyer+507 [email protected]

Foga Daley

Dianne Daley [email protected]+876 927 4371www.fogadaley.com

Ladas & Parry LLP

Allan S. Pilson [email protected]+212-708-1820www.ladas.com

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Established in 1984, Gur Law Firm provides legal service with a staff of 45 lawyers, 20 paralegals and 21 other personnel.

Gur Law & IP Firm is ideally located in the commercial centre of Istanbul – at the crossroads between Europe and Asia. Further, GUR IP Firm is a registered agency before Turkish Patent Institute and represents major foreign and Turkish clients in all kinds of filing and prosecution of trademarks, patents, designs and other industrial property rights.

According to Riza Ferhan Cagirgan, partner, GUR IP Firm provides services to its clients in Consumer Protection Law, Product Liability, Competition Law & Antitrust and Data Protection Law in Turkey.

Mr. Cagirgan noted: “Apart from filing and prosecution of (Intellectual Property) IP rights, GUR Law Firm handles big litigation operations for its major clients. These kinds of litigation of trademarks, designs and patents include seizures of counterfeits at customs and anywhere they are found in the territory.”

When asked how to class the firm’s typical clients for IP advice, he added that GUR IP usually provides legal advice to foreign companies regarding IP matters in Turkey. Foreign clients are primarily active in stationery, automotive, textile, glassware and entertainment sectors; in addition, the firm provides advice to local clients which are active in entertainment, furniture, stationery and industrial sectors.

In regard to Turkey’s legal landscape pertaining to IP law, intellectual and industrial property rights are protected by statutory decrees and laws in Turkish legislation. IP rights (including copyrights and neighbouring rights) are protected by Law No.5846 on Intellectual and Artistic Works (the Copyright Law). Industrial Property rights are protected by separate decree

Turkey

Riza Ferhan Cagirgan, Partner+90 212 325 90 [email protected] www.gurip.com

Gur Law & IP Firmlaws which are Decree Law No. 556 on Protection of Trademarks, Decree Law No. 551 on Protection of Patents, Decree Law No. 554 on Protection of Industrial Designs, Decree Law No. 555 on Protection of Geographical Signs, Law No. 5147 on Protection of Semiconductor Topographies and Law No. 5042 on Protection of Breeders’ Rights on New Plant Varieties.

Mr. Cagirgan commented: “As the Decree Laws were enacted in 1995, IP rights are a relatively new notion for the Turkish people. However, it can be clearly seen that legislation pertaining to IP has been developing rapidly in Turkey – and Turkish companies have become extremely well-informed where IP rights are concerned.

“As there are not big variations regarding IP rights on a global scale, and most significant treaties and protocols regarding IP are signed by Turkey, enforcing such rights on a cross-border scale does not create additional complexities. However, a draft trademark law is in the process of being prepared, and is still waiting at the Justice Commission of Turkish Grand National Assembly to be enacted.”

According to Mr. Cagirgan this new law, when enacted, will create new considerations upon which GUR IP Firm will be able to advise.

“Apart from filing and prosecu-tion of IP rights, GUR Law Firm handles big litigation operations for its major clients. These kinds of litigation of trademarks, de-signs and patents include sei-zures of counterfeits at customs and anywhere they are found in the territory.”

Argentina

FOGADALEY A T T O R N E Y S A T L A W

PATENT & TRADEMARK AGENTS

®Mastering Law's New Frontier

Regal Chambers

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China Vietnam

India

Cameroon

New Zealand

Ghana

Japan

Nigeria

LEX ORBIS

MANISHA SINGH [email protected]+ 91 11 2371 6565www.lexorbis.com

ITOH International Patent Office

Tadahiko [email protected]+81 (0)3-5424-2511www.itohpat.co.jp

Investconsult Group

Ms. Pham Thi Thu [email protected]; [email protected]+84 4 35373262www.investconsult.vn

Johnson Bryant

Sym Otike-Odibi [email protected]+ 234 1 7742298, 23416283598, 234 1 7732904 www.johnsonbryant.com

Cabinet ISIS Conseils (SCP)

Christian Dudieu DJOMGA, Managing Director+(237) 22 00 27 52 / 22 08 07 [email protected];[email protected]

Peksung Intellectual Property Ltd.

Mr. Stephen [email protected] +86-10-8231 1199www.peksung.com

Minter Ellison Rudd Watts Lawyers

Christopher [email protected] +64 9 353 9910 www.minterellison.co.nz

Fugar & Company

William Fugar, Partner+(233)302 [email protected]

Cyprus

Ukraine

Czech Republic

Russia

Germany

Switzerland

Malta

Turkey

PATENTSERVIS Praha a.s.

JUDr. Jan Há[email protected]+420 261 090 011www.patentservis.cz

GVTH Advocates

MICHAEL [email protected]+356 2122 8888www.gvthlaw.com

Pakharenko & Partners

Antonina [email protected]+380 44 593 9693www.pakharenko.com

GUR LAW & IP FIRM

Riza Ferhan CAGIRGAN [email protected] +90 212 325 90 20www.gurlaw.com , www.gurip.com

Gowlings International Inc.

David Aylen, Managing Partner+7 495 [email protected]

Michael Kyprianou & Co. LLC

Phivi Tramountanelli [email protected] +357 22 44 77 77www.kyprianou.com.cy

Kuhnen & Wacker IP Law Firm

Rainer A. [email protected]+49 8161 608 302www.kuhnen-wacker.com

Bär & Karrer AG

Dr. Markus [email protected]+41 58 261 50 00www.baerkarrer.ch

South Africa

Nigeria

South AfricaBouwers Inc.

Deon [email protected]+27 11 325 5530www. bouwers.co.za

PolandJWP Patent & Trademark Attorneys

ul. Żurawia 47/4900-680 WarszawaT: +48 22 4360507 F: + 48 22 [email protected] www.jwp.pl

China

Japan

New Zealand

Malaysia

Vietnam

Pakistan

Cameroon

Ghana

Global IP guide

PATENTSERVIS Praha, a.s.Jivenská 1273/ 1, 140 21 Praha 4Česká republika

Tel.: +420 261 090 011Fax: +420 261 214 921E-mail: [email protected]

Obchodní rejstřík MS v Praze:11.2.1992, oddíl B, vložka 1336

IČ:45314411 DIČ: CZ45314411VAT:CZ45314411

Poštovní adresa:Mailing Addess:

P.O.Box 34140 21 Praha 4

CorporatelNTLGreat Britain

Prague, May 19, 2011

Our ref: QD/ / 19076/ 301Re: CorporateINTL - Annual 2011 Intellectual Property Guide

Dear Sirs,

Following to your yesterday´ s e-mail enclosed kindly find completed contact sheet.

Giving you this information, we remain with our best regards.

Yours faithfully,

PATENTSERVIS

Enclosure: as above

Pakistan

MalaysiaMarQonsult IP

Clara [email protected]+603 78820456 / 78803457www.marqonsult.com

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Global IP guide

Bharucha & Co.

Mohammad Fazil Bharucha, Managing Partner+92 21 3537 [email protected]

Russia

Turkey

Czech Republic

Germany

MaltaCyprus

Ukraine

Poland

Switzerland