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FOR MEMBERS OF GOGLA IP GUIDELINES March 2017

Morrison & Foerster LLP has branch offices in California, Colorado, New York, Virginia, the District of Columbia, China, Belgium and Germany. Affiliates include Morrison & Foerster

(UK) LLP, MoFo Notices Limited, MoFo Nominees Limited, and MoFo Secretaries Limited in England; Morrison & Foerster (Germany) LLP; Morrison & Foerster (International) LLP;

Morrison & Foerster, a Hong Kong general partnership, MoFo China Corporate Services Limited, and MoFo China Notices Limited in Hong Kong; Morrison & Foerster Gaikokuho Jimu

Bengoshi Jimusho, Morrison & Foerster Zeirishi Hoijin, and Ito & Mitomi in Japan; and Morrison & Foerster (Singapore) LLP in Singapore. Any reference to ‘partner’ means a member

of Morrison & Foerster LLP or any of its affiliates. Legal services in the United Kingdom are provided exclusively by Morrison & Foerster (UK) LLP, legal services in Germany are

provided exclusively by Morrison & Foerster LLP, and legal services in Hong Kong are provided exclusively by Morrison & Foerster, a Hong Kong general partnership. Attorney

Advertising. MORRISON & FOERSTER LLP, MOFO, and the MORRISON FOERSTER logo are registered trademarks or trademarks of Morrison & Foerster LLP.

© Morrison & Foerster LLP, 2017 Page | 2

Morrison & Foerster is a global firm of exceptional credentials. Our clients include some of the largest Fortune 100, technology and life sciences companies, financial institutions and investment banks. Our lawyers are committed to achieving innovative and business-minded results for our clients, while preserving the differences that make us stronger.

The following IP Guidelines were written by lawyers of Morrison & Foerster and last updated in the beginning of March 2017. They aim to assist you in combating counterfeit products and protecting your IP in a number of jurisdictions that may be relevant to you. However, because of their generality, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Also, while the information in these IP Guidelines concerns legal issues, it is not legal advice. Moreover, use of the IP Guidelines is not intended to constitute, and does not constitute, a solicitation for the formation of an attorney-client relationship; no attorney-client relationship is created through your use of these IP Guidelines. If you wish to learn more about Morrison & Foerster please visit www.mofo.com. For substantive questions, please contact one of the following persons: U.S. EUROPE CHINA OTHER

Rufus Pichler Partner San Francisco +1 415 268 6625 [email protected]

Wolfgang Schoenig Counsel Berlin +49 30 72622 1205 [email protected]

Chuan Sun Partner Hong Kong +852 25850 762 [email protected]

Gordon A. Milner Partner Hong Kong +852 25850 808 [email protected]

Otis Littlefield Partner San Francisco +1 415 268 6846 [email protected]

Alistair Maughan Partner London +44 20 7920 4066 [email protected]

Can Cui Associate San Francisco +1 415 268 7275 [email protected]

Holger A. Kastler Associate Berlin +49 30 72622 1207 [email protected]

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TABLE OF CONTENT

I. INTRODUCTION ................................................................................................................................................. 7

1. General Remarks .............................................................................................................................................. 7

2. International Treaties and Organizations Protecting Intellectual Property Rights ................ 7

II. TYPES OF INTELLECTUAL PROPERTY RIGHTS ....................................................................................... 9

1. Patents and Utility Models ............................................................................................................................ 9

2. Industrial Designs .......................................................................................................................................... 11

3. Trademarks ...................................................................................................................................................... 12

4. Copyrights ......................................................................................................................................................... 13

5. Trade Secrets ................................................................................................................................................... 13

6. Supplementary Protection against Unfair Commercial Practices ................................................ 15

III. STRATEGIES TO COMBAT IP INFRINGEMENT ....................................................................................... 16

1. Securing Intellectual Property Rights ..................................................................................................... 16

1.1 Documentation ....................................................................................................................................................... 16

1.2 Confidentiality ........................................................................................................................................................ 16

1.3 IPR Transfer and Assignment .......................................................................................................................... 16

2. Registration Strategies ................................................................................................................................. 17

2.1 Unregistered vs. Registered IPR ...................................................................................................................... 17

2.2 Registration and Maintenance Costs ............................................................................................................. 17

2.3 Countries of Registration ................................................................................................................................... 18

2.4 Legal Representation ........................................................................................................................................... 18

3. Enforcement of Intellectual Property Rights ........................................................................................ 19

3.1 Border Measures (Administrative Actions) ............................................................................................... 19

3.2 Litigation (Court Proceedings) ........................................................................................................................ 19

3.3 Criminal Charges ................................................................................................................................................... 20

IV. COUNTRY REPORTS ....................................................................................................................................... 21

1. Germany and the EU ...................................................................................................................................... 21

1.1 Protection of Intellectual Property Rights .................................................................................................. 21

1.1.1 Patents and Utility Models ....................................................................................................................... 21

1.1.2 Designs ............................................................................................................................................................. 23

1.1.3 Trademarks .................................................................................................................................................... 24

1.1.4 Copyrights ....................................................................................................................................................... 26

1.1.5 Trade Secrets ................................................................................................................................................. 27


1.1.6 Counterfeits as Unfair Commercial Practices .................................................................................. 28

1.2 Enforcement of Intellectual Property Rights ............................................................................................. 28

1.2.1 Border Measures .......................................................................................................................................... 28

1.2.2 Litigation ......................................................................................................................................................... 29

1.2.3 Criminal Charges .......................................................................................................................................... 31

2. UNITED KINGDOM .......................................................................................................................................... 33


2.1.1 Patents .............................................................................................................................................................. 33

2.1.2 Designs ............................................................................................................................................................. 34

2.1.3 Trademarks .................................................................................................................................................... 35

2.1.4 Copyrights ....................................................................................................................................................... 37

2.1.5 Trade Secrets ................................................................................................................................................. 39



2.2.1 Border Measures .......................................................................................................................................... 40

2.2.2 Litigation ......................................................................................................................................................... 40


3. United States .................................................................................................................................................... 43


3.1.1 Utility Patents ................................................................................................................................................ 43

3.1.2 Design Patents .............................................................................................................................................. 45

3.1.3 Trademarks .................................................................................................................................................... 46

3.1.4 Copyrights ....................................................................................................................................................... 48

3.1.5 Trade Secrets ................................................................................................................................................. 49

3.1.6 Protection Against Unfair Commercial Practices ........................................................................... 51


3.2.1 Border Measures .......................................................................................................................................... 51

3.2.2 Litigation ......................................................................................................................................................... 52


4. China .................................................................................................................................................................... 59


4.1.1 Patents (Invention, Design and Utility Model Patents) ................................................................ 59

4.1.2 Trademarks .................................................................................................................................................... 60

4.1.3 Copyrights ....................................................................................................................................................... 61

4.1.4 Trade Secrets ................................................................................................................................................. 62


4.1.6 Other Related Measures ............................................................................................................................ 63


4.2.1 Border Measures .......................................................................................................................................... 63


4.2.2 Other Administrative Enforcement ...................................................................................................... 65

4.2.3 Litigation ......................................................................................................................................................... 66


5. India..................................................................................................................................................................... 71


5.1.1 Patents .............................................................................................................................................................. 71

5.1.2 Designs ............................................................................................................................................................. 71

5.1.3 Trademarks .................................................................................................................................................... 72

5.1.4 Copyrights ....................................................................................................................................................... 72

5.1.5 Trade Secrets ................................................................................................................................................. 72



5.2.1 Border Measures .......................................................................................................................................... 73

5.2.2 Litigation ......................................................................................................................................................... 73


6. Kenya .................................................................................................................................................................. 75


6.1.1 Patents .............................................................................................................................................................. 75

6.1.2 Designs ............................................................................................................................................................. 75

6.1.3 Trademarks .................................................................................................................................................... 75

6.1.4 Copyrights ....................................................................................................................................................... 76

6.1.5 Trade Secrets ................................................................................................................................................. 76



6.2.1 Border Measures and Other Administrative Actions .................................................................... 76

6.2.2 Litigation ......................................................................................................................................................... 77


7. Ethiopia .............................................................................................................................................................. 79


7.1.1 Patents .............................................................................................................................................................. 79

7.1.2 Designs ............................................................................................................................................................. 80

7.1.3 Trademarks .................................................................................................................................................... 81

7.1.4 Copyrights ....................................................................................................................................................... 82

7.1.5 Trade Secrets ................................................................................................................................................. 83


7.2.1 Border Measures .......................................................................................................................................... 83

7.2.2 Litigation ......................................................................................................................................................... 83


8. Tanzania ............................................................................................................................................................ 87



8.1.1 Patents .............................................................................................................................................................. 87

8.1.2 Designs ............................................................................................................................................................. 88

8.1.3 Trademarks .................................................................................................................................................... 88

8.1.4 Copyrights ....................................................................................................................................................... 89

8.1.5 Trade Secrets ................................................................................................................................................. 90


8.2.1 Border Measures .......................................................................................................................................... 90

8.2.2 Litigation ......................................................................................................................................................... 90


9. Nigeria ................................................................................................................................................................ 93


9.1.1 Patents .............................................................................................................................................................. 93

9.1.2 Designs ............................................................................................................................................................. 93

9.1.3 Trademarks .................................................................................................................................................... 94

9.1.4 Copyrights ....................................................................................................................................................... 94

9.1.5 Trade Secrets ................................................................................................................................................. 95


9.2.1 Border Measures .......................................................................................................................................... 95

9.2.2 Litigation ......................................................................................................................................................... 95


10. Ghana .................................................................................................................................................................. 97


10.1.1 Patents .............................................................................................................................................................. 97

10.1.2 Designs ............................................................................................................................................................. 97

10.1.3 Trademarks .................................................................................................................................................... 98

10.1.4 Copyrights ....................................................................................................................................................... 98

10.1.5 Trade Secrets ................................................................................................................................................. 98


10.2.1 Border Measures .......................................................................................................................................... 99

10.2.2 Other Administrative Actions ................................................................................................................. 99

10.2.3 Litigation ......................................................................................................................................................... 99


V. ANNEXES ......................................................................................................................................................... 101

A. International Treaties Applicable in Selected Jurisdictions ........................................................ 102

B. Contacts (Public Authorities) .................................................................................................................. 104

VI. GLOSSARY ....................................................................................................................................................... 116

VII. YOUR MOFO IP EXPERTS ........................................................................................................................... 118

VIII. ABOUT MOFO ................................................................................................................................................ 122


I. INTRODUCTION

1. GENERAL REMARKS

As consumer demand for solar products has increased in recent years, so have the cases of counterfeiting, predominantly in China and in the states of East and West Africa. These guidelines aim to assist you in combating counterfeit products and protecting your Intellectual Property (“IP”).

Innovative technology is what distinguishes the off-grid solar sector from other industries. The underlying technology and inventions, the outer appearance and the name of your company and products are all what make a customer choose your product over the products of a competitor. Counterfeit products, on the other hand, are sold by taking advantage of these attributes, and therefore pose a serious threat, not only to your business, but also to consumers, who receive poorly produced and possibly dangerous rip-offs. Due to their inferior quality, counterfeit products may diminish the trust in off-grid technologies in general and inhibit further growth and expansion of solar technology.

It is up to you to take the necessary actions to protect your IP by establishing a comprehensive strategy through documentation, registration and enforcement of Intellectual Property Rights (“IPR”). This document explains the different types of IPR (such as patents, utility models, industrial designs, trademarks, copyrights and trade secrets) and provides an overview of available legal tools to help you in selecting a suitable approach to protect your IPR.

In addition, these guidelines outline the international legislative framework and legal entities established to protect IPR across the globe. Despite great efforts to align legislation throughout the world, national regulations still remain fragmented and differ from country to country. Accordingly, we have provided specific guidance regarding IP legislation in the following 10 relevant markets identified by GOGLA: Germany, UK, U.S., China, India, Kenya, Ethiopia, Tanzania, Nigeria and Ghana.

It should be noted that this document is intended to serve as a general reference point for further investigation of IPR; it is not a substitute for professional legal advice with respect to any specific matter. It is recommended to seek legal counsel with strong knowledge of the matters and jurisdictions relevant to the specific issues facing your company.

2. INTERNATIONAL TREATIES AND ORGANIZATIONS PROTECTING INTELLECTUAL PROPERTY RIGHTS Historically, IPR have been protected on a national level. Registration and enforcement were conducted in each of the countries where the holder of such IPR engaged in economic activity. However, as different countries protected IP in different ways, this framework hindered the free circulation of goods and often facilitated the counterfeiting of foreign products (i.e., products not protected by the relevant countries’ IP laws and regulations).

As the global economy becomes increasingly interconnected, the necessity for adjusting regional legislation regarding IP becomes more apparent at an early stage. As a consequence, the World Intellectual Property Organization (“WIPO”) was created to promote protection of IP throughout the world. Further supranational institutions such as the African Regional Intellectual Property Organization (“ARIPO”), the Eurasian Patent Organization (“EAPO”), the European Patent Organization (“EPO”), the Patent Office of the Cooperation Council for the Arab States of the Gulf (“GCC”) and the European Union Intellectual Property Office (“EUIPO”) were also created with the aim to foster international cooperation on the field of IPR.


Similarly, as set forth below, a multitude of international treaties have been concluded to extend IP protection to other signatory states.1

One of the first treaties was the Paris Convention for the Protection of Industrial Property (“Paris Convention”) granting foreign entities and persons the same treatment as domestic applicants in registration proceedings. Furthermore, applicants could claim priority of registration if such application was being filed within six months (for trademarks and industrial designs) or 12 months (for patents and utility models) of the filing of the earlier application in another contracting state.

The Patent Cooperation Treaty (“PCT”) allows applicants from one signatory state to file an international application that is applicable to other signatory states where patent protection is desired. Thus, a single application in one language and one currency can result in multiple applications in different countries, establishing a single filing date in all contracting states. A registered international patent application, however, is subject to separate regulations and fees in each state. Following the publication of an international PCT application, the grant of the patent will be decided by the national patent office of the designated member state (known as national or regional phase).

The Hague Agreement concerning the International Registration of Industrial Designs (“Hague Agreement”) serves a similar purpose for industrial designs, establishing a framework for filing a single application which is valid in a variety of signatory states. The Madrid Agreement Concerning the International Registration of Marks (“Madrid Agreement”) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) allow the owner of a national trademark to obtain an international registration from the WIPO and extend the protection to selected member jurisdictions.

The Patent Law Treaty (“PLT”) and the Trademark Law Treaty (“TLT”) aim to harmonize patent and trademark application proceedings within its member states.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement“) sets down minimum standards of IP legislation for member states of the World Trade Organization (“WTO”).

1 Further information on the signatory states can be found in Annex A.


II. TYPES OF INTELLECTUAL PROPERTY RIGHTS

1. PATENTS AND UTILITY MODELS Patents protect inventions by granting an exclusive right to the inventor. In other words, anyone who successfully registered his/her (i) product or (ii) process that provides a “new way of doing something”, or offers a technical solution to a problem, can then decide who may–or may not–use (i.e., commercially produce, use, distribute, import or sell) the patented invention during the term of the patent.

Examples: The following photo on the left shows the front page of U.S. Patent No. 223,898 entitled “Electric Lamp”, issued on January 27, 1880 to Thomas A. Edison. The photo on the right shows the international patent application entitled “Method of making a current collecting grid for solar cells“ which was published by WIPO with the international publication number WO 2016/105186.

In a first step, the inventor (or his/her employer) has to file a patent application with each national or regional patent office in the countries where he/she seeks protection. Patent applications generally require the applicant to provide, inter alia, a title, a description and background materials of the invention. Furthermore, an abstract which briefly summarizes the invention is needed. The claims part of the application needs to contain a precise definition of the subject matter (i.e., the invention) for which protection is sought. The invention is fully disclosed to the public during the application process (albeit after a certain time period only e.g., 18 months after filing depending on applicable patent law).

Next, the patent office examines the application. The invention needs to meet the criteria for registration. WIPO lists the following key requirements for patent protection:2

• The invention must show an element of novelty; that is, some new characteristic

which is not known in the body of existing knowledge in the relevant technical field. This body of existing knowledge is called “prior art”.

• The invention must involve an inventive step or be “non-obvious”, which means that it could not be obviously deduced by a person having ordinary skill in the relevant technical field.

2 See http://www.wipo.int/patents/en/faq_patents.html.

http://www.wipo.int/patents/en/faq_patents.html


• The invention must be capable of industrial application, meaning that it must be capable of being used for an industrial or business purpose beyond a mere theoretical phenomenon, or otherwise be useful.

• Its subject matter must be accepted as patentable under applicable patent law. In many countries, scientific theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, methods for medical treatment (as opposed to medical products) and computer programs are generally not patentable.

• The invention must be disclosed in an application in a manner sufficiently clear and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant technical field (i.e., a “person skilled in the art”).

The specific requirements vary from country to country, and thus protection may be granted in some countries but not in others. If a patentee wants protection in a number of countries then, in general, a separate application must be made in each country in which protection is desired. However, regional and international organizations such as the EPO as well as WIPO, provide for a “one stop shop” mechanism that allows for an easier issuance of the same (or basically the same) patent in various countries.

Patent protection lasts for 20 years starting from the filing date of the application. Protection can be extended in some countries.

Patent protection is not free. There is an application fee as well as an annual fee, which vary from jurisdiction to jurisdiction and depend on the number of patent claims.

Once the patent has been granted, the owner can use the patent himself/herself, license it to third parties or sell it. By licensing a patent (i.e., giving a third party permission to use the invention), the patent owner can profit from the invention, but continue to be the owner of the patent. If the patent owner decides to sell the patent to a third party, this third party can then decide to use, license or re-sell the patent. Should a third party use the patent without permission (e.g., without a license) the owner can challenge the use by such third party in a court of law by way of a patent infringement complaint. However, a common defense of an alleged infringer is to file an action for annulment of the patent under dispute or to raise the nullity defense in the infringement proceedings.

Utility models also protect inventions. Utility models are often called “petty patents”, since the bar for registration is set lower than for patents. For example the “inventive step” that is necessary for patent registration may be much lower or missing altogether depending on the utility model legislation in a particular country. An additional advantage is that the registration process is much faster because the patent offices in most countries only check if the formal criteria of the utility model application are met. Furthermore, registering a utility model is far less expensive than registering a patent. The term of protection, however, is often shorter than for patents.

Utility model protection is currently available in the following countries and regional organizations: Albania, Angola, Argentina, ARIPO, Armenia, Aruba, Australia, Austria, Azerbaijan, Belarus, Belize, Brazil, Bolivia, Bulgaria, Chile, China (including Hong Kong and Macau), Colombia, Costa Rica, Czech Republic, Denmark, Ecuador, Egypt, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hungary, Indonesia, Ireland, Italy, Japan, Kazakhstan, Kuwait, Kyrgyzstan, Laos, Malaysia, Mexico, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Taiwan, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay and Uzbekistan.


2. INDUSTRIAL DESIGNS The external design of a product, such as its shape or its pattern or color, can be protected through registration as well. For example, designs can be registered for the outer appearance of household goods and furnishings, packaging, jewelry, textiles and electronic devices.

Examples:

Semi-transparent solar module (German registered design number

M9106221-0001.1)

Solar garden lamp (German registered design number

402014100565-0003.1)

In most countries, designs can only be protected through registration. A successful registration requires that the form is original and new. The assessment of what makes a design original and new, however, depends on the country’s design laws. Generally, these requirements are fulfilled if the design has not been previously disclosed to the public and if in the eyes of the informed viewer the design differs from previously known designs or combinations of known design features. It is crucial that an application to register a design takes place before the design is disclosed to the public. Once a design is registered the owner is entitled to prohibit any third party from making, selling or importing products that bear the actual registered design or a design that is substantially identical to the registered design, to the extent the third party is using the product for a commercial purpose.

In some regions (e.g., in the EU), unregistered designs can also be protected. In the EU, in addition to the requirements of originality and novelty, an unregistered design can be protected if the design is presented to the public (i.e., anywhere in the EU) for the first time. The creator of the design is only entitled to make a claim against a third party copying such design, if the copy is clearly based on the creator’s design. However, if the third party was verifiably unaware of the existence of the first design, the creator of that first design will not have any claims against the third party.

Design protection for registered designs usually lasts for 10 years, with the option to renew. Unregistered designs offer a shorter term of protection. In the EU, protection for unregistered designs expires three years after the design was presented to the public.

Note also that in the U.S. (and other countries with more recently implemented patent laws, such as China) the term “design patent” is commonly used to refer to a patent of the type similar to what is commonly called an industrial design in Europe.


3. TRADEMARKS Trademarks protect all signs that are capable of distinguishing goods or services of one company from similar goods and services of another company. Types of trademarks include: Word marks, figurative marks, word and figurative marks, three-dimensional marks, sound marks, color marks and others. In some jurisdictions, the term “trademark” is referred to as “trade mark”, and more generally as “mark” or “sign”.

Examples:

Word/figurative mark (U.S.) 4976400 Figurative mark (EU) 001033489

Trademark protection is obtained through registration with the national or regional trademark office in the country or countries where protection is sought. In some jurisdictions trademark protection can also be accrued through substantial use of the mark within a relevant trade circle or by virtue of enjoying a high degree (at least 60-70%) of brand recognition. Trademark protection allows the owner of the trademark to exclusively use the mark for his/her products or services, or to license or sell the trademark to third parties. The owner is also entitled to proceed against the infringement of his/her trademark. Generally, if the use of a trademark by an unauthorized third party is likely to confuse the public about the origin of the product or service due to the identity or similarity of the sign that is used, an infringement action before the trademark office or a court will be successful.

After the application is handed in to the competent trademark office(s), the trademark officer will examine the application. For an application to be successful, it is necessary that the mark should have distinctive characteristics, i.e., that it is fit to fulfill its function of distinguishing goods and services of one company from those of other companies.

If a trademark is in use, then trademark protection will last for an initial period of ten years, which can continue to be renewed for additional 10-year periods. In most jurisdictions, a registered trademark will be removed from the register if it is not actively used in the course of trade or if the owner does not proceed against infringements. The time periods allowed for non-use vary by jurisdiction, but commonly the periods range from three to five years.

Application and registration fees depend on the national or regional trademark office where protection is sought. Furthermore, in countries where the “International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement” (the “Nice Classification”)3 has been adopted, these fees are also determined by the number of “Nice Classes” to which the goods or services belong.

3 For further information regarding the Nice Classification visit WIPO website at: http://www.wipo.int/classifications/nice/en/index.html.

http://www.wipo.int/classifications/nice/en/index.html


4. COPYRIGHTS Copyrights describe an author’s right over his/her literary, musical, photographic, artistic or similar works as well as illustrations of a scientific or technical nature. Copyrightable works include, but are not limited to, books, poems, songs, operas, fine art, sculptures, photographic works, films, databases, software and technical drawings. Copyrights only protect the expression of a human idea, but do not protect the idea, method or technique itself. Thus, the work has to be a personal intellectual creation.

The author of the work is the owner of the economic rights as well as the “moral rights” (i.e., personal rights in relation to the work) of his/her creation. In most countries, economic rights include, among other things, the exclusive author’s right to distribute, reproduce or make publicly available (i.e., publish) his/her work. It is the author’s choice whether he/she wants to receive remuneration for these uses. The author, as the owner of the work, is also entitled to grant economic exploitation rights and licenses to third parties. The third party may then use the work for the contractually agreed upon purposes in exchange for the payment of a license fee. Additionally, in some countries, the author can transfer his/her copyright to third parties.

Moral rights that are recognized in a number of jurisdictions include: recognition of authorship and the right to prohibit any distortion or other derogatory treatment of the work. In some countries it is possible to waive one’s moral rights.

Copyrights come into existence automatically. There is no need for a formal registration. Some countries (such as the U.S.) have started to introduce a voluntary copyright register. In most countries, copyrights expire automatically 70 years after the author’s death or, if a work was created by several authors, after the death of the last remaining co-author.

5. TRADE SECRETS Trade secrets are not considered to be IPR, but they are similar. A trade secret is confidential information relating to business strategy or practice, financial or other data, know-how, processes, designs or a compilation of information that is not generally known outside a particular company. Examples of trade secrets include client or supplier lists, software source code, manufacturing processes, marketing policies, model sketches or construction drafts or drawings. Trade secrets cannot be registered, which is why confidentiality is key for the protection of trade secrets. Trade secrets must be kept secret.

Trade secrets are generally defined by three factors:

• The information is a secret, i.e., it is not generally known to the public.

• The information is of commercial value to its owner, because it is a secret.

• Reasonable efforts have been undertaken to keep the information secret.

In practice, infringement of trade secrets is often committed by business partners, employees and competitors. Employees usually gain secret information during their employment and may disclose it to third parties (or otherwise use it for their personal benefit) during or after the term of their employment. Certain steps should be taken to mitigate such risks, which may include: (i) undertaking careful due diligence to choose trustworthy business partners; (ii) adding protective provisions (e.g., confidentiality and non-competition clauses) in employment agreements and entering into a Non-Disclosure Agreement (“NDA”); (iii) adopting and enforcing clear company policies on trade secret protection; and (iv) restricting physical access to and disclosure of trade secrets. Trade secrets should also be protected by technical means such as passwords or other access controls. It is further recommended to conclude a separate NDA when doing research or cooperating with other companies, regardless of whether they are “competitors”.

The unauthorized use of trade secrets is regarded as a criminal offense in some countries. Furthermore, the holder of the trade secret can initiate proceedings against any unauthorized use on the basis of unfair practice and breach of contract.


Advantages of trade secrets:

• The term of protection is indefinite,

• There are no registration costs,

• Protection takes effect immediately, as there is no examination, and

• The information will remain a secret (unlike patents, the information will not be disclosed to the public).

There is a current trend to harmonize the protection of trade secrets throughout the major jurisdictions, namely in Europe and the U.S. Trade secret protection in the U.S. is governed by the Uniform Trade Secrets Act (“UTSA”), which has been adopted in almost every state (New York and Massachusetts being notable exceptions). In May 2016, the Defend Trade Secrets Act (“DTSA”) came into effect. The DTSA creates a federal cause of action with substantive elements that are very similar to the UTSA. Only one month later, the EU Trade Secrets Directive (EU) 2016/943 (“EU Trade Secrets Directive”) was adopted and entered into force in July 2016. While the DTSA is directly applicable in all states of the U.S., the EU Trade Secrets Directive has yet to be implemented in the Member States of the EU.

Once the EU Trade Secrets Directive is transposed into national law of the EU Member States (in summer 2018), companies controlling secret business information will benefit from a harmonised set of claims and remedies against trade secret infringers. Preliminary remedies may include an injunction and the seizure or delivery of suspected infringing goods. Permanent remedies may include an injunction, corrective measures such as the recall of infringing goods, and the destruction or delivery of items containing or implementing the trade secrets.

Since trade secrets are not considered IPR under the EU Customs Enforcement Regulation, trade secrets under the EU Trade Secrets Directive do not benefit from the border measures provided for IPR in the regulation. The EU Trade Secrets Directive also does not provide specific rules on border measures for trade secrets, leaving a gap in protection. However, Member States of the EU may implement such measures on their own since the EU Trade Secrets Directive provides for only a minimum harmonisation, thus allowing the Member States to maintain or implement stronger protection of trade secrets.


6. SUPPLEMENTARY PROTECTION AGAINST UNFAIR COMMERCIAL PRACTICES Counterfeited goods and other fake products usually originate from competitors in the relevant market or copycats focusing on copying certain technical aspects or design factors of the original product. In some countries with a ‘civil law‘ regime, laws targeting unfair commercial practices aim to establish undistorted competition and protect competitors and consumers by laying out ground rules regarding unacceptable business activities.

In jurisdictions with a ‘civil law’ system (e.g., Germany), the violation of protected IP may constitute a breach of such unfair competition laws if, in addition to the infringement, further acts give rise to unfairness – for example, if customers are intentionally deceived about the origin of a product or if the reputation of a competitor is deliberately exploited by a third party for commercial purposes. Remedies provided by unfair competition laws (injunctive relief and damages compensation) are granted only if the alleged infringer is a company competing in the same market with comparable goods.

In countries with a ‘common law’ system (e.g., the UK), a trader is prevented from misrepresenting goods as being goods of another trader under the law of ‘passing off’. In general, the common law tort of ‘passing off’ protects the goodwill of a company from its misrepresentation by a third party. Specifically, the law of ‘passing off’ prevents one trader from misrepresenting goods or services as being the goods and services of another, and also prevents a trader from holding out his or her goods or services as having some association or connection with another when this is not true. The common law tort of ‘passing off’ can be used to enforce unregistered trademark rights. However, if a registered trademark is used to deceive the customer, trademark enforcement remains the primary source of protection. Thus, unfair competition law only serves as secondary protection.


III. STRATEGIES TO COMBAT IP INFRINGEMENT As a member of GOGLA, you want to make sure that your IPR are protected in all countries where your company is engaged in business or has business relationships. This requires a broad variety of steps that are not only legal, but also of a technical nature. As set forth in more detail below, there are basically three steps in combating IP infringement: (1) secure your IPR at the time of creation; (2) register your IP appropriately and to the maximum extent it can be registered; and (3) strongly enforce your IPR against any infringer, in particular the first infringer. These three steps will be further elaborated below.

1. SECURING INTELLECTUAL PROPERTY RIGHTS 1.1 Documentation

The very first step in securing your IPR is to have proper documentation in place with respect of the creator(s) of the IP. As a company, your employees or other outside persons (e.g., contractors and consultants) performing work for your company will be the authors, inventors or other creative people. Technically speaking, your company as an entity cannot author a copyright, make an invention or draw an industrial design. The people that you hire or engage outside your company will do this job and get paid for it. It is important to include every task, obligation and right of these individuals in their employment agreements and in other applicable agreements, like service, freelance, cooperation or supply agreements.

In particular, documentation is important for the protection of trade secrets (i.e., any secret business information that your company wants to keep secret). Such documentation should include, among other things, information about the persons having access to secret information and the modes of protection including relevant technical measures (e.g., virtual and physical security systems).

1.2 Confidentiality Any individuals who have access to trade secrets, as well as inventors and other persons creating IP that needs to be protected from disclosure (e.g., patents and designs), should be subject to contractual obligations to keep all confidential and secret information of the company confidential and secret. Such confidentially obligation should also include an obligation not to disclose any invention or unpublished design to the public. If disclosed, your company will no longer be able to file a patent application or register a design. Such confidentiality obligations should be included in the employment agreements between your employees and your company, but should also be extended to your customers and suppliers with which you might share certain trade secrets. For such purposes, you should consider using a specific NDA. A template NDA specific to your company and your business can easily be prepared and used. Additionally, if you cooperate with other companies, whether for research, development or other business purposes, you should include a proper confidentiality obligation in such agreement, if and to the extent you will share secret information within such cooperative activities.

1.3 IPR Transfer and Assignment Since your company does not create IP by itself, but instead relies on the work of your employees and contractors, it is necessary that such employees and contractors assign to your company all rights to IP that they have created in the course of their employment or engagement and all rights thereto. In many cases, you can provide for an up-front assignment of all future IPR that will be created during the term of employment or other contractual engagement. In some countries (such as Germany) and for some IPR (such as inventions and patents), you need to provide for more detailed provisions in the relevant employment agreement due to certain laws protecting the rights of employee-inventors. Their remuneration and other rights should be explicitly regulated in the relevant employment


agreements and comply with statutory provisions. It may even be necessary to have further documentation in place to make sure that all inventions are assigned to your company. In Germany, for example, employees are required to notify the employer about every invention made during their employment. Without such additional documentation, your company may not be able to claim ownership of such invention and file for a patent application. The respective obligations of each employee should thus be stated in the relevant employment agreements. For freelancers, IPR assignment provisions should be included in their service agreements.

2. REGISTRATION STRATEGIES It is also important to build up a registration strategy inside your company, but this can be developed over time and depends on the IPR of your business and which IPR you want to protect. In general, you should think about (1) whether or not to register IPR (to the extent registration is possible), (2) the countries where you would like them to be registered, and (3) whether registration is worth the registration and maintenance costs.

2.1 Unregistered vs. Registered IPR Some IP such as patents need to be registered in order to obtain IPR protection. If not registered, the underlying invention can still be protected as a trade secret, but, as described above, only to the extent it is kept secret. Unregistered trade secret protection and registered patent protection are exclusive insofar that patent protection requires disclosure of the underlying invention, i.e., a trade secret or invention will become public. It can be cheaper to protect inventions as trade secrets and more beneficial to commercialize know-how and trade secrets by licensing them to third parties. However, if a competitor makes or develops the same invention and then files a patent application, your company will no longer be able to rely on such trade secret protection once the patented invention of your competitor is disclosed to the public (by publishing the patent application).

With other IP, such as designs, you will often have the option to rely on registered or unregistered IPR. However, the scope of protection and the time of protection differ and are usually much lower and shorter in the case of an unregistered design.

Similarly, trademarks can be protected when used as business sign. However, registered trademarks are much stronger and easier to enforce when combating trademark infringement by other companies.

In most countries, copyrights are not registered. However, if your company is doing business in a country that does provide registration, you should consider registering any copyrights that are important to your business and if there is a risk that competitors or third parties will violate them in a manner that could impact your business model.

In general, registration of IPR provides your company with significantly better protection of your IP assets and makes it easier to successfully bring enforcement actions against IP infringement. The only downside of IP registrations is the registration and maintenance costs.

2.2 Registration and Maintenance Costs Since patent, design and trademark registers have to be administered, there is usually a fee for initial registration and further maintenance fees, either on a yearly basis or for a certain consecutive time period (e.g., five or 10 years). Registration and maintenance costs for patents usually depend on the number of patent claims and the number of countries in which you seek protection (e.g., in the case of a European or international patent application). Trademark fees depend on the type of trademark you want to protect, the number of trademarks and also the classes of goods and services for which you seek protection. Similarly, fees for industrial design protection depend on the number of designs and design variations you want to protect. Cost for registration and maintenance also depends on the countries in which you register your IPR.


Accordingly, your IP strategy should not only consider the costs for different types and scopes of IPR, but also the territorial scopes of protection.

2.3 Countries of Registration Based on the international treaties described above, your company can easily register IPR in many countries around the world. Accordingly, your IP strategy should first focus on the territorial scope of your business. If your company is only operating in a single country or in just a few countries of the EU, there is likely to be no reason to register all of your IPR internationally. However, the appropriate territorial scope of your business does not only depend on your office and manufacturing locations, but is usually much broader. In general, you should consider including all countries where your customers, suppliers and other business partners are located, where your products will or might be finally sold, and where you think any potential infringer (e.g., copycats, etc.) could operate and manufacture counterfeits. It is often best to include all countries along the supply chain of your products, but also along the sales line to the end customer. Thus, in order to set up a comprehensive IP strategy it is advisable for a company producing goods in one country and shipping them to another country for sale to seek protection in both countries. However, it should be noted that in some cases protection expires if the registered IPR are not used within the designated territory for a certain period of time. You should therefore continually assess your IP strategy to confirm whether you actively use the granted rights in the relevant jurisdictions. Although you may want to protect your IP in countries that are known for counterfeit productions, you may also consider protecting your IP in countries where importers are located, as it may be easier to bring enforcement actions in a familiar jurisdiction rather than a country with lower IP protection standards and less effective court systems.

2.4 Legal Representation In order to protect IP, independent policies should be implemented by the (potential) rights holder. First and foremost, it is imperative to take every precaution to protect trade secrets. Legal experts may assist in preparing NDAs with customers, suppliers and employees. Furthermore, IPR should be assigned to the company through employment agreements. Since employment legislation varies from country to country and the degree by which rights can be assigned differ between types of IP, it is highly recommended to consult a legal expert that can provide you with adequate IPR legal guidance and draft appropriate contract language and provisions.

Your company should always provide for thorough and complete documentation of the steps that led to an invention and the relevant precautions taken to protect trade secrets. In addition, prior to the registration process, you should engage an expert to conduct a conclusive search of existing third-party IP to reduce the risk that your own IP infringes IPR of third parties. Such expert can also assist your company in evaluating the chances of a successful registration.

Although it may not be mandatory to file an application through a legal representative in some cases, it is highly recommended to seek local legal counsel as the registration process is often a complex and sophisticated matter, shaped by jurisdictional peculiarities. A faulty application may impede the subsequent IPR enforcement and therefore undermine the overall IP strategy. For example, as the patent application lays down the basis for the scope of the registered patent, an imprecise description may result in alleged infringement being admissible or even make the invention ineligible for patent protection in the first place.

After registration, you should monitor the market for IPR infringements. This may be accomplished in a joint effort by multiple market participants who monitor the off-grid lighting sector collectively. If infringements are revealed, expeditious enforcement of the violated IPR through a legal representative based in the jurisdiction where the infringement occurs is recommended.


3. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS 3.1 Border Measures (Administrative Actions)

In many countries, and also regional organizations such as the EU, the owner of IPR can file an application with the competent customs office requesting seizure of counterfeits or other IPR infringing goods that are imported or exported. The applicant usually has to prove that he or she is the rights holder or authorized to use the IPR. In order to easily enable the customs authorities to render a decision in favor of the IPR owner, detailed descriptions of the original product and infringing products should be provided to the customs authorities. Often the application is free of cost, and thus is an easy and effective means to stop counterfeits from being imported and then distributed in a market. If goods are detained, however, the IPR owner has to reimburse the costs incurred by the customs authorities. Usually these costs can be recovered directly from the infringer at a later time.

In some jurisdictions, the customs authorities also search for counterfeits on their own (ex officio). If customs authorities identify a probable c infringement, these goods are detained and the owner of the IPR, as well as the owner of the concerned goods, are informed. The rights holder can then inspect the goods and request information about the alleged infringer. If the owner of the goods does not object, the infringing goods are usually destroyed within a short time period.

Border measures can be an effective tool to stop the import or export of counterfeits and fakes. Trademark and design protection of your IP assets is often the easiest way to prove IPR infringement at the border. Patent infringement is usually more complex and is unlikely to be decided by the customs authorities. In such cases, the customs authorities may decide to seize the allegedly infringing goods, but will not destroy them until a competent court makes a decision about the patent infringement.

While it may be possible for an IPR owner to opt in to the procedure of automatic destruction of small consignments, it is noteworthy that due to the automatic destruction of the infringing goods, evidence for any subsequent litigation could be lost.

Border seizures are an effective means of protecting IP, but should be accompanied by a comprehensive IP strategy, including registration of owned patents, designs and trademarks, monitoring new patent, design and trademark applications, and filing oppositions against conflicting applications. Further, monitoring dubious websites and sales platforms as well as obtaining preliminary injunctions against infringers can both be effective means to consider when building your IP protection strategy.

3.2 Litigation (Court Proceedings) IPR can also be enforced by filing a complaint with the competent (civil) courts. Often an IPR owner can file an application for a preliminary injunction, but the success of such an action depends on the IPR and the possibility of easily proving the alleged infringement. With respect to patents, due to their technical complexity, it is very rare that preliminary injunctions are granted. With respect to trademarks, however, your company may be able to obtain an injunction to stop the production, marketing and distribution of goods that infringe your trademark. Successful infringement actions usually lead to an injunction, compensation of damages and recall or destruction of infringing products.

Infringement proceedings in courts can be lengthy and costly. Patent infringement proceedings can require high court fees. In some jurisdictions such as the U.S., the claimant (IPR owner) will bear the burden of his or her own costs in connection with the proceedings. In other jurisdictions, such as Germany, the losing party generally has to reimburse the claimant. In certain countries, and even in some European countries, IPR infringement proceedings can take a considerable amount of time and can jeopardize the effectiveness of enforcement where the alleged infringer is able to continue producing, marketing and distributing infringing products until there is a final and enforceable court decision.


Nevertheless, court actions may be required to make a determination whether to destroy or release detained products, in particular where the customs authorities cannot make such determination regarding difficult infringement questions.

3.3 Criminal Charges In some instances, if serious infringements occur, it may be advisable to bring criminal charges against the infringer. Criminal prosecution may result in fines or jail sentences and therefore deter others from violating your IPR. Public authorities conduct the investigation and can take advantage of governmental powers to obtain evidence and discover the identity of an unknown infringer, if necessary.

However, depending on local legislation, criminal penalties may only apply to certain instances of infringement. Criminal proceedings can be lengthy and slow-moving. As opposed to civil proceedings, the infringed party will not have any ability to affect the progress of proceedings. Furthermore, the infringements must demonstrate a high level of seriousness in order to be subject to criminal law.

In general, the damages rewarded in criminal prosecutions are significantly smaller than in civil proceedings. Nonetheless, criminal proceedings may serve as an additional component to a comprehensive IP strategy and demonstrate the willingness to protect the results of your research and development by all means and with every legal measure available.


IV. COUNTRY REPORTS

1. GERMANY AND THE EU This section covers Germany as a Member State of the European Union (EU). In Germany, IP assets can be subject to both national and EU legislation. Each type of IPR works differently, however. Patent law, for instance, is currently evolving. Of course, there is the option to apply for national patents only. European patents are, according to the European Patent Convention (“EPC”), basically a bundle of national patents once granted and validated in the designated contracting states of the European Patent Organization (EPO). The European patent with unitary effect in the EU, i.e., one patent that covers all of Europe, is close to becoming reality to life after a long debate but is currently in a state of uncertainty again due to Brexit. Other IPR, such as trademarks and designs, are currently available as both national and EU wide rights. There is no separate EU copyright, but copyright law is heavily influenced by EU law. Also, trade secret legislation in the EU has been harmonised recently by the adoption of the EU Trade Secrets Directive, which has to be implemented into the laws of the EU Member States until June 9, 2018. GOGLA members may benefit from the rights provided in the EU Trade Secrets Directive, if they protect their trade secrets adequately as required under that directive. Further details are provided below.

1.1 Protection of Intellectual Property Rights 1.1.1 Patents and Utility Models

Despite a record high of 66,889 overall patent applications the number of solar technology applications in Germany declined by 20%, amounting to 557 patent applications in 2015. This may be the result of reduced government subsidies in recent years.

(a) Eligibility

Patents are territorial and therefore (pending the introduction of a European patent with unitary effect) must be registered at a national level. The primary source of law for German patents is the Patent Act of 1981 (Patentgesetz, PatG), The German Patent Act allows inventions to be patented if they are new, involve a sufficient inventive step and are industrially applicable. Certain inventions are excluded from patent protection, for example, computer programs. However, software can be patentable if it has a technical character and technical contribution. Two types of patents are distinguished: product patents and process patents. Whilst the former protect all types of objects, their arrangements of individual parts, electronic circuits and chemical substances, the latter protect manufacturing processes, work processes or the utilization of a product for a certain purpose.

The EPC provides for the opportunity to apply for a European patent. However, currently, such European patents, once granted, have to be validated in the designated member states of the EPO. The sum of all national validations is a bundle of national parts that form the European patent. Legally, however, the national parts dominate the governing law and forum for any potential patent infringement and invalidity action.

(b) How are patents and utility models obtained? A German patent application can be filed directly at the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA) in person or


can be sent by post or fax. It is also possible to apply for a patent online.4 The application has to be filed in the German language. If the application is in English or French, a German translation has to be handed in within 12 months. If the applicant has no residence in Germany, he/she is required to be represented by a lawyer.

The patent protection is granted for a maximum period of 20 years, beginning retroactively from the date of filing. The application fee for a paper filing is EUR 60, and an online filing costs EUR 40. In order to obtain the patent, a request for examination has to be filed, which carries the cost of EUR 350. The annual fees for maintaining the patent have to be paid starting from the third year after the filing date and gradually rise over the years, starting from EUR 70 for the third year, to EUR 1,940 for the twentieth year.

It is the utmost importance that the invention is only published after filing the application, since a patent can only be granted for an innovation that has not yet been communicated to the public. If you should inform business partners or third parties about your invention or parts of it, it is highly recommended to utilize NDAs.

Another way of protecting an invention under German law is by filing a utility model application. In contrast to the patent application procedure, the German Utility Model Act (Gebrauchsmustergesetz) does not require examination of novelty, inventive step and industrial applicability of a utility model application by a patent office. Utility models are unexamined industrial property rights. They can only be obtained for devices, not for processes or substances. The application fee only amounts to EUR 40 (EUR 30 for an online application) and the utility model can be registered within a few months after filing the application. However, the protection only lasts for a maximum of 10 years (first renewal due after three years, second renewal due after six years, and third renewal due after eight years following the issuance of a utility model). Often, patent applicants use a utility model application as an accompanying measure to protect their invention as long as the patent sought has not yet been granted. However, since utility models are unexamined industrial property rights, they are “weaker” compared to examined patents insofar that utility models can be revoked more easily. Similar to patents that have not yet successfully survived opposition or nullity procedures, utility models, due to their unexamined nature, are often not “strong” enough to be used as a basis for a preliminary injunction. However, since utility models can be obtained much more quickly than patents, they can be important IPR when an infringement by a third party is apparent. On the European level, there is currently no counterpart to the German utility model.

European patent applications have to be filed with the EPO. The procedure laid down in the EPC is similar to the one in the German Patent Act. The standard of review for a patent application (e.g., novelty and inventive step) slightly differs from the German concept though. The fees to be paid to the EPO for registration of a European patent are approximately EUR 5,700. However, national validation fees as well as maintenance fees may apply in addition. It is important to note that European patent applications can lead to granted European patents, but European patents have to be validated in every designated member state of the EPC prior to enforcing them. Therefore, when applying for a European patent, the applicant has to designate the desired member states in which patent protection is sought. Once granted, the European patent must be validated in these countries. National validation may require a translation and payment of a validation fee. The European patent is called a “bundle patent” because it is more the sum of all national validations than one single European patent. Accordingly, the enforcement of a European patent as well as validity challenges are governed by the laws of the Member States in which the European patent is validated.

4 See https://www.dpma.de/english/service/e-services/dpmadirekt/.

https://www.dpma.de/english/service/e-services/dpmadirekt/


A true European patent is currently not available, but the draft rules for a European patent with unitary effect in all Member States of the EU (not the EPO) already exist. If such a European patent with unitary effect will just become reality, it will be a true European patent that can be filed with the EPO and will have unitary effect in all Member States of the EU. However, if invalidated, it will be invalid in all Member States of the EU. This is in contrast to the current legal framework, according to which a decision of validity is restricted to a single Member State. The new draft rules also provide for a new court, the Unified Patent Court (“UPC”), which would be competent for both infringement and validity proceedings.

(c) Employee inventions Pursuant to the German Employee Inventions Act (Gesetz über Arbeitnehmererfindungen), employees who make an invention within the scope of their employment have the duty to report the invention to their employer. Subsequently, if the employer does not reject the invention within four months, the employer will automatically acquire the right (and duty) to file a patent application, whereas the employee is entitled to a reasonable compensation. That is why, unlike in many other jurisdictions, rights to inventions made by employees during the term of their (future) employment cannot be assigned upfront by way of the employment contract. Rather, a case-by-case procedure must be carried out. The German Employee Inventions Act has specific requirements that have to be fulfilled, e.g., the employee has to notify the employer of the invention and provide details about it. Otherwise, the employer will not be able to file a patent. It is important to have such instruments in place and to inform key employees about their (notification) obligations arising out of the German Employee Inventions Act. Also, the use or commercialization of the relevant invention should be carefully documented to be able to comply with the employer’s obligation to appropriately compensate the employee in addition to his or her regular salary.

1.1.2 Designs (a) Eligibility

Under German (and European) design law, visual appearances of products can be protected as registered designs. Since functional superiority is not easy to spot on first sight, the design of off-grid lightning or other energy related products may help customers to assess the products accurately. In 2015, light apparatus accounted for 6.4% of all design applications at the DPMA.5

Both two-dimensional and three-dimensional appearances can be registered if they are new and unique. Hence, their features such as shape, colors, lines, contours, texture and materials must result in a product (i.e., any industrial or handicraft item) that is (i) new and (ii) has individual character. Similar to patents and utility models, designs require novelty in order to be eligible for protection. A design is new if no identical design has been made available to the public before the date on which the application to register the relevant design was filed. Designs which differ only in immaterial details shall be deemed to be identical. The individual character requires an assessment of the overall impression that the new design produces on an informed user: Only if the overall impression of the new design differs from the overall impression of designs already made available to the public, the individual character is given. Similar to utility models, designs are not examined by an officer during

5 See https://www.dpma.de/docs/service/veroeffentlichungen/jahresberichte_en/annualreport2015_nichtbarrierefrei.pdf (http://bit.ly/2nmjI9c).

https://www.dpma.de/docs/service/veroeffentlichungen/jahresberichte_en/annualreport2015_nichtbarrierefrei.pdf


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registration. Furthermore, research on prior designs can be more difficult if text-based searches do not show relevant designs that have already been made public. That is why a registered design can be revoked more easily even after successful registration.

(b) How are design rights obtained? An application can be filed online6 or as a paper filing at the DPMA. The application has to include the design’s representation, which can consist of up to 10 graphic illustrations (e.g. photographs) and sets the scope of your design’s protection. It is therefore recommended to depict all of the distinguishing features of your design.

The paper filing application fee of EUR 70 (EUR 60 for an online application) must be paid within three weeks. The maximum term of protection is 25 years. However, renewal fees must be paid every five years.

(c) EU designs Another way to protect a design is as an unregistered community design (“UCD”) for a period of three years. The UCD does not require any registration (but only lasts for a limited time) and is mainly intended for products with a short life cycle. The requirements of novelty and individual character are the same as with any other design right, however. Protection will be conferred once the design had been disclosed to the specialized circles in the sector of the industry concerned operating within the EU, for example, by displaying and offering the product at a fair or publishing the design in a press release.

EU law also provides for a registered community design (“RCD”). Both unregistered and registered designs offer basically the same protection, i.e., the manufacturing, putting on the market, offering, marketing, importing or exporting a product incorporating the protected design without the consent of the IPR owner would be considered illegal.

While the term of a RCD is initially five years, and can be renewed in blocks of five years up to a maximum of 25 years, UCDs are protected for only three years after making them available to the public. Another difference lies in the scope of protection: RCDs are protected against similar designs even when the similar design has been developed without knowledge of the existence of the earlier design (which is determined in good faith). In contrast, UCDs grant the right to prevent commercial use of a design only if such design was copied from another design with knowledge of the existence of the protected design (which is determined as bad faith).

Disclosed designs can be still registered as RCDs within a grace period of one year. The fee for registering and publishing one design is EUR 350 for the initial protection term of five years.

1.1.3 Trademarks (a) Eligibility

Trademarks are used to distinguish goods and services, provide orientation for the consumer and establish a customer relationship. Besides word marks and figurative marks, there are also combined word/figurative marks, sound marks, olfactory marks, slogans and three-dimensional marks. They can relate to products, product lines, services or enterprises.

6 See https://www.dpma.de/english/service/e-services/dpmadirekt/.



A key criterion for trademark eligibility is distinctiveness, i.e., the capability of the sign or mark to distinguish goods (or services). Signs that are generic (e.g., “light”) or merely descriptive (e.g., “bright” for light bulbs) cannot be protected as trademarks.

(b) How are trademarks obtained? Trademark protection can be obtained in three different ways: (i) on the national level, i.e., in Germany, by filing a German trademark application at the DPMA; (ii) on the European level, by applying for a EU trademark at the EUIPO; and (iii) if your trademark is already protected abroad (or in Germany), you can seek the international extension of protection through the WIPO by way of an international registration.

(i) German trademark applications

69,130 German trademark applications were filed at the DPMA in 2015, 4,912 of which were filed under Class 9 (“Electrical apparatus and instruments”). This meant an increase of 3.7% in this field of goods.7

In order to apply for a trademark you have to select the class(es) of goods or services for which you seek trademark protection. These classes are categorized by the “Nice Classification” system in so-called “Nice Classes”.

You can file your application online with a particular application-software8 or in writing at the DPMA. The application must contain a representation of the trademark and, in addition to the Nice Class, indicate the type of trademark to be registered (e.g., word mark, olfactory mark or sound mark). It is not possible to register terms of a mere descriptive nature such as “fast” for a car or “fresh” for food.

The paper application fee of EUR 300 (EUR 290 for online applications) must be paid within three months and covers three Nice Classes. If protection is sought under further classes, an additional fee of EUR 100 per class applies. Protection is granted for a term of 10 years and can be renewed as often as desired.

It is important, however, that a trademark is actually used in trade. If the trademark is not used under the registered class for a consecutive period of five years, the trademark owner runs the risk of cancellation of the trademark upon request of a third party.

In general, representation by a lawyer is not required. However, if, during the course of an examination of the trademark application filed by an applicant who has no residence in Germany, formal or substantive defects are discovered, representation by a lawyer becomes mandatory.

(ii) EU trademark applications

By virtue of the EU Trade Mark Regulation 207/2009/EC (“EUTM Regulation”), it is possible to obtain a EU Trade Mark (“EUTM”), formerly known as Community Trade Mark (“CTM”), which is enforceable throughout the EU (formerly the European Community,

7 See https://www.dpma.de/docs/service/veroeffentlichungen/jahresberichte_en/annualreport2015_nichtbarrierefrei.pdf (http://bit.ly/2nmjI9c). 8 See https://www.dpma.de/english/service/e-services/dpmadirekt/.



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hence the former term CTM). After submitting an EUTM application directly to the EUIPO, the EUIPO will consider the trademark application and, upon successful review, publish it in the Official Journal of the EU, where it must go unchallenged for two months. Anyone can apply for an EUTM, including those based outside the EU.

Costs for EUTMs are EUR 850 (online) and EUR 1,000 (paper) plus an additional EUR 150 for every extra class of goods (or services) if protection is being sought in more than three classes.

In order to remain in force, a trademark must be renewed every ten years by paying renewal fees.

(iii) International trademark applications

Germany is member of the Madrid system for the international registration of marks (“Madrid System”). The Madrid System is an international trademark system, which allows each user to file one trademark application, in one language, and pay one set of fees to protect trademarks in currently up to 114 territories.

International trademark registration, however, requires a basic trademark application or registration that will be used for the international registration of such basic application or mark with WIPO. After formal examination by WIPO and publication in the Gazette, the international registration will be send to national trademark offices that will then determine the final scope of protection under domestic law of the designated countries.

1.1.4 Copyrights

(a) Eligibility

Copyrights protect personal intellectual creations. In Germany, works that are of a literary, scientific or artistic nature and that are the result of a personal creative process, that express a thought process or an emotion, are humanly perceptible and have features that go beyond the ordinary, can generally be protected by copyright. It is important to note that quality is not a deciding factor for copyright protection, as long as these requirements are fulfilled. Under German law, the level of creativity to be shown is generally very low.

Examples: all written works that are made up of characters or other signs, such as books, poems, scientific abstracts, newspaper and magazine articles, cookbooks, catalogues, etc. speeches are also categorized as literary works, as are computer programs, since encoding uses a form of signs (literary works); musicals, operas, improvisations, electronic music, etc. (music); dance and mimes; fine arts, designs, buildings, architecture, etc. (art); photographic works; films; plans, drawings, maps, sketches, etc. (illustrations of a scientific or technical nature); scientific books, films, or other forms of a creative work.

Not protected under copyright law are, e.g., mere ideas, scientific theorems and findings; the structure of a database, its access and query system.

(b) How are copyrights obtained? Copyrights come into existence at the same time as the work that is being created. As only natural persons are capable of creating a work, legal entities cannot be authors of a copyright protected work. A registration of the copyright or the work that it protects is neither necessary nor possible in Germany.


The author is automatically granted the moral rights for his/her work, e.g., he/she has the right to publish the work, to be recognized as the author and to prohibit any distortion or other derogatory treatment of the work. These rights cannot be waived or transferred under German law.

The author also holds the economic exploitation rights for his/her creation. Most importantly, he/she has the right of reproduction, the right of distribution and the right of making available to the public. Thus, he/she is entitled to reproduce his creation, regardless of the method used, the amount of reproductions or whether the reproduction is temporary or permanent. The distribution right entitles the author to offer his/her work to the public or to place it on the market. If he/she has done so once within the European Economic Area (“EEA”) or EU, however, the principle of exhaustion stipulates that anyone may distribute the work. As for making the work available to the public, the author has the right to publish his/her work online; by uploading the work and thereby allowing people to access the work at any time and from any place where he/she is making his/her work available to the public.

Copyright protection expires 70 years after the author’s death.

1.1.5 Trade Secrets (a) Trade secrets protection under German law

Under German law, protection of trade secrets is currently ensured by the Act against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb, UWG). The legal terminology differentiates between business secrets and trade secrets. Whereas the former relates to the commercial section of a business, the latter concerns the technical side of a business, such as know-how. Both, however, are protected the same way.

Under German law, trade secrets are defined as business-related information that is not public knowledge. Furthermore, it is required that the business owner communicates his/her intention to keep the information secret and has a legitimate interest in observing secrecy.

By their very nature, trade secrets cannot be registered. It is therefore recommended to conclude confidentiality agreements with contracting parties and employees, especially with regard to the time after termination of the employment contract.

(b) EU Trade Secrets Directive The EU Trade Secrets Directive adopted in May 2016 will not be implemented into German law until June 2018. It is currently not directly applicable. Once adopted, however, it will provide for harmonized protection of trade secrets in all Member States of the EU.

Although the rights in the EU Trade Secrets Directive are similar to IPR, they are not considered IPR. This is because the European lawmakers did not want to trigger provisions of other European laws relating to IP, such as the Directive on the enforcement of intellectual property rights (2004/48/EC) (“IPR Enforcement Directive”).9

9 For further information on the EU Trade Secrets Directive, please see above in Section II.5).


1.1.6 Counterfeits as Unfair Commercial Practices Beyond the IPR regimes set forth above, German unfair competition law also provides protection to creative achievements, in particular in the context of combating counterfeits.

As a principle, the freedom to copy is recognized under German law. Therefore, in general, the copying of a third-party achievement does not constitute an infringement if protection is not afforded by special protective acts (e.g., by copyright law or trademark law). Nonetheless, German unfair competition law provides supplementary protection if, in addition to the copying of a good or service, special circumstances give rise to unfairness.

As an example of an unfair act, the so-called “Black List” (Annex to Section 3 of UWG) prohibits the promotion of goods similar to the goods of a competitor, with the intention of deceiving the consumer regarding the commercial origin of such good. Unfair acts of competition are further defined as the imitation of goods and services of a competitor if avoidable deception of the purchaser is caused, the assessment of the replicated goods or services is impaired or exploited; or the information for the replicas is obtained dishonestly (Section 4 No. 3 of UWG).

This regulation only applies to companies that have a concrete competitive relationship with the claimant. Furthermore, there is no rigid term of protection. Rather, it depends on the circumstances of the individual case. In principle, the protection of related rights under competition law continues to exist for as long as the infringer’s unfair commercial conduct continues.

It has to be noted that there is a short statutory period of limitation of six months. Such period starts on the day the claimant gains knowledge about the alleged infringer’s behavior.

1.2 Enforcement of Intellectual Property Rights 1.2.1 Border Measures

Since Germany is a Member State of the EU, border measures are available as German and European IPR enforcement measures, i.e., goods infringing IPR can be subject to border measures by the relevant customs authorities both on the basis of European and German law. In view of the internal market of the EU with its principle of free movement of goods (thus lacking permanent internal border checks), customs enforcement at the outer EU borders is more important than national customs enforcement.

(a) Customs enforcement governed by the EU Customs Regulation The intervention of customs authorities in the EU is governed by EU Regulation No. 608/2013 (“Customs Regulation”). The owner of IPR with EU-wide effect (e.g., EU trademarks, RCDs, international trademarks and designs designating the EU, geographical indications of origins or plant variety rights) can file an EU application with the competent customs department of one Member State, while also requesting action of customs authorities from one or more Member States. Action may also be taken against goods attempting to circumvent copyright protection.

Under the Customs Regulation, it is also possible to file a national application if domestic rights (e.g., German patents, utility models, designs, trademarks or copyrights) are infringed, while requesting that only German customs authorities take action.


The competent customs authority for both applications is the Generalzolldirektion in Munich. Applications can be filed online.10 The applicant has to provide evidence of his/her entitlement, meaning he/she has to demonstrate that he/she is the legal IPR owner (e.g., by providing a copy of the relevant register) or authorized to use the right. It is recommended to provide detailed descriptions of your original product and known counterfeits. The application can be filed free of costs; however, if goods are seized, the rights holder has to reimburse the costs incurred by the customs authorities. He/she can later seek compensation from the infringer.

If a summary examination by the customs authorities identifies a probable cause for an infringement, the goods are seized and the rights holder, as well as the owner of the accused goods, are informed. Upon request, the rights holder can inspect the goods and demand information about the alleged infringer. Subsequently, the destruction of the rights-infringing goods can be requested if the owner of the goods does not object to the seizure within 10 days.

(b) Customs enforcement governed by German law Several provisions in German patent, trademark and design law allow customs authorities to carry out border seizures if intellectual property rights are infringed (see Section 142a of PatG, Section 146 of MarkenG, Section 55 of DesignG). While seizures under the Customs Regulation of the EU require suspicion of IPR infringement only, seizures under German law are only allowed when there is an obvious IPR infringement. Due to the technical difficulties assessing the scope of patents and evaluating the infringement situation, patents mostly are not suitable IPR for border measures. German trademarks, designs and copyrights, however, can be used for seizures by German customs authorities.

Since national legislation is subsidiary to the Customs Regulation, these provisions only come into effect in cases of parallel imports or intra-EU trade. Domestic customs enforcement may become relevant if, e.g., the importer had a license to manufacture certain products but not a license to import them to Germany.

The procedure is identical to applications under the Customs Regulation. The competent customs authority is the Generalzolldirektion in Munich as well.

1.2.2 Litigation In Germany, an infringement case is usually initiated by sending a warning letter accompanied by a cease-and-desist declaration, which includes a contractual penalty in case of violation. If the matter cannot be resolved, the rights holder may continue the proceedings by filing for a preliminary or permanent injunction. Furthermore, damages may be rewarded. In order to calculate the damages, the IP owner has rights to information and disclosure of accounts. The bases for such claims vary according to the rights in question.

(a) Patents and utility models Pursuant to Section 139 of PatG, a patent owner can claim an injunction if another person uses a patented process or produces, offers for sale or puts on the market an infringing product, regardless of the infringer’s culpability. In the event of an intentional or negligent infringement, the patent owner can claim his damages, choosing between (i) lost profits, (ii) reasonable royalties

10 See http://www.zoll.de/DE/Fachthemen/Verbote-Beschraenkungen/Gewerblicher-Rechtsschutz/Information-ZGR-online/information-zgr-online_node.html (http://bit.ly/2n7ikuX).

http://www.zoll.de/DE/Fachthemen/Verbote-Beschraenkungen/Gewerblicher-Rechtsschutz/Information-ZGR-online/information-zgr-online_node.html

http://www.zoll.de/DE/Fachthemen/Verbote-Beschraenkungen/Gewerblicher-Rechtsschutz/Information-ZGR-online/information-zgr-online_node.html

http://bit.ly/2n7ikuX


from the infringer or (iii) the surrender of actual profits generated by the infringer. Furthermore, the patent owner can demand that the infringer recall and/or destroy all infringing copies. Instead of destruction, the rights holder may also demand that the infringer turn over the copies against payment of a reasonable fee. Legal actions against patent infringements must be brought against the infringer within three years after the year in which the patent owner became aware of the infringing acts. While an injunction (effective in the future) can still be obtained afterwards, damages claims could be denied due to the general statutory limitation period of three years under German law.

Utility models can be helpful tools when there is a need to quickly obtain an industrial property right to be used in litigation. Similar to patents, utility models can be used to bring an action for injunctive relief, damages, recall and destruction of infringing goods against an infringer. However, since utility models are unexamined IPR, they can hardly be used for applications for preliminary injunctions and can be invalidated more easily because, unlike patents, their issuance does not require prior examination by a governmental body (e.g., a patent office). That is why courts may also stay the infringement proceedings until a decision by the DPMA on the validity of the utility model in the utility model revocation proceedings is rendered.

(b) Designs If your protected design is used without your permission, an injunction can be sought without having to prove the infringer’s culpability. If the infringer acted with intent or negligence, damages may be rewarded. To calculate damages, the claimant can choose between the same three options as a patent owner (see above). Provisions regarding the recall, destruction or assignment of infringing goods are identical to the ones in patent law. Furthermore, the statutory period of limitation is as long as it is in patent law (three years), starting at the end of the year in which the design rights owner became aware of the infringement.

(c) Trademarks In case a third party uses a similar or identical sign to your trademark, an injunction can be sought regardless of the infringer’s culpability. If the infringement occurred intentionally or negligently, damages can be recovered. In this case, the trademark owner has the same options to choose from as a patent owner (see above). Provisions regarding the recall, destruction or assignment of infringing goods are identical to the ones in patent law. Also, the statutory period of limitation is as long as it is in German patent law (three years), starting at the end of the year in which the trademark owner became aware of the infringement.

(d) Copyrights Similar to patent and trademark infringements, a copyright holder can request a cease and desist order even if the infringer acted without culpability, Section 97, paragraph 1 of the UrhG. Claims for damages require an intentional or negligent infringement. If material damages occur, the rights holder can chose between the same three choices as a patent owner (see above). Additionally, it is possible to seek compensation for immaterial damages in a case of severe and substantial infringement of a moral right. As in the case of patent infringement, the copyright holder can further request that the infringing copies be destroyed, recalled or that the infringer hand out the copies against the payment of a reasonable fee. The applicable limitation period is the same as the one for patent infringement claims: three years after the year in which the rights holder became aware of the infringing acts.


(e) Trade secrets To protect trade secrets during litigation proceedings, the court may, upon application, preclude the public from oral hearings and impose a confidentiality order on the opposing party.

As well as any criminal offense, violations of trade secrets can be the bases for claims for damages if they fulfill the requirements of Sections 17–19 of the UWG (see below in Section 1.2.3), since these are “protective laws” within the meaning of Section 823 paragraph 2 of the BGB.

(f) Unfair Competition Law Regardless of fault, it is possible to bring an action for injunction against the infringer, in case of a contravention of the German Act against Unfair Competition. If negligence or intention can be proven, a claim for damages may be asserted. Again, you can choose between the same three options as a patent owner to recover damages (see above). Claims under the German Act against Unfair Competition have to be filed within six months after the claimant becomes aware of the contravention.

1.2.3 Criminal Charges Trademark and copyright infringements can lead to criminal prosecution under German law. The maximum punishment of five years may deter potential infringers. Prosecution authorities investigate on their own behalf (and at their own cost). However, only severe and substantial trademark or copyright infringements are being investigated, which merely applies to a fraction of all cases.

The German Act against Unfair Competition provides the criminal law bases for protection of trade secrets. The betrayal of secrets by employees during the course of their employment will be punished, as well as industrial espionage by a third party (cf. Section 17 of the UWG). In addition to the procurement, the handling of such secrets is forbidden. Additionally, communicating or using entrusted samples or guidelines of a technical nature without proper authorization is prohibited (cf. Section 18 of the UWG).

It is noteworthy that criminal prosecution for these offenses requires willful intent of the offender.


2. UNITED KINGDOM 2.1 Protection of Intellectual Property Rights

2.1.1 Patents (a) Eligibility

According to the Patents Act 1977, most inventions will be eligible for patent protection, provided that they:

• are novel;

• involve an inventive step;

• are capable of industrial application; and

• are not excluded subject matter (such as animal life, mathematical formulae, methods of doing business or methods of medical treatment).

(b) How are patents obtained? In the UK, patent registration for UK patents is done via the Intellectual Property Office (“UK IPO”). Since the UK is a member of the European Patent Convention (EPC), it is also possible to apply for a European patent which will, upon issuance, become a European patent that has to be validated in the UK and all other designated countries.11

(c) Infringement and enforcement If a third party is infringing a registered UK patent and refuses to stop, actions may be brought by the patent owner (or exclusive licensee) for infringement in the UK. There are two types of infringement (as is common in many patent laws):

• direct infringement, meaning acts done directly in relation to patented products or processes; or

• indirect infringement, meaning acts done indirectly in relation to patented products or processes, for example, providing someone else in the UK with any of the means relating to an essential element of the patented invention.

Due to the territorial nature of patents, anyone looking to prevent unlawful use of their patents will need to seek enforcement at a national level. Civil actions should be brought using the appropriate claim form before the Intellectual Property Enterprise Court, or for larger disputes, the Patents Court. While not a court, the Patent Office (through its head, the Comptroller of Patents) can also resolve disputes between different parties on most issues relating to patents, including issues relating to: ownership, compensation, entitlement disputes and some infringement and validity disputes.

11 For the patent application process for European patents under the EPC please see the country report on Germany and the EU, Section IV.1.1.1(b) above.


UK patent infringement is not a criminal offense in the UK. However, it is a criminal offense to make certain false claims in relation to patents, such as falsely claiming that a product is the subject of a patent or patent application.

(d) Implications of Brexit for the patent regime There are a number of different ways in which the UK can currently exit the EU after the activation of Article 50 of the Lisbon Treaty. The exit scenario that would arguably cause the least disruption to the law surrounding intellectual property would involve the UK following Norway’s example and becoming a member of the European Economic Area (EEA) and the European Free Trade Association (“EFTA”) (“Norway Option”). In doing so, the UK would have access to the EU single market (which includes the principles of free movement of goods, people, services and capital) and continue to make contributions to the EU budget. The UK would also remain subject to most EU legislation and to the Court of Justice of the European Union (“CJEU”) jurisprudence, via the EFTA Court.

Arguably the most extreme exit scenario, the WTO model would leave the UK to rely on WTO rules and bilateral treaties (“WTO Option”) and the majority of EU legislation would not apply unless it was formally passed as UK legislation or otherwise incorporated into the UK’s national legal system. Under this model, the UK would not be subject to the jurisprudence of the CJEU.

There is no EU-wide patent regime in the sense of one EU instrument. Therefore, Brexit will not have any effect on the existing regime – patents will continue to be granted nationally through domestic offices and quasi-internationally through the EPC. The EPC is not an EU agreement. In fact, several of the current contracting members of the EPC are not members of the EU. The UK is a contracting member under the EPC and will remain so after exiting the EU.

However, Brexit may have implications for the future development of a single unified EU patent system as it is likely to delay implementation of the up-coming EU patent litigation regime – newly created unitary, or EU-wide, patents and the accompanying Unified Patent Court system. The three underlying agreements that implement both are EU agreements. At present, in order for unitary patents and the UPC system to come into effect, both the UK and Germany need to ratify the agreements, together with at least one other EU Member State. This is unlikely to happen prior to the UK’s exit from the EU which would delay the process. Also, as it would be outside the EU post-Brexit, the UK would no longer be eligible to take advantage of the scheme at all. Procedurally, too, the development of the UPC may be greatly hindered as the UK has agreed to host the life sciences division of the UPC and this would need to be moved to a different location.

Whichever Brexit model is chosen, this is going to be a lengthy process for the UK and, in the interim, there will be no immediate changes to the law in this area. Furthermore, the UK will continue to attend and participate in UPC meetings in its capacity as a contracting member.


According to the Copyright, Designs and Patents Act 1988 (“CDPA”), a design right is any design which:

• comprises the shape of configuration of the whole or part of an article;

• is original (i.e., not commonplace in a qualifying country);


• is recorded in a design document or is the subject of an article made in accordance with the design;

• is created by a qualifying person; and

• is not excluded, e.g., a method or principle of construction; or dependent on another article or a surface decoration.

(b) How are design rights obtained? Design rights need not be registered. However, registration of design rights is available at a relatively low cost at a national and EU level.

Registered design rights are eligible for a longer term of protection than unregistered design rights. National registered rights and registered community designs (RCDs) are valid for five years from the date of filing and can be renewed in five-year blocks, up to 25 years. National unregistered rights in the UK last for 10 years, whereas European unregistered design rights (UCDs) are only valid for three years from disclosure. Protection for both forms of unregistered design rights cannot be extended. Furthermore, UCDs only protect against bad faith, intentional infringements, whereas RCDs protect against all similar designs.

(c) Infringement and enforcement Infringement of a design right is using or authorizing the use of another’s design rights, including manufacture, sale, importation or marketing of a product incorporating the design.

At a national level, it is possible to launch a civil claim against an infringer. Furthermore, it is a criminal offense to copy a registered design in the course of business under the Registered Designs Act 1949.

At an EU level, parties can file a civil claim for enforcement or a preliminary injunction against infringement of their RCD or UCD before a Community Design Court. As RCDs are valid throughout the EU, it is possible for a court to grant relief across the EU.

It is also possible to file an application with national customs authorities should an owner of an RCD suspect products which infringe on his/her rights are entering or exiting the EU.

Where there has been an attempt to file a design similar to an existing RCD or registered design right, the owner of the earlier design right can file for invalidity, provided that the design has been disclosed and the two designs make the same overall impression on the user. This is doubly important for design rights, as the registrar will not check for similarity to other designs.

(d) Implications of Brexit for the design rights regime Following Brexit, RCDs will cease to apply in the UK (unless transitional legislation is devised) and new RCD filings will no longer take effect in the UK. It is likely that owners will also see an increase in management costs.


According to the Trade Marks Act 1994 (“TMA”), a trademark is any sign which is:

• capable of graphical representation;


• distinctive;

• capable of distinguishing goods or services; and

• not excluded by statute (e.g., customary symbols or those contrary to public morality).

It is important to note that, following implementation of the EU Trademarks Directive (EU) 2015/2436, the requirement for graphical representation will be eliminated.

(b) How are trademarks obtained? UK trademarks can be obtained domestically with approval from the UK IPO, and this registration will subsequently succeed if uncontested for up to three months after publication in the Trade Marks Journal.

Applications for trademarks are made to the UK IPO on a Form TM3 accompanied by the appropriate application fee (usually GBP 200). Under Section 32 of the TMA, an applicant must provide:

• a request for registration of the mark;

• a statement of the goods or services in relation to which the mark is sought;

• a representation of the mark; and

• a statement that the mark is used or is intended to be used, whether by the applicant himself/herself or with his/her consent, in connection with those goods or services.

Trademark rights arise from the date of application for a UK mark, although they cannot be enforced until the registration process is complete and the trademark has been placed on the register. In order to remain in force, a trademark must be renewed every 10 years by paying renewal fees.

The owner of a trademark does not have to register his/her trademark. However, if a trademark is unregistered, the owner has to look to common law protection against infringement in the UK and must therefore rely on a passing off action (see below in Section 2.1.6).

The best time to apply for registration is usually at the development stage of a new product. This ensures not only that the application is well on its way to registration by the time the product is on the market, but also that the applicant will have grounds to formally oppose any subsequent application by a third party for the same or a similar mark.

In addition, EU trademarks can be obtained by virtue of the EUTM Regulation. This involves a similar application process, except that submission is directly via the EUIPO. Anyone can apply for a EUTM, including those based outside the EU.12

Since the UK is a member of the Madrid System, it is also possible to expand domestic trademark protection (or a EUTM) internationally to the member states of the Madrid System.13

12 For the trademark application process for EU trademarks under the EUTM Regulation, please see the country report on Germany and the EU, Section IV.1.1.3(b) above. 13 For the Madrid system, please see the country report on Germany and the EU, Section IV.1.1.3(b) above.


(c) Infringement and enforcement Registration of a trademark gives the proprietor the right to sue any person who uses an identical or similar trademark in the course of trade in connection with identical or similar goods without authorization for trademark infringement. The proprietor must also show that the use has caused, or is likely to cause, confusion, except in cases where the marks are identical and the goods or services are the same.

Where a confusingly similar or identical mark is used and cease and desist letters and preliminary negotiations are unsuccessful, the infringer may be charged with a criminal offense under Section 92 of the TMA (see Criminal Charges below).

In either case, the EUIPO makes explicit that the onus is on trademark holders to enforce their rights by opposing registration at the EUIPO and the UK IPO; bringing a civil claim at the national level; or alerting national enforcement and prosecution authorities in suspected cases of counterfeiting (see Border Measures below).

(d) Implications of Brexit for the trademark regime Once the UK leaves the EU, this will result in the UK no longer being part of the EUTM regime because the EUTM Regulation will no longer be directly applicable. There is a danger that, in the absence of transitional legislation, existing EUTMs will not be recognized in the UK and new registrations will be declared invalid.

As a consequence of Brexit, companies operating across Europe are also likely to experience increased portfolio management costs, as separate domestic registration in the UK will become necessary (as it is in Switzerland, Norway, and Liechtenstein).

2.1.4 Copyrights (a) Eligibility

The principal piece of legislation governing copyrights in the UK is the CDPA. In the UK, copyrights give the creators of literary, dramatic, musical and artistic works, sound recordings, broadcasts, films and typographical arrangement of published editions rights to control the ways in which their material may be used. The rights cover: broadcast and public performance, copying, adapting, issuing, renting and lending copies to the public. In many cases, the creator will also have the right to be identified as the author of the work.

(b) How are copyrights obtained? Unlike other forms of IP, copyrights attach to the works as soon as they are created and are not capable of formal registration in the UK. A copyright in a work provides the copyright holder with certain rights of exclusivity in relation to that work; such as the right to make copies of that work, and to sell those copies to the public. While copyrights are intended to reward authors and creators for their efforts in creating original works, unlike patents, they do not provide a complete monopoly. Copyrights prevent the copying of original works, but they do not prevent the existence of a similar or identical work provided that they have not been copied. If someone can prove that they had the same idea or produced his/her own work independently, copyrights will offer no protection against that person.


One of the key issues in copyright law is whether sufficient skill, labor and creative effort has gone into the creation of a new work. This means that a new version of an existing work may amount to a new copyright work depending on the amount of effort expended by the new creator and whether, for example, there is substantial similarity between the original and new works.

A copyright lasts for a set period, usually the life of the author or creator plus 70 years from the end of the calendar year of his or her death.

(c) Infringement and enforcement The CDPA outlines two different classes of infringing acts; acts of primary infringement and acts of secondary infringement. Acts of primary infringement are strict liability offenses, meaning that no knowledge or intention is required to be shown on the part of the defendant to establish liability. For acts of secondary infringement, the defendant must have had certain specified knowledge, or reasonable grounds for having such knowledge, at the time of the offense.

The Digital Economy Act 2010 introduced a new regime for tackling online copyright infringement. Primary and secondary infringements can both be the subject of a civil claim, but secondary infringers are also exposed to criminal liability. Primary copyright infringement largely involves the duplication of a work or substantial taking from a work. Secondary infringement addresses dealing in infringing copies of works.

The EU’s main contributions to the protection of copyrights in the UK come in the form of the IPR Enforcement Directive, which harmonizes civil remedies. The EU also introduced protections from claims of secondary infringement for online intermediaries, including hosts, caches and conduits.

Remedies for copyright infringement include:

• interim injunctions;

• order for delivery under the CDPA;

• seizure of infringing copies and other articles under specific provisions in the CDPA;

• forfeiture under the CDPA; and

• damages or an account of profits.

(d) Implications of Brexit for the copyright regime Copyright law is, as detailed above, a largely national regime, albeit one harmonized by EU law such as the Copyright Directive (2001/29/EC), which has been implemented through the amended CDPA. The national legislation implementing the Copyright Directive will not be affected unless explicitly repealed.

However, should a more drastic Brexit model such as the WTO Option be adopted, CJEU jurisprudence in relation to copyrights will no longer be binding, which could create divergences in the long term between the UK and the rest of the EU as to how the law is interpreted.

The IPR Enforcement Directive has already been implemented into UK legislation (the Intellectual Property Regulations 2006), which will remain effective post-Brexit.


2.1.5 Trade Secrets (a) Eligibility

Trade secrets are largely information which: (i) is confidential in nature; (ii) is imparted in circumstances in which an obligation of confidentiality arises; and (iii) would be to the detriment of the person imparting the knowledge should it be subject to unauthorized use.

This definition will be modified once the EU Trade Secrets Directive is implemented into UK law by June 9, 2018. The revised meaning will cover information which: (i) is secret in the sense of not generally being known or readily accessible to persons within the circles that usually deal with such information; (ii) has commercial value because it is secret; and (iii) has been subject to reasonable steps by the holder of the information to keep it secret.

(b) How are trade secrets obtained? By their very definition, trade secrets are not registered nor are they obtained; they are protected by virtue of their confidential nature and will be protected as soon as they come into existence.

(c) Infringement and enforcement The EU Trade Secrets Directive prohibits the acquisition, use, and disclosure of trade secrets where they are acquired unlawfully. The civil remedies which Member States are required to provide are also clearly defined. Failure to provide these remedies may result in sanctions.

How much of this will change the existing UK regime when and if implemented is not yet clear, as UK trade secrets law already broadly covers its substance in the broadly similar wording of the TRIPS Agreement to which the UK is a party. The UK also allows civil claims in equity for breach of confidence on the strength of which the courts will grant injunctive relief and/or damages, and damages for breach of contract where an employee is restricted from divulging trade secrets.

(d) Implications of Brexit for the trade secrets regime If the WTO Option is implemented, the provisions laid out in the EU Trade Secrets Directive may never become part of UK law – though again, whether or not the EU Trade Secrets Directive is implemented, it is doubtful that this would lead to a radically different UK trade secrets regime. The UK may also implement the EU Trade Secrets Directive given that, in practical terms, it does not significantly change the level of protection given to trade secrets under UK law, and its adoption of the EU Trade Secrets Directive will help to ensure a harmonized approach to trade secret protection for UK companies that operate across Europe. Moreover, even if the EU Trade Secrets Directive is implemented into UK law, the UK would be free to repeal or change the law in the future.

2.1.6 Counterfeits as Unfair Commercial Practices Additionally, the UK system may allow claims under the common law tort of passing off based on the similarity of the marks, the dates at which the two traders were in business, the likelihood of confusion and the extent of the damage such confusion would cause. However, passing off actions are notoriously time-consuming and expensive. This is because, unlike actions for infringement of registered trademarks, the owner must provide evidence:


• of his ownership of goodwill or reputation in the mark; and

• that the unauthorized use of his/her mark amounts to a misrepresentation which is causing, or is likely to cause, damage. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion), is typically both labor-intensive and costly.


In accordance with the EU Customs Regulation, IPR owners are entitled to prohibit goods infringing trademarks, copyrights, or patents from entering or exiting the EU, by applying to customs authorities. In the UK’s case, this is Her Majesty’s Revenue and Customs (“HMRC”), which then mobilize the border force. Applications concerning UK border action are made in a National IPR Application for Action. Those who hold EU IPR should instead complete an EU IPR Application for Action. The applicant should provide as much information as possible, including, but not limited to, name; address; contact details; the IPR to be enforced; documentary evidence of ownership; sufficiently detailed description of the goods; and technical data about the authentic goods. In the case of an EU Application for Action, the UK authorities will work together with national customs authorities from across the EU.

These provisions also apply in certain circumstances to counterfeit and pirated goods which are in transit. Accordingly, at any stage in an illegitimate good’s journey, it may be seized and even destroyed by national authorities, in some cases (e.g., small consignments) without the rights holder’s agreement. These offenses will lead to criminal as well as civil liability (as they are in the course of business – see above).

Implications of Brexit for customs enforcement

If the WTO Option is implemented, where the UK in theory loses access to the single market, rights holders could theoretically lose their easy access to customs authorities across Member States. This, combined with the expense of maintaining two border application systems, could have a large impact on businesses. However, Brexit would also allow the UK to enact potentially stricter laws on counterfeiting, with the aim of reducing the amount of counterfeit articles coming into the UK. If the UK continues to be a member of the EEA by virtue of a Brexit model such as the Norway Option, there would be no material change to customs enforcement in this area.

2.2.2 Litigation Infringement claims relating to patents, registered designs, registered trademarks and copyrights can be made to the High Court, the Intellectual Property Enterprise Court (“IPEC”; formerly the Patents County Court, but renamed on October 1, 2013) and some county courts depending on the size of the claim. Since the introduction of the Civil Procedure Rules, timetables for infringement actions have been curtailed and infringement proceedings typically proceed at a fast pace, as a matter of practice. The IPEC hears IP cases of all kinds and can hear claims relating to UK and community-wide rights where applicable.

Since 2011, there has been a limit of GBP 500,000 on the value of claims that can be heard in the IPEC and any claims over this amount will be under the jurisdiction of the High Court unless otherwise agreed to by both parties. A small claims track is available for straightforward claims. The limit for small track claims (previously GBP 5,000) was increased to GBP 10,000 as of April 1, 2013. The procedure provides for final injunctions but not interim injunctions and most claims on this track are resolved without the need for a hearing, either through mediation or on paper.


The IPEC’s guide gives a detailed step-by-step breakdown of how to bring proceedings and all other practical aspects of bringing a claim before the IPEC.14

To start an action at the IPEC, you will need to fill out a claim form accompanied by a fee ranging from GBP 35 to GBP 10,000 depending on the value of the claim.15

2.2.3 Criminal Charges There are a variety of different criminal offenses that can be committed in relation to IPR.

(a) Patents It is an offense in the UK for a person to represent that something sold by him/her is a patented product, or the subject of a patent application, when this is not the case (See Sections 110 and 111 of the Patents Act).

(b) Designs The Intellectual Property Act 2014 introduced criminal penalties and liability for infringement of registered designs. New Sections 35ZA to C of the Registered Designs Act 1949 provide that it is an offense for a person in the course of a business to intentionally copy a registered design so as to make a product exactly according to that design or only immaterially different. An important proviso is that the person must know or have reason to believe that the design is a registered design. There is a similar offense applicable to parties offering, marketing, importing or using, or stocking such products in the course of a business. The offense is punishable by imprisonment of up to 10 years and by fines, and applies to both UK and EU RCDs.

(c) Trademarks The TMA sets out criminal offenses to protect against unauthorized use of a registered trademark (i.e., counterfeiting), including where a person applies a registered trademark to goods, or distributes or offers for sale or hire goods which bear a registered trademark or a sign likely to be mistaken for that mark (Section 92 of the TMA). The offenses carry a penalty of up to 10 years’ imprisonment for those selling items which are likely to be mistaken for genuine branded products. Section 92 is not confined to fraudulent misapplication or misuse.

The only real defense available is for the defendant to prove that it had made enquiries with the holder of the registered trademark, to ascertain whether or not the product it intended to sell was genuine, and that it had obtained the consent of the trademark holder to sell that product. The onus is also on the infringer to ascertain whether a registered trademark exists in the first place.

(d) Copyrights There a number of different criminal offenses that can be committed by someone infringing on a copyright in the UK. The main offenses are set out below.

• Doing any of the following acts in relation to an infringing copy of a copyright work is a criminal offense:

14 The full guide is available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/543307/intellectual-property- enterprise-court-guide.pdf. The IPEC’s guide to small claims is available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/426129/patents-court-small-claims.pdf. 15 The forms are available at: http://hmctsformfinder.justice.gov.uk/HMCTS/GetForm.do?court_forms_id=338.

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/543307/intellectual-property-%20enterprise-court-guide.pdf

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/543307/intellectual-property-%20enterprise-court-guide.pdf

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/426129/patents-court-small-claims.pdf

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/426129/patents-court-small-claims.pdf

http://hmctsformfinder.justice.gov.uk/HMCTS/GetForm.do?court_forms_id=338


o Making it for sale or hire;

o Importing it into the UK, other than for the importer’s private and domestic use;

o Distributing it:

in the course of business; or

other than in the course of a business to such an extent as to prejudicially affect the copyright owner.

These offenses carry a penalty of up to 10 years’ imprisonment and/or a fine.

• Doing any of the following acts in relation to an infringing copy of a copyright work, in the course of business is a criminal offense:

o Possessing it with a view to committing any act infringing the copyright (possession offense);

o Selling it, letting it for hire, or offering it for sale or hire; or

o Exhibiting it in public.

These offenses carry a penalty of up to three months’ imprisonment and/or a fine.

• Making an article specifically designed or adapted for making copies of a particular copyright work, or possessing such an article is also a criminal offense.

This offense carries a penalty of up to three months’ imprisonment and/or a fine.

(e) Trade Secrets There are currently no criminal sanctions for improper use or disclosure of trade secrets in the UK.


3. UNITED STATES This country report on the U.S. covers federal law and California law. Other states of the U.S. may have different laws that are not covered in this country report. It is recommended to engage local counsel for specific state law questions.

3.1 Protection of Intellectual Property Rights 3.1.1 Utility Patents

(a) Eligibility Patent law in the U.S. arises out of the Patent Act (Title 35 of the United States Code), which provides protection for useful inventions such as processes, machines, articles of manufacture, and composition of matters. Inventions can only be patented if they meet requirements relating to (i) subject matter, (ii) novelty, (iii) obviousness and (iv) sufficiency of disclosure of the invention.

(i) Subject matter The Patent Act states in Section 101 that only processes, machines, articles of manufacture, or composition of matters are patentable subject matter. While this standard is broad, there are certain inventions that do not fall within the statutory subject matter requirement. Among others, caselaw on the Patent Act has excluded from patentability abstract ideas, laws of nature and natural phenomenon. This includes data structures which are not claimed in combination with some type of computer or physical media, as well as nonfunctional descriptive material such as music or compilations of data. Most importantly, software which is not tied to a process or a physical machine is not patentable subject matter. Finally, it has become increasingly difficult to patent products derived from natural sources or methods such as methods of diagnosis that rely upon naturally existing correlations.

(ii) Novelty Section 102 of the Patent Act prohibits the patenting of any technology that is already available to the public prior to the effective filing date of the claimed invention. The three most common instances of this are inventions that, prior to filing, were: (i) known to the public; (ii) described in a printed publication; or (iii) described in a published patent application or issued patent.

Unlike most other countries, the U.S. grants inventors a limited one-year grace period under Section 102(b). Disclosures made by the inventor, including disclosures by someone who obtained the invention from the inventor, less than one year prior to the filing of the patent application do not preclude patentability. For example, under the on sale bar, an invention would be barred only if it is both (a) ready for patenting and (b) commercially offered for sale not primarily for experimental purposes for longer than the one-year grace period prior to the patent filing. The invention would not be barred if commercially offered for sale by the inventor or by someone who had obtained the invention from the inventor within the one-year grace period prior to the patent filing. Inventors should be aware that reliance on this U.S.-specific grace period may destroy novelty and that disclosure may preclude a patent filing in most jurisdictions outside the U.S. In addition, for patents filed prior to May 16, 2013, public disclosures made by another individual less than one year


before the patent application would not bar an application of the disclosure that was made after the applicant’s invention date.

(iii) Obviousness Section 103 of the Patent Act requires that the claimed invention is non-obvious to a person having ordinary skill in the art. The obviousness inquiry follows the following framework: (i) ascertain the scope and content of prior art; (ii) identify the differences between the claimed invention and the prior art; (iii) determine the level of ordinary skill in the pertinent art; and (iv) consider any objective indicia of non-obviousness, such as secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious.

Factors considered in determining the appropriate level of ordinary skill in the art include (i) the type of problems encountered in the art; (ii) any prior art solutions to these problems; (iii) the rapidity with which innovations are made; (iv) the sophistication of the technology in question; and (v) the educational level of active workers in the field. A person having ordinary skill in the art is assumed to also be a person of ordinary creativity, rather than an automaton, and would be able to combine the teachings of multiple patents together like pieces of a puzzle. Recent guidance suggests a finding of obviousness where claimed inventions were achieved by combining known references in a way to produce predictable results.

Even where an invention appears obvious, objective indicia of non-obviousness may permit the issuance of a patent. These secondary considerations include evidence of commercial success, long-felt but unsolved needs, failures of others, copying by the industry and unexpected results. In effect, such objective factors demonstrate that the invention is non-obvious in practice even where it appears obvious in theory.

(iv) Sufficiency of disclosure The Patent Act states in Section 112 that a specification of a patent must fully disclose the claimed invention and the claims that define the patented invention must be definite in scope. The requirement for disclosure of the invention has three separate components. First, the disclosure in the specification in light of the state of the art must allow a person of ordinary skill in the art to both make and use the invention across the full scope of the invention. Second, the disclosure in the specification must clearly convey to a person of ordinary skill in the art that the inventors were actually in possession of the invention. This second component serves two roles. The first role is to prevent an inventor from expanding the scope of the invention beyond what was originally contemplated and disclosed in the application as filed. The second role is to prevent an inventor from claiming an invention that is too speculative or is more guidance of how one might achieve the invention rather than a disclosure of the actual invention. Third, the disclosure in the specification must include the inventor’s best mode of making and using the invention at the time the application is filed. The best mode does not need to be the objective best way to practice the invention. Rather, the best mode is the inventor’s subjective belief as to the best way to practice the invention when the application was filed. The best mode does not need to be updated after the filing of the application.

The claims that define the scope of the invention must clearly describe the metes and bounds of the invention so that a person of ordinary


skill in the art can determine whether or not he/she is making or using the invention.

(b) How are utility patents obtained?

Patents may be obtained by filing a patent application with the United States Patent and Trademark Office (“USPTO”). The USPTO examines each patent application to determine whether the invention for which a patent is being sought meets the statutory requirements discussed above that the invention is useful, novel and non-obvious, and whether the patent application sufficiently discloses the invention including teaching how to make and use the invention. Applications which meet these criteria will be issued as patents.

(i) Filing and priority On March 16, 2013, the U.S. switched from a first-to-invent system to a first-inventor-to-file model with the America Invents Act. Unlike European patents, the U.S. system permits a grace period for inventors who publish information about the invention prior to filing for patent protection. As noted above, this particular one-year grace period is unique to the U.S. and reliance upon it may preclude registration of the patent in most countries outside the U.S.

Patent applicants may claim priority to an application filed in a foreign country that is a contracting member of the Paris Convention or any WTO member country that complies with the Paris Convention, as well as applications filed under agreements such as the EPC or the PCT. However, the USPTO application must be filed within 12 months of the priority application.

(ii) Duration and maintenance Utility patents are in force from the issue date of the patent application and extend for 20 years after the filing date of the U.S. non-provisional priority application or of the international application filed under the PCT that becomes a U.S. application. The duration of patent applications based on earlier patent applications are calculated from the filing date of the earliest patent application meeting either of the criteria above.

In order to maintain a utility patent, periodic maintenance fees must be paid by the patentee to the USPTO three times during the life of the patent (3.5, 7.5 and 11.5 years after issuance). Patentees may petition the USPTO to reinstate patents that expire due to an unintentional delay in payment of the maintenance fee, and petitions filed less than 24 months after the date of expiration are automatically granted.

3.1.2 Design Patents (a) Eligibility

A design patent under U.S. law protects the ornamental appearance of an article, but not the article’s structure or any utilitarian feature embodied in the article. It is possible to obtain both a utility patent and a design patent for a single article. The statutory requirements for design patent protection include (i) patentable subject matter, (ii) originality and (iii) ornamentality. Design patents must also satisfy the novelty and non-obviousness requirements for utility patents discussed above.


(i) Subject matter Under Section 171 of the Patent Act, the design to be patented must be “for an article of manufacture,” meaning a tangible object made by a person. The patentable design cannot be a design standing alone in the abstract. For example, a computer icon is not patentable, but an icon embodied on a computer screen or other display may be patentable as a combination of the icon and the display. Protectable designs include overall product designs, partial designs, ornamentation, packaging, patterns, fonts and icons.

(ii) Originality The originality requirement of Section 171 states that the design to be patented may not be derived from any source or person other than the individuals named as inventors. In effect, this requirement excludes from patentability any simulation of known objects, persons or naturally occurring forms. A design can be original even if it is the result of reassembling or regrouping familiar forms and decorations.

(iii) Ornamentality U.S. courts have varied in their treatment of the requirement that patented articles are ornamental. Some courts have held that this requires that the design be aesthetically pleasing and a product of an artistic conception. Other courts have suggested that the shape or configuration of a functional object may be protectable by a design patent if the shape or configuration is not dictated by the function of the object.

(b) How are design patents obtained? Unlike utility patents, design patents are limited to a single claim which must follow a specific form. The specification is also short and follows a predefined form. Due to their simplicity when compared to utility patents, design patents are generally less expensive to prosecute and quicker to issue from the USPTO. The issue fee for a design patent is only one-third of the utility patent fee.

Design patents filed prior to May 13, 2015 in the U.S. have a term of 14 years from the date of issuance. Those filed after May 13, 2015 have a term of 15 years from the date of issuance. Design patent applications follow the same priority rules as utility patents. Unlike utility patents, there are no maintenance fees associated with design patents.


The term “trademark” is often used to refer to both trademarks and service marks. A trademark is a device (e.g., a word, phrase, symbol or design) that is capable of identifying and distinguishing the source of goods or services. A service mark is a device that identifies and distinguishes the source of a service rather than goods. In the U.S., federal law provides the main source of trademark protection, but state common law actions are still available.

To serve as a trademark, a mark must be distinctive, i.e., capable of identifying the source of a particular good. Courts group marks into four categories, and the legal protection afforded to a mark depends on the category to which a mark belongs.


Category Description Degree of Protection Examples

Arbitrary & Fanciful

The mark bears no logical relationship to the underlying good

High degree of protection

Exxon, Xerox, Apple (for computers) and Lotus (for software)

Suggestive The mark suggests a characteristic of the underlying good

High degree of protection

Holiday Inn (suggestive of hotel rooms), All Bran (suggestive of breakfast cereal) and Microsoft (suggestive of software for microcomputers)

Descriptive The mark describes a characteristic of the underlying good (e.g., color, odor, function, dimension or ingredient)

Protected only if the mark has acquired “secondary meaning,” i.e., the consuming public primarily associates the mark with a particular producer

Sharp (for televisions), Cold and Creamy (for ice cream) and Chap Stick (for lip balm)

Generic The mark describes the general category to which the underlying good belongs

Not protected

Smartphone, Social Network, Email

(b) How are trademarks obtained? An individual may obtain a trademark (i) by being the first to use the mark in commerce (which generally requires actual sale of a good to the public with the mark attached) or (ii) by being the first to register the mark with the USPTO. Registering with the USPTO is not required for a trademark to be protected.

(c) First to use The party who first uses a mark in commerce establishes priority. However, this priority is limited geographically to (i) the area in which the party sells goods; (ii) the area in which the party would be expected to sell goods; and (iii) the geographic areas where the reputation of the mark has been established.

Note that for a descriptive mark, there may be a period after the initial use of the mark in commerce and before it acquires secondary meaning, during which it is not entitled to trademark protection. The mark becomes protected only after secondary meaning has been acquired.

(i) First to register The party who first registers his/her mark with the USPTO with a bona fide intention to use the mark in commerce establishes priority. This priority gives the registrant the right to use the mark nationwide,


limited only to the extent the mark is already being used by others within a specific geographic area. The prior user of the mark retains the right to use that mark within that specific geographic area while the registering party gets the right to use it everywhere else.

Registration with the USPTO confers several benefits: (i) a statutory presumption that the trademark is valid, that the registrant is the owner of the mark and that the registrant has the exclusive right to use the mark; (ii) proof that a descriptive mark has acquired secondary meaning; (iii) constructive notice of a claim of ownership; (iv) nationwide priority based on the filing date; and (v) registration becomes incontestable after five years, conclusively establishing the registrant’s exclusive right to use the mark.

An applicant may register a trademark online through the Trademark Electronic Application System (“TEAS”). The following items must be filed with the USPTO for a trademark registration:16

• A completed application form;

• A drawing of the mark;

• Three identical specifications of the mark in use; and

• A trademark application fee, which ranges from USD 225 to USD 325 per class of goods or services.


Copyright law in the U.S. is governed by federal statute, the Copyright Act of 1976. Copyrights protect (i) literary works; (ii) musical works, including accompanying words; (iii) dramatic works, including accompanying music; (iv) pantomimes and choreographic works; (v) pictorial, graphic and sculptural works; (vi) motion pictures and other audiovisual works; (vii) sound recordings, and (viii) architectural works.

To be copyrightable, a work must be:

• Fixed in a tangible medium of expression; and

• Original. Copyrights protect only physical representations. Thus, ideas, procedures, processes, systems, methods of operation, concepts, principles and discoveries are not copyrightable.

The originality requirement does not demand that the work is novel, has artistic merit or is even lawful. Instead, the work must be independently created by the author.

For works created on or after January 1, 1978, the copyright term is the author’s life plus 70 years. A “joint work” prepared by two or more authors that was not a “work made for hire” has a term that lasts for 70 years after the death of the last surviving author. Finally, for works made for hire and for anonymous and pseudonymous works, the term is 95 years from publication or 120 years from creation, whichever is shorter.

16 Additional information on filing an application to register a trademark is available at http://www.uspto.gov/trademarks-application-process/filing-online.

http://www.uspto.gov/trademarks-application-process/filing-online


(b) How are copyrights obtained? Under current law, a copyright vests automatically in the author(s) of a work. Works created by an employee within the scope of his or her employment are an exception to this rule. Under Section 101 of the Copyright Act, the employer is considered the legal author of such “works made for hire.” There is no requirement to file an application for copyright protection or to even place a copyright notice on a work. Registration and notice merely serve as recommended steps to expand the protection provided by copyrights. However, there are benefits to registering and/or publishing a copyright notice.

(i) Registration Registration may be made at any time within the life of the copyright. Registration of a work yields the following benefits: (i) registration establishes a public record of the copyright claim; (ii) before an infringement suit may be filed in court, registration is required for works of U.S. origin; (iii) if made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and the facts stated in the certificate; (iv) if registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorneys’ fees will be available to the copyright owner in court actions (otherwise, only actual damages and profits will be available); and (v) registration allows the owner of the copyright to record the registration with the U.S. Bureau of Customs and Border Protection.17

An application for copyright registration may be filed at any time during the life of the copyright. An application to register a work is made by submitting the following items to the U.S. Copyright Office:18

• A properly completed application form;

• A nonreturnable deposit of the work being registered; and

• A nonrefundable filing fee, which ranges from USD 35 to USD 85 for basic registrations.

(ii) Copyright notice Placing a copyright notice in a published work is recommended because (i) it informs the public that the work is protected by copyright; (ii) it prevents a party from claiming the status of “innocent infringer,” which may allow such party to escape certain damages; and (iii) it identifies the copyright owner and the year of first publication so that third parties know who to contact to request a license.

3.1.5 Trade Secrets (a) State law: the Uniform Trade Secrets Act (UTSA)

Forty-seven states have adopted the UTSA in some form. However, some states have modified aspects of the UTSA so that there are variations across areas. Still, there is a high degree of uniformity among the 47 state trade

17 See website at: http://www.cbp.gov. 18 Additional information on registration procedures is available at: http://www.copyright.gov/help/faq/faq-register.html.

http://www.cbp.gov/

http://www.copyright.gov/help/faq/faq-register.html

http://www.copyright.gov/help/faq/faq-register.html


secrets laws, including the definitions of “trade secret,” misappropriation by “improper means,” and the remedies available.

A trade secret is information of commercial value that is not generally known to others. Misappropriation means acquiring a trade secret by improper means or from someone who has acquired it through improper means. Acts like theft, bribery, and misrepresentation are “improper means.” The remedies for trade secret misappropriation include injunctive relief and damages.

(b) Federal law: the Defend Trade Secrets Act (DTSA) The DTSA, adopted in 2016 and currently in effect, is modeled on the UTSA. The DTSA in its substantive terms is very similar to the UTSA, the TRIPS Agreement and the EU Trade Secrets Directive. The definition of trade secrets in the DTSA uses different wording than the EU Trade Secrets Directive, but the scope of coverage appears to be almost identical. The specific facts of a case will continue to be important in determining what qualifies as a trade secret under either definition.

The largest difference from all other trade secrets laws is that the DTSA allows for ex parte seizures of trade secrets information. This allows a trade secrets plaintiff to obtain a court order without advance notice to the defendant, to seize misappropriated trade secrets information. However, the burden on preparing ex parte seizure applications is high, so this measure is not likely to be used often.

Like California’s trade secrets law, the DTSA does not adopt the inevitable disclosure doctrine. The doctrine requires a plaintiff to prove trade secrets misappropriation by demonstrating that the defendant’s new employment will inevitably lead the defendant to rely on the plaintiff’s trade secrets. California rejected the doctrine because it creates a “de facto covenant not to compete.” Also, like the EU Trade Secrets Directive, the DTSA provides specific protections for whistleblowers. The provision provides immunity for disclosing trade secrets to government officials for the purpose of reporting violations of the law. Employers must give notice of that immunity “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” Employers who do not do so cannot recover punitive damages or attorneys’ fees that may otherwise be available under the DTSA. State trade secrets laws currently do not have whistleblower provisions.

The DTSA does not preempt states’ trade secrets acts or any other state laws.

(c) State and federal enforcement for trade secrets Unlike the trade secrets laws in some states, the DTSA allows an owner of a trade secret to bring a civil action under the DTSA. The California statute does not have such a stringent requirement, and California courts have said that it does not require a plaintiff to be a current owner of a trade secret.

Since the DTSA is modeled on the UTSA, the elements of a DTSA misappropriation claim are similar to those for state law claims. The DTSA provides the same remedies as the California version of the UTSA and most UTSA states, plus the ex parte seizure remedy. It also has the same three-year statute of limitations as California. Importantly, like the UTSA, the DTSA states that a continuing misappropriation constitutes a single claim of misappropriation and thereby precludes arguments that each new act of misappropriation restarts the statute of limitations.


3.1.6 Protection Against Unfair Commercial Practices Since the U.S. legal system is a common law regime, there are a number of state laws prohibiting unfair competition, including passing off (where a company passes off its products as the trademark owner’s), contributory passing off (where a company assists or induces another party to pass off that party’s goods or services as the trademark owner’s), reverse passing off (where a company passes off the trademark owner’s products as its own), and misappropriation.


(a) Generally Section 337 of the Tariff Act of 1930 grants IPR holders the right to seek relief from the U.S. International Trade Commission (“ITC”) for the importation of goods made as a result of trade secret theft or that infringe a trademark, patent, or copyright. To initiate a Section 337 action, IPR owners must file a complaint with the ITC to allege unfair acts in the importation of such goods into the United States.

Remedies for such cases include (i) general or limited exclusion orders issued by the ITC barring the importation of the infringing products into the U.S., which will be enforced by the U.S. Bureau of Customs and Border Protection; (ii) cease and desist orders issued by the ITC to specific U.S. persons to prohibit the use or purchase of such infringing products from abroad, which will be enforced by the ITC; and (iii) in some cases, civil forfeiture. Anyone who violates an order of the ITC must pay civil penalties to the United States for each day on which an importation of articles or their sale occurs in violation of the order in an amount not more than the greater of USD 100,000 or twice the domestic value of the articles entered or sold on such day.

(b) Trademarks Two types of trademark cases face enforcement by the U.S. Customs Service: (i) Importing goods bearing infringing marks or names that are identical to or substantially indistinguishable from registered marks; and (ii) transshipping through or exporting from the United States counterfeit goods or services that violate federal law.

The defendant in such cases faces seizure by the U.S. Customs Service and, in the absence of the written consent of the trademark owner, forfeiture for violations of the customs laws. Upon seizure of such merchandise, the Secretary of the Department of Homeland Security will notify the owner of the trademark and will, after forfeiture, destroy the merchandise. If, however, the merchandise is not unsafe or a hazard to health, and the trademark owner provides his consent to the Secretary, the Secretary may remove the trademark (if feasible) and dispose of the seized goods by giving them to federal, state or local government agencies or to charitable organizations that the Secretary believes have a need for such merchandise.

Any person who directs, assists or aids and abets the importation of merchandise for sale or public distribution that is seized in violation of this offense is subject to a civil fine. For the first seizure of such merchandise, the fine is in an amount up to the domestic value of the merchandise as if it had been genuine, according to the manufacturer’s suggested retail price. For the second and subsequent seizures, the fine will be doubled. Note that the imposition of this fine is within the discretion of the Customs Service, and is in addition to any other civil or criminal penalty or other remedy authorized by law.


3.2.2 Litigation (a) Utility patents

(i) Infringement Utility patent infringement occurs when another party: (i) makes, uses or sells any patented invention within the U.S. or imports into the U.S. any patented invention during the patent term without authorization; (ii) actively induces patent infringement; (iii) sells within the U.S. or imports into the U.S. a component of a patented invention, for use in practicing a patented process, constituting a material part of the invention, knowing it to be especially made for use in an infringement of such patent; or (iv) manufactures within the U.S. the components of a patented invention and then exporting those disassembled parts for combination abroad into an end product.

Under the “first sale” or “exhaustion” doctrine, the initial authorized sale of a patented item terminates all of the patent rights to that item. This doctrine effectively gives the purchaser or any subsequent owner of the item a right to use or resell that article. U.S. caselaw continues to evolve on whether the “exhaustion” doctrine also applies to foreign sales of a U.S. patented article. Currently, the foreign sale of a patented article does not exhaust the patent owner’s rights unless the owner or its authorized seller fails to explicitly reserve its U.S. patent rights. However, this holding has been appealed in the U.S. Supreme Court, which is expected to issue a decision on the matter sometime in 2017.

(ii) Remedies Remedies for the utility patent infringement include injunctions against the infringer and damages adequate to compensate the owner for the infringement (including lost profits where there is a causal connection between infringement and unearned profits). In no event will the damages be less than a reasonable royalty for the use of the invention by the infringer, together with interest and costs as determined by the court. The court may receive expert testimony on reasonable figures in the course of determining the appropriate damages or royalty.

Where the infringement is egregious or willful, the court may exercise its discretion to increase the damages up to three times the amount found or assessed by the jury or the court. In addition, the court may choose to award reasonable attorneys’ fees in exceptional cases of infringement. Monetary recovery for damage is limited to infringement committed less than six years prior to the filing of the complaint or counterclaim of infringement.

(b) Design patents (i) Infringement

Design patent infringement occurs when another party, without authorization, applies the patented design or any colorable imitation of the design to any article of manufacture for the purpose of sale or the sale of such article. The test for whether design patent infringement has occurred is whether the accused product would appear “substantially the same” as the patent design from the view of an ordinary observer. In the past, courts have examined prior art to determine the “point of novelty” of the design patent at issue and


whether this “point of novelty” had been incorporated by the infringing design.

(ii) Remedies In addition to the infringement remedies for utility patents discussed above, the owner of the design patent may seek as damages the total profit of the infringing design from the offender in any U.S. federal district court having jurisdiction of the parties. Recent caselaw suggests that the phrase “total profits” may, depending on the circumstances, refer to either the total profits associated with: (a) the entire article of manufacture to which the design has been applied or (b) the specific infringing design component. However, it is currently unclear what guidelines should be used by courts to make such a determination. The owner of the design patent may not recover such profit more than once from the infringement.

(c) Trademarks There are two main causes of action in a trademark case, (i) trademark infringement and (ii) trademark dilution, which are discussed below, followed by (iii) a discussion on the available remedies.

(i) Trademark infringement Generally, trademark infringement occurs if the defendant uses a mark in a way that confuses consumers as to the source of the goods or services. Specific claims of trademark infringement include:

• Unauthorized use in commerce of any reproduction, copy or colorable imitation of a federally registered mark in connection with the sale, offering for sale, distribution or advertising of any goods or services, where such use is likely to cause consumer confusion, mistake or deception;

• Intentional use in commerce of a counterfeit mark or designation (i) in connection with the sale, offering for sale or distribution of goods or services, knowing that such mark or designation is a counterfeit mark, or (ii) in providing goods or services necessary to the commission of the violation described in the first circumstance above, with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation; and

• Use in connection with any goods or services of any word, term, name, symbol or device, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (i) is likely to cause confusion, mistake or deception as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods, services or commercial activities by another person, or (ii) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographic origin of his or her or another person’s goods, services or commercial activities.

Courts consider a number of factors, including (i) the strength of the mark; (ii) the degree of similarity between the two marks; (iii) the proximity of the products in the marketplace; (iv) evidence of actual confusion; (v) the similarity of marketing channels used; (vi) the


sophistication of the typical purchaser; and (vii) the defendant’s intent.

(ii) Trademark dilution Trademark dilution occurs if the defendant uses a mark in a manner that diminishes the capacity of the mark to identify and distinguish goods or services.

Under federal law, a dilution claim can be brought only if the mark is “famous.” Federal courts consider the following factors: (i) the degree of inherent or acquired distinctiveness; (ii) the duration and extent of use; (iii) the amount of advertising and publicity; (iv) the geographic extent of the market; (v) the channels of trade; (vi) the degree of recognition in trading areas; (vii) any use of similar marks by third parties; and (viii) whether the marks are registered.

Under state law, a mark does not need to be famous for a trademark owner to bring a dilution claim. Instead, dilution is available if (i) the mark has selling power (i.e., a distinctive quality) and (ii) the two marks are substantially similar.

(iii) Remedies Successful plaintiffs in a trademark infringement or dilution case are routinely awarded injunctions against further infringing or diluting use of the trademark. Courts may also order that the infringing items bearing the mark must be destroyed. In infringement cases, monetary relief may also be available, in which case the plaintiff may recover (i) defendant’s profits, (ii) damages sustained by plaintiff and (iii) the costs of the action. In addition, if the plaintiff is able to show defendant’s bad faith, such damages may be trebled. In dilution cases, damages are available only if the defendant willfully traded on the plaintiff’s goodwill in using the mark.

In cases involving counterfeits, unless the court finds extenuating circumstances, the court will treble damages sustained by the plaintiff or defendant’s profits, whichever is greater, plus attorneys’ fees. Statutory damages in the amount of not less than USD 1,000 or more than USD 200,000 per counterfeit mark per type of goods or services sold, offered for sale or distributed, as the court considers just, are also available at the plaintiff’s election.

(d) Copyrights (i) Infringement

Copyright infringement occurs when a party other than the author (i) copies or reproduces the work; (ii) creates a new work that is a derivative of the original work; (iii) sells or gives away the work or a copy of the work for the first time; or (iv) performs or displays the work in public without permission.

Note that once the author has sold or given away the work or a copy of the work, the recipient or purchaser may then sell or give away that specific work or copy of the work that he or she possesses. While the author may not enforce his or her rights over the specific embodiment or copy of the work, copyright protection over the work itself is otherwise unaffected. This is known as the first sale doctrine which is similar to the exhaustion doctrine, a term more often used in Europe. Recent caselaw has held that the first sale doctrine is not geographically restricted and that it applies to copyrighted works manufactured overseas as well. In effect, a foreign-made copy of a


copyrighted work legally acquired abroad can be imported and resold in the U.S. without the permission of the copyright owner.

In addition, a defendant is liable for copyright infringement for circumventing copyright protection systems in violation of the Digital Millennium Copyright Act (“DMCA”) by (i) descrambling, decrypting or otherwise avoiding, bypassing, removing, deactivating or impairing a technological measure, without the authority of the copyright owner, that effectively controls access to a copyrighted work; or (ii) manufacturing, importing, offering to the public, providing or otherwise trafficking in any technology, product, service, device or component, that is primarily designed or produced for the purpose of circumventing copyright protection measures.

(ii) Remedies Remedies for copyright infringement include injunction, impoundment of infringing works and the things used to make them, seizure and destruction of infringing works, and damages. Damages can be actual damages suffered by the copyright owner plus the infringer’s profits or statutory damages. In cases other than violations of the DMCA, statutory damages will be set by the court in an amount between USD 750 and USD 30,000 for each work that was infringed. If the infringement is willful, then statutory damages can be as high as USD 150,000. If the infringer can show that he/she was “innocent,” then statutory damages can be reduced to USD 200. Statutory damages are available only if the copyright owner registered the copyright within three months of publication of a work. The prevailing party in a copyright infringement case may also ask the court to award attorneys’ fees and other costs.

In cases involving violation of the DMCA, statutory damages are as follows:

• For descrambling, decrypting or otherwise avoiding a technological measure, statutory damages will be set by the court in an amount between USD 200 and USD 2,500 per act of circumvention, device, product, component, offer or performance of service; and

• For manufacturing, importing, offering to the public, providing or otherwise trafficking in any technology, product, service, device or component that is primarily designed or produced for the purpose of circumventing copyright protection measures, statutory damages will be set by the court in an amount between USD 2,500 and USD 25,000 per violation.

(e) Trade Secrets (i) Infringement

There are two federal causes of action for trade secrets infringement, often referred to as misappropriation: (i) theft of a trade secret to benefit a foreign entity and (ii) theft of a trade secret for commercial advantage. This civil action may be brought by either the Attorney General of the United States or by the owner of the misappropriated trade secret.

• Theft of a trade secret to benefit a foreign entity gives rise to a civil action where an individual, with intent or knowledge that the offense will benefit any foreign government, instrumentality or agent, knowingly: (i) steals, takes or obtains a trade secret without authorization; (ii) copies, destroys or


transmit a trade secret without authorization; or (iii) receives, buys or possesses a trade secret, knowing it to have been stolen or obtained without authorization. It is also an offense to attempt to commit any of the offenses described above or to conspire with any other person to commit such offenses.

• Theft of a trade secret for commercial advantage provides for a civil action where an individual, with intent to convert a trade secret related to a product or service used in or intended for uses in interstate or foreign commerce, to the economic benefit of an individual other than the owner, and intending or knowing that the offense will injure an owner, knowingly: (i) steals, takes or obtains a trade secret without authorization; (ii) copies, destroys or transmits a trade secret without authorization; or (iii) receives, buys or possesses a trade secret, knowing it to have been stolen or obtained without authorization. It is also an offense to attempt to commit any of the offenses described above or to conspire with any other person to commit such offenses.

(ii) Remedies The plaintiff in a successful trade secrets misappropriation case may seek an injunction and either damages for actual loss and any unjust enrichment caused by the misappropriation or an award of a reasonable royalty. Where the trade secret is willfully and maliciously misappropriated, an award of exemplary damages, not exceeding two times the amount of the compensatory damages may be awarded along with attorneys’ fees to the prevailing party. Attorneys’ fees may also be granted where the claim of misappropriation was made or opposed in bad faith.

3.2.3 Criminal Charges Criminal penalties in the U.S. only apply to certain instances of copyright, trademark and trade secret infringement. Utility and design patent infringement in the U.S. is strictly a civil offense.

(a) Trademarks Criminal penalties are available in trademark cases involving trafficking in counterfeit trademarks, service marks and certification marks. Specifically, the causes of action include:

• Intentionally trafficking or attempting to traffic in goods or services and knowingly using a counterfeit mark on or in connection with such goods or services; and

• Intentionally trafficking or attempting to traffic in labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation or packaging of any type or nature, knowing that a counterfeit mark has been applied thereto, the use of which is likely to cause confusion, to cause a mistake or to deceive.

The penalties include (i) mandatory restitution; (ii) civil and criminal forfeiture of any article, any property used in committing or facilitating the offense, and any property derived from the offense; (iii) imprisonment; and (iv) fines. For the first offense, the defendant faces imprisonment of up to 10 years or a fine of not more than USD 2,000,000 (or USD 5,000,000 for organizations), or both. For a second or subsequent offense, the maximum imprisonment term doubles to 20 years and the maximum fine increases to USD 5,000,000 (USD 15,000,000 for organizations). If the defendant


knowingly or recklessly causes or attempts to cause serious bodily injury from conduct in violation of this offense, then the penalties increase to up to 20 years’ imprisonment, a fine of up to USD 250,000 (USD 500,000 for organizations), or both. If the offender knowingly or recklessly causes or attempts to cause death from conduct in violation of this offense, imprisonment for any term of years up to life in prison, or a fine of up to USD 250,000 (USD 500,000 for organizations), or both can be imposed.

(b) Copyrights Criminal penalties are available for the following copyright infringements:

• Willful infringement of a copyright for purposes of commercial advantage or private financial gain;

• Willful infringement of a copyright by reproducing or distributing, including by electronic means, during any 180-day period, one or more copies of one or more copyrighted works that have a total retail value of more than USD 1,000;

• Distribution of a copyrighted work being prepared for commercial distribution by making it available on a publicly accessible computer network, where the infringer knew or should have known that the work was intended for commercial distribution (i.e., pre-release distribution of a copyrighted work over a publicly accessible computer network);

• Willful circumvention for purposes of commercial advantage or private financial gain circumvents the copyright protection systems in violation of the DMCA;

• Knowingly and for purposes of commercial advantage or private financial gain: (i) making an unauthorized recording of sounds or sounds and images of a live musical performance, or copies of such recording; (ii) transmitting or other communication to the public of such sounds and/or images of a live musical performance; or (iii) distribution, sale or trafficking in any copy of an unauthorized live musical performance recording (whether or not such recording was made in the United States); and

• Knowingly using an audiovisual recording device to transmit or make a copy of a motion picture from a performance of such work in a movie theater.

The penalties include (i) mandatory restitution; (ii) civil and criminal forfeiture of any article, any property used in committing or facilitating the offense, and any property derived from the offense; (iii) imprisonment; and (iv) fines. Depending on the cause of action, imprisonment may be up to 10 years and fines may be up to USD 250,000 (USD 500,000 for organizations).

(c) Trade secrets U.S. federal law provides for criminal penalties for the two federal causes of action for trade secrets misappropriation: (i) theft of a trade secret to benefit a foreign entity; and (ii) theft of a trade secret for commercial advantage. The elements of each of these causes of action are discussed above.

The penalties for theft of a trade secret to benefit a foreign entity include: (i) imprisonment of up to 15 years, (ii) a fine of up to USD 5,000,000; (iii) civil


and criminal forfeiture of any article and any property used in any manner to commit or facilitate the offense; and (iv) mandatory restitution.

The penalties for theft of a trade secret for commercial advantage include: (i) imprisonment of up to 10 years, (ii) a fine of up to USD 250,000; (iii) civil and criminal forfeiture of any article and any property used in any manner to commit or facilitate the offense; and (iv) mandatory restitution.


4. CHINA 4.1 Protection of Intellectual Property Rights

This section is intended to provide an overview of China’s laws and regulations in relation to IP registration and protection and to highlight certain practical considerations which a GOGLA member may wish to take into account while developing an enforcement strategy with respect to its IPR in China.

Although there have been huge strides made in China’s IP enforcement regime, it is clear that the legal framework through which this is achieved is constantly evolving. GOGLA members operating or intending to operate in China should therefore continue to closely monitor these legislative and judicial developments when developing their IP enforcement plans.

4.1.1 Patents (Invention, Design and Utility Model Patents) China’s Patent Law was first promulgated in 1984. It has been amended three times (most recently in 2008) in an effort to bring it in line with the requirements under the Paris Convention and the TRIPS Agreement.

(a) Eligibility Under China’s Patent Law, patent protection is available in three categories: invention patents, design patents and utility model patents. An invention patent is defined as any new technical solution relating to a product, a process or an improvement thereof. A design patent is defined as any new design of a product’s shape, pattern, color, or combination of shape, pattern or color, which creates an aesthetic feeling and is fit for industrial application. A utility model patent is defined as any new technical solution relating to a product’s shape, structure or combination of shape and structure, which is fit for practical use.

(b) How are patents obtained? Invention patents last for 20 years from the date of application, while design patents and utility model patents have a shorter term of 10 years from the date of application. China, along with most of the other jurisdictions in the world (including the EU), has adopted the “first-to-file” approach. Under the “first-to-file” approach, whoever files a patent application first has priority to obtain a patent for the invention regardless of whether such person was the first to invent it. It should be noted, however, that a patent application may still be invalidated by evidence of prior art.

China’s Patent Law defines “prior art” as “publicly known art anywhere in the world before the date of application”, and thus establishes an absolute novelty standard, which means prior use or prior knowledge outside China also constitutes a novelty bar for patent applications in China. In addition, if an applicant files an application for an invention or utility model patent in any country that is a member of the Paris Convention, such applicant can claim the filing date as the first application for the patent application in China, so long as the application in China is made within one year of such filing. For design patents, the grace period is six months after the filing date in any country that is a member of the Paris Convention.

Patent applications by foreign legal persons without a habitual residence or a place of business in China must be made through an authorized patent agent and filed with the State Intellectual Property Office (“SIPO”) in Beijing, while SIPO offices at the provincial and municipal levels are responsible for the administrative enforcement of patents.


(c) Patent infringement and validity actions China has a split patent litigation system, with infringement determined by the courts and invalidity challenges heard initially by the Patent Re-examination Board under the SIPO with the possibility of appeal to the People’s Court.

Therefore, patent infringement and invalidation proceedings often run parallel to each other. If the infringement proceeding progresses more quickly than the parallel invalidation proceeding does, this could be rather disadvantageous to defendants in the infringement proceeding, especially if the only viable defense is the invalidity of the patent. While Chinese courts can stay the infringement proceedings pending the results of invalidation proceedings, they are not required to do so.

It should be noted that the 2008 Amendment of the Patent Law introduced for the first time the concept of “prior art” as a defense to infringement under China’s Patent Law. Under the 2008 Amendment of the Patent Law, if the alleged infringer can prove that the allegedly infringing technology or design was already known to the public prior to the filing date of the subject patent, no infringement will be found. This new defense is also reflected in the Interpretations of the PRC Supreme People’s Court Concerning Certain Issues on the Application of Law for the Trial of Cases on Disputes over Infringement on Patent Rights, effective January 1, 2010. Therefore, the alleged infringer may assert the prior art as a statutory defense to infringement, by showing that its accused technology or design belongs to prior art.

China’s Patent Law is silent on whether courts can in fact make invalidation decisions or only non-infringement findings. However, if courts may make invalidation decisions, this rule could potentially lead to (i) conflicting results among different courts over the same patent, and (ii) if an invalidation proceeding is brought to the Patent Re-examination Board for the same patent, conflicting results between courts and the Patent Re-examination Board.

4.1.2 Trademarks China’s Trademark Law was first adopted in 1982. The current Trademark Law of China came into effect in May 2014, with its Implementing Regulations taking effect concurrently.

(a) Eligibility The types of marks that can be registered include certification marks, collective marks, product trademarks, service marks and visually perceptible marks (including three-dimensional signs). As in the case of patents, China adopts the “first-to-file” approach which requires no evidence of prior use or ownership.

Under China’s Trademark Law, a registered trademark enjoys protection for a term of 10 years from the date of registration, which can be renewed for additional 10-year periods. There is no limitation on the number of times a trademark may be renewed.

Since 2001, China has introduced new provisions for protecting well-known trademarks (defined as trademarks that are widely known by, and enjoy a comparatively strong public reputation in China) as part of its efforts to counter rampant counterfeiting and piracy. These new provisions allow a company to contest an application for any alleged conflicting trademark by submitting an application for recognition as a “well-known” trademark to the State Administration for Industry and Commerce Trade Mark Office (“STMO”) with accompanying evidence that such company’s trademark is


well known in China. Furthermore, a well-known trademark can be recognized by the STMO, the Trademark Review and Adjudication Board (“TRAB”) or the courts in the process of review of trademark registration application, investigation of trademark infringement cases or trademark-related civil or administrative cases (as the case may be).

Unless an application for such recognition of a well-known trademark is filed and approved, regardless of the mark’s popularity in any other part of the world, foreign marks and deceptively similar marks can still be registered by third parties, even if such third party is not using the mark. If an applicant filed an application for trademark registration in any country that is a member of the Paris Convention, such applicant can claim the filing date as the first application for trademark registration in China, so long as the application in China is made within six months of the original filing. As such, we strongly recommend that GOGLA members contemplating distributing off-grid lighting products in China should promptly register their marks in China.

(b) How are trademarks obtained? The registration of trademarks in China is time-consuming. Roughly speaking, the STMO is responsible for making a preliminary decision to deny or accept the application for trademark registration. Upon request, such decisions are further subject to re-examination by the TRAB. If the applicants or related third parties are not satisfied with the decisions of the STMO or TRAB (as the case may be), they can always seek recourse in the courts. The whole process for trademark registration will probably take 12 to 30 months.

(c) Infringement China’s Trademark Law provides several situations that are deemed as trademark infringements, including, without limitation, (i) with no license or permission, using a trademark that is identical to a registered trademark on the same goods; (ii) with no license or permission, using a trademark that is similar to a registered trademark on the same goods or using a trademark that is identical to or similar to a registered trademark on similar goods, which may cause confusion; (iii) selling infringing goods; (iv) counterfeiting or arbitrarily forging others’ registered trademark; (v) or selling the counterfeited or arbitrarily forged trademarks.

The infringed party has the right to submit a complaint to the competent administration for industry and commerce (“AIC”) or bring a lawsuit against the infringing party before a court (see below in Section 4.2).

4.1.3 Copyrights China’s Copyright Law was adopted in 1990 and afterwards amended in 2001 and 2010, with the most up-to-date Implementing Regulations coming into force on March 1, 2013.

(a) Eligibility Protection is also granted to works of entities and individuals from countries belonging to international copyright conventions or bilateral agreements of which China is a member.

(b) How are copyrights obtained? Unlike patent and trademark protection, copyright works do not require registration for protection. Under China’s Copyright Law, works of foreign entities that are first published within China enjoy protection for a term of 50 years from the date of publication, or the life of the author plus an additional 50 years in the case of individuals.


Although registration is not required for protection, a voluntary registration scheme exists through the Copyright Protection Center of China. Registration under the scheme gives the registrant the benefit of certain key presumptions in relation to the establishment of ownership for the purposes of commencing enforcement actions. In addition, a similar, but separate registration scheme under the Measures for the Registration of Computer Software Copyright (promulgated in 2002) exists in relation to computer software, pursuant to which applicants can register copyrights by filing portions of the source code to the software in question.

(c) Infringement and enforcement Procedures relating to the hearing of copyright disputes in China are currently somewhat less clear than the equivalent procedures for trademark and patent cases. Copyright disputes may either be heard by: (a) the National Copyright Administration (“NCA”) or its local counterparts; or (b) the courts, and are either heard at the place where infringement occurred, where infringement was discovered, or where the copyright infringer is located (i.e., its place of domicile).

4.1.4 Trade Secrets China does not have a specific law on the protection of trade secrets. Relevant provisions can be found mainly in the Anti-Unfair Competition Law, the Several Provisions Regarding the Protection of Trade Secrets Infringement adopted in 1995 and amended in 1998, and the Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition promulgated in 2007. In addition, the amended PRC Criminal Law provides criminal liabilities for the infringement of trade secrets.

(a) How is trade secret protection obtained? Consistent with international practice, there is no process for registration of trade secrets in China, meaning any information that satisfies the statutory definition will automatically be a trade secret. The detailed attributes of the statutory definition are scattered in the above-mentioned laws. It is important to note that the protection of trade secrets is entirely dependent on the owner taking effective measures to keep the confidentiality of such information. If the owner ever ceases its efforts to preserve confidentiality, or such information somehow becomes available to the general public, then such information will no longer qualify as trade secrets pursuant to the statutory definition, and hence will lose its statutory protection.

(b) Other possibilities to protect trade secrets The current Anti-Unfair Competition Law only prohibits third parties with actual or constructive knowledge of trade secret theft from obtaining, using or disclosing those trade secrets. The Anti-Unfair Competition Law draft as discussed below codifies caselaw by adding that third parties are not allowed to license misappropriated trade secrets to others.

4.1.5 Counterfeits as Unfair Commercial Practices The Anti-Unfair Competition Law was promulgated in 1993. It is at present often invoked to provide limited protection for rights that cannot benefit from registration with the authorities, such as unregistered trademarks, trade dress, business names, symbols of quality, and trade secrets. It is generally appreciated that the outdated Anti-Unfair Competition Law needs an overhaul.

In February 2016, an amended Anti-Unfair Competition Law draft was published on the website of the Legislative Affairs Office of the State Council. In the IP field, the amendment proposes to replace the list of unfair competition acts contained in the


current Anti-Unfair Competition Law with a list that would prohibit creating “market confusion” by way of (i) using similar or identical well-known commercial logos without permission, (ii) misappropriating registered or well-known signs as their own business names, or (iii) using well-known trade names or abbreviations in own trademarks or domain names.

The impact of this new formulation under the amendment would be to expand the current scope of IP-related unfair competition acts by giving a very broad, non-exhaustive definition to the term “commercial logo.” This term would encompass all features that differentiate products, including without limitation, packaging, decoration, shape, abbreviations, web pages, pen names, stage names, etc. It is understood that the proposed formulation indicates that trademark unfair competition laws in China would protect the right of publicity and begin to lean more towards continental European open standards of unfair competition or even common law tort of passing off.

4.1.6 Other Related Measures Since 2012, the General Office of the State Council has begun issuing a Notice of the Key Tasks in the National Actions against the IP Infringement and the Production and Sale of Counterfeit Commodities every year. According to such Notice issued in 2016, the PRC government authorities’ work this year mainly focuses on, among other things, taking actions and measures against IP infringement and sales of counterfeit products on the Internet and in cross-border e-commerce business (especially the import and export of electronic products and appliances) and trademark squatting, as well as taking actions and measures to protect trade secrets.

4.2 Enforcement of Intellectual Property Rights

China has a dual IP enforcement system. The first and most prevalent method of protecting IPR is administrative enforcement whereby an IP owner files a complaint at the local office of the relevant administrative agencies. The second way is judicial enforcement whereby complaints are filed through the court system.

The administrative enforcement approach is typically used for trademark infringements which constitute the bulk of IP infringement cases. The judicial enforcement approach is more commonly used for copyright or patent infringements.

In selecting which is the appropriate enforcement forum for a particular case, it is generally recognized that civil court proceedings are better suited for dealing with complex issues where parties have more scope to present their cases, in particular, invention and utility model patent infringements. The remedies which a court may give, such as damages and injunctions, also offer advantages over what administrative authorities may provide. In addition, administrative authorities like the SIPO and AICs, which deal with trademarks and counterfeit goods, may be unwilling to proceed if the matter involves more than a straightforward interpretation of the law. Hence, it has becoming increasingly common in IP cases, especially those involving complex technology or legal issues, for IP owners to seek recourse in the courts. However, the prospect of lengthy trials and potential difficulties with the enforcement of court judgments merit careful consideration before resorting to civil litigation.

Negotiation of licenses or other settlements may also be considered as an alternative to enforcement. Indeed, an IP owner may expect mediation to be employed in IP disputes. Often, administrative authorities mediate between the IP owner and the infringer at the time of a raid. The courts may also act as a mediator to assist the parties in the settlement of the dispute.

4.2.1 Border Measures Pursuant to the Regulations of the PRC on the Customs Protection of Intellectual Property Rights and its Implementing Rules, the General Administration of Customs (“GAC”) and local customs authorities play an important role in protecting IPR. In

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China, the customs authorities have power to act (a) ex officio or (b) at the request of an IPR owner.

(a) Protection ex officio By virtue of this protective approach, the customs officials, during their daily inspections and supervisions, keep their eyes on the potential infringements and take enforcement measures proactively to protect lawful rights and interests of the IPR owner. Below are the key steps of the protection ex officio.

(i) Recording of IPR with the General Administration of Customs

It is advisable for an IPR owner to record its IPR with the GAC first, which enables the local customs authorities to identify infringing products. An IPR owner can record all types of IPR with the GAC by submitting an application form that describes, among other things, the basic information of the IPR owner, its IPR and the licensee(s) and infringer(s) known to the IPR owner, supported with the photocopies of the trademark registration certificate, the certificate of voluntary registration of copyright or the patent certificate (as the case may be) as well as the other required documents to the GAC. Such record filing is valid for 10 years or a shorter term if the IPR expires before the end of the 10-year period.

(ii) Notification

When customs officials suspect any goods of infringing any recorded IPR, they will issue an official notification to the IPR owner or its appointed agent (who should be recorded with the GAC). Such notification includes information such as the name of the consignor, the number and value of the goods detained and the amount of deposit required to be paid by the IPR owner.

(iii) Verification of detained goods

We suggest that the IPR owner, upon receipt of the notification, should request that the customs officials provide pictures of the detained goods so as to verify whether the goods are genuine or counterfeits. Some customs houses are friendly and cooperative and will provide pictures upon request, while the others are not, in which case the IPR owner has to send an investigator or agent to the local port to take pictures of the detained goods. In terms of distribution of products, the IPR owner will need to verify whether the consignor is an authorized or licensed distributor.

(iv) Response to customs and payment of deposit

The IPR owner is required, within three working days following the receipt of the notification, to send a written response to inform the customs officials whether the goods are counterfeits and should be confiscated. If the IPR owner requests to confiscate counterfeits, the deposit should be immediately remitted to the designated customs account. As to potential infringement of the IPR owner’s registered trademarks that are recorded with the GAC, the IPR owner, taking account of the frequency of the notification and the volume of the potential counterfeits, may consider posting a general bond to the GAC in order to save putting up a deposit each time.

If the goods are genuine they are quickly released by the customs. If the goods are counterfeit, the customs officials will continue their investigation of the goods. The consignor has the right to defend itself by providing materials to prove the legitimacy of the goods. If such


supporting materials are insufficient, the goods will be confiscated and a monetary penalty decision will be issued against the consignor.

(b) Protection on request In contrast to ex officio protection, customs officials do not carry out investigations or impose administrative penalties on any alleged infringement. Instead, all actions taken by customs officials are solely based on the relevant parties’ requests and the court’s orders. Record filing of IPR by an IPR owner is not a mandatory step to get protection on request but it makes it easier for the local customs authorities to identify infringing products. Certain key points of this approach are listed below.

(i) Submission of request and supporting evidences If an IPR owner discovers that any goods suspected of infringing its IPR are about to be imported or exported, the IPR owner can request that the competent customs authorities detain those goods by providing sufficient convincing evidence to prove the alleged infringement. Meanwhile, the IPR owner must post a bond equivalent to the value of those detained goods to the customs authorities.

(ii) Detainment and release of goods It is advisable for an IPR owner is advisable to initiate a judicial proceeding before a competent court as soon as practicable to obtain an order to seize the detained goods, and forward such order to the customs authorities. Should the customs officials fail to receive the order within 20 working days of the date on which customs officials detained the goods, the detained goods will be released.

In addition, the consignee or consignor as the alleged infringer may also request that customs officials release the detained goods by posting a bond equivalent to the value of those detained goods. The customs officials will notify the IPR owner in writing with a release notice that the detained goods will be released.

In such a case, the IPR owner shall immediately file a lawsuit against the consignee or consignor with regard to the alleged IP infringement, and forward a photocopy of the notice of hearing issued by the court to the customs authorities within 30 working days following the date of service of the release notice; otherwise, the detained goods shall be released to the consignee.

4.2.2 Other Administrative Enforcement (a) Relevant authorities

China has a myriad of governmental bodies that handle IP-related matters such as AIC, the SIPO, the NCA, the General Administration of Quality Supervision, Inspection and Quarantine (“AQSIQ”), and customs authorities. The Ministry of Public Security and its local Public Security Bureaus may also be involved in high profile administrative actions from time to time.

In 2010, the State Council established the National Leading Group for Tackling IP Infringements and Counterfeiting Products (“National Leading Group”), which is responsible for organizing the national campaign against IP infringements and counterfeit products, formulating relevant protective policies and measures, supervising the implementation of such policies and measures by related authorities in various regions and overseeing certain major cases concerning IP infringement and production and sales of counterfeit products. The National Leading Group appears to act as a


coordination organization, rather than an authority to accept and deal with claims or complaints, hence an infringed party has to turn to one or several law enforcement agencies for remedies.

Determining which agency has jurisdiction over a particular act of infringement can be confusing as there may be a number of government agencies and offices with overlapping responsibilities, depending on the specific area of IP-related law or statute. However, it should be noted that some administrative authorities tend to react faster and render protection in a more functional way than others. For example, AIC tend to provide protection more efficiently, whereas the performance and function of the NCA in the copyright realm tends to be relatively weak. There may also be geographical limits or conflicts when one administrative authority takes a case involving piracy or counterfeiting that also occurs in another region.

(b) Procedures When an administrative authority accepts a complaint and decides to take action, it will conduct an inspection of the premises of the suspected infringer. If such inspection or raid uncovers infringing activities, the administrative authority has the power to seal or seize infringing products, as well as to inspect the files and accounting books of the infringer to ascertain the scope of infringement. The authority may also order that all infringing activity cease immediately and, in serious cases, has the power to confiscate any machinery used to manufacture the infringing products. Administrative authorities also have an advantage in that they may act on less evidence of an infringement (as compared to the courts when proving liability) or sometimes even on evidence that may be inadmissible in the courts. Therefore, administrative actions are suited for pressuring an infringer to cease the infringement, as leverage for settlement negotiations, or to secure evidence that is not easily accessible to the IP owner, and which can easily be destroyed, altered or removed by the infringer. However, parties dissatisfied with the decision of an administrative authority (including the alleged infringer) may appeal such decision to the People’s Court. Therefore, depending on the particular facts of the case, there may be no real advantage in relying on administrative action unless the case is clear-cut and the infringing act is likely to stop upon an order from the administrative authority.

(c) Remedies Administrative actions may be worth considering in a situation where immediate cessation of infringing activities is essential, or where the infringers are in greater numbers but each has limited assets. Administrative authorities may seize and preserve infringing goods, compel disclosure of the source of goods being distributed, and impose a fine based on the profits made by the infringer. However, administrative authorities do not have the power to award damages or determine liability.

(d) Costs Administrative actions have the advantage of being quicker and cheaper than civil litigation. Administrative actions are relatively inexpensive, although preparatory costs will depend on the amount of investigation required.

4.2.3 Litigation (a) Court structure

The hierarchy of the Chinese courts consists of four separate levels: the Supreme People’s Court, the Higher People’s Courts, the Intermediate People’s Courts and the Basic-level People’s Courts. The term “People’s Court”


is a general expression referring to all of these courts. There is no rule of binding precedents in the PRC legal system and Chinese courts are therefore not generally bound to follow the decisions made by higher courts. This is especially true in respect of courts which are located in different provinces, although it should be noted that the series of guidelines for adjudication of patent and trademark infringement cases as well as network-related IP cases published by the Beijing Higher People’s Court have persuasive authority. Such guidelines aim at clarifying the trial standards and unifying law enforcement acts in Beijing. Notwithstanding the above, the Supreme People’s Court issues binding judicial interpretations periodically that are of great significance and value in interpreting the often vague and ambiguous statutes. Since 2011, the Supreme People’s Court has determined certain guiding cases which the lower level People’s Court shall take into account when adjudicating cases. As of June 2016, 63 guiding cases have been decided. Furthermore, the Supreme People’s Court and the Higher People’s Courts also issue guidelines to the lower courts over which they have authority.

(b) Evidence in a court trial Although parties to a trial generally have the burden of proof to substantiate their own claims, the People’s Court has the discretion to conduct investigations and secure evidence on its own initiative where it considers such evidence to be necessary for the trial. This will normally only apply if: (i) the interests of the State, the public interests or the legitimate interests of other people may otherwise be jeopardized; or (ii) the discretion relates to procedural issues that involve no substantial disputes, such as the addition of parties, suspension and termination of the trial, recusal of judges, etc.

(c) Witnesses Expert witnesses may be called to appear in litigation involving patent infringements, either as forensic examiners or as experts to explain technical issues. Where an expert appears in court as a forensic examiner, he or she is required to be a certified professional from a qualified examination institute in China.

(d) Expertise of IP Tribunals Efficiency in IP enforcement varies from region to region and is dependent on the experience and capacity of the courts and legal professionals. In general, there are more experienced judges and professionals in large, well-developed cities (such as Beijing and Shanghai) and the more affluent, densely populated coastal and southern provinces (such as Jiangsu, Zhejiang and Guangdong). China has established specialist IP Tribunals since 1993. Presently, such tribunals have been established in most Higher People’s Courts and Intermediate People’s Courts in the capitals of each province, with the eventual aim that such specialist IP Tribunals will be established in all Higher People’s Courts and Intermediate People’s Courts in the capitals of each province. In the composition of a trial tribunal, a so-called “People’s Juror” who is a technical expert may also be appointed to serve as a judge to assist the court on technical issues. Please note that for cases on appeal, the IP Tribunal will consist of only judges.

The number of trial courts (i.e., basic-level people’s courts) with jurisdiction to hear simple types of IP cases has been increasing during the past few years, particularly after the issuance of the Outline of National IP Development Strategy promulgated by State Council in 2008. Now more than 150 basic level courts located in about 20 provinces have jurisdiction to hear these simple IP cases with amounts claimed below RMB 5,000,000 equivalent to approximately USD 750,000. It is noteworthy that three specialized IP courts were established respectively, pursuant to the decision of the standing committee of the PRC National People’s Congress in November and December


2014, which have jurisdiction over the first trial of IP-related civil and administrative cases that require a high level of expertise as well as the cases on appeal against the first trial’s judgments or decisions made by the aforesaid Basic-level People’s Courts.

(e) Bias and reputational issues Certain courts have a better reputation than others in resolving IP disputes. In some instances, courts may unfairly favor local parties. To the extent that a provincial court has such a reputation, an IP owner should consider whether it is possible to rely on, for example, the sale of an infringing product in well-developed cities such as Beijing or Shanghai so that the claim may be filed in the courts with more experience and better reputations. Local officials may also fail to take action to enforce a judgment because of an infringer’s close connection to the region, or because such infringer’s production facilities provide income and employment for the region. Such problems tend to be more acute in remote areas, although it is not uncommon for officials even in major cities to refuse to take action on the ground that there is insufficient evidence.

(f) Costs Court actions usually involve higher costs than administrative actions. A plaintiff is required to pay a fee when it files a claim, and this is usually computed as a percentage of the value of the claim. Additional fees may also be charged by the court subsequently if such costs are incurred by the court, for example, if the court appoints its own expert or translators.

(g) Interlocutory relief In the patent infringement context, the plaintiff must generally provide the court with relevant evidence to prove: (i) the existence of a valid patent; (ii) that the plaintiff has standing to request the injunction; and (iii) the existence of an infringement through a technical analysis comparing the patent and the infringing product.

Pre-trial preliminary injunctive relief was made available in patent and trademark cases. To avail itself of a pre-trial preliminary injunction, a plaintiff must first prove to the courts that: (i) the infringement is occurring or will soon occur; and (ii) irreparable harm will be suffered if the infringing activity is not stopped immediately.

Based on the supporting evidence, and the posting of a bond, the courts have 48 hours to make a determination as to whether to grant an injunction, which determination is not appealable but is subject to review upon application by the opposing party. In such circumstances, the same court that made the injunction determination will perform a review based on the following criteria: (i) the likelihood of success of the parties on the merits; (ii) whether it may cause irreparable harm to the plaintiff if the injunction is not granted; (iii) whether the plaintiff has properly and sufficiently posted the bond with the court; and (iv) whether the injunction is in the public interest. If an injunction is granted, the plaintiff is normally required to file a lawsuit within 15 days. Unless otherwise designated by the court (or discharged as a result of a review), a pre-trial preliminary injunction will stand until the final judgment.

Pre-trial preliminary injunctions are also contemplated by the Copyright Law, although the procedures are sparsely documented and consequentially somewhat uncertain. It should also be noted that the relevant PRC statutes do not currently contemplate the availability of pre-trial injunctive relief in relation to actions arising under the Anti-Unfair Competition Law (such as trade secret claims).


(h) Damages Damages are only available through the courts, based on the loss suffered by the IP owner, or the profits made by the infringer. If damages cannot be quantified by such methods, statutory damages are also available in some cases.

In patent infringement cases, four methods of calculating damages are available in the following order: (i) the actual loss suffered by the patentee because of the infringement; (ii) the profits obtained by the defendant from its infringing activities; (iii) reasonable multiples (generally one to three times) of the royalty of the patent; and (iv) statutory damages of up to RMB 1,000,000 (approximately USD 150,000) if the amount of damages cannot be determined by using any of the three above-mentioned methods. Due to the difficulty of proving damages utilizing the first three methods above, judges in patent cases quite often – and in a manner that is less desirable to the plaintiff – use the fourth method to determine a figure within the specified range (which can result in significantly less damages than might be awarded in similar cases in other jurisdictions). It is worth mentioning that in the amended Patent Law draft, such maximum amount has been raised from RMB 1,000,000 to RMB 5,000,000 (approximately USD 750,000).

Similarly, for trademark infringements, damages are also calculated in the following order: (i) the actual loss suffered by the trademark proprietor due to the infringement; (ii) the profits obtained by the infringer from its infringing activities; and (iii) reasonable multiples of the royalties of the trademark. For seriously malicious infringement, the amount of damages may be one to three times of the aforesaid amount as reasonably determined pursuant to the aforesaid calculation methods. The amount of compensation shall include reasonable expenses of the rights owner to prevent the infringement. If the amount cannot be determined by the above-mentioned methods, the courts may award statutory damages of up to RMB 3,000,000 (approximately USD 450,000).

For copyright infringements, damages are measured by the lost sales suffered by the copyright owner, or if the lost sales are not easily quantified, the infringer’s unlawful profit may be used as the basis for calculation. If the amount cannot be determined by the above-mentioned methods, the courts may award statutory damages of up to RMB 500,000 (approximately USD 75,000).

For trade secret infringements, the infringing party shall be responsible for compensating the damages incurred to the rightful holder of the trade secrets. According to the Anti-Unfair Competition Law, in cases where the damages are difficult to calculate, the amount of profits obtained by the infringing party can be used as basis for the compensation claim. In addition, expenses and fees arising from investigating and obtaining evidence of the infringement may be included in the claim for damages.

The success of enforcement actions depends on the availability of sufficient assets of the defendant and the possibility that the defendant may have taken steps to hide its assets. Investigations into the financial status of the infringer should form part of the initial due diligence in order to avoid a situation of obtaining empty judgments. Much will also depend on the type of company involved and the actions of those in control of the company when it comes to the enforcement of judgments. If the primary concern is to stop infringement and to deter others, further enforcement to recover damages may not be worthwhile.


4.2.4 Criminal Charges China’s Criminal Law was considerably strengthened in relation to IP infringement in order to comply with the TRIPS Agreement. There are seven key offenses which can result in fines and jail sentences for infringers.

Type of IP Infringement Acts Penalties

Trademark

with no license/permission, using a trademark that is identical to a registered trademark on the same goods

(a) criminal detention or no more than a three-year jail sentence, and/or fines; or (b) a three- to seven-year jail sentence, and fines, depending on gravity of cases, or sales amount (as the case may be)

with actual knowledge, selling infringing goods

counterfeiting or arbitrarily forging others’ registered trademarks, or selling the counterfeited or arbitrarily forged trademarks

Patent counterfeiting other patentees’ patents criminal detention or no more than a three-year jail sentence, and/or fines

Copyright

with no license/permission, reproducing and/or distributing written works, musical works, movies, television programs, video-recording works, software or other works (a) criminal detention or no more

than a three-year jail sentence, and/or fines; or (b) a three- to seven-year jail sentence, and fines, depending on gravity of cases, or sales amount (as the case may be)

publishing a book for which another party has the exclusive publication right

with no license/permission, reproducing and/or distributing an audio or video recording produced by another party

producing or selling a work of fine art with a forged signature of the painter

for the purpose of making profits, selling aforesaid infringing copies with actual knowledge

criminal detention or no more than a three-year jail sentence, and/or fines if the unlawful profit amount is enormous

Trade Secret

carrying out any of three prohibited acts under Article 10 of the Anti-Unfair Competition Law

(a) criminal detention or no more than a three-year jail sentence, and/or fines; or (b) a three- to seven-year jail sentence, and fines, depending on gravity of consequence, or losses suffered by the owner (as the case may be)


5. INDIA 5.1 Protection of Intellectual Property Rights

Although the legal framework has improved in recent years, IP enforcement is still weak in India. If a market entry is envisioned, IP protection in other countries of the Indian sub-continent such as Afghanistan, Bhutan, Burma, Nepal, Bangladesh, Sri Lanka and Pakistan should be considered, since a product that acquires goodwill and reputation in India is likely to be copied in these countries. As a consequence, counterfeit goods may be imported from these countries. Furthermore, Indian top-level domains (.in) should be registered before market entry as there have been many instances of third parties registering domains with the intention of extracting money.

5.1.1 Patents The patent system in India is governed by the Patents Act (1970) and the Patent Rules (2003). As in many jurisdictions, novelty, an inventive step and capability of industrial application are required for an invention to be patented under Indian law. Computer programs are only patentable if they are embedded in hardware. Patent applications can be lodged with the Office of the Controller General of Patents, Designs and Trademarks through e-filing or in a physical form. The applicant must be an Indian national or a national of a Paris Convention country. In the latter case, representation by an Indian patent lawyer becomes mandatory.

India follows a first-to-file regime. It is possible to claim the priority of an earlier filed application in another Paris Convention country.

The basic fee for an application varies between INR 1,600 (approx. EUR 21) and INR 8,800 (approx. EUR 118), depending on the applicant (natural person, small entity, large entity) and the form of filing (physical or e-filing). The registration process usually takes between four and five years.

The term of a patent is 20 years from the date of the application. Renewal fees have to be paid every year.

Under current Indian patent law, compulsory licenses can be granted by the Controller General if reasonable requirements of the public have not been satisfied, the patented invention is not available to the public at a reasonably affordable price, or the patented invention is not used in the territory of India.

5.1.2 Designs The protection of a registered design is of a territorial nature. Thus, in order to obtain protection in India, an application must be filed with the Design Wing of the Patent Office in Kolkata, Delhi, Mumbai or Chennai. Indian design law is governed by the Design Act, 2000 and the Design Rules, 2001. The application has to include a representation of the design and the class in which the design is to be filed according to the Locarno Classification of Industrial Design.

India is not a signing member of the Hague Agreement Concerning the International Registration of Industrial Designs. It is therefore not possible to file an application in another WIPO member state with India as a designated country.

As India follows a first-to-file regime, it is recommended to register a design as soon as possible. However, if a design is disclosed to the public before an application is filed, the design is then no longer available for registration. Since this preclusion already comes into effect if the design is shown to an individual member of the public who is under no obligation to keep it secret, it is imperative to conclude NDAs with parties that will come into contact with the design.

The design filing fee is INR 1,000 (approx. EUR 13). Foreign nationals or entities have to file their applications through a representative based in India. The registration


process usually takes six to 12 months. If a design is successfully registered, it is compulsory to mark the applicable products with the abbreviations REGD or RD along with the registration number as this enables the rights holder to establish that an infringer knew of the existence of the registered design in a potential lawsuit. A design registration is valid for a term of 10 years. This initial period can be extended by a further period of five years.

5.1.3 Trademarks The Trade Marks Act (1999) and the Trade Marks Rules (2002) constitute the current legislation governing trademarks in India. Any word, signature, name, logo, label, numerals or combination of colors used by an enterprise on goods or services can be registered. Besides product and service trademarks, it is also possible to obtain certification trademarks which concern the origin, material, method of manufacture or quality of a good; and collective trademarks which allow members of groups, associations or other organizations to use the name of the group in their commercial activities.

Applications must be filed with the Controller General’s Office electronically or at one of the office’s branches in Mumbai, Delhi, Chennai, Ahmedabad or Kolkata. Applications may be filed in Hindi or English. Foreign priority is recognized if the application in India is filed within six months because India is a member of the Paris Convention. Foreign nationals or entities have to file their applications through a representative based in India.

The registration process usually takes up to three years and the filing fees are INR 4,000 (approx. EUR 53) per class. Trademark protection is granted perpetually provided that renewal fees are paid every 10 years.

5.1.4 Copyrights The primary source of Indian copyright law is the Copyright Act (1957) accompanied by the Copyright Rules (2013).

In India, the copyright of a work automatically vests with the creator(s) from the moment the work is created. However, copyrights can be registered in order to establish prima facie evidence of ownership in a court of law. It is possible to register published as well as unpublished works. Applications can be filed directly with the Copyright Office or electronically. The registration process typically takes between eight to 12 months and the registration fee amounts to up to INR 5,000 (approx. EUR 67) per work.

If the work is produced during the course of the author’s employment, the employer is the first owner of the copyright therein. Foreign works are treated as Indian works if protection is granted in one of the countries listed in the International Copyright Order (1999).19

Computer programs are treated as literary works and are therefore protected under copyright law. Copyrights expire 60 years after the death of the author of the work.

5.1.5 Trade Secrets Presently no specific legislation regarding trade secrets exists in India. However, courts relied on equitable and common law remedies to provide protection for trade secrets and confidential information. A trade secret can be formulae, technical know-how or a particular mode or method of business adopted by an employer which is unknown to others. Although actions against employees or licensees who disclose confidential information have been brought, parties mainly rely on contracts to protect trade secrets.

19 See http://copyright.gov.in/documents/international%20copyright%20order.htm.

http://copyright.gov.in/documents/international%20copyright%20order.htm


5.1.6 Counterfeits as Unfair Commercial Practices As a common law country, India provides further protection under the law of passing off, which is based on the principle that “a man may not sell his own goods under the pretence that they are the goods of another man” (case N.R. Dongre v. Whirlpool Corporation). Hence, even unregistered marks can obtain protection.

In cases brought against counterfeit goods, it is required that the goods of the plaintiff have acquired distinctiveness and must be associated in the minds of the general public as goods of the plaintiff. In some cases, Indian courts acknowledged the transborder reputation of foreign marks. The plaintiff must prove that a similarity in the trade names exists and that the defendant deceptively passed off its goods as those of the plaintiff.


Customs authorities have recently promulgated the Intellectual Property Rights (Imported Goods) Enforcement Rules (2007), which allow the rights holder to record the registered patents with the customs authorities. The rights holder may give a written notice to the Commissioner of Customs requesting the suspension of the clearance of goods suspected to have infringed patents. If the notice is accepted, assistance is rendered by the customs authorities for one year. However, customs authorities can initiate an action on their own behalf, if they have prima facie evidence that the imported goods infringed patents. Goods can be seized and even destroyed if it has been determined that the goods detained have infringed the patents of the rights holder.

5.2.2 Litigation The rights holder can initiate a civil action against the infringer either in the District Court or in the High Court depending on the valuation of the suit. The location of the court is decided by where the rights holder resides or carries on business. For the period of the trial, a temporary injunction (Ex parte Interim Injunction) can be granted. If the right holder can prove that infringing acts interfered with the patent holder’s rights of exclusive use or caused economic loss, a permanent injunction or damages may be granted. Generally, the amount of damages granted by Indian courts has not been substantial.

Furthermore, the court can order that the infringing goods must be seized, forfeited or destroyed.

A Copyright Board exists to adjudicate certain copyright-related cases, such as appeals against orders of the Registrar of Copyrights or the grant of compulsory licenses.

The rights holder has a period of three years from the cause of action to file the suit under the Indian Limitation Act.

5.2.3 Criminal Charges Legislation on IP protection provides for criminal prosecution. Infringements may be punished by up to three years’ imprisonment. Nonetheless, the rights holder forfeits his/her active role and has to rely on the state’s authorities. If the infringer’s identity is known, a civil lawsuit is favorable. If the rights holder knows about counterfeits or other infringing goods, but is unaware of the infringer’s identity, it is advisable to procure a general search and seizure warrant from the local magistrate. The local magistrate will then try to identify the infringer and seize the counterfeits.


6. KENYA 6.1 Protection of Intellectual Property Rights

Kenya has the largest goods and services market in East Africa and serves as a distribution point for goods into surrounding countries like Ethiopia, Rwanda and Uganda. Thus, counterfeit products from Kenya have the potential to damage markets throughout East Africa. The Mombasa port serves as an entry point and strategic hub for counterfeit products. Despite several major seizures by the Anti-Counterfeit Agency, Kenya still faces an increase of trade in counterfeit goods. A legislative response to this issue was the Anti-Counterfeit Act (2008), establishing the Anti-Counterfeit Agency and implementing special provisions protecting IP.

6.1.1 Patents Independent legislation on patents is relatively young in Kenya. Prior to 1989, patents registered in Kenya were dependent upon patents granted by the United Kingdom. Presently, patent law is governed by the Industrial Property Act (2001). In Kenya, inventions are patentable if they are novel, constitute an inventive step, have industrial utility and are reproducible. Applications must be filed with the Managing Director of the Kenya Industrial Property Institute and an application fee of USD 150 must be paid. Patents are granted for a maximum term of 20 years subject to the payment of an annual fee. Application fees are substantially higher for applicants who neither reside nor have a principal place of business in Kenya.

If the invention leading to a patent was made within the scope of an employee’s employment, the inventor’s employer may also be the owner of the patent if this was stipulated clearly in the employment contract.

6.1.2 Designs Industrial designs are defined by the Industrial Property Act (2001) as any composition of lines or colors or any three-dimensional form, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft. Thus, only the outward appearance is protected, not the method of production. Applications can be filed with the Kenya Industrial Property Institute. The application fee amounts to USD 150. Protection may be granted for a period of five years and can be renewed for two further terms of five years upon payment of the renewal fee of USD 500. Since Kenya is a member of the Paris Convention, it is possible to claim priority from another signing member if the application is filed within six months.

6.1.3 Trademarks A trademark can be a word, symbol, design or a combination of these things, which is capable of distinguishing enterprises, goods and services. Further, certification marks may be issued, which identify goods and services which meet a defined standard. Trademarks to be registered have to be categorized in classes of goods and services according to the Nice Classification. The Kenya Industrial Property Institute is responsible for the registration process and demands an application fee of USD 200 (USD 150 for each additional class).

A trademark is valid for a term of 10 years but can be renewed subsequently for further terms of 10 years as often as desired upon payment of the renewal fee of USD 200. If the trademark is not used in Kenya for a continuous period of five years, it may be removed.

Despite being relatively expensive for foreigners, trademark protection remains rather ineffective as over 80% of popular trademarks in Kenya are being counterfeited without any effective means of enforcement.


6.1.4 Copyrights In Kenya, literary, musical, artistic or audiovisual works, sound recordings and broadcasts are eligible for copyright protection. A copyright subsists automatically upon the creation of the work and for the entire life of the author plus 50 years. In general, the person who created the work is the author under the Copyright Act (2001). In case the work is produced by an employee or a commissioned agent, the employer or the commissioner is the author of the work, unless there is an agreement to the contrary. Registration of a copyright is not required but, it is highly recommended as it serves as prima facie evidence of ownership in court. The registration fee is USD 10.

The Kenya Copyright Board is mandated to administer and enforce copyrights in Kenya. This includes the registration of copyrighted works and the licensing of collective management organizations. As a signing member of the Berne Convention for the Protection of Literary and Artistic Works, Kenya is committed to grant authors from other member states the same protection as domestic authors.

6.1.5 Trade Secrets Kenya does not have a statute governing trade secrets; therefore, common law is the reference point in determining the existence and extent of rights available thereunder. Due to the fact that Kenya is a party to the TRIPS Agreement, however, its material requirements for protection of trade secrets are broadly consistent with other jurisdictions. As Kenya’s High Court established, in order to seek injunction against disclosure of confidential information, the plaintiff has the obligation to prove that the information is kept confidential, is subject to an obligation of confidentiality and was misused by the recipient.

6.1.6 Counterfeits as Unfair Commercial Practices Kenya’s Competition Law (2010) prohibits certain false or misleading misrepresentations (e.g., a false statement concerning the place of origin of goods) in order to protect consumers. Further, the common law concept of passing off was considered by the High Court of Kenya at Nairobi in 2010.

6.2 Enforcement of Intellectual Property Rights Despite its great efforts, Kenya still faces huge obstacles in the enforcement of IPR. On the one hand, for a long time, the government’s attitude towards IP infringements was that it is a private matter, not to be compared with serious crimes such as murder or theft. The public opinion is characterized by a similar understanding, treating violations of trademarks or copyrights with general ignorance. Further, insufficient human, technical and financial resources limit Kenya’s agencies’ capacity to enforce IPR.

6.2.1 Border Measures and Other Administrative Actions Despite the enactment of the Anti-Counterfeit Act, 2008, which allows the Anti-Counterfeit Agency to initiate suo moto proceedings against alleged infringers, border controls in Kenya are generally still weak. However, the right holder may lodge a complaint with the Executive Director of the Anti-Counterfeit Agency who then decides on the appropriate steps to be taken. Inspectors of the Agency possess full police powers in the exercise of their duties, including the right to enter and inspect premises, take the steps reasonably necessary to terminate the production of counterfeit goods, seize the goods in question and even arrest a person suspected of having committed an infringement under the Anti-Counterfeit Act (2008).


6.2.2 Litigation Despite the establishment of a special commercial court (the Milimani Commercial Court in Nairobi), Kenya lacks expeditious processing of cases and experiences a backlog of pending cases. The remedies awarded in civil cases are mainly ineffective and inadequate compensation for the infringement. In order to obtain an interlocutory injunction, the applicant has to show a prima facie likelihood of success. Furthermore, the courts may issue search and seizure orders or even have the counterfeit goods destroyed or rendered inaccessible.

6.2.3 Criminal Charges Provisions targeting forgery, coining and counterfeiting are embodied in Kenya’s Penal Code. Counterfeiting a trademark constitutes a misdemeanor punishable by up to two years’ imprisonment or an unspecified fine. Currently, provisions from the Penal Code do not deal sufficiently with the infringement of patents, copyrights or design rights. However, under the Anti-Counterfeit Act (2008), the possession, production, disposal or import of counterfeit goods are punishable by not less than three years’ imprisonment or fines not less than three times the value of the counterfeited good. A complaint can be lodged with the Executive Director of the Anti-Counterfeit Agency.


7. ETHIOPIA 7.1 Protection of Intellectual Property Rights


Patent law in Ethiopia is set forth primarily under the Proclamation Concerning Inventions, Minor Inventions and Industrial Designs No. 123/1995.

(i) Generally An invention is patentable if it is (i) new, (ii) involves an inventive step and (iii) is industrially applicable.

An invention is new if it is not anticipated by prior art. Prior art consists of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to filing or, where appropriate, the priority date of the application claiming the invention. Disclosure of an invention to the public is not considered prior art if such disclosure (i) occurred within 12 months preceding the filing date or priority date of the application and (ii) occurred as a result of acts committed by the applicant or his/her predecessor or an abuse committed by a third party.

An invention involves an inventive step if, with regard to the prior art, it would not have been obvious to a person having ordinary skill in the art.

Finally, an invention is industrially applicable if it can be made or used in handicrafts, agriculture, fishery, social services, and any other industry sectors.

The term of a patent is 15 years, beginning on the filing date of the patent application. This term may be extended for a further five years, provided that proof is furnished that the invention is being “properly worked” in Ethiopia, which generally requires that the patented product be manufactured in Ethiopia or the patented process be applied in Ethiopia.

Ethiopian law sets forth a specific list of non-patentable inventions, which includes: (i) inventions contrary to public order on morality; (ii) plant or animal varieties or essentially biological processes for the production of plants or animals; (ii) schemes, rules or methods for playing games or performing commercial or industrial activities and computer programs; (iv) discoveries, scientific theories and mathematical methods; (v) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body; and (vi) works not protected by copyright.

(ii) Minor inventions A minor invention that possesses novelty and industrial applicability will give rise to a right to protection in favor of the inventor. The right will be evidenced by a utility model certificate. The grant of this certificate confers the exclusive right to exploit the minor invention


and prevent third parties from exploiting the minor invention without the authorization of the holder of the certificate. A utility model certificate is granted for a period of five years, which may be renewed for a further five years, provided that proof is furnished that the minor invention is being worked in Ethiopia.

(b) How are patents obtained? A person who has the right to patent an invention (generally, the inventor) may apply for a patent. The applicant must complete the required form and submit the applicable fees to the relevant national or regional patent office. The Ethiopian Science and Technology Commission generally oversees the administration of patents. The fee for an application for a patent is USD 17.50 for individuals or USD 70 for firms.20

When two or more persons who have independently made the same invention separately file applications for patents on the same subject matter, the right to the patent belongs to the person who filed the first application. Generally, subject to reciprocity, if an applicant files in Ethiopia within 12 months from the date on which he/she first filed in a foreign country, the date on which the application was first filed in the foreign country will be regarded as the date of filing in Ethiopia.

A foreign applicant must also be prepared to submit, at the request of the Ethiopian Science and Technology Commission, (i) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application; (ii) a copy of the patent granted on the basis of a foreign patent application; (iii) a copy of any final decision rejecting the foreign application or refusing the grant of the patent requested in the foreign application; and (iv) a copy of any final decision invalidating the patent granted on the basis of the foreign application.


Industrial designs are also protected under the Patent law in Ethiopia set forth primarily under the Proclamation Concerning Inventions, Minor Inventions and Industrial Designs No. 123/1995.

An industrial design is any composition of lines or colors or any three dimensional form whether or not associated with lines or colors, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft. An industrial design is a process of design applied to products that are to be manufactured through techniques of mass production. Its key characteristic is that design is separated from manufacture: the creative act of determining and defining a product’s form takes place in advance of the physical act of making a product, which consists purely of repeated, often automated, replication.

An industrial design is considered new when the sum total of its essential features is different from that of another design known either in Ethiopia or abroad and has not been disclosed more than one year before the date of filing of the application for registration or, where appropriate, before the priority date.

20 Set forth in more detail by the Ethiopian Intellectual Property Office (“EIPO”) at http://www.eipo.gov.et/fees-and-payments.

http://www.eipo.gov.et/fees-and-payments

http://www.eipo.gov.et/fees-and-payments


An industrial design is deemed to possess practical applicability if it is capable of serving as a model for repeated manufacture of products.

The duration of protection granted to an industrial design is five years from the filing date of the application for registration. This period may be extended for two extensions of five years each if proof is furnished that the industrial design is being used in Ethiopia.

(b) How are design rights obtained? Application for registration of an industrial design must be filed with the Ethiopian Science and Technology Commission. The application must contain a request, a specimen of the article embodying the industrial design or a pictorial presentation thereof, and an indication of the kind of products for which the industrial design is to be used.


Trademark law in Ethiopia is set forth primarily under the Trademark Registration and Protection Proclamation No. 501/2006. Subject to the principles of reciprocity or in accordance with any treaty that Ethiopia is a party to, foreigners will have the same rights and obligations as Ethiopians under this Proclamation.

Any trademark that is capable of clearly distinguishing goods or services of a person from those of other persons is eligible for registration. This includes words, designs, letters, numerals, colors or shape of goods or their packaging or a combination thereof.

A trademark is not eligible for registration under the following circumstances:

• When it is identical to a prior trademark of another person concerning the same goods or services or closely related goods or services, or it so nearly resembles such a prior trademark as to be likely to deceive or cause confusion;

• When it is identical or confusingly similar to or contains a translation of a trademark that is well-known or established by use in Ethiopia for identical or similar goods or services of another person;

• When it is identical or confusingly similar to or constitutes a translation of a trademark that is registered in Ethiopia concerning different goods or services, but (i) the use of such trademark would indicate a connection between the goods and services of the applicant and the goods and services of the registered trademark owner and (ii) the interest of the registered trademark owner is likely to be damaged by such use; and

• When it contains anything that may be understood as the characteristic title of another person’s protected literary or artistic rights or another person’s right to a photograph or design without his/her written consent.

(b) How are trademarks obtained? Trademarks are obtained through registration with the Ethiopian Intellectual Property Office (“EIPO”). The applicant must submit (i) three copies of a reproduction of the trademark; (ii) a list of goods and services with the international classification of goods and services for which the registration of


the mark is requested and the class numbers of the classification; (iii) a document certifying payment of the applicable fee; and (iv) any additional documentation as necessary. The fee applicable to a trademark registration is Birr 1750.21

Where an applicant files an application in Ethiopia within six months from the date on which he/she first filed in a foreign country, the date on which the application was first filed in the foreign country will be regarded as the date of filing if the applicant claims the right of priority and furnishes within the prescribed time limit a copy of the earlier application certified as correct by the office with which it was filed.


Copyright law in Ethiopia is set forth primarily in the Copyright and Neighboring Rights Protection Proclamation No. 410/2004.

To be eligible for copyright protection, the work must be original and fixed in a tangible form of expression. Under Ethiopian law, copyrightable works includes:

• Books, booklets, articles in reviews and newspapers, and computer programs;

• Speeches, lectures, addresses, sermons and other oral works;

• Dramatic works, musical works, pantomimes, choreographic works and other works created for stage production;

• Computer programs;

• Musical compositions;

• Audiovisual works;

• Works of architecture;

• Works of drawing, painting, sculpture, engraving, lithography, tapestry and other works of fine art;

• Photographic works; and

• Illustrations, maps, plans, sketches and three-dimensional works related to geography, topography, architecture and science.

The copyright holder has the exclusive right to (i) reproduction of the work; (ii) translation of the work; (iii) adaptation, arrangement, or other transformation of the work; (iv) distribution of the original or a copy of the work to the public by sale or rental; (v) importation of original or copies of the work; (vi) public display of the original or a copy of the work; (vii) performance of the work; (viii) broadcasting of the work; and (ix) other communication of the work to the public. The author of a work has certain moral rights, irrespective of whether or not he or she is the owner of the copyright, including (i) the right to claim authorship of his or her work, except where the work is included, incidentally or accidentally, in reporting current events by means of broadcasting; (ii) the right to remain anonymous or to use a pseudonym; (iii) the right to object to any distortion, mutilation, or other alteration of his or her work where such an act is or would be prejudicial to his or her honor or reputation; and (iv) the right to publish his or her work.

21 Additional details on application fees are available at: http://www.eipo.gov.et/fees-and-payments1.

http://www.eipo.gov.et/fees-and-payments1


The duration of a copyright is the author’s lifetime plus 50 years, with the following exceptions: (i) economic rights related to photographic works last for only 25 years and (ii) economic rights related to broadcasting works last for 20 years following the year in which the broadcast took place.

(b) How are copyrights obtained? The author of a work is the original owner of all economic rights afforded by copyright protection. To register a copyright, the applicant must file an application form, swear an affidavit, provide a sample of the work, pay the applicable service fee, and provide related documents (such as identification cards and evidence of assignment). The fee for filing an application for registration is Birr 250 for individuals and Birr 315 for firms.22

7.1.5 Trade Secrets Ethiopia does not appear to have laws specifically addressing trade secrets. A holder of a trade secret may take two courses of action: (i) bring an unfair competition claim under Article 133 of the Commercial Code or (ii) institute a proceeding based on the legal or contractual prohibitions specified in Article 30, 40, 47, 55, 144, 158, 159, 204, or 205 of the Commercial Code.


Under the Customs Proclamation No. 622/2009, the Ethiopian Revenues and Customs Authority will, upon request of an IPR holder, suspend customs formalities and withhold goods in case of imported, exported, or transited goods suspected to be in violation of IPR. The authority may also, upon its own initiative, suspend customs clearance and release of imported or exported goods if it has sufficient evidence to believe that an IPR has been infringed. Where the authority decides to suspend customs clearance and release of imported or exported goods, it will notify the importer or exporter, the holder of the IPR, and the Ethiopian Intellectual Property Right Office.

7.2.2 Litigation (a) Patents and designs

Patent holders have the exclusive right to make, use or otherwise exploit their patented inventions. A third party infringes a patent where he or she exploits the patented invention without the patent holder’s consent. The patent holder has the right to institute a proceeding in the Central High Court against such third party. Under the Ethiopian patent system, patent infringement is considered a fault-based liability, and tort law concerning damages applies. Injunction is available to the patentee as a remedy to infringement only in the exceptional circumstances where there are good reasons to believe that an act that is prejudicial to the plaintiff is likely to be carried out and the injury with which he/she is threatened is such that it cannot be made good by damages.

(b) Trademarks The court that has jurisdiction for trademark infringement cases is the Federal High Court, which will order prompt and effective provisional measures to (i) prevent an infringement of trademark rights from occurring, in particular to

22 Other fees are set forth in detail at http://www.eipo.gov.et/fees-and-payments2.

http://www.eipo.gov.et/fees-and-payments2


prevent the entry into the channels of commerce of import and export goods after completing customs formalities, or (ii) present relevant evidence in regard to an alleged infringement of a right.

After hearing a trademark infringement case, the court is entitled to (i) pass an injunction to stop the defendant from continuing the act of infringement and (ii) order the defendant to compensate the damage inflicted on the claimant due to the infringement.

(c) Copyrights In copyright infringement cases, the Federal High Court may grant injunctions, order confiscation of the infringing work, impound the packaging and implements used to make the infringing work, and award adequate compensation for the material and moral damages suffered, including payment of the copyright holder’s expenses. The amount of compensation will be not less than Birr 100,000. If the defendant was unaware or has no reasonable ground to be aware of the existence of the copyright, the court may limit the amount of compensation to the profit derived from the act.

(d) Trade secrets A holder of a trade secret may bring an unfair competition claim under Article 133 of the Commercial Code. In cases of unfair competition, the court may order damages be paid or make any orders as necessary to put an end to the unfair competition.

A holder of a trade secret may also institute a proceeding based on the legal or contractual prohibitions specified in Article 30, 40, 47, 55, 144, 158, 159, 204 or 205 of the Commercial Code. These articles address situations involving conflicts of interest, such as where an employee violates a prohibition against carrying on a trade that is similar to the trade carried on by his/her employer; an employee acts on behalf of other traders; a commercial agent carries on private trade similar to one carried on by his or her principal; and a commercial agent carries on the same trade as a principal after the agency agreement has ended.

7.2.3 Criminal Charges (a) Generally

The Criminal Code of Ethiopia specifically addresses IPR infringement, including the otherwise common law tort of passing off, in the following articles:

Article 720. Infringement of Marks, Declarations of Origin, Designs or Models.

(1) Whoever intentionally:

a) infringes, imitates or passes off, in such manner as to deceive the public, another’s mark or distinctive signs or declarations of origin on any produce or goods or their packing, whether commercial, industrial or agricultural; or

b) sells or offers for sale, imports or exports, distributes or places on the market produce or goods under a mark which he knows to be infringed, imitated, passed off or improperly affixed; or

c) refuses to declare the origin of produce or goods in his possession under such marks, shall be punishable with rigorous imprisonment not exceeding ten years.


(2) Whoever unlawfully so acts with respect to intellectual property rights, particularly industrial designs or models, or patented inventions or processes, duly registered and protected by existing laws or agreements, national or international, shall be liable to the same punishments.

(3) Where the act mentioned under sub-article (1) or (2) is committed negligently, the punishment shall be simple imprisonment not exceeding five years.

Article 721. Infringement of Rights Relating to Literary, Artistic or Creative Works.

(1) Whoever, apart from cases punishable more severely by another provision of the this Code, intentionally violates laws, regulations or rules issued in relation to rights on literary, artistic or creative works, is punishable with rigorous imprisonment not exceeding ten years.

(2) Where the act is committed negligently, the punishment shall be simple imprisonment not exceeding five years.

(b) Copyrights For copyright infringement cases specifically, whoever intentionally violates a copyright will be punished with rigorous imprisonment of five to 10 years, and whoever by gross negligence violates a copyright will be punished with rigorous imprisonment of one to five years. Where appropriate, the penalty will include seizure, forfeiture and destruction of the infringing goods and of any materials and implements used in the commission of the offense.


8. TANZANIA 8.1 Protection of Intellectual Property Rights


Patent protection in Tanzania extends from the Patent (Registration) Act of 1995 (“Patent Act”) and the Patents Regulation GN. 190 of 1994. Under Section 7 of the Patent Act, an invention is eligible for patent protection if it is a product or process that possesses or contains new functional or technical aspects which are a solution to a specific problem in the field of technology. As in other jurisdictions, patent regulation in Tanzania centers around novelty and obviousness. Section 8 of the Patent Act requires that an invention must involve an inventive step and must be industrially applicable in order to be eligible for registration.

The following items cannot be patented, even if otherwise eligible for registration: (i) discoveries and mathematical theories; (ii) plant or animal varieties or biological processes other than microbiological and the product of such processes; (iii) schemes, rules or methods of doing business or performing purely mental acts; (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods but not products for use in any of those methods.

Under Section 38 of the Patent Act, Tanzanian patent protection lasts for 10 years from the date of the grant. An inventor may request an extension of the term of the patent for another five years within one year of the expiration of the patent. It should be noted that under the ARIPO protocol, the duration of patents in each member country will be 20 years, in accordance with the TRIPS Agreement. However, Tanzania has not yet amended the Patent Act to extend the patent term and the law of the member state prevails until harmonization occurs.

(b) How are patents obtained? Under Section 18(1) of the Patent Act, an inventor seeking a patent must file for registration with the Registrar of Patents through the Business Registrations and Licensing Agency government authority. This application should be made in the form specified in the Patents Regulation at Form No. 2 and should include the title of the invention, a description of the invention, and the technical field under which the invention falls. This description must be in clear language and be understandable to a person with average understanding in the relevant technical field, in the interest of ensuring that the application sufficiently enables others to work the invention.

An inventor may also seek patent protection in Tanzania by filing an application with ARIPO. Under the Harare Protocol on Patents and Industrial Designs, ARIPO may grant patents and industrial designs on behalf of contracting states such as Tanzania. Patents granted by ARIPO have the same effectiveness in Tanzania as if they were granted under Tanzanian patent legislation. Applications may be filed directly with the ARIPO office or with the IP registrar office of a contracting state, subject to payment of the prescribed fees. An ARIPO application must include: (i) inventor information; (ii) power of attorney; (iii) specifications of the invention in English; (iv) relevant ARIPO contracting states; and (v) any applicable assignment or priority documentation.



Industrial designs are governed in Tanzania by the Standards Act of 1975, the Tanzania Commission for Science and Technology Act of 1986, and the Protection Ordinance of 1936, Cap 219. However, registration of industrial designs is not currently possible due to the absence of effective national laws. Industrial designs may be obtained as part of ARIPO, and our analysis is based on ARIPO requirements for industrial designs. Industrial designs are protected for 10 years from the date of filing under ARIPO, and may be renewable for a maximum of 25 years of protection.

Under the Harare Protocol, a design is registrable if it has a new appearance of the whole or a part of a product resulting from the features of lines, contours, colors, shapes, texture materials of the product or the product’s ornamentation and can be either two- or three-dimensional. To qualify for registration, the design must not be the same as any design which has already been made available to the public. The design must have individual character, with the overall impression it produces on an informed user of the design differing from the overall impression produced on such a user by any design which has already been made available to the public.

ARIPO does not permit the registration of: (i) designs having features of appearance which are solely dictated by their technical function; (ii) features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product to which the design is applied and/or in which it is incorporated to be mechanically connected to or placed in, around or against another product so that either product may perform its function, except designs serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system; (iii) designs constituting an unauthorized use of State emblems or other emblems of an authority or international organization as defined in the Paris Convention; (iv) designs containing medals, emblems, armorial bearings or official signs and hallmarks indicating authentication and warranty the use of which is of public interest; (v) designs that are identical to a design which has been made available to the public after the date of priority and to which protection has been granted with an earlier date of priority; and (vi) designs contrary to public policy or public morality.

(b) How are design rights obtained? The designer of an industrial design or the designer’s assignee may register the design directly with ARIPO or through the Tanzanian Industrial Property Office. The application should be made in the form prescribed by ARIPO, as made available online on the ARIPO website as Form No. 28.


In addition to international treaty obligations, trademarks in Tanzania are governed by the Trade and Service Marks Act No. 12 of 1986, the Trade and Service Marks Regulations of 2000, and the Merchandise Marks Regulations of 2008. Section 2 of the Trade and Service Marks Act defines a trademark as a visible sign that distinguishes goods or services of one entity from those of another. Trademarks may include a word, phrase, symbol or design that appears on the product being sold and which serves to distinguish itself from other words, phrases, symbols or designs in the marketplace.


Trademarks must be visible, meaning that the sign must be capable of graphic reproduction and include a word, name, brand, emblem or similar graphical sign. In order to be registered, the mark must be capable of distinguishing itself at the time of application, regardless of the extent of use. A mark is distinctive under Section 16 of the Trade and Service Marks Act if it is capable of distinguishing goods or services with which its proprietor is connected in the course of trade or business from goods or services in the case of which no such connection subsists in relation to goods or services.

Section 19 of the Trade and Service Marks Act precludes the registration of (i) marks that are contrary to law or morality; (ii) marks which are likely to deceive or cause confusion; (iii) marks which consist solely of shape, configuration or color and (iv) marks which are reproductions of well-known marks both in Tanzania and abroad.

Under Section 29 of the Act, registered trademarks are protected for seven years from the date of registration and may be renewed. Marks registered under ARIPO last for 10 years from the date of registration and may also be renewed pursuant to ARIPO.

(b) How are trademarks obtained? Trademarks may be registered by filing an application with the Tanzanian Trade and Service Mark Office in writing to the Registrar on a prescribed form. Under Section 21 of the Trade and Service Marks Act, a proper application must include: (i) the name and address of the applicant; (ii) the trade or business description of the applicant; (iii) the particular goods or services in respect of which registration of the trade or service mark is applied for listed under the applicable classes of the International Classification; (iv) if the applicant’s address is outside Tanzania, an address for service within Tanzania; and (v) a declaration that the applicant or his/her proposed registered user is using or proposes to use the trade or service mark within Tanzania.

As with patents and industrial designs, trademarks may also be registered with ARIPO and will be protected from the date of registration with ARIPO.


Copyright protection in Tanzania originates from the Copyright and Neighboring Rights Act No. 7 of 1999. Tanzania is also a member of the Berne Convention, as revised in Paris in 1971. Copyright is considered a property right which vests in the authors of any original literary, musical, artistic and dramatic work, sound recording and film. This property right is both economic and moral, and entails the exclusive right to carry out or authorize reproduction, distribution, public exhibition, rental and so forth, under Section 9.

Under Section 5 of the Copyright and Neighboring Rights Act, protection extends to original literary and artistic works, including writings, computer programs, lectures, musical works, choreographic works, painting, architecture and so forth. Derivative works such as translations, adaptations, collections and works inspired by folklore are also protected under Section 6. Laws, court decisions, news and mere data are not protectable under the Act.

Copyrights in Tanzania last for the lifetime of the author and an additional 50 years after his or her death. For jointly authored works, the copyright will be protected for 50 years beyond the last surviving author. Sound recordings, anonymous or pseudonymous works and audiovisual works are protected for


50 years from publication or first availability to the public. Applied arts will be protected for 25 years from creation.

(b) How are copyrights obtained? Section 46 of the Copyright and Neighboring Rights Act established the Copyright Society of Tanzania (“COSOTA”) as a copyright office and collective management organization for copyrights and neighboring rights. COSOTA is tasked with promoting and protecting the interests of authors by maintaining registers and creating awareness of copyright protection.

8.1.5 Trade Secrets Tanzania does not have laws which specifically address trade secrets.


Under Section 43 of the Copyright and Neighboring Rights Act, the civil court with jurisdiction under the Act may order the impounding of any works made in or imported into Tanzania. The Act does not specify further details as to the practical enforcement of Section 43. The Tanzanian Revenue Authority and Customs Department are responsible for goods entering and leaving Tanzania. However, there is no direct legal basis in Tanzanian law for the implementation of IP enforcement obligations through the Tanzanian Revenue Authority and Customs Department.

8.2.2 Litigation (a) Patents

Section 66 of the Patent Act defines patent infringement as the making, using, offering to sell, selling or importing of any patented invention without the owner’s authority during the term of the patent. The Patent Act permits patent owners to bring an infringement suit against alleged infringers at the High Court of Tanzania, pursuant to Section 67. The High Court is mandated, as appropriate, to provide: (i) an injunction to prevent infringement where infringement is imminent, or to prohibit the continuation of the infringement, once infringement has started; (ii) damages; and (iii) any other remedy provided for in the civil law.

(b) Designs There is a lack of effective Tanzanian legislation or guidance relating to remedies for industrial design infringement relating to designs registered under ARIPO.

(c) Trademarks Under Section 32 of the Trade and Service Marks Act, trademark infringement is a violation of the exclusive rights attached to a registered trademark without authorization from the trademark owner. Such infringement may occur where an infringer uses a trademark which is identical or confusingly similar to the registered trademark, in relation to products or services which are identical or similar to the products or services which the infringed registration covers. The owner of such registered trademark may commence legal proceedings against the infringer in a Tanzanian court with jurisdiction under the Act.


Infringement is defined under the Trade and Service Marks Act as use by an unauthorized entity of a sign: (i) which is identical to or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade or business, in relation to any goods in respect of which it is registered; (ii) which is identical to or nearly resembling it in the course of trade or business in any manner likely to impair the distinctive character or acquired reputation of the trademark; (iii) which is applied to a good which has suffered an alteration with respect to the good’s state or condition; (iv) alteration or obliteration of a trademark on a good, whether in whole or in part; (v) applying additional trademarks to a trademarked good; and (vi) any other addition to a trademarked good likely to injure the reputation of the trademark.

Infringement remedies available to copyright owners before the High Court of Tanzania include: (i) an injunction to stop the infringement and to forbid the infringer from carrying out further infringing activities; (ii) a demand for satisfaction from the infringer by way of a declaration or other appropriate means; if necessary, the owner of the mark may demand that such declaration be published by the infringer or at the infringer’s expense; and (iii) full damages under the general law of tort or contract, in case the trademark infringement has caused any material damage; when establishing the damages the prejudicial effects of the infringement for all economic activities of the enterprise are taken into consideration.

(d) Copyrights Sections 36-39 of the Copyright and Neighboring Rights Act permit copyright owners to institute proceedings in Tanzania for alleged infringement of their exclusive rights in a work. Civil remedies include (i) injunctive relief to prevent and prohibit continued infringement; (ii) damages suffered as a consequence or infringer’s profits; (iii) exemplary damages as determined by the court; and (iv) destruction or delivery of infringing copies.

8.2.3 Criminal Charges (a) Patents

Under Section 70 of the Patent Act, any person who intentionally infringes a patent will be guilty of an offense and will on conviction be liable to a fine not exceeding TZS 500,000 or to a term of imprisonment of five years or to both that fine and imprisonment and forfeiture of the goods made through that patent. In the event of recidivism within five years, the maximum penalties will be doubled.

(b) Copyrights Under Section 42 of the Copyright and Neighboring Rights Act, copyright infringers may face criminal sanctions of fines and custodial sentences. Individuals who knowingly violate or cause to be violated the rights protected by the Copyright and Neighboring Rights Act for a commercial purpose will be liable to a fine not exceeding TZS 5,000,000 and/or imprisonment for a term not exceeding three years. For subsequent violations beyond the first, an infringer is subject to a fine not exceeding TZS 10,000,000 and/or impression for a term not exceeding five years.


9. NIGERIA 9.1 Protection of Intellectual Property Rights


Under the Patents and Designs Act Cap. P2 LFN 2004, an invention may be registered with the Patents and Trademark Registry if it is (i) new, novel or an improvement upon a patented invention, (ii) the result of an inventive activity and (iii) capable of industrial application. An invention is considered novel where it is not part of the state of the art, which consists of all knowledge in the field which has been made available to the public anywhere or at any time. Certain inventions cannot be patented under the Patents and Designs Act, including plants, animals or any biological processes for the production of plant and animals. Inventions which are contrary to public order or morality also cannot be patented.

Patent registration in Nigeria lasts for 20 years from the date of application and may not be renewed. Annual maintenance fees must be paid to ensure that patent protection does not lapse.

(b) How are patents obtained? Patents may be registered under the Patents and Designs Act with the Nigerian Patents and Trademark Registry using a prescribed form, which includes (i) the applicant’s name and address; (ii) relevant claims the applicant seeks to patent; (iii) a description of the relevant invention with any appropriate drawings; (iv) a declaration by the true inventor (v) a signed power of attorney; and (vi) any relevant foreign priority documentation.


Industrial designs are a combination of lines or colors or both. Any three dimensional form, whether or not associated with colors is an industrial design if it is intended by the creator to be used as a model or pattern to be multiplied by an industrial process and it is not intended solely to obtain a technical result. Industrial designs are registerable under the Patents and Designs Act if they are both new and not contrary to public order or morality.

(b) How are design rights obtained? Under the Patents and Designs Act, the statutory creator of the industrial design may register the design by filing an application with the Patents and Trademark Registry. The application must contain: (i) a request for registration of the design; (ii) the applicant’s full name and address and, if the address is outside Nigeria, a service address in Nigeria; (iii) a specimen of the design or a photographic or graphic representation of the design with a printing block for reproduction; and (iv) an indication of the kind of product for which the design will be used. The registry examiner will issue a registration certificate upon finding that the design is not against public order and morality, but will not inquire into the newness of the design in question.

Industrial design registrations are valid for an initial five-year period from the date of application. Registration may be renewed for two consecutive five year periods upon payment of the fee prescribed by the registry.



Trademarks are regulated by the Nigerian Trademark Act Cap. T13, providing protection for marks used or proposed to be used in relation to goods for the purpose of indicating a connection in the course of the trade between the goods and some persons having the right either as proprietor or as registered user to use the mark.

Marks may include a name, signature, word, letter, brand, heading, label, ticket, numeral and any combination of such marks, but may not include any marks that are scandalous, deceptive, contrary to law or morals, or capable of causing confusion. Trademarks which are identical or confusingly similar to trademarks already in the Nigerian Patents and Trademark Registry are not permitted.

Trademarks are exclusive for periods of seven years, and may be renewed from time to time.

(b) How are trademarks obtained? Trademarks must be registered with the Nigerian Trademark Registrar. The filing requirements for trademark registration in Nigeria include: (i) an application form containing the full name, street address and description of the applicant; (ii) a list of good and services; (iii) a signed power of attorney; and (iv) 15 prints of the mark to be registered.

An entity does not exclusively control the use of the mark for the registered purposes until registration is completed and registration is required to institute any proceedings to prevent or receive damages for infringement of the mark. The owner of an unregistered mark may still pursue a common law action relating to the passing off of goods.


Copyright protection in Nigeria extends from Copyright Act Cap. C28 and grants the copyright owner the exclusive right to reproduce, publish, perform, adapt, distribute, sell and broadcast the artistic work during the term of the copyright. In order to be eligible for a copyright, a work must (i) be copyrightable subject matter, (ii) have original character and (iii) be fixed in a definite medium of expression.

Eligible subject matter for copyright protection includes literary works, musical works, artistic works, cinematographic films, sound recordings and broadcasts. The term literary work is understood to incorporate novels, stories, choreographic works and computer programs, while artistic works include paintings, drawings, woodcuts and maps. Works are considered original where there is sufficient effort expended to give the work original character.

One notable exception under Copyright Act Cap. C28 is that artistic work made with the intention to be used as a model or pattern to be multiplied by an industrial process is not copyrightable. Such works qualify as industrial designs and must be protected as such.


(b) How are copyrights obtained? Copyrights are automatically conferred by Copyright Act Cap. C28 to all works eligible for copyright protection which are created by a domiciliary of Nigeria or by persons or entities belonging to a convention country under WIPO, the Paris Convention or the Berne Convention.

The Nigerian Copyright Commission registers copyrights upon a form notice, payment of fees and submission of two copies of the work by the copyright owners pursuant to the Commission’s Copyright Notification Scheme. Registration of copyrights is not required, but is convenient for the administration of the Commission’s enforcement mechanisms. Regardless, authors and publishers of any works should keep records of all works produced by them which show the name of the author, the title of the work, its year of publication and the quantity of the works produced.

Under the Copyright Act Cap. C28, copyrights for literary works, musical works and artistic works expire 70 years after the death of the author (or after first publication if the author is a corporate entity). Photographs are an exception to the artistic works category. Copyright protection for photographs, as well as cinematographic films, sound recordings and broadcasts expire 50 years after the end of the year in which the work was first published. Copyright protection in Nigeria for anonymous or pseudonymous work extends for 70 years from the year in which the work was first published. Copyrights may not be renewed.

9.1.5 Trade Secrets Nigeria does not have laws which specifically address trade secrets.


The Nigerian Customs Service is responsible for enforcing IPR relating to goods entering and leaving Nigeria, and partners with other enforcement agencies such as the Nigeria Copyright Commission to develop guidelines and inspection practices. However, there is no direct legal basis in Nigerian law for the implementation of IPR treaty obligations through the Nigerian Customs Service.

9.2.2 Litigation (a) Patents and designs

Under Section 25 of the Patents and Designs Act, infringement of a patent or industrial design occurs when another person, without the license of the patentee or design owner, exploits, makes, imports, sells or uses the product, process or design in question.

The owner of a patent or registered industrial design may bring an action against an alleged infringer before the Federal High Court under Section 25 of the Patents and Designs Act. Section 25(2) provides for relief by way of damages, injunctions and an accounting of profits.

(b) Trademarks The owner of a trademark may bring a passing off action against an alleged infringer of the mark in the Nigerian Federal High Court. Where the mark is unregistered, the action is a tort claim and should be brought in a state high court. The remedies available for trademark infringement and passing off


include an injunction against further infringement, a monetary award of damages, and delivery and destruction of outstanding infringing goods.

(c) Copyrights Section 16 of the Copyright Act Cap. C28 permits copyright owners, assignees, and exclusive licensees of a copyright to bring action for copyright infringement, which occurs when any person, without the license or authorization of the copyright owner:

• Carries out, or causes any other person to carry out, an act that is controlled by a copyright;

• Imports or causes to be imported into Nigeria any copy of a work that, if it had been made in Nigeria, would be an infringing copy under this section of the Copyright Act;

• Exhibits in public any article in respect of which a copyright is infringed under the first bullet point above;

• Distributes by way of trade, offers for sale, hire or otherwise or for any purpose prejudicial to the copyright owner any article in respect of which copyright is infringed under the first bullet point above;

• Makes, or has in its possession, plates, master tapes, machines, equipment or contrivances used for the purpose of making infringing copies of the work;

• Permits a place of public entertainment or business to be used for a public performance of the work, where the performance constitutes copyright infringement, unless the person permitting the place to be used for the performance was not aware, and had no reasonable grounds to suspect, that the performance would be an infringement of a copyright; or

• Performs or causes to be performed, for the purposes of trade or business or as a supporting facility to trade or business, any work in which a copyright subsists.

The principal remedies of copyrights in Nigeria under the Copyright Act are (i) monetary damages (including loss of profits); (ii) discretionary injunctions; (iii) an accounting of the infringer’s profits; (iv) delivery or destruction of infringing materials; and (v) conversion rights over all infringing copies of the work.

9.2.3 Criminal Charges (a) Copyrights

Under Section 18 of the Copyright Act, any person who, without the consent of the owner of the copyrighted work, sells, distributes, imports, makes or enables the sale, distribution, importation or manufacture of a copyrighted work is guilty of a criminal offense. Individuals who are guilty of sale, importation or manufacture may be subject to up to N 1,000 for each relevant copy of the work and a term of imprisonment of up to five years. Individuals guilty of possession or distribution may be subject to a fine of up to N 1,000 for each relevant copy of the work and a term of imprisonment of up to two years.


10. GHANA 10.1 Protection of Intellectual Property Rights

In recent years, the government of Ghana has publicly prioritized the enforcement of IPR and pledged to create an office specifically charged with this issue. The protection of IPR is understood as a tool to help accelerate growth in technological and industrial development on a national scale. This understanding led to the implementation of the National Intellectual Property Policy and Strategy in 2016, which aims to strengthen the legal and institutional framework to ensure effective IPR enforcement. During the course of this five-year program, amendments to existing IP laws are expected. It is therefore recommended to monitor current changes in legislation and confer with local counsel.

10.1.1 Patents There are two forms of protection under the Ghanaian Patents Act, 2003 (Act 657): patent certificates, which have a term of up to 20 years from the date of filing, and utility model certificates with a maximum term of seven years. Renewal fees must be paid in advance from the first anniversary of the effective filing date. Ghana is a first to file regime, not a first to invent, so the date of application is decisive in order to establish a priority claim.

An invention is patentable if it is new, involves an inventive step and is industrially applicable. Absolute novelty is required, which means that the invention must not have been disclosed anywhere in the world 12 or more months before filing the application.

National applications have to be filed with the Patent Office of the Registrar-General’s Department. Due to a lack of staff at the Patent Offices the registration process takes considerably longer than the two years required in the Patents Act. Since Ghana is a member state of the PCT, it is possible to file an international patent application in any other PCT member state with Ghana as a designated country. Such multinational filings may help reduce the risk of loss of novelty, as a disclosure in one country may impede the patentability in others. Another option is to file an application with ARIPO, with Ghana as a designated country.

Applicants with no residence or principal place of business in Ghana must be represented by a local resident practitioner.

10.1.2 Designs Pursuant to the Industrial Designs Act, 2003 (Act 660), an industrial design is defined as a composition of lines or colors, a three-dimensional form of a material, or a textile design, where the composition, form or material gives a special appearance to a product of industry or handicraft and that can serve as a pattern for a product of industry or handicraft.

Applications are filed at the Registrar-General’s Department. It is possible to seek protection for more than one product design under the same application, if the designs in question relate to the same class of Locarno Classification. The design is registrable if it differs from known designs or combinations of known design features. It is of no harm to the novelty of a design if it was published within 12 months prior to the application. Earlier national or regional applications in other countries may help to establish a priority claim if the rights holder is a citizen of a state that is a party to the Paris Convention or a member of the WTO. Protection is granted for a period of five years and can be renewed twice, resulting in a maximum protection period of 15 years.

If the ordinary principal residence or principal place of business of the applicant is outside Ghana, the applicant must be represented by a local lawyer.


10.1.3 Trademarks Under the Trade Marks Act 2004 (Act 664) both trademarks and collective marks can be registered. A trademark is defined as a sign capable of distinguishing the goods or services of one undertaking from the goods or services of another. A collective mark is a visible sign capable of distinguishing the origin or any other common characteristic of different enterprises which use the sign under the control of a registered owner from the goods or services of any other enterprises. Sounds and scents are ineligible for registration. The registration of a trademark or a collective mark is valid for a period of 10 years from the filing date of the application. It can be renewed for a consecutive period of 10 years as often as desired, provided that the renewal fee is paid and the trademark is still in use in Ghana.

An application is filed with the Registrar-General’s Department and must contain a reproduction of the trademark and a list of goods or services according to the Nice Classification for which protection is requested. Foreign applicants must be represented by a resident legal practitioner. In order to establish a priority claims you can include a copy of an application in a member state of the Paris Convention from the past six months. Upon successful registration, the Registrar-General’s Department issues a certificate of registration.

Contractual licenses for trademarks have to be presented to the Registrar-General’s Department, which will publish notice of such license. Otherwise the licensed trademark has no protection against third parties.

10.1.4 Copyrights The Copyright Act of 2005 (Act 690) provides for exclusive rights of authors in their literary works, artistic works, sound recordings, audiovisual works, derivative works and computer software programs. Ownership vests in the author. Corporate entities can be authors of works under the Copyright Act.

Works are only eligible for copyright protection if they are original and one of the following criteria is matched: (i) the author is a citizen or resident of Ghana; (ii) the work is published in Ghana within 30 days of its publication; or (iii) if the work was published outside of Ghana, an obligation to grant protection under an international treaty exists. Ghana is a member of the Berne Convention, which grants authors from other signatory countries the same rights as if the work was published in Ghana.

The duration for copyright protection is the life of the author plus 70 years. Moral rights, such as the right to claim authorship or the right to object to distortion, mutilation or modification of the work, exist in perpetuity.

To obtain protection under the Copyright Act, registration is not required, but it is advisable to establish evidence of ownership if copyright enforcement is pursued. Applications can be filed with the Copyright Office within the Office of the Attorney General. Applicants can be the author, his/her authorized agents or producers, or publishers on behalf of the author.

10.1.5 Trade Secrets The disclosure, acquisition or use by another person of confidential information in the course of industrial or commercial activities is considered an act of unfair competition under the Protection against Unfair Competition Act 2000 (Act 589). Information is confidential if it is not generally known or readily accessible to persons within the relevant circles. Furthermore it needs to have commercial value and the owner must make reasonable efforts to keep it secret.


10.2 Enforcement of Intellectual Property Rights Rights holders can pursue remedies through administrative agencies, in civil court or in criminal court, since infringing parties are liable for both civil and criminal penalties. However, it is generally advised to enforce IPR through civil means because the rights holder can take on a more proactive role and does not have to rely on the criminal justice system, which can be slow and ineffective.

10.2.1 Border Measures The Customs Division of the Ghana Revenue Authority is responsible for blocking infringing goods from entering the country. Even if the infringing goods have entered Ghana, customs authorities are allowed to enter warehouses, factories and stores to search for counterfeits. Independent of any customs action, the rights holder can submit a written request of detention to the Customs Division. This request must contain evidence to demonstrate a high likelihood that infringements are occurring or are about to occur. It is generally recommended to supply the authorities with detailed descriptions and samples of the products.

10.2.2 Other Administrative Actions If large scale copyright infringements occur, the rights holder can turn to the Copyright Monitoring Team, which is composed of police officers, rights holders’ representatives and officers from the Copyright Office. In order for the authorities to take action, the rights holder must demonstrate to the Copyright Office his/her entitlement and present evidence that his/her rights are being infringed. The Copyright Monitoring Team is authorized to enter any premises where pirated works are suspected, search these premises and seize any infringing goods.

10.2.3 Litigation In cases of an IPR infringement, the High Court can grant an injunction or award damages. The High Court is divided into three branches: the standard High Court, the “fast track” High Court and the commercial High Court. It is advisable to bring cases in front of the commercial High Court because the judges are more experienced in IP-related issues. Additionally, if a trademark is infringed, claims can be filed directly with the Registrar-General’s Department, which in this case has the same decision-making power as the High Court.

In any case, it is recommended to act fast. A claim must be filed either within three years from commission of the offense or one year after first discovery of the offense, whichever occurs first.

10.2.4 Criminal Charges In a case of infringement, rights holders can approach the Commercial Crime Unit of the Criminal Investigation Department of the Ghana Police Service. Violations under the Patents or Design Acts are punishable by a maximum fine of GHC 24,000 (approx. EUR 5,400) or up to two years’ imprisonment. Copyright infringements may lead to a punishment of up to GHC 12,000 (approx. EUR 2,700) or up to three years’ imprisonment. The maximum fine for a violation of the Trademarks Act is GHC 6,000 (approx. EUR 1,350) or up to one year’s imprisonment. Information that leads to the discovery of infringing goods is rewarded under Ghanaian law.


V. ANNEXES

A. INTERNATIONAL TREATIES APPLICABLE IN SELECTED JURISDICTIONS B. CONTACTS


A. INTERNATIONAL TREATIES APPLICABLE IN SELECTED JURISDICTIONS

Germany UK US China India Kenya Ethiopia Tanzania Nigeria Ghana

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods

Paris Convention for the Protection of Industrial Property (Paris Convention)

Patent Law Treaty (PLT)

Signed but not in force

Trademark Law Treaty (TLT)

Signed but not in force


Germany UK US China India Kenya Ethiopia Tanzania Nigeria Ghana

Patent Cooperation Treaty (PCT)

Hague Agreement Concerning the International Registration of Industrial Designs

Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)


B. CONTACTS (PUBLIC AUTHORITIES)

1. Germany and the EU a) Germany German Patent and Trademark Office (Deutsches Patent- und Markenamt, DPMA):

City Location Mailing Address Phone/Fax/Email

Munich Deutsches Patent- und Markenamt

Zweibrückenstraße 12 80331 München

Germany

Deutsches Patent- und Markenamt

80297 München Germany

Phone: +49 89 2195-0

Fax:

+49 89 2195-2221

Email: [email protected]

Berlin Deutsches Patent- und Markenamt Technisches

Informationszentrum Berlin

Gitschiner Straße 97 10969 Berlin

Germany

Deutsches Patent- und Markenamt Technisches

Informationszentrum Berlin

10958 Berlin Germany

Phone: +49 30 25 992-0

Fax:

+49 30 25 992-404

E-mail: [email protected]

Jena Deutsches Patent- und Markenamt

Dienststelle Jena Goethestraße 1

07743 Jena Germany

Deutsches Patent- und Markenamt

Dienststelle Jena 07738 Jena

Germany

Phone: +49 3641 40-54

Fax:

+49 3641 40-5690


http://dpma.de/english/index.html Customs Office (Zoll):

Address Phone/Fax/Email

Generalzolldirektion Direktion VI

Zentralstelle Gewerblicher Rechtsschutz

Sophienstraße 6

80333 München

Phone.: 089 5995-2315

Fax: 089 5995-2317





http://dpma.de/english/index.html



b) European Union European Patent Organization (EPO):

City Location Mailing Address Phone/Fax/Email

Munich European Patent Office Bob-van-Benthem-Platz 1

80469 Munich Germany

European Patent Office 80298 Munich

Germany

Phone: +49 89 2399 0

Fax:

+49 89 2399 4465

The Hague European Patent Office Tower and Hinge Buildings

Patentlaan 2 2288 EE Rijswijk The Netherlands

European Patent Office Postbus 5818

2280 HV Rijswijk The Netherlands

Phone: +31 70 340 2040

Fax:

+31 70 340 3016

Berlin European Patent Office Gitschinger Straße 103

10969 Berlin Germany

European Patent Office 10958 Berlin

Germany

Phone: +49 30 25901 0

Fax:

+49 30 25901 840

Vienna European Patent Office Rennweg 12 1030 Vienna

Austria

European Patent Office Postfach 90 1031 Vienna

Austria

Phone: +431 52126 0

Brussels European Patent Office Av. De Cortenbergh 60

1000 Brussels Belgium

European Patent Office Av. De Cortenbergh 60

1000 Brussels Belgium

Phone: +32 22741590

European Union Intellectual Property Office (EUIPO):

Address Phone/Fax/Email/Contact Form

European Union Intellectual Property Office

Avenida de Europa 4

E-03008 Alicante

Spain

Phone: +34 965 139 100

Fax: +34 965 131 344




2. UK Intellectual Property Office (IPO)

Address Phone/Fax/E-Mail/Contact Form

Concept House Cardiff Road

Newport South Wales NP10 8QQ

Phone: 0300 300 2000

Outside the UK: +44 (0)1633 814000

Fax:

+44 (0)1633 817777


Contact form: https://www.ipo.gov.uk.

https://www.gov.uk/government/organisations/intellectual-property-office Customs Office:

Address Phone/Email

HM Revenue and Customs Intellectual Property Authorisation Unit IP

Rights Team Room 13s Ty-Glas

Llanishen

Cardiff

CF14 2BD

Phone.: 03000 582 418



https://www.ipo.gov.uk/

https://www.gov.uk/government/organisations/intellectual-property-office



3. U.S.

United States Patent and Trademark Office (USPTO)

City/State Location

Alexandria, VA USPTO Madison Building

600 Dulany StreetAlexandria , VA 22314

Dallas, TX Texas Regional Office 207 South Houston St., Suite 159

Dallas, TX 75202

Denver, CO Rocky Mountain Regional Office 1961 Stout Street

Denver, CO 80294

Detroit, MI Midwest Regional Office – USPTO 300 River Place South

Suite 2900 Detroit, MI 48207

Silicon Valley, CA Silicon Valley USPTO 26 S. Fourth Street San Jose, CA 95113

Other Resources Contact

USPTO Contact Center Toll-Free: 800-786-9199

Local: 571-272-1000

Email:

[email protected]

http://www.uspto.gov/ Customs Office:

Address Phone/Email

Docket Services

500 E Street S.W.

Room 112-A

Washington, D.C. 20436

Phone: 202-205-1802



http://www.uspto.gov/



4. China State Intellectual Property Office (SIPO):

Customs Office:


State Intellectual Property Office of the P.R.C

No. 6, Xitucheng Lu

Jimenquiao Haidian District

Beijing City 100088

Phone.: 010-62356655


Address Phone/Fax/ Contact Form

General Administration of Customs of the P.R.C

No. 6 Jianguomennei Avenue

Dongcheng District

Beijing City 100730

Phone.: (0755) 84398000

Online service for IPR Customs Protection:

http://english.customs.gov.cn/zscqbh/index.html


http://english.customs.gov.cn/zscqbh/index.html


5. India

Office Address Phone/Fax/Email

Copyright Office

Copyright Division Department of Higher Education

Ministry of Human Resource Development Government of India

4th Floor, Jeevan Deep Building, 1 & 2 Parliament Street

New Delhi, 110001

Phone: (91 11) 233 81 894

(91 11) 233 82 436 (Dr. Suresh Chand) (91 11) 233 62 436 (91 11) 233 41 739

Fax:

(91 11) 233 84 687


[email protected] [email protected]

Industrial Property

Office

Office of the Controller-General of Patents, Designs and Trademarks

Department of Industrial Policy Promotions Ministry of Commerce and Industry

Government of India Bhoudhik Sampada Bhavan

S.M. Road, Antop Hill Mumbai, 400037

Phone: (91 22) 241 32735

Fax:

(91 22) 241 23322


Copyright Office: http://www.wipo.int/directory/en/contact.jsp?country_id=80&type=ADMIN_CR Industrial Property Offices: http://www.wipo.int/directory/en/contact.jsp?country_id=80&type=admin_ip Customs Office:


Directorate General of Audit Customs and Central Excise

C.R. Building

I.P Estate

New Delhi – 110 109

Phone: (91 11) 2337-0075

Fax: (91 11) 2337-0839






http://www.wipo.int/directory/en/contact.jsp?country_id=80&type=ADMIN_CR

http://www.wipo.int/directory/en/contact.jsp?country_id=80&type=admin_ip



6. Kenya


Copyright Office

The Kenya Copyright Board (KECOBO) The State Law Office

(Office of the Attorney General)

NHIF Building, Ragati Road 5th Floor

P.O. Box 34670 – 00100 Nairobi

Phone: (254 20) 253 38 69

Fax:

(254 20) 221 10 82

Email:

[email protected]

Industrial Property

Office

Kenya Industrial Property Institute (KIPI) Ministry of Trade and Industry

Popo Rd. off Mombasa Rd. South “C” Weights and Measures Complex

P.O. Box 51648 – 00200 Nairobi

Phone: (254) 702 002 020 (254) 202 386 220

Fax:

(254) 20 600 6312

Email:

[email protected]

Copyright Office:

http://www.copyright.go.ke/ Industrial Property Office:

http://www.kipi.go.ke/ Customs Office:

Address Phone/ Email

Mr. Julius Musyoki Commissioner of Customs Services

Kenya Revenue Authority Customs Services Department

12th Floor, Times Tower Building Haile Selassie Avenue

P.O. Box 48240 – 01000

Phone: +254 20 2817104




http://www.copyright.go.ke/

http://www.kipi.go.ke/



7. Ethiopia Ethiopian Intellectual Property Office


Ethiopian Intellectual Property Office (EIPO)

Kirkos Kifleketema, Woreda 8, Kazanchis

Addis Ababa

Phone: (251) 929 918 034 (251) 115 528 000

Fax:

(251) 115 529 299 (251) 115 534 969

Email:


(Director General Teshale Yona)

http://www.eipo.gov.et/ Customs Office:

Address Phone/Fax/Email Ethiopian Revenues and Customs Authority

[Address N/A]

Phone: +251 11 6629870

Fax:

+251 11 6629873

Email: [email protected] (Director General)


mailto:%[email protected]

http://www.eipo.gov.et/



8. Tanzania


Copyright Offices

Ministry of Constitutional Affairs and Good Governance

Zanzibar

Phone: (255 24) 2236325 (255) 777 414410

Fax:

(255 24) 2236325

Email: [email protected] [email protected]

The Copyright Society of Tanzania (COSOTA)

Chato Street, Plot No. 271 Regent Estate

P.O. Box 6388, Dar es Salaam

Phone: (255 22) 2700019

Mobile office:

(255 784) 464007 255 656 084954

Fax:

(255 22) 2700020

Email: [email protected] [email protected]

Industrial Property Offices

Business Registrations and Licensing Agency (BRELA)

Ministry of Industry and Trade USHIRIKA(TFC) Building,

Lumumba Street P.O. Box No. 9393

Dar es Salaam

Phone: (255 22) 812 760839 (Mobil)

Direct lines:

(255 22) 218 0048 (255 22) 218 0141 (255 22) 218 0385

Fax:

(255 22) 218 0371 (255 22) 218 0411 (255 22) 218 4727

Email:

[email protected] [email protected] [email protected]

[email protected]

Zanzibar Business and Property Registration Agency (BPRA)

P.O. Box 260 Zanzibar

Phone: (255 24) 223 63 24 (255) 773 193987

Fax:

(255 24) 223 63 25


[email protected]












Copyright Office: http://www.cosota-tz.org Industrial Property Office: http://www.brela-tz.org/index.php Customs Office:

Address Phone/Website

Tanzania Revenue Authority 28 Edward Sokoine Drive

11105 Mchafukoge, Ilala CBD P.O. Box 11491 Dar es Salaam

Phone: +255 222 127 085

Website: http://www.tra.go.tz

http://www.cosota-tz.org/

http://www.brela-tz.org/index.php

http://www.tra.go.tz/


9. Nigeria


Copyright Office

Nigerian Copyright Commission (NCC) Federal Ministry of Information and

Culture

Federal Secretariat Complex, Phase 1, Annex II, Ground Floor

Shehu Shagari Way, Maitama P.M.B. 406 Garki

Abuja-FCT, Nigeria

Phone: (234) 70 9881 2628 (234) 855 958 357


[email protected]

Industrial Property

Office

Trademarks, Patents and Designs Registry

Federal Ministry of Trade and Investment

Block ‘H’ Old Federal Secretariat. Area 1 Garki – Abuja, Nigeria

Phone: (234 8) 234 02 82

(234) 805 2926546 (Registrar)

Fax: (234 8) 234 15 41

Email:


Copyright Office: http://www.copyright.gov.ng/ Customs Office:


Nigeria Customs Service Headquarters Abidjan Street, Wuse

P.M.B. 26 Zone 3

Abuja – FCT

Phone: +2349 4621 597

Fax: +2349 5234 694






http://www.copyright.gov.ng/



10. Ghana


Copyright Office

Copyright Department Ministry of Justice Private Mail Bag

Ministries Post Office Accra – Ghana

Phone: (233) 302 229190

Fax: (233) 302 229190


Patent, Trademark and Design Office

Registrar General’s Department

Ministry of Justice and Attorney General

P.O. Box 118 Accra – Ghana

Phone: (233) 302 66491-93

Fax: (233) 302 662043


Copyright Office: http://www.copyright.gov.gh Customs Office:

________________________________________________________________________________________________________________________________

Further contacts can be found at: http://www.wipo.int/directory/en/urls.jsp.


Ghana Revenue Authority Off Starlets 91 Road

P.O. Box 2202 Accra

Phone: +233 302 684363

Fax: +233 302 681169




http://www.copyright.gov.gh/

http://www.wipo.int/directory/en/urls.jsp



VI. GLOSSARY AIC Administration for Industry and Commerce AQSIQ General Administration of Quality Supervision, Inspection and

Quarantine ARIPO African Regional Intellectual Property Organization BGB German Civil Code (Bürgerliches Gesetzbuch) Berne Convention Berne Convention for the Protection of Literary and Artistic

Works CDPA Copyright, Designs and Patents Act 1988 CJEU Court of Justice of the European Union CTM Community Trade Mark Customs Regulation Regulation (EU) No 608/2013 concerning customs enforcement

of intellectual property rights and repealing Council Regulation (EC) No 1383/2003

DMCA Digital Millennium Copyright Act DPMA

German Patent and Trade Mark Office (Deutsches Patent- und Markenamt)

DTSA Defend Trade Secrets Act EAPO Eurasian Patent Organization EEA European Economic Area EFTA European Free Trade Association EPC European Patent Convention EPO European Patent Office EU European Union EUIPO EU Intellectual Property Office EUTM EU Trade Mark EUTM Regulation EU Trade Mark Regulation (207/2009/EC) EU Trade Secrets Directive Trade Secrets Directive (EU) 2016/943 GAC General Administration of Customs GCC Patent Office of the Cooperation Council for the Arab States of the

Gulf Hague Agreement Hague Agreement concerning the International Registration of

Industrial Designs HMRC Her Majesty’s Revenue and Customs IP intellectual property IPR intellectual property rights IPR Enforcement Directive Directive on the enforcement of intellectual property rights

(2004/48/EC) ITC U.S. International Trade Commission Madrid System Madrid system for the international registration of marks Madrid Agreement Madrid Agreement Concerning the International Registration of

Marks Madrid Protocol Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks National Leading Group National Leading Group for Tackling IP Infringements and

Counterfeiting Products NCA National Copyright Administration NDA Non-Disclosure Agreement Nice Classification International Classification of Goods and Services for the

Purposes of the Registration of Marks under the Nice Agreement PatG German Patent Act (Patentgesetz) Paris Convention Paris Convention for the Protection of Industrial Property PCT Patent Cooperation Treaty PLT Patent Law Treaty PRC People’s Republic of China RCD Registered Community Design


SIPO State Intellectual Property Office STMO State Administration for Industry and Commerce Trade Mark

Office TEAS Trademark Electronic Application System TLT Trademark Law Treaty TMA Trade Marks Act 1994 TRAB Trademark Review and Adjudication Board TRIPS Agreement Agreement on Trade-Related Aspects of Intellectual Property

Rights UCD Unregistered Community Design UK IPO Intellectual Property Office UPC Unified Patent Court UrhG German Copyright Act (Urhebergesetz) USPTO United States Patent and Trademark Office UTSA Uniform Trade Secrets Act UWG German Act against Unfair Competition (Gesetz gegen den

unlauteren Wettbewerb) WIPO World Intellectual Property Organization WTO World Trade Organization


VII. YOUR MOFO IP EXPERTS

RUFUS PICHLER Partner, San Francisco, +1 415 268 6625, [email protected]

Rufus Pichler is a partner in the Firm’s technology transactions and licensing group. He is based in our San Francisco office. Mr. Pichler has over 16 years of experience advising technology companies on intellectual property, licensing, and commercial transactions, including in- and out-licenses, cross-licensing arrangements, and development, joint venture and collaboration, software/services, data licensing, manufacturing, supply and distribution agreements, among other things. Mr. Pichler holds advanced degrees in law from the U.S. and Germany, is admitted to practice in California, New York, and Germany, and is recognized by IAM 1000 as one of the World’s Leading Patent Professionals.

OTIS LITTLEFIELD Partner, San Francisco, +1 415 268 6846, [email protected]

Otis Littlefield is a partner in Morrison & Foerster's San Francisco office. His practice focuses on IP related business transactions and patent prosecution. His prosecution practice focuses on portfolio strategy development and implementation, management, and evaluation. Mr. Littlefield’s practice also includes conducting due diligence studies in connection with venture capital, private and public financing, and mergers and acquisitions. Mr. Littlefield has represented a variety of companies on a broad range of transactions, including in- and out-licenses, development agreements, manufacture and supply agreements, joint research and development agreements, commercialization agreements, strategic joint ventures, and mergers and acquisitions.

YOUR MOFO IP EXPERTS


WOLFGANG SCHOENIG Counsel, Berlin, +49 30 72622 1205, [email protected]

Wolfgang Schoenig is a counsel at Morrison & Foerster's German office in Berlin. His practice focuses on consulting on IP aspects in transactions in the fields of high tech, consumer electronics and life sciences. Mr. Schoenig has particular expertise in advising on research and development cooperations, license agreements, technology acquisitions, protection of know-how, employee invention law and patent infringement proceedings. His practice also covers litigation in the fields of trademark and unfair competition law.

ALISTAIR MAUGHAN Partner, London, + 44 20 7920 4066, [email protected]

Alistair Maughan is Co-Managing Partner in the firm’s London office. He is co-chair of the Technology Transactions Group. Mr. Maughan focuses on commercial contracts and technology-based projects for major companies and public sector organizations. His primary areas of expertise include advising on: commercial licensing and sales contracts in the UK and Europe; contracts for the supply and acquisition of technology equipment, services and software; agency and distribution contracts; and drafting, negotiating and advising on all types of technology contracts and issues.



CHUAN SUN Partner, Hong Kong, +852 25850 762, [email protected]

Chuan Sun is a partner of Morrison & Foerster (International) LLP, based in the Hong Kong office. He focuses his practice on cross-border technology transactions, including joint ventures and strategic alliances, as well as complex IP/commercial matters across Greater China. Mr. Sun regularly advises multinational corporations, state-owned enterprises, private companies and PE/VC firms on issues around their most valuable IP assets.

CAN CUI Associate, San Francisco, +1 415 268 7275, [email protected]

Can Cui is an associate in the San Francisco office of Morrison & Foerster. For more than ten years, Mr. Cui has prepared and prosecuted numerous patent applications in the areas of biotechnology, medical devices, pharmaceuticals, and the Internet. He has also led the preparation of IP opinions and IP due diligence reviews of Life Sciences companies on behalf of multinational clients. Mr. Cui has led the patent dispute resolution practice on behalf of U.S. clients in mainland China. As an expert in both life sciences and Chinese IP laws and technology regulations, his transactional practice focuses on cross-border life sciences technology licensing and acquisitions.



GORDON A. MILNER Partner, Hong Kong, +852 25850 808, [email protected]

Gordon Milner is a partner in our Asia technology practice. He specializes in advising on intellectual property, licensing, outsourcing and technology transactions. Mr. Milner has advised clients in the energy, IT, life sciences, telecommunications, financial, manufacturing and specialty chemicals industries on a wide spectrum of technology related matters. His practice ranges from major projects such as the establishment of an entire technology infrastructure for a PRC client; to the licensing, exploitation and protection of high value patents in the renewable power sector.

HOLGER A. KASTLER Associate, Berlin, + 49 30 72622 1207, [email protected]

Holger Kastler is an associate at Morrison & Foerster’s German office in Berlin and a member of our Technology Transactions Group. Mr. Kastler’s practice focuses on advising domestic and international clients on a great variety of IP matters. He has gained expertise in patent infringement disputes and advises on patent related matters including questions of FRAND licensing. Furthermore, Mr. Kastler has experience in the protection of trade secrets and advises clients on know-how licensing. He also has a profound knowledge of copyright law and advises clients on software licensing as well as other IT related matters.


VIII. ABOUT MOFO

Founded 1883 in San Francisco, Morrison & Foerster is a global firm of exceptional credentials, with 16 offices in the key technology and financial centers in Europe, the United States, and Asia.

• With an established presence in Europe for more than 30 years, our 90+ lawyer European practice offers expertise across all the major legal disciplines.

• We have an outstanding reputation in the market as a valuable resource to clients in our local markets, across Europe and around the world, with a strong focus on the technology, media, and telecommunications sector.

• Our lawyers are renowned for their knowledge and experience in corporate/M&A, restructuring and finance, private equity, antitrust, commercial, IP, litigation, tax, employment, privacy and data security.

San Francisco Palo Alto Los Angeles San Diego

Denver

New York Washington, D.C. Northern Virginia

London

Brussels

Berlin

Singapore

Beijing Shanghai Hong Kong

Tokyo

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