Global IP Matrix - Issue 4

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CONTENTS
Page 6
The matter of ‘Prior Use
by Gorodissky & Partners
Page 9
Trademark Infringement - The Nigerian Perspective
by Stillwaters Law firm
Page 13
New Development against Bad Faith
Applications in China
by Unitalen Attorneys at law
Page 17
Border measures to ensure safeguarding of IP right
by OMC Abogados & Consultores
Page 19
Is Zimbabwe a part of the global conversation on
intellectual property rights?
by B Matanga IP Anttorneys
We are delighted to present the
fourth issue of The Global IP Matrix
magazine to you, our loyal readers.
We have had an amazing year and grown
immensely in popularity since our launch of
the GIP Matrix at INTA in Seattle in 2018.
When we first launched the Global IP Matrix
our main goal was to produce an IP publication
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audience with raw, undiluted news reported to
Page 20
Scope of the law on trade secrets
by Julius & Creasy
Page 25
GDPR vs WHOIS: Time for a paradigm change?
by ProDomaines
Page 30
AI - Is it changing patent prosecution?
by Dennemeyer The IP Group
Page 34
Patent Landscape of Sports-Related Concussion
by PatentSeekers
Page 38
No to Evergreening of plant variety in the
‘Plant Varieties Law!
by LexOrbis IP Attorneys
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The matter of
‘Prior Use’
The prior use of a designation
does not provide any advantage in
Russia, in terms of registration of
this designation as a trademark.
This means that the prior use of a designation
by one company (hereinafter – the brand
user) does not preclude another company
either from registering the said designation as
a trademark nor from using the designation
without having it registered as a trademark.
However, if the prior use of a particular
designation meets particular criteria, it can
be relied on in order to challenge further
registrations as well as to prohibit the use of
same/similar designations by other companies.
Furthermore, the said remedies lay in the
area of the Competition law rather than the
trademark law. If the brand user does not hold
any trademark or IP right to its brand, the only
option left is to appeal to the Competition Law.
In this paper, we consider two
commonly encountered situations
where it is possible to oust others
from exploiting the brand by
resorting to the Competition Law.
The first one is where the prior use is claimed
to prevent another company from using the
brand. In such a situation the adverse company
does not assert any IP right to the brand and
defends its right to use the brand by alleging
that it is not protected as a trademark or as a
copyrighted item and, therefore, it is free for
use by anyone.
The adverse party’s bad faith in using the
brand consists of exploiting well-known and
recognisable among consumers brand to get
extra profit without investing significant funds
and time into the promotion of its own brand.
The second situation differs from the first one
in the fact that the adverse company asserts
the rights to the brand in bad faith. Such a
situation may happen when the adverse party
registers the designation as a trademark, which
was already present on the market and used by
one or many companies.
In Russia…
In Russia, the Competition Law extends to any
Anton Melnikov, LL.M, Senior Lawyer, Gorodissky & Partners Russia
www.gorodissky.com
act of unfair completion and provides special
remedies a company may rely on in both
situations where it is necessary to enforce its
rights to a brand not protected as a trademark
or as a copyrighted item.
Prior use versus same/
similar designations
not registered as a
trademark.
We will consider one of the recent cases
decided by the Russian Federal Antimonopoly
Service (hereinafter – FAS) and later affirmed
by courts. The circumstances of the case are
as follows.
Kikkoman Corporation (hereinafter –
Kikkoman), a Japanese company, initiated
an unfair competition case against
TD SANBONSAI LLC (hereinafter -
SANBONSAI), a Russian company, claiming
that SANBONSAI’s copying Kikkoman’s
original bottle of 150 ml. amounted to an act
of unfair competition.
The design of the said bottle was originally
created by the famous Japanese designer Kenji
Ekuan in 1961. Further, the IP rights to the
design were assigned to Kikkoman which
widely used this bottle around the world as
well as on the Russian market for a long time.
TRADEMARKS
It is a crucial fact that Kikkoman Corporation
did not have any effective IP rights to the
said bottle design in Russia which could be
relied on in lawsuits against the infringer: the
design was not registered as a trademark nor
as an industrial design; it was not protected by
copyright either.
TD SANBONSAI LLC used the Kikkoman
bottle for the same product on the Russian
market. The Russian distributor of Kikkoman
Corporation – Mistral Trading LLC got
aware of the use of the Kikkoman bottle by
SANBONSAI in Russia in several cities,
brought charges claiming unfair competition
and won the case before FAS (2015 -2016)
by proving unfair competition on the side of
SANBONSAI.
The principal issue of such cases is of what
criteria should the prior use meet to support
unfair competition charges and get such
companies like SANBONSAI prohibited from
further using other’s brands in bad faith.
FAS applied the provisions of the Competition
Law, in particular, Paragraph 2 of Article 14.6
states that:
“unfair competition by an economic entity
actions (inactions) that could create
confusion with activities of an economic
entity-competitor or the goods or services
put on the market by the economic entitycompetitor
is prohibited, including copying
or imitating appearance of the goods put on
the market by a competitor, goods packaging,
label, name, color range, the brand style
in general (in
the totality of
branded clothing,
salesroom, shopwindow
dressing)
or other elements
individualizing the
competitor and (or)
its goods”.
By the Decision on
the Kikkoman case
(№ 08/90596/16
dated December 27,
2016) FAS found the
Defendant liable of
violation
of the
Competition
Law since its bottle
design was confusingly similar
to Kikkoman’s bottle, originally created by the
famous Japanese designer. In particular, in its
Decision FAS stated that:
“Having assessed the entire evidence
available on the case file, the FAS
Commission comes to the conclusion that
the actions of Trading House “SanBonsai”
related to marketing the soy sauce in 150 ml
packages (containers), which are similar to
the design of bottles of “KIKKOMAN” soy
sauce in their appearance (design), may lead
to confusion in the soy sauces market in the
Russian Federation, are aimed at obtaining
advantages in carrying out the business and
may cause losses to the Claimant”.
FAS also held that the Defendant’s actions
constitute an act of unfair competition
because:
1.Marketing the infringing bottle which
is confusingly similar to the Kikkoman
bottle may mislead consumers regarding
the features of the goods;
2.The said circumstances evidence that
the actions of SANBONSAI may indeed
cause losses to Kikkoman because
confusion in the market may result in
shrinking consumers’ demand for the
original sauce.
It is worth noting that the fact that the
Kikkoman product and its unique shape were
well-known among Russian consumers and
professionals significantly helped to plead the
case before FAS.
In addition to the Competition Law, FAS also
quoted Article 10bis of the Paris Convention
for the Protection of Industrial Property,
prohibiting “any competition act violating fair
customs in industrial and trade matters”.
As a result, FAS ordered SANBONSAI to stop
marketing the infringing bottle and imposed
fines on SANBONSAI and its CEO. The FAS
decision (№ 08/90596/16 dated December
27, 2016) on Kikkoman case was affirmed
by the Moscow Commercial Court (case №
А40-21129/2017) as well as by the 9th Court
of Appeals.
Therefore, prior use can be relied on against
the bad faith use of one’s brand if the
following circumstances are proven:
1. The claimant has widely used the brand
in question for a long time on the Russian
market;
2. Wide and long-term use has made
consumers associate the brand with a
particular company or features of the
respective product/service;
3. The infringing brand is confusingly
similar to the claimant’s brand;
4. The adverse company does not have
any legal grounds for using a similar
brand/design (such as trademarks,
copyright);
5. The adverse company uses a similar
brand/design in bad faith as such use
may mislead consumers regarding the
manufacturer/features of goods.
Prior use versus a
registered trademark
The second situation may take place when an
infringer registers the brand as a trademark
which has been previously used on the market
by one or many companies for a long time.
In such a case, the prior use may also play a
significant role in challenging the registered
trademark.
This situation differs from the first one in that
the prior use is claimed against the registered
trademark rather than against the bad faith
use of another’s brand. Therefore, the adverse
party acting in bad faith can rely on the
registered trademark in a dispute with the
brand user.
Similarly to the first case, here the brand user
needs to rely on the Competition Law and
claim unfair competition associated with the
registration/use of the trademark.
Article 14.4 of the Competition Law prohibits
unfair competition associated with acquiring
the rights, among others, to trademarks.
Article 1512 of the Russian Civil Code
establishes that a trademark can be canceled
in case the antimonopoly authorities hold that
registration of the trademark was made in
violation of the Competition Law.
FAS occasionally delivers its decisions on
similar cases, one of which we consider here.
The circumstances of the second case are to
some extent similar to the first one and differ
in that the adverse company registered the
brand as a trademark in its name and relied
on it in the dispute with the brand user.
HOLMER Maschinenbau GmbH (hereinafter
– HOLMER GmbH) has imported into Russia
HOLMER designated agricultural machinery
since 2002. Holmer Rus LLC (hereinafter
– Holmer Rus), a Russian company, has
registered various HOLMER trademarks
in its name. HOLMER GmbH initiated an
administrative case against Holmer Rus
claiming that the registration of HOLMER
trademarks was made in violation of the
Competition Law.
Likewise, the brand user, HOLMER GmbH,
did not have any effective IP right to the said
brand in Russia which could be relied on
against the HOLMER trademarks registered
by Holmer Rus.
6 www.gipmatrix.com www.gipmatrix.com
The case was considered by the Office of FAS
(hereinafter – OFAS) in the Lipetsk region.
OFAS agreed with HOLMER Maschinenbau
GmbH and held Holmer Rus LLC responsible
for unfair competition. OFAS’ decision was
also affirmed by the Commercial Court of
the Lipetsk region (court case number А36-
10122/2017), Court of Appeals and Court of
Cassations.
The court practice on similar cases has
elaborated criteria on when the prior use
can be relied on in cases against a trademark
registered in violation of the Competition
Law:
1. The claimant has used the brand/
designation in question for a long time on
the Russian market before the priority date
of the litigious trademark;
2. The trademark in question is confusingly
similar to the claimant’s brand/designation;
3. The litigious trademark was registered/
used to oust competitors from the market;
OFAS’ decision holding Holmer Rus liable
in committing an act of unfair competition
constituted the legal ground for Rospatent
to annul the registration of the litigious
trademark.
To conclude…
In conclusion, it is worth noting that
the prior use does really matter when a
brand user needs to protect its brands
not enjoying protection as a trademark
or copyrighted item. At the same time as
the remedies in question lie in the area of
the Competition Law, the claimant should
prove unfair competition to protect its
brand by means of the Competition
Law that requires extra proofs/efforts
in comparison with the enforcement of
trademark rights.
Either way, it is
recommendable that
the business should
register its trademarks
in advance rather than
fight against the unfair
competition which
results in wastage of time
and money.
7

AIPPI
London
2019
TRADEMARKS
INFRINGEMENT:
The Nigerian Perspective
2019 AIPPI World Congress – London
September 15 - 18, 2019
Mr. Afamefuna Nwokedi
Principal Counsel of Stillwaters Law Firm www.stillwaterslaw.com
London has progressed to be a global leader in arts, commerce, entertainment, tourism and development. In
recent years London has pushed to become one of the most innovative and business driven nations in the world, which is
why we find it a suitable location to debate the latest topics of IP.
Whether you are visiting for the first time or returning once more, you will discover a city full of unforgettable landmarks,
exciting things to do and extraordinary cuisine around every corner.
Take advantage of the Early Bird discount, register by June 12 to secure a reduced registration rate.
We look forward to seeing you in London, September 2019.
The programme boasts a vast range of topics covering the entire field of intellectual property:
PHARMA DAY
• Wait! Pay for delay
• Patent Linkage: an international perspective
• Hot and hostile: recent developments in SPCs and patent term extensions
• Antibodies and epitope/competitive claims
PANEL SESSIONS
• The art of IP – museums & architecture
• In-house perspectives on IP enforcement
• Describe your best defense: trade mark infringement or not?
• Protecting trade secrets in the EU – new and improved?
• A platform for discussion: liability & safe harbour
• Forming portfolios for FRAND licensing: who decides?
• Keep your hands off my brands
• Patents and Artificial Intelligence: what’s next?
• BREXIT & IP: an update
• Seize the day – customs & border control
• Right on the money – IP & finance
• Post-grant amendments: flexibility or certainty?
• Designs on trial
• Hot Topics
LUNCH SESSIONS
Lunch Sessions 1
• An update from USPTO Director Andrei Iancu
Lunch Sessions 2
• It’s natural … or is it? Greenwashing fashion
Lunch Sessions 3
• Africa and innovation
PLENARY SESSIONS
• Copyright in artificially generated works
• Consumer survey evidence
• IP damages for acts other than sales
• Plausibiltiy
More information on www.aippi.org
Intellectual property and commerce
are topics which are needless to
say, inextricably linked and in the
course of initiating and operating
a commercial enterprise, there
arises the need for safeguarding the
intellectual and industrial values
of the business as well as ensuring
non-violation of the corresponding
right of others.
The importance of intellectual
property practice and its
consequent rights/interests have
gained rapid recognition in Nigeria
within the last two decades.
Like any importing country for almost
everything, especially pharmaceuticals,
electronics and most retail consumables, the
potential to make quick gains in copying
is on the high side and this, unfortunately,
translates to infringement, dilution,
counterfeiting or piracy. That Nigeria
has had a fair share of these can be put
into perspective when one considers its
population, market share and paradoxically,
the ingenuity of its people.
In Nigeria, trademark infringement can
generate two causes of action, civil and/or
criminal. Various laws have been enacted
to protect intellectual property (IP) rights
in Nigeria and the courts have adopted
internationally acclaimed standards in
interpreting these laws. In Bells Sons & Co. V.
Godwin Aka & Anor (1917-1976) 1 I.P.L.R.,
the Supreme Court of Nigeria court posited
that:
“….the law of trademarks is aimed at the
subtle as well as the obvious infraction
of it and both the ears and eyes must be
together involved in the exercise”.
Studies show that within the realm of
trademarks, outright boldface infringement
is the most common infraction and as per the
Supreme Court in A. B. Chami v. W. J. Bush &
Co. Ltd (1990 -1997) 3 I. P. L. R.,
“…right shall be deemed to be infringed
by any person who not being the
proprietor of the Trademark or a
registered user, thereof, using it by way of
the permitted use, uses a mark identical
with it or so nearly resembling it as to be
likely to deceive or cause confusion in the
course of Trade, in relation to any goods
in respect of which it is registered.”
See also Section 5(2) of the Trade Marks Act
(TMA).
While the Act is explicit on infringement,
however, for a trademark to be protected
under the Act, it must be registered and
recorded in the trademark register. In Ferodo
Ltd & Anor v. Ibeto Ind. Ltd (2003 – 2007) 5
I.P.L.R., the apex Court asserted that:
“… A trademark if registered gives the
proprietor the exclusive right to use the
Trademark in the marketing or selling his
goods.
And without his consent,
if anyone else uses an
identical Mark ora Mark
so nearly resembling it
as to be likely to deceive
or cause confusion, will
entitle the proprietor to
sue for infringement of the
trademark…”
More importantly, is the
need to tender evidence of
registration by way of an
Extract of Records issued by
the Registrar of Trademarks.
According to the Act, this
is what is required to prove
registration and not the
certificate of registration
per se. This requirement
is evidentially fortified by
the written expression on
the face of the certificate,
which specifically states
www.gipmatrix.com
that the “certificate is not to be used in legal
proceedings”. However, the decision of the
court in Crysterlight Overseas v. Yugolex
Drugs & Anor (1997-2003) 4 I.P.L.R., where
judgement was given against a Plaintiff, who
failed to tender the registration certificate
of its trademark in evidence to prove its
claim for infringement no doubt throws in a
secondary requirement of the actual sighting
of the certificate by the court.
In deciding when a mark is said to be
identical, confusingly similar or so nearly
resembles, the courts have held in British
American Tobacco & Anor V. Int’l Tobacco &
2 Ors (2003 – 2007) 5 I.P.L.R., that:
“…in the exercise of comparison, it is
wrong to take the two Trademarks side
by side to determine whether they are
identical or some close resemblance
exists. The issue is whether the person
who sees or has seen the proposed
Trademark will confuse it with the
existing Trademark, as to create
confusion and be deceived that the
proposed Trademark is the same as the
existing one.”
9

The marks alone must be considered,
divorced from associated features or get up
and the like. Evidence is, however, admissible
to show which of the features shown in the
Register of Trademarks are essential and
which are inessential so as to be unimportant
in deciding questions of infringement. Re.
Ferodo Case.
Two peculiar
reasons attest to the
high propensity of
infringements in Nigeria.
The first is the widespread and prevailing
misconception that the “Letter of Acceptance”
issued by the Registrar constitutes
registration, and the second is the inexplicably
unwilling desires by some proprietors to
pursue potential infringement matters
outside Nigeria’s most populous and major
commercial city, Lagos. Perhaps I should add
a third factor often explained off as “clients’
strategic interest”. Under this nomenclature,
some proprietors, especially with the not-so
established brands, are mindful of exposing
their products to the fireworks of litigation,
whether infringement and more especially
counterfeiting. The perception here is that a
major crackdown will leave the public with a
perception of uncertainty.
There is another layer of secondary reasons
such as non-use and the vulnerabilities arising
from the physical expanse of the country.
Available reliefs and remedies in an
infringement action include injunction,
damages, delivery up for destruction and
accounts of profit. Predetermination reliefs
such as interim (Anton Piller Order) and
interlocutory injunctions are also available.
In the past, there was a proliferation of the
issuance of Anton Piller orders by the trial
courts. Anton Piller is a search, cease and
warehouse order that can be given by the
court to avoid the disposal and destruction of
material evidence. Under the old dispensation,
the order was given on an interim basis,
lasting until a subsequent hearing on the
interlocutory application is taken. The hearing
could then take months with the partially
satisfied aggrieved claimant puffing and
trotting for securing a major debilitating blow
on the operations of the infringer.
However, with the coming into operation of
the not so recent Federal High Court Civil
Procedure Rules, the situation has been
greatly moderated. Quite apart from the fact
that the courts rightly view the order as an
intense discovery process, the Rules provide
that it lapses after 14days, whether executed
or not.
Looking at Nigeria, one very interesting
discovery is that most actions from which
infringement arise embody passing-off and
in some major ways counterfeiting. From our
perspective in the office, this throws up quite
a few potentially damaging (for the infringer)
options outside the scope of the accessible
criminal action that the Merchandise Marks
Act (MMA) offers. For while sections 4 of the
MMA provides that:
Any person shall be deemed to forge a
trademark who either-
(a) Without the assent of the proprietor
of the trademark makes that trademark
or a mark so nearly resembling that
trademark as to be calculated to deceive;
or
(b) Falsifies any genuine trade mark,
whether by alteration, addition,
effacement, or otherwise, and any
trademark or mark so made or falsified is
in this Act to be as a forged trademark.
Beyond the scope of the above-stated
section, is the wider reach and benefit
that the counterfeiting angle brings to
bear when regulatory bodies such as
Standards Organisation of Nigeria (SON),
and National Agency for Food and Drug
Administration and Control (NAFDAC) are
involved in the counterfeiting side of the
argument.
The involvement of these agencies of
government assuages the tedious and
arduous challenge of getting the Police
through the office of the Director of
Public Prosecution to undertake criminal
prosecution of an infringer or indeed a
counterfeiter. This difficulty is accentuated by
the prevailing perception that infringement
and any cause of action arising therefrom
is a private right and public funds should
not be utilised for the protection of private
commercial gains. The backup by these
agencies comes in handy, especially where
multiple entities are committing the
infraction. Needless to say, obtaining a fiat
from the Attorney General to prosecute is a
tall order.
10 www.gipmatrix.com
To conclude
I am of the opinion that a claimant should
be allowed to pursue criminal prosecution of
a counterfeiting act in the same action as an
infringement action; albeit in the light of the
criminal nature of counterfeiting, the evidence
required to prove the same must be beyond
reasonable doubt as provided under Section
135-137 of the Evidence Act, 2011. That this
will involve private prosecution of criminal
matters is not in doubt, to avoid abuse of
the process, where the Attorney General is
of the considered opinion that grounds of
prosecution does warrant such he may join
the proceedings at any stage and exercise his
powers through the use of “Nolle Prosequi” to
extinguish the criminal aspect of the action.
Interestingly, the trial courts are vested with
both civil and criminal jurisdictions as per
the court’s decision in Amiwero v. A.G of
the Federation (2015) 15 NWLR (Pt.1482)
pg.390. The possible end result of this will
be a win-win situation for both the state and
the aggrieved proprietor. For the state, public
funds will be saved in having the private
prosecution of criminal matters arising from
civil action.
Commencement of infringement action
requires a thorough due diligence on the
infringer and the collation of information
such as, address of operation, branches,
factory, importers, storage sites- such as
warehouses, distributors, bankers, etc., this
would assist the court in evaluating evidence
during trial, see Holdent International
Limited v. Petersville Nigeria Limited (2013)
LPELR-21474. More often than not, these
are all done in very discreet manner through
the use of Private Investigators (PIs) bearing
in mind that the Client is faced with a
Catch 22 situation of trying to maintain a
balance between low profile publicity on the
infringement or counterfeiting and at the
same time sending out a message to other
potential infringers or counterfeiters that the
client is resolute in protecting its rights.
Regardless of the
challenges that extant
laws and bureaucracy
may pose, it is important
to note that time, due
diligence, planning, and a
good strategy are of major
essence in undertaking
any contentious action.

New Development against Bad Faith
Applications in China
Background
In recent years, with the in-depth
implementation of the trademark
and brand strategy plus the
continuous promotion of the
reform of trademark registration
facilitation, the number of
trademark applications in China
has been growing continuously.
As a result, the title of the top ranking
on new trademark applications in
the world has been maintained by
China for many years in a row. In
2018, 7.3895 million trademark
applications were unbelievably
filed nationwide with an increase
of 1.416 million over 2017 and a
growth rate of 23.72 percent.
However, among the big filing numbers,
some trademark applications filed by small
numbers of applicants obviously exceed the
real needs of normal operation. In addition,
these small numbers of applicants do not
hoard a large number of trademarks for the
purpose of use, which hinders other brand
owners with normal operation needs in
China from applying for their trademark
applications. Also what is more serious is
that they are willing to transfer the hoarded
trademarks to real brand owners at a very
high price to obtain illegitimate interests.
Malicious hoarding of trademarks disturbs
the market order of fair competition and the
order of trademark registration management
and also wastes administrative and judicial
resources. These kind of “abnormal”
trademark applications are the target which
the trademark administrative authorities
attack emphatically.
Facing the hoarding trademarks in bad faith
and other “abnormal” trademark application
acts, the Chinese Trademark Office and
the Trademark Review and Adjudication
Board of the China National Intellectual
Property Administration of the trademark,
and the people’s courts have taken many
different measures, such as a review in
advance even from the filing stage and an
incorporate review to apply the law strictly.
These measures effectively curb the behavior
of hoarding trademarks in bad faith, such
as possession of public resources without
legal reason and new trademark applications
repeatedly filed by trademark squatters. It also
plays a positive role to maintain the market
order of fair competition and promote the
market main body to use the brand strategy
and achieve innovation and development.
Developments
Recently, a judgment on trademark hoarding
has attracted wide attention in China
among the intellectual property owners.
Wuhan Zhongjun Campus Service co.,
LTD. (hereinafter referred to as Wuhan
Zhongjun) applied for a retrial before the
China Supreme People’s Court because it was
dissatisfied with the invalidation decision of
Mr. Lei Zhao - Senoir Partner at Unitalen
www.unitalen.com
its trademark registration for “shining silver”
in Chinese character No. 13675000. In the
end, the Supreme People’s Court made an
administrative and final ruling which is not in
favor of Wuhan Zhongjun.
The supreme people’s court pointed out in
the retrial ruling: if the trademark applicant
violates the provisions of article 4 of the
trademark law, has no real purpose of use,
and hoarded a large number of trademarks
without justifiable reasons for seeking
improper interests, it may be deemed
to belong to the ‘other improper means’
stipulated in the first paragraph of article 44
of the trademark law.
What did this enterprise do in the
past? Why was it finally considered
by the Supreme People’s Court that
it registered and hoarded a large
number of trademarks for seeking
improper interests, not based on its
normal production and business
activities?
According to the search on the official website
of the Chinese Trademark Office, Wuhan
Zhongjun has applied for a total of 934
trademarks including the the dispute mark
“shining silver”, word mark for “Five eight”,
“Zhifubao shining silver” and “Huixin shining
silver” in Chinese characters, which obviously
belong to other Chinese brand owners, on a
variety of goods and services. Actually, “Five
Eight” is one of the most famous internet
service providers in China, “Zhifubao” in
Chinese character means Alipay which belong
to Alibaba Group and “Huixin” in Chinese
Character looks quite similar to Wechat in
Chinese character. Furthermore, it was even
worse that Wuhan Zhongjun was publicly
selling the trademark on the Internet.
It is impossible to put into use nearly a
thousand trademarks. After inquiring the
major trademark sales websites in China,
it can be found that some trademarks of
Wuhan Zhongjun are listed on the trademark
websites for sale. In addition, according to
the communication between a newspapers
reporter and the agent of those websites, some
trademarks can be sold for as much as 60,000
12 www.gipmatrix.com RMB each at least.
13

According to the investigation of the Court,
the telephone communication between
Wuhan Zhongjun and the agent of Shining
Silver also made it clear that the trademark
application for disputed trademark was made
for profit only through trademark transfer,
rather than its own use. Wuhan Zhongjun
has the sole purpose of a large number of
registered trademarks, which is to seek
improper interests through high transfer fees
of trademarks.
Small series of search also further indicated
that nearly 40 trademarks of Wuhan
Zhongjun are currently pending in the
transfer procedure, not even including the
previously approved transfer. Of course, we
do not know how much they have got for this
illegal business, but overall trademark transfer
profit is very rich to Wuhan Zhongjun.
After the retrial, the Supreme People’s Court
held that the trademark registration of Wuhan
Zhongjun was not based on the needs of its
normal production and business activities, but
for the purpose of hoarding a large number
of trademarks and seeking for improper
interests, which constituted the situation of
“obtaining registration by other improper
means” stipulated in the first paragraph of
article 44 of the current Trademark Law of
China.
Apart from applying for a large number of
trademarks for the purpose of making a
profit, “other improper means” of hoarding
trademarks also includes that:
1. A large number of trademark
applications imitate others famous or
well-known trademarks;
2. A large number of trademark
applications imitate other famous
personal names, copyright, and other
prior rights;
3. A large number of trademark
applications improperly occupy public
resources;
4. Beyond the use requirements, a large
number of trademark registrations
imitate place names, jargon, and other
public resources.
For example, Shanghai Junchang Information
Technology co., Ltd. and its affiliated
companies have applied for nearly 5,000
registrations for place names below the county
level. The Chinese Trademark Office rejected
the application for trademark registration on
the basis that it had the intention of unjustly
occupying public resources, disturbing the
normal order of trademark registration and
easily causing adverse social effects.
In another case, Guangzhou 43999
Information Technology co., Ltd. applied for
more than 9,000 trademarks, among which
210 were opposed by different right holders.
The Trademark Office combined 39 trademark
oppositions together to consolidate with
different cases and speed up the procedure.
Also, Shanghai Wuyue Information
Technology co., Ltd. applied for more than
500 trademark registrations, among which 77
were opposed by different right holders, and
the Chinese Trademark Office dealt with 13
of them together...In these cases, the Chinese
Trademark Office held that related enterprises
apply for a large number of trademark
registrations and it is contrary to the principle
of good faith, disrupting the normal order
of trademark registration management,
trademarks filed by these enterprises shall not
be registered.
Next steps
According to current trademark
regulations, guidelines in China, there
is a limit to identify and take actions
against bad faith applications during
the substantial examination stage. To
eventually solve the problem of bad
faith applications, China is considering
amending Trademark Law again and
adopting the common law system to
emphasise the idea of intent to use. It has
already been suggested that when the
applicants file new trademark applications,
they shall also submit a declaration in
which to indicate where the relevant
trademarks have been used or will be used
and also include related pieces of evidence
furthermore the Chinese Trademark
Office shall examine the relatedness
between the business scope of the business
license of applicants and goods or services
covered by trademark applications.
14 www.gipmatrix.com www.gipmatrix.com
15

BORDER MEASURES
BORDER MEASURES TO ENSURE THE SAFEGUARDING OF
INTELLECTUAL RIGHTS
Intellectual Property enforcement
and border measures are vital
to detect those foreign trade
operations in which the rights of
intellectual property are violated.
Generally, well-known trademarks are
those which have such a great reputation
that, upon registration pursuant to local
law (and regardless of the country or
class), they are officially recognised for
protection and distinction worldwide.
Improvements in
Border Measures for
IP Rights
Public authorities and members of the private
sector have assumed the great challenge
of ensuring the recognition of Intellectual
Property Rights by improving the IP legal
framework in Andean countries. There is
an obligation of members of the Andean
Community to introduce border measures for
the protection of intellectual property rights.
Specifically, for Peru, and as part of the
enforcement of the Trade Promotion
Agreement entered between Peru and The
United States in 2008, the Legislative Decree
number 1092, and its regulation (Supreme
Decree No. 003-2009) entered into force on
the 1st of February 2009, approving border
measures for the protection of copyrights or
Dr. Oscar Mago - founding partner and CEO of
OMC Abogados & Consultores www.omcabogados.com.pe
related rights and trademark rights, including
well-known trademarks.
The precautionary measures available to
enforce well-known trademarks in Peru are
immobilization, seizure or withholding of the
merchandise.
Such border control measures can be initiated
by a citizen, a legal entity or the customs
administration. Peruvian customs are able to
perform spontaneous inspections of goods
if they have reasonable grounds that are
counterfeited or pirated and cannot be held
liable for any damage to inspected goods.
When requesting protection at the borders,
the petitioner will be required by the customs
administration to deposit a bond to cover
possible losses or damages caused to the
importer, exporter, and/ or consignee of the
goods resulting from any suspension of the
release of non-infringement goods. This bond
must be a sum equivalent to 20% of Free on
Board (FOB) value of the goods. In the case
of perishable goods, the guarantee shall be
constituted by 100% of the FOB value of it.
Merchandise under US$ 200 FOB value will
not be affected.
In order to verify the ownership of the
relevant goods and for them to clear customs,
trademark owners (directly or through their
legal representatives or agents) must be
registered in an official database kept by the
customs administration, who will liaise with
the Peruvian Trademark Office (INDECOPI)
for the purpose of registering rights holders.
There is a recent case of the mark
ANGRY BIRD, which is a well-known
trademark owned by the firm
ROVIO ENTERTAINMENT LTD.
Due to the success of this mark and its
products and services involved, many persons
are trying to introduce and sell counterfeited
products bearing this mark in Peru. The
number of goods entering the Peruvian
market is so big, that the owner is constantly
summoned to appear before the Judiciary.
Also, police and judicial notifications
are received to confirm the trial initiated
ex-officio by the Public attorney. As most
products are made abroad and imported
into our country, it is not possible to find the
factory or source of these knock-offs that
infringe the owners IP rights; consequently,
the only way to stop these infringements
is through Peruvian customs, which,
subsequently, is doing an excellent job!
The process seeks to be brief. If the accused
has been caught in the infringement act,
or has confessed the commission of the
infringement, or the elements of conviction
are sufficient and evident, the Public Ministry
starts the criminal process and promotes the
application of the principle of opportunity
(Principio de oportunidad) which has the
intention to reach an agreement between
both parties to compensate for damages
and losses that have been incurred. Another
requirement to apply for this principle is when
the damage caused does not have a significant
impact on consumers and the penalty to be
imposed is minimal.
These border measures
are very important to
avoid that third parties
exploit the prestige of the
well-known trademark,
with low-quality
products and also for
16 www.gipmatrix.com www.gipmatrix.com
consumer protection.
17

IP ZIMBABWE
SafariRenewals
. . . P r e s e r v i n g Y o u r R i g h t i n A f r i c a
Since 1992 ……
YU-LI TSAI
LU-FA TSAI
Is Zimbabwe a part of the global conversation on
intellectual property rights?
C
M
Y
CM
MY
CY
CMY
K
Safari Renewals LTD is a leading Intellectual Property NIPB renewal
company in Africa handling IP renewal services in all African
countries Nincluding OAPI and ARIPOB+ The company was primarily
established to provide high quality and affordable IP maintenance
services to the African community+
Falomo1Ikoyi6 Lagos Nigeria P+O+Box @6464
5078ON3B 738 678 34866O5078ON3B 847 033O@867
renewals@safarirenewals+com
w w w + s a f a r i r e n e w a l s + c o m
§ Quality | Reliable | Invaluable §
IP Right Prosecution & Litigation
Corporate Legal & Consulting
IP Value-Added Services
Focus: Patents, Trademarks, Copyrights, Trade Secrets, Unfair Competition
Licensing, Counseling, Litigation, Transaction
Territories: Taiwan, Mainland China, Hong Kong, and Macau
Fields: Mechanics, Chemistry, Pharmacy, Biology, Electronics, Optics,
Telecommunications, and Computer Sciences
Address: 13th Floor, 27, Sec. 3, Chung San N. Road, Taipei, Taiwan
Telephone: 886-2-25856688
Fax: 886-2-25989900/25978989
E-mail: email@deepnfar.com.tw
Web site: http://www.deepnfar.com.tw
As the rest of the world
commemorated World Intellectual
Property Day on the 26th of April,
as an ordinary Zimbabwean citizen
I pondered on the relevance of this
day to the country. It was in this
quandary that it occurred to me that
there was every reason to celebrate
some of the country’s achievements
with the rest of the world. There are
some significant strides which are
worthy of celebration.
Firstly, the mere reason that Zimbabwe has
recognised intellectual property rights as a
constitutional right, in the new constitution
is reason enough for celebration. Section 71
of the bill of rights under property rights
provides thus;
“Subject to Section 72, every
person has the right, in any part
of Zimbabwe, to acquire, hold,
occupy, use, transfer, hypothecate,
lease or dispose of all forms of
property, either individually or in
association with others.”
Literally interpreting this provision,
intellectual property fits into this category as
it says “all forms” of property. In addition to
that, the constitution further accommodates
this type of property in its definition of
property being “property of any description
and any right or interest in property”.
Ms. Brenda Matanga Managing partner at
B Matanga IP Attorneys for Africa www.bmatanga.com
Our celebration, however, would have been
more elaborate if this right had been clearly
provided for without having to deeply engage
our legal minds. A more apparent clause
which leaves no doubt to an ordinary person
that this right is included in the bill of rights
would have been more preferable. Some
countries such as the United States of America
have clearly embedded an independent Clause
in Article 1, Section 8, and Clause 8 of their
Constitution recognising this right. The
Congress under that provision is granted the
powers to promote the progress of science and
useful arts by providing inventors the limited
but exclusive right to their discoveries.
Be that as it may, Zimbabwe is part of
the global conversation as it has publicly
embraced intellectual property by becoming
a party to the international legal instruments
that govern intellectual property. Like many
other countries, it is a member of the World
Intellectual Property Organisation (WIPO)
through the WIPO Convention of 1967.
This is the constituent instrument of the
specialised agency of the United Nations.
WIPO’s objective is to promote the protection
of intellectual property worldwide and to
ensure cooperation among the intellectual
property unions established by the treaties
that WIPO administers. Zimbabwe has been
a party to the following; Paris Convention
(Industrial Property), since April 1980, Berne
Convention (Literary and Artistic Works),
since April 1980, Patent Corporation Treaty
(PCT) (Patents), since June 1997. Zimbabwe
is, therefore, a part of these globally
recognised legal rights. As a major milestone,
Zimbabwe is a member and signatory to the
World Trade Organisation’s (WTO) celebrated
Trade-Related Aspects of Intellectual Property
Rights known as (TRIPS Agreement)
which sets out the basic minimum
standards regarding the protection
of intellectual property. Unlike many
other countries, Zimbabwe has gone
a step further and has incorporated
these minimum standards in its
legislation. As a country, it has the
necessary intellectual laws in place
which are TRIPS compliant. To this
alone, we celebrate.
A notable development is its recent
inclusion in the international trademark
filing system community, as a member of
the Madrid Protocol. Through The General
Laws Amendment Act, the protocol was
domesticated by amending the Trade Marks
Act (Chapter 26:04 and incorporating the
protocol in the Trade-marks Act. A mark
registered under this protocol is accorded the
same protection as a trademark registered
directly in Zimbabwe.
Regionally, Zimbabwe is a member and
signatory to the African Regional Intellectual
Property Organisation (ARIPO)’s protocols:
- The Lusaka Agreement which establishes
the organisation, the Harare Protocol on the
protection of patents, and industrial designs
together with the Banjul Protocol which
governs the protection of trademarks amongst
the member countries. Zimbabwe is privileged
that this regional office is housed in Harare
and can be directly accessed by Zimbabwean
citizens.
It’s also worth noting that Zimbabwe has a
fully-fledged office (Zimbabwe Intellectual
Property Office-(ZIPO) that is responsible for
the grant and administration of intellectual
property rights in the country. One can
indeed protect their intellectual property
interests in Zimbabwe. The country has
institutionalised IP and has come up with
an IP policy and implementation strategy
to intentionally develop its IP. Though in its
infancy, this blueprint is certainly an essential
guide in a country that exudes seriousness in
promoting innovation and IP creation.
To note the importance of IP enforcement
to the country, there is a special court (IP
Tribunal) that has been created through
an Act of Parliament to specifically handle
IP matters. A pool of judges well versed in
the area is starting to develop and lawyers
who practice in this area of the law exist.
All that Zimbabwe needs to do is build its
jurisprudence in this area of the law and
expose more of the local IP holders to this
global conversation so that they become more
proactive in protecting these legal rights.
Otherwise, this Southern African country is
not doing too badly at all!
18 www.gipmatrix.com www.gipmatrix.com
19

TRADE SECRETS
SRI LANKA
Julius and Creasy is one of the oldest civil law firms in Sri Lanka. Founded in 1879, the firm has
established itself on rich tradition and the highest professional principles. Julius and Creasy’s
wealth Scope of expertise of and the experience law on in a wide trade range of secrets/ specialized fields undisclosed
of Law enables it to offer
innovative legal and business solutions to a diverse, sophisticated and high profile clientele.
information in Sri Lanka
Our firm from its inception has been involved in intellectual property work. We are presently
handling over 50,000 files of which about 15,000 are current and intellectual property involves
both contentious and non-contentious matters. We file a large number of trademark
applications for overseas clients being instructed by our associates in several countries
including Today, UK, trade European secrets are Union, among USA the , India, Ms. Singapore, Anomi Wanigasekera, Hongkong, Partner Australia & Head , New of Intellectual Zealand, Property & Ms.
Japan
most
and
important
Korea.
properties businesses Navindi Naotunna, Associate at julius & Creasy www.juliusandcreasy.com
own. World Intellectual Property
Organization (WIPO) has defined
In trade contentious secrets matters as “any we confidential represent clients both at the National Intellectual Property Office in
opposition business information proceedings which and provides in infringement proceedings before Courts, Infringement
proceedings an enterprise are a instituted competitive in edge”. the Commercial High Court and where necessary criminal
proceedings Secret formulas, are also instituted processes, in the and Magistrate’s Court.
methods used in production are
Although among our the practice information is to a protected great extent trademarks we have substantial portfolio of patents as
well. as A trade large secrets. part of A this trade portfolio secret is is related to PCT applications filed in Sri Lanka, We also file
number
proprietary
of design
knowledge
applications
and it is
for
up to
overseas clients in Sri Lanka and for Sri Lankan clients
the holder to protect that knowledge.
overseas through our associates in various countries. We also advise Sri Lankan and overseas
For example, the Coca-Cola recipe
companies
and Google’s
on copy
search
right
algorithm
issues
are
including reviewing of copyright agreements and advise
publishers the world’s both most in Sri famous Lanka trade and secrets overseas.
Trade secrets are difficult to maintain over a
period of time. Secrecy does not stop anyone
Ms. else Anomi from inventing Wanigasekera, the same holder product of or LL.M (Wales) and Diplomas in Intellectual Property Law,
International process independently Trade Law, and Banking exploiting and it Insurance Law of Institute of Advanced Legal Studies of the
commercially. It does not give the holder
Incorporated
exclusive rights.
Council
Employers
of Legal Education
become
heads the Intellectual Property Division of our firm. Ms
Sandamali vulnerable Kottachchi, when employees holder with of trade LL.B (Colombo), Master of Arts – International Relations ,
Diploma secret knowledge in Forensic leave Medicine employment. & They Science and Diploma in Computer System Design is a senior
should ask employees to provide a written
professional associate in the Firm’s Intellectual practices. Property The Act Division specifically and there recognises are 8 other professional
undertaking that they will not compete with
disclosure, acquisition or use by others of
associates attached to the Intellectual Property Division.
the employer’s business when they leave, in
secret information without the consent of the
addition to signing a confidentiality agreement.
person lawfully control of that information to
However, these undertakings must be drafted
constitute an act of unfair competition (s160
carefully as to not to restrict Tel.94 the employee’s 11 4335159 Fax: (6)). 94 In 11 keeping 24466 with 663, the +94 TRIPS 11 2435 requirements 451
right to earn a living.
Email: jacey@sltnet.lk; s160 (6) (c) pts@juliusandcreasy.lk
of the Act requires “undisclosed
Internet: information” www.juliusandcreasy.com
to be accessible to persons
within the circles, the information must have
The law in Sri Lanka
commercial value because of its secret nature
The TRIPS Agreement was the first and must be the subject of reasonable effort
international agreement to protect trade on the part of the right holder to maintain its
secrets expressly (Article 39). In Sri Lanka, secrecy. The unlawful disclosure, acquisition or
no formal definition of a trade secret exists use of the undisclosed information may result
and there is no restriction as to the type of from through breach of contract or breach
information that can constitute a trade secret. of confidence. The provisions relating to an
The protection of trade secrets forms part of unfair competition are applicable in Sri Lanka
the general concept of protection against unfair independently and in addition to the other
competition. The law relating to protection provisions of the Act protecting inventions,
against unfair competition was first introduced industrial designs, marks, trade names,
to Sri Lanka in 1979 under the provisions of literary, scientific and artistic works and other
section 142 of the Code. Currently, Section intellectual property (s160(b)). Any person
160 of the Intellectual Property Act 2003 or enterprise or association of producers,
(the Act) governs unfair competition in Sri manufacturers or traders aggrieved by any act
Lanka. It is based on WIPO Model Provisions or practice referred to in section 160 of the Act
on Protection against Unfair Competition. is entitled to institute proceedings to prohibit
S160(1) of the Act defines unfair competition the continuance of such act or practice and
as to any act of competition contrary to obtain damages for losses suffered as a result
honest practices in industrial or commercial of such act or practice (s160(7)). Section
160(9) stipulates that the protection granted
under unfair competition is in addition to the
common law rights.
Cases
A typical case for breach of contract involves the
disclosure of secret information by an employee
who rightly obtains secret information during
the course of his employment but afterward
uses it to use for his own advantage.
In Diesel and Motor Engineering PLC v,
Chathura Milinda Wickremasinghe and
Buddika Malinda Kuruklasooriya (HC/ Civil/
31/ 2017/ IP) Ruwan Fernando J summarized
the trade secret law in Sri Lanka. In this case,
both the Defendants were involved with
the Executive Management and were privy
to all the confidential information and/or
undisclosed information and commercially
sensitive business information belonging to
the Plaintiff in reliance of the Non-Disclosure
Agreements entered with the Defendants.
Both of them resigned from the employment
of the Plaintiff on the same day and formed a
company named “M & M Solutions (Pvt) Ltd”.
The Plaintiffs inter alia sought injunctions
against the Defendants restraining the
38 TH ANNUAL
CONFERENCE
In a period of change within the
EU, cool heads and constructive ideas
are needed. As the UK seeks to define its
future relationship with the EU we might
see the shape of the ‘New Horizons’ through
the ‘haze of uncertainty’ that currently
clouds our view.
Scan QR code
to view details
www.ecta.org
20 www.gipmatrix.com www.gipmatrix.com
21
DETAILS

directly and/or indirectly use Plaintiff ’s
recipes with respect to Bubble Tea and
Plaintiff ’s undisclosed/ confidential/
commercially sensitive business information
in respect of drink costs and sea freights.
Northon's Media PR & Marketing Ltd
Defendants from directly or indirectly making
use of and/ or disclosing confidential and/or
undisclosed information and/or commercially
sensitive business information belonging to
the Plaintiff. A key issue was whether the list
of customers and suppliers and methods of
doing business are freely available in the public
domain and amounts to Defendant’s skill and
knowledge applied and experience gained
during the employment. The Defendants
further pleaded that the Plaintiff ’s action
constitutes a restraint of trade.
In Finality Rentokil (Ceylon) Ltd v
Vivekanantha (1952) 2 Sri Lanka Law Reports
346, the Court held that the employer cannot
prevent the ex-employee from using the
knowledge, skill, and experience gained during
the employment because the public policy
requires that every man shall be at liberty to
work for himself.
In the UK Court of Appeal decision in the case
of Faccenda Chicken Ltd v Fowler and others,
the Court held that not all the information such
as sales information in general or information
about price could be regarded as trade secrets.
They amount to a trade secret only if there is
an express restrictive covenant. In Printers &
Finishes Ltd v Holloway (1965) 1 WLR 1, the
Court noted that information the future use of
which will not be restrained is information not
readily separable in the mind of the employee
from other information which he is free to
use, and the actual or threatened misuse of
information which has been deliberately
memorized for the purpose of its being carried
away and used elsewhere will be restrained.
After considering the above cases Ruwan
Fernando J held that if any information
acquired by an employee during employment
as part of the skill, knowledge, and experience
can be separated from other confidential
information of commercial value that becomes
the property of the old employer, the employee
is at liberty to use such information. If such
information cannot be so separated from
the employer’s confidential information,
the employee is prevented from using such
information after his employment has ended.
The court granted an interim injunction as
the Plaintiff prima facie established that the
Defendants had acted in a manner contrary to
honest commercial practices which constitute
an act of unfair competition in section 160(6)
of the Intellectual Property Act No 36 of 2003.
Misuse of trade secrets may also occur after
acquiring the information by violation of
a duty of confidence, or after acquiring the
information by theft. In Mabroc Teas (Pvt)
Ltd. v Dilan Shammi Wijeyesekera H.C.Civil
60/2016/IP, the Plaintiff contended that the
Defendant being a Director of the Plaintiff
company was directly involved with the
production and distribution of “Bubble Tea”
and also in respect of the Plaintiff ’s tea export
industry. He had been made privy to all the
confidential information belonging to the
Plaintiff. After resigning from the Plaintiff ’s
company the Defendant had pursued to obtain
confidential information and to unlawfully
acquire the Plaintiff ’s client list through emails
with the Plaintiff ’s
employers. R.
Marikar J refused
to grant interim
relief preventing
the Defendants
from using the
undisclosed/
confidential/
commercially
sensitive business
information of
the Plaintiff which
has been obtained
through emails as
the Plaintiff has not
disclosed a prima
facie case against
the Defendant. His
Honor held that the
Plaintiff has failed
to prove on balance
of convenience on
what capacity the
Defendant acted
as a Director, what
activities he had
and on what type
of confidential
information he
obtained and what
are his entitlements.
However, the
Plaintiff and the
Defendant entered
into an overall
settlement where
the Defendant
agreed not to
To conclude
The following general observation may
be made in respect of trade secrets. An
employee is under a duty not to divulge
any of the trade secrets of the employer
imparted to the employee in confidence.
It is common for employers to enter into
a contract restraining trade to protect
trade secrets. However, to enforce such a
contract it has to be reasonable and should
not restrict employee’s freedom to trade. By
contrast, contract law cannot be applied in
all cases of misappropriation of undisclosed
information. When a third party who is
not a party to the contract misappropriates
the undisclosed information, the terms of
the contract do not apply to that person.
However, even in the absence of a contractual
relationship between the parties trade secret
holder can rely on the doctrine of breach of
confidence. Trade Secrets Law does not address
the mistaken acquisition of a trade secret. The
law should prohibit the use or disclosure of a
trade secret obtained by mistake if the person
has knowledge of the mistake at the time of his
use or disclosure. If trade secret information
can be developed independently or through
reverse engineering, it cannot qualify as misuse
of a trade secret.
OAA Law
ONAMBELE-ANCHANG & ASSOCIATES LAW FIRM
Onambele, Anchang & Associates Law firm (OAALAW) was founded in
1990 by Joseph Antoine Onambele who was later joined by Mary Concilia
Anchang. Both managing partners. Proud to be the pioneer bilingual and
bijural firm practicing civil and common law in all jurisdictions of
Cameroon, the CEMAC region and abroad, the firm owes its maturity in
legal services through innovative and resilient research coupled with hard
work for clients across the globe.
OAALAW equally boasts of 3 decades of practice as a full-service
corporate law firm. OAALAW represents and assists clients in matters
that include Intellectual l Property Protection, filings, mergers, prosecution,
litigation, telecommunication, mining, real estate, finance corporate, ADR,
joint venture, IPP, BOT in infrastructure, etc
Mary Concilia accredited with the OAPI is the pioneer IP lawyer of the
African Union community IP system in Africa. Thus making OAALAW the
pioneer IP agents and lawyers in the entire OAPI region.
Mary Concilia is equally the 1st female African country member of the
ICC international court of arbitration in Paris, a position she held from
2006-2010.
She is the founding chair of the African Chamber of Trade &
Commerce (ACC) created in 2015.
Join us at OAALAW, the most dynamic one-stop-shop address for,
quality efficiency, diligence, and competitiveness for total
satisfaction.
Contact:
Mary Concilia Anchang
Partner Onambele, Anchang & Associates
Opposite the United States Embassy
Rosa Park Avenue- Golf Ntougou
BP. 6262 Yaounde Cameroon
Tel (237)2 22 20 97 76 M (237) 677 5815 51 Fax (237) 22 21 53 41
oaalawpartners2@gmail.com
info@oaalaw.cm
www.oaalaw.cm
Dedicated to professional women working in
the field of IP Law & Innovation
We endeavor to give professional women from all over the world that work
in IP Law and innovation a voice and a platform to showcase their
expertise with other like-minded professionals working in these fields.
Annual publication
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The Women's IP World Annual 2019/2020 will be launched at
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If you would like to be involved in this first ever annual publication
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22 www.gipmatrix.com www.gipmatrix.com
23

DOMAINS GDPR
The 33rd MARQUES Annual Conference
GDPR vs WHOIS:
Time for a paradigm change?
#MARQUES19
BRANDS CONFRONTING CHANGE
Tuesday 17th - Friday 20th September 2019
*Early Bird Discount*
Available to members of MARQUES for bookings
received before Friday 28th June 2019
Register online at www.marques.org/events
Citywest Hotel,
Garters Ln, Saggart, Co. Dublin,
D24 KF8A, Ireland
The latest event in history about to unfold
manifests as a strong letter from NTIA
(US National Telecommunications and
Information Administration) to ICANN CEO,
pushing, in no uncertain terms, ICANN to act
upon dealing with WHOIS anonymity issues.
Assistant Secretary for Communications
and Information and Administrator at
NTIA, David J Redl, states that “Given
the impact that…European General
Data Protection Regulation …has had
on the WHOIS…now …is time to …
swiftly create a system that allows for
third parties with legitimate interests…
access to non-public data critical to
fulfilling their missions”.
A strong conclusion follows that unless
“…clear and meaningful progress…”
is made, “...alternative solutions such
as calls for domestic legislation will
…be considered.” (1)
As the issue is turning into a State matter, it
might be time to review how WHOIS ended
in this situation as collateral damage, what
exactly is at stake and if finding a solution to
Private data access might lead to a paradigm
change.
Looking at collateral
damage…
Back to the beginning, what is
GDPR and why did it impact
WHOIS so much?
Applicable since May 25, 2018, the General
Data Protection Regulation applies in
all Member States of the EU. It has been
launched to ensure “everyone’s…right to
the protection of personal data…under the
Charter of Fundamental Rights”. It thus
enforces 4 main principles: Right of Access,
Right to Portability, specified Data Protection
Requirements and most of all, Privacy
Rights including non-disclosure of
private data.
The full spectrum is delivered with
Extraterritorial effect (legislation extends
to companies outside the EU as soon
as an EU individual or data subject is
concerned) and increased sanctions.
Non-compliance penalties can amount
to whichever is the greatest of 4% of
total worldwide Company income or 20
million euros.
Now if this Policy has been launched
primarily to give back Consumers some
control over the extensive collection (and
use) of personal data by such online actors as
GAFA and Online marketers, Domain Names
were nowhere on this radar.
They were mostly collateral damage.
The WHOIS is a collection of contacts
pertaining to the Domain Name, collecting
and disclosing a good amount of private data
(Registrant Name, Surname, address and
email for example).
So when GDPR came into view, after years of
general non-consideration, Registrars realised
their very nature made them at minimum
data collectors and possibly data controllers.
As ICANN Contracted Parties, they suddenly
realised as well that they were caught between
two irreconcilable compliances: their ICANN
contract (RAA) making it mandatory to
deliver access to a “fully-data-disclosing”
WHOIS and GDPR, threatening unbearable
financial sanctions should private data be
disclosed through the same channel.
There was no other possible choice for
impacted Registrars but to make it clear to
ICANN they would comply with GDPR
regulations, close the access to general
WHOIS data and push on discussions to
reach a last-minute agreement.
ICANN and its community had to react and
it was indeed a reaction more than a planned
move. When it became clear that Registrars
would abide by their local laws over the
Mr. Jacques Blanc, Managing Director, ProDomaines
www.prodomaines.com
RAA, ICANN made the new status official
by creating the Temporary Specification
for gTLD Registration Data (“Temporary
Specification”) (2). It came into effect on 25
May 2018 for operators of gTLD registries and
ICANN-accredited Registrars. To be reviewed
once a final solution was reached through
the Expedited Policy Development Process
(EPDP) Group, tasked with creating the future
WHOIS policy in accordance with the new
situation.
Meanwhile and as a visible consequence, most
WHOIS had been anonymised and contacts
masked but for Registrar, Registration and
Expiry date, plus DNS Technical data.
Remember WHOIS database was conceived
as a basic list of contacts for Domain Name
Management, but then became Domain Name
primary public record, figuring the ID card
of a Domain name and nexus of research
and investigations on Fraud, Counterfeiting,
and Cybercrime, including Trademark
infringement.
Hence consequences of its anonymity struck
hard on the IP Community: suddenly, Law
and IP Enforcement have become harder to
achieve, aftermarket entities such as Domain
Marketplaces and Escrows struggle to check
the reality of ownership, and even UDRP had
to modify its workflow.
The only entities (other than infringers, that
is…) that might have beneficiated of the
WHOIS getting dark are the individuals, now
being spared Spam coming from the contact
address collection by harvesting bots.
24 www.gipmatrix.com www.gipmatrix.com
25

J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
One of the oldest and leading IP companies in Bulgaria
Professional, cost effective services and quality advices
Areas of practice:
*IP Protection
*IP Enforcement
*Anti-counterfeiting
*Litigations
*Domain name registrations
*IP watches
PO Box 1152, BG-1000 Sofia, Bulgaria
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
e-mail: jvp@jvpatents.com
www.jvpatents.com
26
www.gipmatrix.com
What is the way ahead?
So where are we now?
The Community has been discussing a bunch
of possible solutions which all have their pros
and cons. ICANN’s Temporary Specification
states that “users with a legitimate and
proportionate purpose for accessing the nonpublic
personal data will be able to request
such access through registrars and registry
operators”.
After discussing for a few weeks (months.. ?
) to reach an agreement upon such terms as
“users” “legitimate”, “proportionate”, one
can realise the heart of the matter is Liability:
who is to bear the burden of GDPR financial
sanctions in case of private data disclosure?
The actual data collection being made through
Registrars, the said parties are adamant they
do not have neither resources nor expertise to
balance “legitimacy” and “proportionality” of
disclosure requests on their own, much less so
when requests might number in thousands. So
a series of alternatives have been discussed:
-Build a sufficiently thorough
accreditation process and give any
accredited entities full data access. The issue
is on the accreditation process itself (who, to
what extent, for how long…), and liability in
case of a faulty disclosure mistake.
-ICANN becoming the central data
repository to which collected data and
disclosure requests would be redirected. The
issue is ICANN prevalence and liability on
behalf of the Registrars over local legislation.
Accreditation process issue remaining.
-Separate Public and Private data
so Public data are disclosed while Private
data is handled through one of the previous
processes. There are issues with Registrars
resources to flag an existing 150 million
Domain Names and the fact that Private
and Public data can be mixed. Accreditation
process issue still stands.
Finally, the EPDP phase 1 report came
through with a majority adoption of measures
such as administrative contact no longer
being part of collected data, technical contact
becoming optional and study of a process to
determine if the Registrant field contains any
information that could lead to private person
identification. Should that be the case, data
publication becomes opt-in/opt-out
The road is still long until this becomes an
actual applicable Policy, so maybe it’s time to
change the paradigm and ask ourselves: what
do we really want and are we ready to go all
the way?
Paradigm change
Quote David Redl again: WHOIS is “an
incredibly valuable tool for governments,
businesses, intellectual property rights
holders, and Internet users around the world.”
Should we endorse this line of thought, then
we have to presume this (priceless) WHOIS
data (Community is fighting to disclose again)
is truthful, reliable and reflects the reality of
real contacts behind the Domain Name.
Well…
Let’s face it: in its actual state, the WHOIS
is declarative. It was initially conceived as a
basic list of contacts, nothing more. So apart
from some restricted ccTLDS extensions, the
published data is not systematically verified,
despite ICANN WHOIS Data and Accuracy
policy (3). Hence, it’s often inexact if not
outright bogus.
As we recognise this fact, let’s change the
paradigm.
Domain Names actually support most of
Online Business exchanges: websites, emails,
extranets, DNS naming… Add Enforcing
activities mentioned above, this makes
Domain ID (WHOIS) one of the most web
structuring information pieces, the exactitude
of which should be paramount.
And if WHOIS truthfulness is paramount,
maybe we should make it so. And look at
moving from a declarative model to an IDvalidated
model. From a “list of contacts” to
a real ID document, supporting the growing
role of the considered asset.
Such a model exists: Trademark
Clearinghouse, for instance, has demonstrated
the relevancy of initially validating your
identity (ID and Trademark rights on
subscription) then use this ID further along
through a digital ID marker (SMD file) which
enables further “entity validated” actions
(NewGTLDs Sunrise registrations).
Such a system could be made RGDP
compliant and preserve privacy while hosting
validated and
accredited-available
data in a central
repository. Could
something similar
apply to Domain
Name registrations,
thus changing
the nature of the
WHOIS? No doubt
this would give a
serious boost to
Law and IP Rights
enforcement, by
ending a ramping
and often damaging
lack of clean data.
Now some could
resent this end of
anonymity as a
shrinking of freedom
and a booming of
regulation. Is the
community ready for
such a move? Are we
ready to trade more
regulation for more
security, a heavier
way to do business
for better recognition
of the actors behind
the scene? And
maybe a decrease
of domain name
numbers due to
tougher barriers put
on registrations?
www.gipmatrix.com
Protect your IP online
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Every possible extension
This is as good a
time as any to try
and find out and,
maybe a better
time than before.
Sources:
(1) https://www.internetnews.me/wp-content/uploads/2019/04/
NTIA-Ltr-to-ICANN-re-WHOIS-April4-2019.pdf
(2) https://www.icann.org/resources/pages/gtld-registrationdata-specs-en
(3) https://www.icann.org/resources/pages/whois-dataaccuracy-2017-06-20-en
BIO
Jacques Blanc, Managing D irector, ProDomaines
Jacques has been working in the internet world since 1994, so
he tends to favor the long strategic view whenever looking at
the first truly all-encompassing worldwide media.
Starting 1994 as a Financial Communications Director at
Mediagérance, he became Head of Biz Dev. at Email Vision
(Emailing French N°1) in 2000. Jacques entered the IP and
Domain Name business in 2002 as VeriSign France Sales
Manager. Following two divestitures, Jacques was successively
Southern EMAE Manager for Melbourne IT DBS (2008),
taking a passionate part in the. BRAND episode in a major
Brand Protection Company, then Digital Brand Consultant
for CSC DBS (2013) Corporate Domain Name Management
N°1.
Jacques is now Managing Director of ProDomaines, an
ICANN accredited Corporate Registrar based in Bordeaux.
He is also part of ICANN Accountability and Transparency
ATRT3 Team.
Jacques holds a License in Public Law and a Master in
International Law (University Paris1 Panthéon-Sorbonne),
as well as an Engineering Degree in International Sales
(C.E.S.I.).
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27

WWW.CANAANSOLICITORS.COM

AI:
PATENTS
Is it changing
patent prosecution?
Invention submission
AI has proven to be valuable to patent
committees during the invention submission
process. Patent committees typically receive
an invention submission and want to do
a high-level prior art analysis before even
evaluating the submission to determine if it is
worthy of patent protection. Committees want
an easy method to understand if the invention
is novel. With AI, they can take the text of
the invention disclosure and put it into the
system. They do not even need to know how
to structure a Boolean search because, within
moments, they will see highly predictive
results.
Some feel that artificial intelligence
(AI) is revolutionizing the way
patents are prosecuted, while
others disagree. When we hear
this term used in relation to patent
prosecution, we immediately think
of prior art searching. However, AI is
being employed in several other ways.
As Susan Krelitz, adjunct professor
of Intellectual Asset Management at
the Mitchell Hamlin School of Law
said, “IP Law firms and departments
will use AI if it makes their life
easier, faster or less expensive. It is
that simple.” Let us discuss each of
the following areas, with specific
examples, where AI has proven to be
easier, faster or less expensive:
• Prior art searching
• Invention submission evaluation
•Watching the competition and
identifying new competitors
•Directing R&D with white space
landscaping
•Opposition Invalidity Searching
Prior art searching
The most obvious use of AI within the
IP industry is prior art searching. AI and
machine learning are technologies that
allow us to easily and quickly gain insight
into massive amounts of patent data. The
traditional method of conducting a prior
art search is to have a researcher construct
a query into a patent database. The query
will identify published patents that meet the
specific criteria in the query. The criteria may
include class codes, keywords, exclusionary
words, etc.
The success of the prior art search is
dependent on the skill of the searchers. Did
they consider the right classes? Did they
select the right keywords? Did they exclude
keywords, without which the results will be
overly inclusive? Did they use the correct
Boolean operators? In other words, the search
inquiry will return exactly what the researcher
requested, nothing more and nothing less. The
result of a traditional search is usually a long
list of patents that the searcher must then sift
through and prioritize.
AI-based searching is different. It processes
human language with flexible semantics.
There is no need to learn Boolean search
structures. AI allows the user to input any
description of an invention directly into the
system, which then automatically extracts the
meaning of the text and identifies patents with
a similar purpose or technical content. The
system intelligently analyses the data and is
not dependent on the specific quires selected
by the searcher.
Take Octimine, for example. An innovative
start-up in the field of IP management
and recognized as one of the leading AI
platforms, Octimine takes semantic patent
search, analytics, and machine learning to
the next level. Founded in 2015 by former
Max-Planck-Institute and LMU Munich
researchers, the company was acquired by the
Dennemeyer Group in October 2018 and can
assist its users, through AI, in various aspects
of patent prosecution.
Octimine has a simple user interface but also
uses a hybrid approach for more flexibility.
The software solution allows a searcher to
input natural language text in any format and
refine the scope of the search by using specific
filters. One example of a filter is a date range.
Octimine users can restrict the search to prior
art that existed on or before a particular date.
dennemeyer.com
Although the ease of entering a query is a
definite advantage of AI, many see the way
AI returns results as even more valuable.
Traditional search engines return a long
list of patents with little or no ranking and
no visualization. Octimine ranks results by
relevance and allows the searcher to quickly
see the most relevant prior art. Modern IP
search tools also use visualization to illustrate
search results and help users to get an
overview of the results in a split second.
Although AI has substantial advantages over
traditional search tools, it is not universally
accepted. There are several reasons given by
detractors for not using AI, the most common
being that Boolean searching is proven and
safe. Others complain that using AI involves a
“Black Box.” The searcher does not know how
the search was performed. Others complain
that they already know how to do Boolean
searching and they do not see the need for a
simplified method.
To help overcome these concerns, the
experts suggest using AI searching alongside
traditional methods. Many skeptical Octimine
users have been surprised that AI has identified
relevant prior art overlooked by conventional
methods. Because AI is so easy to use, running
an additional AI-based search to augment a
traditional search is not time-consuming nor
is it expensive.
Several large IP departments use Octimine to
do this type of first screening of the invention.
If prior art is identified that is directly on
point, they can decide to terminate the patent
process before investing a lot of time. If the
search identifies prior art, but the art is not
definitive, the committee can ask the inventor
to clarify any ambiguity. This can all be done
without a professional searcher and can,
depending on the results, save the committee
from investing unnecessary time in the
process.
Watching, identifying
and comparing
competition
AI is ideally suited both for comparing
a company’s portfolio to its competitors’
and for identifying unknown competitors.
There are traditional systems to monitor and
compare competitive portfolios, but those
systems require the company to identify the
competitors first.
AI allows a company to input a patent
portfolio into the system and then ask the
system to identify similar portfolios. If the
company is using Octimine, it will identify the
most similar portfolios, regardless of whether
the competitor is even known to the company.
Several analytics and visuals can be run to
compare similar portfolios.
Directing R&D
with white space
landscaping
Several progressive companies are using AI
to identify white space where they should
direct their patent and R&D activities. AI
reveals the patent activity of a technology,
provides an overview of the state of the art
and offers valuable insights to commercial and
technology managers. As such, enough data
is available to inform the R&D department
as to where they should focus their activity
and where the IP department should focus its
filling strategy.
Octimine, by way of example, has several
graphical analytics to make it easier for the
company to see the white space.
Opposition /
invalidity search
When objecting to a competitor’s patent, the
first option is to file an opposition (at the
EPO), or a post-grant review (at the USPTO)
and try to prove that there was non-cited
prior art that invalidates the patent. AI is
ideally suited for finding similar patent art. If
using Octimine, all a user must do is insert
the patent number and set a filter for the
appropriate date. Octimine will identify prior
art that is on point.
Integration with IP
management systems
The most sophisticated AI systems offer APIs
that allow integration of the AI system to
their customers’ other systems. For example,
Octimine has an API that allows search
results to flow into other systems where they
can be associated with the relevant matter.
The Dennemeyer Group plans to integrate
Octimine into DIAMS IQ, Dennemeyer’s IP
management software system.
One example of where this integration is
valuable is in the invention submission and
review process. Once Octimine is integrated,
inventors and patent review committee
members can review the search results in the
same system they use to manage the invention
submission. They will be able to make an
AI-based novelty search a standard part of the
review process.
Other uses
This article is not an exhaustive list of the ways
AI is used by IP departments and firms today.
Other uses include identifying licensees,
patent valuation, patent proofreading, general
landscaping, and clustering.
The future of AIbased
IP systems
No one will question that AI is here to stay.
The most progressive firms and departments
are already using AI to make certain processes
easier, faster and less expensive. As systems
like Octimine become more pervasive, use
will increase and detractors will melt away.
About the
Dennemeyer Group
The Dennemeyer Group has more than 55
years of experience in delivering quality
Intellectual Property services including
patent annuities, trademark renewals,
recordals, strategic IP consulting and
intelligent software solutions for efficient
IP management. These services are
further expanded when coupled with
Dennemeyer & Associates, the group’s
law firm, to include EP validations, PCT
nationalizations, trademark, and patent
filing and prosecution.
30 www.gipmatrix.com
www.gipmatrix.com
31

DISCOVER the whole world
of Intellectual Property
Administrative
services
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dennemeyer.com

Patent Landscape of
Sports-Related Concussion
Bio: Liang Wang (MSc in Environmental
and Energy Engineering from Sheffield
University) is a Senior IP Manager at
Patent Seekers Limited and has developed
an expertise in patent search and analysis
across multiple disciplines. He is a key
member of the company’s patent search
teams, involved in over 16000 searches
for international patent attorneys both in
private practice, in-house and for major
blue-chip companies.
“Every April 26, we celebrate World
Intellectual Property Day to learn about
the role that intellectual property (IP)
rights play in encouraging innovation and
creativity. This year’s World Intellectual
Property Day campaign – Reach for Gold –
takes a closer look inside the world of sports.
It explores how innovation, creativity and
the IP rights that encourage and protect
them support the development of sport and
its enjoyment around the world.” – World
Intellectual Property Organisation
This article presents an overall review
of the patent landscape of sportsrelated
concussion.
Introduction
Concussion: Temporary unconsciousness
or confusion and other symptoms caused
by a blow on the head. – Oxford Dictionary.
Effects are usually temporary but can
include headaches and problems with
concentration, memory, balance, and
coordination.
Concussions are a surprisingly common
occurrence in sports. Although it is a temporary
injury to the brain, it can lead to serious and
longer-lasting problems. We hear the word
“concussion” quite often these days across
different sports, including but not limited to
rugby, football and basketball: “Cillian Willis was
forced to end his rugby career”, “Czech goalkeeper
Petr Čech suffered from a severe concussion in
a football match”, “Liam Picken was forced to
retire from AFL due to concussion” etc. Over
the last decade, the sports-related concussion
has become a significant concern among the
public, sports, and clinical professionals. There
have been numerous attempts at preventing
concussion in sports, such as change of certain
rules, use of protective equipment, improved
training methodology, monitoring/detecting of
concussion, etc.
Mr Liang Wang - Senior IP Manager at Patent Seekers Limited
www.patentseekers.com
How rapidly is new innovation taking place in this space?
From the chart above, we can see that there were steady numbers of publications each year since 2000.
The number of patent filings appears to start to rise in 2010, with a big surge occurring from 2013
onwards; this may be attributed to the beginning of awareness of concussions in sports. The apparent
dip in filings in 2017/2018 is most likely explained by applications that have yet to be published and
would be claiming those years as a priority. It could be anticipated that the number of concussionrelated
patent filings will continue to increase in the coming years as to how to prevent sports relatedconcussion
has become a huge topic globally. There have been numerous efforts for prevention and
mitigation of sports-related concussion, including the use of protective equipment, improved sports
regulations and legislation, concussion education and improved monitoring of concussion.
What are the trends in technology focus?
There have been numerous efforts for prevention and mitigation of sports-related concussion,
including the use of protective equipment, improved sports regulations and legislation, concussion
education and improved monitoring of concussion.
The heat map at the bottom of the previous page shows the number of patent publications placed
in the top 20 IPC classifications over the last 20 years. It appears that most of the patent filings fall
in the classifications of A42B3 (Helmets; Helmet covers; Other protective head coverings) and
A61B5 (Detecting, measuring or recording for diagnostic purposes; Identification of persons), which
demonstrates the technology areas where companies/organisations focus on. From a further
drill-down analysis, A42B3/06 (Impact-absorbing shells, e.g. of crash helmets), A42B3/12
(Cushioning devices) and A63B71/10 (Games or sports accessories for the head) appear to
have the most publications in the area of protective equipment, there also appears to be plenty
of activity happening in the concussion monitoring area as shown in A61B5/11 (Measuring
movement of the entire body or parts thereof, e.g. head or hand tremor, mobility of a limb).
By use of the latest technologies across different areas, it would be expected that there will be
more efficient ways to prevent concussion in sports to better protect athletes from serious brain
injuries.
What is the global origin of this technology?
As discussed above, the prevention of sports-related concussion has become a global awareness, which
can be clearly seen from this map, showing the distribution of the top 20 priority countries in this field.
The United States appears to be the most active country in this technical area, almost triple the number
of publications compared to China and Canada, who are also fairly energetic. Other leading countries
include Japan, Australia and some European countries, including Germany, the United Kingdom,
France, Spain, and Italy. The above chart shows that companies and individuals all over the world have
a great interest in developing new technology and filing related patents in this area.
Who are the current market leaders?
This chart shows the companies which have the most patent filings in this field and indicates the
current market leaders, actively involved in the field of sports-related concussion. Riddell, an American
company specialising in sports equipment for American football, appears to have the most publications
(mostly relating to helmets). Other leading companies in the area of protective equipment include
Bauer, Easton Sports, Kranos, Bell Sports and Salomon, etc. BrainScope, a medical neuro-technology
firm using artificial intelligence to assess a variety of neurological conditions including concussion,
appears to be the top company leading patent
filings in concussion measuring/detecting
technology. IBM and Blast Motion also seem to
be interested in the area of sensing technology for
concussion. This chart also appears to be well in
line with the above “technology focus” chart.
Technology Landscape
This patent landscape map shows the distribution
of patents in the data set based on relatedness of
text, providing a visualisation of the technology
clusters prevalent within the sports-related
concussion portfolio and revealing a diverse set
of interests.
There appear to be plenty of patent filing
activities in the area of development of protective
equipment, which can be seen from those red,
green and brown clusters. Although concussions
are not always preventable and there may not
be a magic product on the market currently for
preventing concussions, helmets can protect
against more severe head injuries. It appears
that the helmet is the main technology focus,
which can be explained as the most obvious and
potentially the most effective way to prevent
concussion if they can be properly designed with
the help of latest technology, such as new material
with high energy absorbency and improved
design of the helmet layers.
In addition to the above, companies and individual
inventors have also put numerous efforts into
the field of advanced detecting and measuring
of concussion, including biometric assessment,
electrical simulation, and rehabilitation. All these
new and improved technologies will be of great
help for early and better diagnosis of concussion,
which can eventually lead to successful treatment
and prevention of any related sequela.
Conclusions
This overview of the patent landscape
surrounding sports-related concussion has
revealed that the use of protective equipment
and motoring/detecting of concussion are
the two main areas where the majority of
companies are trying to dive into and invest.
There has already been a great number of patent
filings relating to the development of products
and technologies, and it could be anticipated
that this will continue in the coming years as
sports-related concussion has emerged as a
major public health and clinical concern due to
the increased number of diagnosis worldwide.
It would be wonderful if technology could
solve the sports-related concussion crisis,
and there should be more and better research
into how to prevent concussion and therefore
protect athletes’ health.
34 www.gipmatrix.com www.gipmatrix.com 35

17 – 18 JUNE 2019 | FAIRMONT LE MONTREUX PALACE
MONTREUX | SWITZERLAND
Specialist global search services for patent attorneys,
universities, technology companies and SME’s
Patentability/Novelty Search
Infringement/FTO/Clearance
Invalidity/Patent Busting
State of the Art
Patent Mapping/Landscapes
Patent Monitoring
Patent Status
Competitor Analysis
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Christian Sommer, Group Legal Director, Vodafone
Professor André Spicer, Professor of Organisational Behaviour,
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Jeff Bullwinkel, Associate GC & Director of Corporate, External & Legal
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17 – 18 JUNE 2019 | FAIRMONT LE MONTREUX PALACE
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UNITING IN-HOUSE IP COUNSEL WITH
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‘No’
to Evergreening of plant variety
in the ‘Plant Varieties Law!’
Ms Vijaya Chaudhary - Associate at LexOrbis
www.lexorbis.com
“Every April 26, we celebrate World
‘Under the current Intellectual Property
Right (IPR) regime, the Indian Patents
Act excludes plant per se or any part
thereof including seeds, varieties,
species and essentially a biological
process from patentability.’
The Protection of Plant Varieties and Farmers’
Right (PPV&FR) Act, 2001 (hereinafter
mentioned as the Act), a unique sui-generis
system for the protection of plant varieties in
compliance with Article 27(3) (b) of
Trade-Related Aspects of Intellectual
Property (TRIPs) Agreement, is the
only legal instrument for protecting
a new plant variety that has been
developed. In order to be registerable
under the PPV&FR Act, the variety
must satisfy the four essential criteria of
registration i.e. novelty, distinctiveness
(D), uniformity (U) and stability (S).
The novelty of a variety is decided on
the basis of date of sale of a candidate
variety. As per section 15(3) (a) of the
Act, if the application for registration
of a variety is filed within one year
from the date of its sale in India or
within six years (in the case of trees
and vines) and within four years (in
other cases), of its sale outside India,
the candidate variety is considered
to be a new variety. Provided, the use
of said variety for trial purpose does
not affect the novelty of the candidate
variety. Furthermore, a variety in seed
chain for more than one year can also
be registered as an extant variety or a
variety of common knowledge (VCK)
under the PPV&FR Act.
It is interesting to note that the
total period of registration of
both the new and extant (VCK)
variety is the same i.e. 18 years
(trees and vines) or 15 years
(other varieties) as the duration
of registration is calculated from the
date of issuance of the registration
certificate under the Act (section 24(6)
of the PPV&FR Act).
For registering a
variety under the
PPV&FR Act
The applicant is required to make a request in
the prescribed manner along with the seeds/
propagating material of the candidate variety
with the PPV&FR Authority (hereinafter
mentioned as the Authority). Provided the
Authority shall accept the application of only
those crop species that are notified by the Central
Government under section 29(2) of the Act. Till
date, registration is open for only 151 crop species
of various agricultural, horticultural, forestry and
commercial crops. Hence, the crop species which
are not notified under the Act, the newly bred
variety of the same crop cannot be registered
with the Authority.
Furthermore, the grant of a registration
certificate to a plant variety under the PPV&FR
Act is subjected
to actual field
testing of the DUS
characteristics
claimed for a
candidate variety,
said test may
be a field test or
on-site testing,
depending upon
the method of
propagation
of the variety
applied for
registration.
The DUS test is
conducted strictly
in compliance
with the crop
specific DUS
Test Guideline
published by the
Authority. As
per section 19
of the Act, the
DUS testing of
a new variety is
conducted for
two years and
two locations
and for extant
variety; the DUS
Test is conducted
for one year and
two locations.
However, in case
of an essentially
derived variety, the manner of testing shall be
decided by the authority on a case-to-case basis.
Hence, the DUS Test is necessary for all new
varieties other than the essentially derived variety.
Additionally, there is a provision of conducting a
‘special test’, if the field test fails to establish the
requirement of distinctiveness for the candidate
variety. Hence, the registration of plant variety
under an extant category is less time-consuming
in comparison to a new variety.
As per revised procedure of registration
published in September 2018 (http://www.
plantauthority.gov.in/rp2.gif);
The applicant must submit the specified quantity
of seeds/ propagating material of the candidate
variety, in the prescribed manner, at the time of
filing the application for registration with the
Authority. Provided, in the case of hybrids, seeds
of parental lines, are also required to be submitted
at the time of filing the application for registration.
However, in the case of foreign applicants, such
mandatory requirement of seed submission
at the time of filing may cause unnecessary
delay in the registration process, as they have to
comply with the regulatory requirements for the
import of seeds in India before
applying for registration with
the Authority. Furthermore,
both the applicant as well as the
Authority shall maintain the
seeds of the registered variety,
with substantial viability and
purity, during the entire period
of registration.
The varieties notified under
section 5 of the Seeds Act, 1966
are also eligible for registration
under the Act. Provided no DUS
testing is conducted for such a
notified variety and approval
from the Extant Variety Release
Committee (EVRC) is the only requirement for
its registration. The total period of registration is
also calculated from the date of notification of the
said variety under section 5 of Seeds Act, 1966.
However, the conflict arises when an application
for registration of a parental line of notified
hybrid is made with the Authority. As per
the Indian Plant Variety Registry decision
dated October 28, 2013 (on representation of
Nuziveedu Seeds Pvt. Ltd., Applicant dated
13.06.2013 and 12.07.13), the parental line of
a notified hybrid cannot be considered to be a
notified variety as only a hybrid variety and
not its parental lines were expressly notified
under section 5 of the Seeds Act. The applicant
challenged the order of Registry dated October
28, 2013, and contended that the characters of
parental lines of the extant notified hybrid are
documented in the application for notification
of hybrid under section 5 of the Seeds Act and
both the hybrid and parental lines must be
considered as a single unit for propagation and
stability. Upon reconsideration of Nuziveedu
Seeds Pvt. Ltd. (applicant) representation against
Plant Variety Registry decision dated October
28, 2013, the learned Registrar in its order dated
December 05, 2018 decided in favour of the
applicant stating that parental lines of a notified
hybrid variety shall be deemed to be notified
under section 5 of the Seeds Act, 1966 and shall
be eligible for the same period of protection as
that of its notified hybrid variety. The Registry
decision is based on Delhi High Court judgement
in Maharashtra Hybrid Seeds Co. vs UOI for
category of registration of a parent lines of a
extant hybrid variety where the court in order
to prevent evergreening of Intellectual Property
Rights in Plant Varieties decided that parental
lines of a hybrid shall be registered in the same
category as that of its hybrid.
To conclude
This decision of Registry not
only restricts the indirect
protection of hybrid after
the expiry of the period of
protection but also expedites
the process of registration of
parental lines of a notified
hybrid variety.
1 IN THE MATTER OF: Nuziveedu Seeds Pvt. Ltd., with
respect to registration of NC-71, NC-99, NC-102 and
NC-108 cotton parental line varieties-Category to be
applied.
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39

125mm (H) x 180mm (W)
Pakistan Office:
EDRADEMARK
AEERE
International Intellectual Property Attorneys
Trademark, Patent, Design, Copyright, Domain name
registration, litigation & enforcement services
(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
Email: UnitedTrademark@UnitedTm.com
Websites: www.utmps.com and www.unitedip.com
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41